GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS)
EDITOR’S NOTE AND GENERAL INTRODUCTION
Editor’s Note and General Introduction
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Table of Contents
1 Subject Matter............................................................................................ 3
2 Objective of the Guidelines ...................................................................... 3
3 Guidelines Revision Process ................................................................... 4
4 Structure of the Guidelines....................................................................... 5
Editor’s Note and General Introduction
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1 Subject Matter
Council Regulation No 40/94 of 20 December 1993, as amended and codified in Council Regulation No 207/09 of 26 February 2009 (CTMR), established, in parallel with the national systems, a Community trade mark system with the aim of eliminating one of the main obstacles to the development of the single European market. Council Regulation No 6/02 of 12 December 2001 (CDR) did the same for Community designs. Hitherto, the law governing the registration and use of trade marks or designs had been exclusively national and made it difficult for the same trade mark or design to be used throughout the European Union.
The Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM or the Office), established in Alicante, is responsible for the registration of Community Trade Marks (CTM) and Registered Community Designs (RCD). These registrations provide uniform trade mark and design protection throughout the European Union.
The Office deals with registration procedures (including the examination of applications for absolute grounds for refusal and, where an opposition has been raised regarding a CTM application, for relative grounds for refusal), maintains the public registers of these rights and de cides on appl ications for those rights, once registered, to be declared invalid. The Office’s Guidelines cover practice in all these areas.
2 Objective of the Guidelines
The purpose of the Guidelines on CTMs and the Guidelines on RCDs is to improve the coherence, predictability and q uality of the Office’s decisions. The Guidelines are designed to bring together, systematically, the principles of practice derived from the jurisprudence of the European Court of Justice, the case-law of the Office’s Boards of Appeal, the decisions of the Office’s Operations Department and the outcome of the Office’s Convergence Programmes with EU IP offices. They provide a unique source of reference on Office practice with regard to CTMs and RCDs and are intended to be of practical use both to Office staff in charge of the various procedures and to users of the Office’s services.
The Guidelines have been drawn up t o reflect Office practice in the most frequent scenarios. They contain only general instructions, which have to be adapted to the particularities of a case. They are not legislative texts and, therefore, are not of a binding nature. Both the parties involved and the Office must, where necessary, refer to the CTMR, the CDR, and their respective Implementing Regulations, the Fee Regulations, Commission Regulation (EC) No 216/96 of 05/02/1996 laying down the rules of procedure of the Boards of Appeal and, finally, the interpretation of these texts handed down by the Boards of Appeal and the Court of Justice of the European Union, including the General Court of the European Union.
As case-law is evolving constantly, the Guidelines will also evolve. They will be adapted to reflect developments in Office practice on a yearly basis by means of an ongoing revision exercise (see point 3 below).
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3 Guidelines Revision Process
As the sole source of reference on Office practice with regard to CTMs and RCDs, the Guidelines are available in all official EU languages. They are revised by the cross- departmental Knowledge Circles of the Office in a cyclical and open process: ‘cyclical’ because practice is updated on a yearly basis by looking at the case-law of the preceding year and t aking into account operational needs and t he outcome of convergence initiatives, and ‘open’ because external stakeholders are involved in defining that practice.
The involvement of national offices and user associations not only benefits the quality of the Guidelines, but is also expected to facilitate convergence, that is, the process of exploring common ground on issues where there are diverging practices. Making the Guidelines available in all EU languages will raise awareness of Office practice amongst Member States and users and make differences in practice easier to identify.
The yearly work is split into two ‘work packages’: Work Package 1 (WP1) runs over a twelve-month period each year from January to December, and Work Package 2 (WP2) over a twelve-month period each year from July to June.
The process involves the following phases:
a. Initiation of update by stakeholders
Having been made aware of the Office’s revision plans, in particular what is to be revised and when, the national offices and user associations are welcome to submit comments before January (for WP1) and bef ore July (for WP2). Comments not received on time will be taken into consideration during the next cycle or may be submitted during phase c.
b. Preparation of the draft Guidelines by the Office
During this phase, the draft Guidelines are produced by the Office’s Knowledge Circles. The process starts each year in January (for WP1) and July (for WP2). Feedback and c omments submitted in advance from users are taken into consideration. The three steps of the process – analysis, drafting and discussion – must be c ompleted in a t imely manner. Analysis involves the Knowledge Circles extracting trends from the preceding year’s case-law, studying the conclusions of the convergence projects and taking into consideration the comments received from the Office’s users and internal stakeholders. As the next step, the Knowledge Circles draft the guidelines. Finally, the texts are discussed amongst the various units and departments of the Office.
c. Adoption of the Guidelines
In the last phase, the draft Guidelines are sent for translation into the Office languages. The texts and t ranslations are circulated amongst the user associations and the EU IP offices with a view to receiving feedback before the next meeting of the Office’s Administrative Board (AB). After consulting the AB in accordance with Article 126(4) CTMR and Article 101(b) CDR, the President adopts the updated Guidelines. The versions in the five Office languages together make up the official text, which is intended to be published in January (WP1) and July (WP2) of each year, respectively. In the event of discrepancies
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between different language versions, the text in the drafting language (English) will prevail. Once adopted, the Guidelines will be translated into the remaining official languages of the European Union as a matter of courtesy and for transparency. These additional translations will be publ ished on t he Office’s website, and external stakeholders, whether national offices or user associations, will be free to submit feedback on their quality; any linguistic amendments made as a result of this informal feedback will be incorporated into the texts without any formal procedure.
d. Fast-track procedure
Where a major external event has an immediate impact on Office practice (for example, certain judgments of the Court of Justice), the Office can amend the Guidelines in a fast-track procedure outside the normal time frame set out above. However, this procedure is the exception to the norm. As the process is cyclical, such changes will always be open to comments and r evision in the following cycle.
4 Structure of the Guidelines
The items dealt with in WP1 and WP2, respectively, are set out below. In exceptional circumstances, certain elements of practice might be changed from one WP to another. Should such a change occur, it will be communicated to stakeholders.
COMMUNITY TRADE MARK:
WP1 WP2
Part A: General Rules Part A: General Rules
Section 3, Payment of fees, costs and charges Section 1, Means of communication, time limits
Section 5, Professional representation Section 2, General principles to be respected in proceedings Section 4, Language of proceedings
Section 6, Revocation of decisions, cancellation of entries in the Register and correction of errors
Section 7, Revision
Section 8, Restitutio in Integrum
Section 9, Enlargement
Part B: Examination Part B: Examination
Section 2, Formalities Section 1, Proceedings
Section 4, Absolute Grounds for Refusal 7(1)(a) Section 3, Classification
Section 4, Absolute Grounds for Refusal 7(1)(b) Section 4, Absolute Grounds for Refusal 7(1)(f)
Section 4, Absolute Grounds for Refusal 7(1)(c) Section 4, Absolute Grounds for Refusal 7(1)(g)
Section 4, Absolute Grounds for Refusal 7(1)(d) Section 4, Absolute Grounds for Refusal 7(1)(h)+(i)
Section 4, Absolute Grounds for Refusal 7(1)(e) Section 4, Absolute Grounds for Refusal 7(1)(j)+(k)
Section 4, Absolute Grounds for Refusal 7(3)
Section 4, Collective marks
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Part C: Opposition Part C: Opposition
Section 0, Introduction Section 3, Unauthorised filing by agents of the TM proprietor (Article 8(3) CTMR)
Section 1, Procedural Matters Section 4, Rights under Article 8(4) CTMR
Section 2, Double identity and Likelihood of confusion Section 5, Trade marks with reputation Article 8 (5) CTMR
Chapter 1, General Principles and Methodology
Chapter 2, Comparison of Goods and Services
Chapter 3, Comparison of Signs
Chapter 4, Distinctiveness
Chapter 5, Dominant character
Chapter 6, Relevant public and degree of attention
Chapter 7, Other factors
Chapter 8, Global assessment
Section 6, Proof of Use
Part D: Cancellation Part D: Cancellation
Section 1, Cancellation proceedings
Section 2, Substantive provisions
Part E: Register Operations Part E: Register Operations
Section 2, Conversion Section 1, Changes in a registration
Section 4, Renewal Section 3, CTMs as objects of property
Section 5, Inspection of files Chapter 1, Transfer
Chapter 2, Licences
Section 6, Other entries in the Register Chapter 3, Rights in rem
Chapter 1, Counterclaims Chapter 4, Levy of execution
Chapter 5, Insolvency proceedings or similar proceedings
Part M: International marks
REGISTERED COMMUNITY DESIGN
WP1 WP2
Examination of Design Invalidity Applications Examination of Applications for Registered Community Designs Renewal of Registered Community Designs
Payment of Fees, Costs and Charges
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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 3
PAYMENT OF FEES, COSTS AND CHARGES
Payment of Fees, Costs and Charges
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Table of Contents
1 Introduction................................................................................................ 3
2 Means of Payment ..................................................................................... 4 2.1 Payment by bank transfer..........................................................................4
2.1.1 Bank account .................................................................................................. 4 2.1.2 Details which must accompany the payment ................................................. 5
2.2 Payment by debit or credit card ................................................................7 2.3 Payment by OHIM current account ...........................................................7
3 Time of Payment........................................................................................ 9
4 Date on which Payment is Deemed to be Made...................................... 9 4.1 Payment by bank transfer..........................................................................9
4.1.1 Late payment with or without surcharge......................................................... 9 4.1.2 Evidence of payment and of the date of payment ........................................ 10
4.2 Payment by debit or credit card ..............................................................11 4.3 Payment by current account ...................................................................11
5 Refund of Fees......................................................................................... 12 5.1 Refund of application fee.........................................................................12 5.2 Refund of the opposition fee ...................................................................13 5.3 Refund of fees for international marks designating the EU .................. 13 5.4 Refund of appeal fees ..............................................................................13 5.5 Refund of renewal fees ............................................................................13 5.6 Refund of insignificant amounts .............................................................14
6 Decisions on Costs ................................................................................. 14 6.1 Apportionment of costs ...........................................................................14 6.2 Fixing of costs ..........................................................................................14 6.3. Enforcement of the decision on costs ......................................................15
6.3.1 Conditions..................................................................................................... 15 6.3.2 National authority.......................................................................................... 15 6.3.3 Proceedings.................................................................................................. 15
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1 Introduction
Article 2 CTMFR
For CTMs, in addition to the provisions contained in the basic CTMR and in the CTMIR, there is a specific regulation on the fees payable to OHIM (CTMFR). This regulation was amended once in 2004, twice in 2005 and once in 2009. An unofficial consolidated text of the CTMFR, including references to the codified CTMR, is available online. The full list of fees can be found on the OHIM website.
Similarly, for RCDs, in addition to the provisions contained in the basic CDR and in the CDIR, there is a specific regulation on t he fees payable to OHIM (CDFR). This regulation was amended in 2007 following the accession of the European Union to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs.
Finally, the President of the Office is empowered to lay down charges which may be payable to the Office for services it may render and to authorise methods of payments in addition to those explicitly provided for in the CTMFR and the CDFR.
The differences between fees, costs and charges are as follows.
• Fees must be paid to the Office by the users for the filing and handling of trade marks and designs proceedings; the fees regulations determine the amounts of the fees and t he ways in which they must be paid. Most of the proceedings before the Office are subject to the payment of fees, such as the application fee for a CTM or an RCD, a renewal fee, etc. Some fees have been reduced to zero (e.g. registration fees for CTMs, transfers for CTMs).
The amounts of the fees have to be fixed at such a level as to ensure that the revenue is in principle sufficient for the budget of the Office to be balanced (see Article 144 CTMR) in order to guarantee the full autonomy and independence of the Office. The revenue of the Office comes principally from fees paid by the users of the system (see 18th Recital CTMR).
• Costs refer to the costs of the parties in inter partes proceedings before the Office in particular for professional representation (for trade marks see Article 85 CTMR and Rule 94 CTMIR, for designs see Articles 70-71 CDR and Article 79 CDIR). Decisions in inter partes cases must contain a decision on fees and costs of the professional representative and must fix the amount. The decision on costs may be enforced once the decision has become final, pursuant to Article 86 CTMR.
• Charges are fixed by the President of the Office for any services rendered by the Office other than those specified in Article 2 CTMFR (see Rule 87(2) CTMIR and Article 3(1) and (2) CTMFR). The amounts of the charges laid down by the President will be published in the Official Journal of the Office and can be found on the website under decisions of the President. Examples are the charges for mediation in Brussels or for certain publications issued by the Office.
Payment of Fees, Costs and Charges
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2 Means of Payment
Article 5 CTMFR Article 5 CDFR Communication No 2/97 of the President of the Office of 03/07/1997
All fees and charges must be paid in euros. Payments in other currencies are not valid, do not create rights and will be reimbursed.
Fees payable to the Office may not be paid to or via national Offices.
The admissible means of payment are, in most cases, bank transfers, debits from the current accounts held at the Office, and (for certain on-line services only) debit or credit cards. Cash payments at the Office’s premises and cheques are no longer accepted (decision of 03/09/2008, R 524/2008-1 – ‘TEAMSTAR’).
The Office cannot issue invoices. However, the Office will provide a r eceipt when requested to do so by the user.
2.1 Payment by bank transfer
Money may be sent to the Office by means of transfer. A fee is not deemed to be paid if the order to transfer is given after the end of the time limit. If the fee is sent before the time limit but arrives after its expiry, under specific conditions the Office may consider the fee has been duly paid (see paragraph 4.1 below).
2.1.1 Bank account
Payment by bank transfer can only be made to one of the following two bank accounts of the Office:
Bank Banco Bilbao Vizcaya Argentaria La Caixa
Address Explanada de España, 11 E-03002 Alicante SPAIN
Calle Capitán Segarra, 6 E-03004 Alicante SPAIN
Swift code* BBVAESMMXXX CAIXESBBXXX IBAN ES8801825596900092222222 ES0321002353010700000888
Bank charges** >OUR >OUR
* Swift code: Some computer programs do not accept the last three digits XXX of the Swift/BIC code. Should this be the case, users must indicate BBVAESMM or CAIXESBB.
** Bank charges: It is important to make sure that the entire amount reaches the Office, without any deductions. Therefore, in the case of a t ransfer ‘OUR’ must be indicated as the method of payment for the bank charges in order to allow full reception by the Office of the amount due. However, for SEPA payments, the default SEPA
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specification ‘SHA’ is required. SEPA is a common European payments system, used by most banks in all EU Member States and five additional European countries.
2.1.2 Details which must accompany the payment
Article 7 CTMFR Article 6 CDFR
The payment of a fee and indication of the nature of the fee and the procedure to which it refers does not substitute the other remaining formal requirements of the procedural act concerned. For example, the payment of the appeal fee and the indication of the number of the contested decision is not sufficient for filing a valid notice of appeal (judgment of 31/05/2005, T-373/03, ‘PARMITALIA’, para. 58; judgment of 09/09/2010, T--70/08 ‘ETRAX’, para. 23-25).
When the information supplied is insufficient to properly enable the allocation of the payment, the Office will specify a time limit within which the missing information must be provided, failing which the payment will be considered not to have been made and the sum will be reimbursed. OHIM receives thousands of payments a day and t he incorrect or insufficient identification of the file can lead to considerable delays in processing procedural acts.
The following data must be included in the transfer form with the payment:
• CTM/RCD number • Payer name and address or Office ID number • Nature of the fee, preferably in its abbreviated form.
In order to deal with payments swiftly with regards to bank transfers, and bearing in mind that only a l imited number of characters may be us ed in the ‘sender’ and ‘description’ fields, filling in these fields as follows is highly recommended.
DESCRIPTION FIELD
• Use the codes listed in the tables below, for example: CTM instead of: APPLICATION FEE FOR A COMMUNITY TRADE MARK.
• Remove initial zeroes in numbers and do not use spaces or dashes since they use up space unnecessarily.
• Always start with the CTM or RCD number, e.g. CTM3558961. • If the payment is for more than one trade mark or design, only specify the first
and last one, e.g. CTM3558961-3558969, and then send a fax with the full details of the trade marks or designs concerned.
Description Codes
Description Code Example
Payment to current account CC + account number CC1361
If the owner or the representative has an ID number
OWN + ID number, REP + ID number REP10711
Number of the trade mark or the design CTM, RCD + number
CTM5104422 RCD1698
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A short nickname of the CTM or RCD
‘XYZABC’ or ‘bottle shape’
Operation code: Application fee for CTM or RCD International application fee Renewal fee Opposition fee Cancellation fee Appeal Recordal Transfer Conversion Inspection of files Certified Copies
CTM, RCD INT RENEW OPP CANC APP REC TRANSF CONV INSP COPIES
OPP, REC, RENEW, INSP, INT, TRANSF, CANC, CONV, COPIES, APP
Examples:
Payment Object Example of Payment Description
Application fee (CTM = Community Trade Mark) CTM5104422 XYZABC.
Application fee (RCD = Registered Community Design) RCD1234567 bottle shape.
Opposition + payer CTM4325047 OPP XYZABCREP10711
International application CTM4325047 INT XYZABC
Renewal (CTM) CTM509936 RENEW
Payment to current account No 1361 CC1361
Certified Copies CTM1820061 COPIES
Transfer of multiple designs (first 1420061 and last 1420065) + payer RCD1420061-1420065 TRANSF REP10711
Recordal of a licence for a CTM CTM4325047 REC LICENCE OWN10711
SENDER FIELD
Examples for address
Address Example
Payer name Payer address Payer city and post code
John Smith 58 Long Drive London, ED5 6V8.
• Use a name that can be identified as a payer, applicant (owner or representative) or opponent.
• For the payer name, use only the name, without abbreviations like DIPL.-ING. PHYS., DR., etc.
• Use the same form of identification for future payments.
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2.2 Payment by debit or credit card
Decision No EX-13-2 of the President of the Office of 26/11/2013 concerning electronic communication with and by the Office: Article 7, Electronic payment of fees by credit card Article 2(1)(b) to Article 2(4) and Article 2(12) to (15) CTMFR and Article 5(2) CDFR
Payment by debit or credit card is not yet available for all OHIM fees. Only certain online services can be paid by debit or credit card.
The following debit or credit cards may be used: Visa, Mastercard and Discover.
For electronically filed applications and renewals, payment by debit or credit card is the recommended method. Debit or credit card payments allow OHIM to make the best use of its own automatic internal systems, so that work can start on the file more quickly.
Debit or credit card payments are immediate (see paragraph 4.2 below) and are not, therefore, allowed for delayed payments (within one month from the filing date).
For all other fees, the use of debit or credit cards is not currently available. In particular, debit or credit cards cannot be used to pay charges referred to in Article 3 CTMFR and Article 3 CDFR or to top up a current account.
Debit or credit card payments require some essential information. The information disclosed will not be stored by OHIM in any permanent database. It will only be kept until it is sent to the bank. Any record of the form will only include the debit or credit card type (VISA, MasterCard or Discover) plus the last four digits of the debit or credit card number. The entire debit or credit card number can safely be entered via a secure server, which encrypts all information submitted.
2.3 Payment by OHIM current account
Decision No Ex-96-1 of the President of the Office of 11/01/1996 concerning the conditions for opening current accounts at the Office as amended in 1996, 2003 and 2006 Communication No 5/01 of the President of the Office of 29/06/2001 concerning the availability of current accounts statements on the Office internet site Communication No 11/02 of the President of the Office of 11/10/2002 concerning the opening of another bank account
It is advisable to open a current account at the OHIM since for any request which is subject to time limits, such as filing oppositions or appeals, the payment will be deemed to have been made on time even if the relevant documentation in relation to which the payment was made (for instance a not ice of opposition) is filed on the last day of the deadline, provided that the current account has sufficient funds (see paragraph 4.3 below) (decision of 07/09/2012, R 2596/2011-3 ‘STAIR GATES’, paras 13-14). The date on which the current account is actually debited will usually be later, but payment will be deemed to have been made on the date on which the request for a procedural act is received by the Office, or as otherwise convenient for the party to the proceedings, in accordance with Article 6 of Decision No Ex-96-1 of the President of the Office as amended in 2006.
Payment of Fees, Costs and Charges
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If the person (either party to the proceedings or their representative) who has filed the application or the respective procedural act is the holder of a current account with the Office, the Office will automatically debit the current account, unless instructions to the contrary are given in any individual case. In order for the account to be c orrectly identified, the Office recommends clearly indicating the OHIM ID number of the holder of the current account with the Office.
The system of current accounts is an aut omatic debiting system meaning that upon identification of such an account, the Office may debit, according to the development of the procedures concerned and insofar as there are sufficient funds in the account, all fees and c harges due within the limits of the aforementioned procedures, and a payment date will be accorded each time without any further instructions. The only exception to this rule is made when the holder of a current account who wishes to exclude the use of their current account for a particular fee or charge informs the Office thereof in writing. In this scenario, however, the owner of the account may change the method of payment back to payment by current account at any time before the expiry of the payment deadline.
The absence of an indication or incorrect indication of the amount of the fee does not have any negative effect since the current account will be aut omatically debited with reference to the corresponding procedural act for which the payment is due.
If there are insufficient funds in a c urrent account, the holder will be not ified by the Office and g iven the possibility to replenish the account and to pay 20% to cover administrative charges due to lack of funds. If the holder does so, the payment of the fee will be deemed to have been received on the date the relevant document in relation to which the payment was made (for instance a notice of opposition) is received by the Office. If payment concerns the replenishment of a current account, it is sufficient to indicate the current account number. If the account is replenished, the holder should ensure that sufficient funds are provided for all payments due or at least indicate the priorities for which the money should be used (decision of 03/09/2008, R 1350/2007-1 – ‘SCHNEIDER’). Where no priorities are indicated, the Office will cover the payments in the chronological order in which they fall due.
OHIM provides current account holders with access to their current account information over a s ecure internet connection for at least the previous year via its website. The service includes the account balance, list of all transactions, monthly statements and a search tool to find specific transactions.
Payment of a fee by debiting a current account held by a third party requires an explicit written authorisation. Payment is considered to be ef fected on t he date the Office receives the authorisation. The authorisation must be given by the holder of the current account and must state that their account can be debited for a specific fee. If the holder is neither the party nor their representative, the Office will check if there is such an authorisation. If there is not, the Office will invite the party concerned to submit the authorisation to debit the third party’s account before the time limit for payment expires, where the Office has reason to doubt the existence of such authorisation. The party requesting the payment of a fee by debiting a third party’s current account must submit the authorisation to the Office in order to allow the account to be debited.
A current account can be opened at the OHIM by sending a request to the general fax No: +34-965.131.344 or E-mail: fee.information@oami.europa.eu
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The minimum amount required to open a current account is EUR 3 000.
3 Time of Payment
Article 4 CTMFR Article 4 CDFR
Fees must be paid on or before the date on which they become due.
If a time limit is specified for a payment to be made, that payment must be made within that time limit.
Fees and charges for which the regulations do not specify a due date will be due on the date of receipt of the request for the service for which the fee or the charge is incurred, for example, a recordal application.
4 Date on which Payment is Deemed to be Made
Article 8(1), 8(3) CTMFR Article 7 CDFR Article 7 of Decision No Ex-96-1 of the President of the Office of 11/01/1996 concerning the conditions for opening current accounts at the Office as amended in 1996, 2003 and 2006 Decision No EX-13-2 of the President of the Office of 26/11/2013 concerning electronic communication with and by the Office: Article 7, Electronic payment of fees by credit card
The date on which a payment is deemed to be made will depend on t he method of payment.
4.1 Payment by bank transfer
When the payment is made by transfer or payment to an Office bank account, the date on which payment is deemed to have been made is the date on which the amount is credited to the Office bank account.
4.1.1 Late payment with or without surcharge
A payment that is received by the Office after the expiry of the time limit will be considered to have been made in due time if evidence is provided to the Office that the person who made the payment, (a) ) duly gave an order within the relevant period for payment, to a banking establishment to transfer the amount of the payment, and (b) paid a surcharge of ten per cent of the total amount due (up to a maximum amount of EUR 200). (Both conditions must be fulfilled in accordance with judgment of 12/05/2011, T-488/09, ‘Redtube I’, para. 38, and decision of 10/10/2006, R 203/2005-1 ‘Blue Cross’.)
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The same is not true for the late payment of the surcharge. If the surcharge is late, the entire payment is late and cannot be remedied by the payment of a ‘surcharge of the surcharge’ (decision of 07/09/2012, R 1774/2011-1 'LAGUIOLE', paras 12-15).
The surcharge will not be due if the person submits proof that the payment was initiated more than ten days before the expiry of the relevant time limit.
The Office may set a time limit for the person who made the payment after the expiry of the time limit to submit evidence that one of the above conditions was fulfilled.
For more information on the consequences of late payment in particular proceedings, see the relevant parts of the Guidelines. For example, Part B, Section 2, Formalities deals with the consequences of late payment of the application fee while Part C, Section 1, Procedural matters deals with the consequences of late payment of the opposition fee.
4.1.2 Evidence of payment and of the date of payment
Article 76 CTMR Article 8(4) CTMFR Article 63 CDR Article 7(4) CDFR
Any means of evidence may be submitted, such as:
• a bank transfer order (e.g. SWIFT order) containing stamps and date of receipt by the bank involved;
• an online payment order sent via the internet or a pr int out of an el ectronic transfer provided it contains information on the date of the transfer, on the bank it was sent to, and an indication like ‘transfer done’.
In addition, the following evidence may be submitted:
• acknowledgement of receipt of payment instructions by the bank; • letters from the bank where the payment was effected, certifying the day on
which the order was placed or the payment was made, indicating the proceeding for which it was made;
• statements from the party or their representative in writing, sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up.
Such additional evidence is only considered sufficient if supported by the initial evidence.
This list is not exhaustive.
If the evidence is not clear, the Office will send a request for further evidence.
If no ev idence is submitted, the proceeding for which the payment was made is deemed not to have been entered.
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In the event of insufficient proof, or if the payer fails to comply with the Office’s request for the missing information, the latter will consider that the time limit for payment has not been observed.
The Office may likewise, within the same time limit, request the person to pay the surcharge. In the event of non-payment of the surcharge, the deadline for payment will be considered not to have been observed.
The fee or charges or the part thereof that have been paid will be reimbursed since the payment is invalid.
Rule 96(2) CTMIR Article 81(2) CDIR
Language of the evidence: the documents may be filed in any official language of the EU. Where the language of the documents is not the language of the proceedings, the Office may require that a translation be supplied in any language of the Office.
4.2 Payment by debit or credit card
Payment by debit or credit card is deemed to be m ade on t he date on which the successful electronic filing it refers to is submitted via the internet.
4.3 Payment by current account
Decision No Ex-96-1 of the President of the Office of 11/01/1996 concerning the conditions for opening current accounts at the Office as amended in 1996, 2003 and 2006
If the payment is made through a current account held with the Office, Decision No EX-96-1 of the President, as amended, ensures that the date on which the payment is deemed to be made is fixed in order to be convenient for the party to the proceedings. For example, for the application fee of a CTM, as a rule, the fees will be debited from the current account on the last day of the one-month time limit given to pay the fee. However the applicant/representative may instruct the Office to debit their account upon receipt of the CTM application. Likewise, upon r enewal, the account holder may choose ‘Debit now’ or ‘Debit on ex piry’. If a party withdraws its action (opposition, cancellation request, appeal, renewal application) before the end of the time limit to make the payment, fees due to be debited on expiry of the time limit to pay the fee will not be debited from the current account and the action will be deemed not to have been filed.
Payment of Fees, Costs and Charges
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5 Refund of Fees
Article 7(2) and Articles 9 and 13 CTMFR Articles 84, 154 and 156 CTMR Articles 6(2) and 8(1) CDR Article 30(2) CDIR
The refund of fees is explicitly foreseen in the regulations. Refunds are given by means of bank transfers or through current accounts with OHIM even when the fees were paid by debit or credit card.
5.1 Refund of application fee
Rule 9(1) and (2) CTMIR Articles 10, 13 and 22 CDIR Article 44(6) CTMR
In the event of the withdrawal of a CTM application, fees are not refunded except if a declaration of withdrawal reaches the Office:
• where payment has been made by bank transfer, before the date on which the amount is actually entered in the bank account of the Office;
• where payment has been made by debit or credit card, on the same day as the application containing the debit or credit card instructions/details;
• where payment is made by current account, within the one-month time limit for paying the basic application fee or, where written instruction has been given to immediately debit the current account, before or at the latest on the same day on which that instruction was received.
Where the basic application fee has to be refunded, any additional class fees paid will be refunded as well.
The Office will only refund additional class fees on their own where they have been paid in excess of the classes indicated by the applicant in the CTM application and where such payment was not requested by the Office or where, upon examination of the classification, the Office concludes that additional classes have been included that were not required in order to cover the goods and services contained within the original application.
As regards designs, if there are deficiencies which affect the filing date, that is, the filing date is not granted due to those deficiencies, and that are not remedied by the time limit granted by the Office, the design(s) will not be deal t with as a Community design and any fees paid will be refunded. On the contrary, under no c ircumstances will the fees be refunded if the design applied for has been registered.
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5.2 Refund of the opposition fee
Rules 17(1), 18(5) and 19(1) CTMIR
If an opposition is deemed not entered (because it was filed after the three-month time limit) or if the opposition fee was not paid in full or was paid after the expiry of the opposition period, the Office must refund the fee, including the surcharge.
5.3 Refund of fees for international marks designating the EU
Decision No ADM-11-98 of the President of the Office related to regularisation of certain reimbursement of fees
See the Manual, Part M, International Marks, paragraph 3.13.
5.4 Refund of appeal fees
Provisions regarding the refund of appeal fees are dealt with under Rule 51 CTMIR and Article 35(3) and Article 37 CDIR.
5.5 Refund of renewal fees
Rule 30(6) and (7) CTMIR
Fees which are paid before the start of the first six-month time limit for renewal will not be taken into consideration and will be refunded.
Where the fees have been paid, but the registration is not renewed (i.e. where the fee has been paid only after the expiry of the additional time limit, or where the fee paid amounts to less than the basic fee and the fee for late payment/late submission of the request for renewal, or where certain other deficiencies have not been remedied), the fees will be refunded.
Where the owner has instructed the Office to renew the mark, and subsequently either totally or partially (in relation to some classes) withdraws their instruction to renew, the renewal feewill only be refunded:
• if, in the case of payment by bank transfer, the Office received the withdrawal before receiving the payment;
• if, in the case of payment by debit or credit card, the Office received the withdrawal before or on the same day as receiving the debit or credit card payment;
• if, in the case of payment by current account, if already debited, the Office received the withdrawal within the six-month time limit for renewal or, where written instruction was given to debit the current account immediately, before or at the latest on the same day that the Office received the instruction.
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For further information, see the Guidelines, Part E, Register Operations, Section 4, Renewal.
5.6 Refund of insignificant amounts
Article 10(1) CTMFR Article 9(1) CDFR Decision No EX-03-6 of the President of the Office of 20/01/2003 determining the insignificant amount of fees and charges
A fee will not be considered settled until it has been paid in full. If this is not the case, the amount already paid will be reimbursed after the expiry of the time limit allowed for payment, since in this case the fee no longer has any purpose.
However, insofar as it is possible, the Office may invite the person to complete payment within the time limit.
Where an ex cess sum is paid to cover a fee or a c harge, the excess will not be refunded if the amount is insignificant and the party concerned has not expressly requested a refund. Insignificant amounts are fixed at EUR 15 by Decision No EX-03-6 of the President of the Office of 20/01/2003.
6 Decisions on Costs
Article 85 CTMR Rule 94 CTMIR
6.1 Apportionment of costs
In inter partes proceedings, the Opposition Division, the Cancellation Division and the Boards of Appeal must take a dec ision on t he apportionment of costs. Those costs include in particular the costs of the professional representative, if any, and t he corresponding fees. For further information relating to the apportionment of costs in opposition proceedings, see the Guidelines, Part C, Opposition, Part 1: Procedural Matters. Where the decision contains obvious mistakes as regards the costs, the parties may ask for a corrigendum (Rule 53 CTMIR) or a revocation (Article 80 CTMR), depending on the circumstances (see Part A, Section 6, Revocation of decisions, cancellation of entries in the register and correction of errors).
6.2 Fixing of costs
The decision fixing the amount of costs includes the lump sum provided in Rule 94 CTMIR for professional representation and fees (see above) incurred by the winning party, independently of whether they have actually been incurred. The fixing of the costs may be reviewed in a specific proceeding pursuant to Article 85(6) CTMR.
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6.3. Enforcement of the decision on costs
Article 86 CTMR
The Office is not competent for enforcement procedures. These must be carried out by the competent national authorities.
6.3.1 Conditions
The winning party may enforce the decision on costs, provided that:
• the decision contains a decision fixing the costs in their favour; • the decision has become final; the party may give evidence that the decision
became final by submitting appropriate extracts from the Office’s databases or individual confirmation by the Office;
• the decision bears the order of the competent national authority.
6.3.2 National authority
Each Member State will designate a national authority for the purpose of appending the order for the enforcement of Office decisions fixing the costs. The Member State will make the designation known to the Office and to the Court of Justice (Article 86(2) CTMR).
The Office publishes such designations in its Official Journal.
References can be found for: Austria (OJ OHIM 4/2004, p. 559 and 561) Belgium (OJ OHIM 4/2007) Czech Republic (pending publication) Denmark (OJ OHIM 10/2002, p. 1883) Estonia (OJ OHIM 10/2009) France (OJ OHIM 5/2002, p. 886) Germany (OJ OHIM 6/2005, p. 853 and 855) Ireland (OJ OHIM 3/2007) The Netherlands (OJ OHIM 12/1999, p. 1517) Slovakia (OJOHIM 11/2004, p. 1273) the United Kingdom OJ OHIM 12/1998, p. 1381)
Certain other Member States have assigned jurisdiction to a national authority (e.g., in the case of Spain, to the General Technical Bureau of the Ministry of Justice as per Royal Decree 1523/1997) but have not yet notified OHIM or the CJEU.
6.3.3 Proceedings
a. The interested party must request the competent national authority to append the enforcement order to the decision. For the time being, the conditions on languages of the requests, translations of the relevant parts of the decision, fees and the need of a representative depend on the practice of the Member States and are not harmonised but are considered on a case-by-case basis.
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The competent authority will append the order to the decision without any other formality beyond the verification of the authenticity of the decision. As to wrong decisions on costs or fixing of costs, see paragraphs 6.1 and 6.2 above.
b. If the formalities have been completed, the party concerned may proceed to enforcement. Enforcement is governed by the rules of civil procedure in force in the territory where it is carried out. The enforcement may be suspended only by a decision of the Court of Justice of the European Union. However, the courts of the country concerned have jurisdiction over complaints that enforcement is being carried out in an irregular manner (Article 86(4) CTMR).
Professional Representation
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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 5
PROFESSIONAL REPRESENTATION
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Table of Contents
1 Introduction – Principle of Representation ............................................. 4
2 Who may Represent .................................................................................. 4 2.1 Database of representatives......................................................................5 2.2 Professional representation by legal practitioners..................................6
2.2.1 The term ‘legal practitioner’ ............................................................................ 6 2.2.2 Qualification .................................................................................................... 6 2.2.3 Nationality and place of business ................................................................... 6 2.2.4 Entitlement to act in trade mark and/or design matters.................................. 7
2.3 Professional representatives admitted and entered on the lists maintained by the Office............................................................................7 2.3.1 Entitlement under national law ....................................................................... 8 2.3.2 Nationality and place of business ................................................................... 9 2.3.3 Certificate........................................................................................................ 9 2.3.4 Exemptions ................................................................................................... 10 2.3.5 Procedure for entry on the list ...................................................................... 10 2.3.6 Amendment of the list of professional representatives ................................ 10
2.3.6.1 Deletion .....................................................................................................10 2.3.6.2 Suspension of the entry on the list ............................................................11
2.3.7 Reinstatement in the list of professional representatives............................. 12
2.4 Representation by an employee..............................................................12 2.4.1 Employees acting for their employer ............................................................ 13 2.4.2 Representation by employees of a l egal person with economic
connections................................................................................................... 13
2.5 Legal representation ................................................................................14
3 Appointment of a Professional Representative .................................... 14 3.1 Conditions under which appointment is mandatory..............................14
3.1.1 Domicile and place of business.................................................................... 15 3.1.2 The notion of ‘in the Community’ .................................................................. 15
3.2 Consequences of non-compliance when appointment is mandatory .. 15 3.2.1 During registration ........................................................................................ 16 3.2.2 During opposition.......................................................................................... 16 3.2.3 Cancellation .................................................................................................. 17
3.3 Appointment of a representative when not mandatory ......................... 17 3.4 Appointment of a representative.............................................................17
3.4.1 Explicit appointment ..................................................................................... 17 3.4.2 Implicit appointment...................................................................................... 18 3.4.3 Associations of representatives.................................................................... 18 3.4.4 ID numbers ................................................................................................... 19
4 Communication with Representatives................................................... 19
5. Authorisation ........................................................................................... 20
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5.1 Individual authorisations .........................................................................21 5.2 General authorisations.............................................................................21
5.2.1 Registration of General Authorisations......................................................... 21
5.3 Consequences where authorisation expressly requested by the Office is missing.......................................................................................21
6 Withdrawal of a Representative’s Appointment or Authorisation....... 22 6.1 Action taken by the person represented ................................................22 6.2 Withdrawal by the representative............................................................22
7 Death or Legal Incapacity of the Party Represented or Representative......................................................................................... 22 7.1 Death or legal incapacity of the party represented ................................22 7.2 Death or legal incapacity of the representative......................................23
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1 Introduction – Principle of Representation
Articles 92(1) and (2) and 93(1) CTMR, Rule 76 CTMIR, Article 77 CDR
Persons having their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Union are not required to be represented in any proceedings before the Office (see paragraph 3.1.1 below).
Natural persons not domiciled or legal persons which do not have their principal place of business or a real and effective industrial or commercial establishment in the European Union must be represented by a representative based within the European Union. This obligation exists in all proceedings before the Office, except for the act of filing an application for a CTM. See paragraph 3.2.1 below on the consequences of not appointing a representative, when representation is mandatory, once the CTM application has been filed.
Representation is not required for applications to renew CTMs or RCDs or for filing an application for inspection of files.
In principle, representatives do not need to file an authorisation to act before the Office unless the Office expressly requires it, or where, in inter partes proceedings, the other party expressly requests it. However, employees acting on behal f of natural or legal persons must file a signed authorisation for insertion in the files.
Where a representative has been appoi nted, the Office will communicate solely with that representative.
For further information on s pecific aspects of professional representation during proceedings before the Office in relation to international marks, please consult the Manual Part M.
The first part of this section (paragraph 2) defines the different types of representatives.
The second part of this section (paragraphs 3 to 6) deals with the appointment of representatives or failure to do so and the authorisation of representatives.
2 Who may Represent
Article 92(3) and Article 93(1)(a) and (b) CTMR, Rule 76 CTMIR, Article 77(3) and Article 78(1)(a) and (b) CDR
In all Member States, representation in legal proceedings is a regulated profession and may only be exercised under particular conditions. The terminology of Article 93 CTMR encompasses different categories of representative under the heading ‘Professional representatives’. In proceedings before the Office, the following categories of representatives are distinguished:
Legal practitioners (Article 93(1)(a) CTMR, Article 78(1)(a) CDR) are professional representatives who, depending on the national law, are always qualified to represent third parties before national offices. (See paragraph 2.2).
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Other professionals (Article 93(1)(b) CTMR, Article 78(1)(b) CDR) need t o comply with further conditions and need to be included on a specific list maintained by the Office for this purpose (the ‘OHIM prof. rep.’ list). Amongst these, two further groups need to be di stinguished: those who may represent only in Community Design (CD) proceedings (‘designs list’) and those who may represent in both CTM and CD proceedings (see paragraph 2.3). The Office refers to these other professionals collectively as ‘professional representatives’.
Several legal practitioners and professional representatives may be organised in entities called ‘associations of representatives’ (Rule 76(9) CTMIR) (see paragraph 3.4.3).
The final category of representatives are employees acting as representatives for the party (Article 92(3), first alternative, CTMR) (see paragraph 2.4.1) or employees of economically-linked legal persons (Article 92(3), second alternative, CTMR) (see paragraph 2.4.2)
Employees are to be distinguished from legal representatives under national law (see paragraph 2.5).
2.1 Database of representatives
All persons that identify themselves as representatives for or employees of individual parties to proceedings before the Office and that fulfill the requirements provided by the regulations are entered into the database of representatives and obtain an ID number. The database has a double function, providing all relevant contact details under the specific ID number for any type of representative as well as the public information on the OHIM prof. rep. list or designs list.
All representatives, including associations of representatives, must indicate the category of representative to which they belong, their name and their address in accordance with Rule 1 CTMIR.
A representative may have several IDs. For example, associations of representatives may have different IDs for different official addresses (to be distinguished from different correspondence addresses, which can be i dentified under a single ID; see the Guidelines Part E. Register Operations. Section 1. Changes to a registration). Individual representatives may have one I D as an em ployee representative and a different ID as a legal practitioner in their own right.
A legal practitioner cannot, in principle, appear in the database as an ‘OHIM professional representative’, since they do not need t o be adm itted by OHIM. The Office, therefore, almost invariably refuses requests from legal practitioners to be entered on the list of OHIM professional representatives. The only exception is where a professional representative on the list is also a l egal practitioner and such dual qualification is allowed under national law.
The database of professional representatives is available online. In the database representatives are identified as: association, employee, lawyer (legal practitioners), and professional representative. Internally, the latter category is divided into two subcategories: Type 1 consists of Design Attorneys exclusively entitled to represent in CD matters under Article 78 CDR and Type 2 of Trade Mark and Design Attorneys under Article 93 CTMR.
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2.2 Professional representation by legal practitioners
Article 93(1)(a) CTMR
A legal practitioner is a professional representative who is automatically and without any further formal recognition allowed to represent third parties before the Office provided that they meet the following three conditions: a) they must be qualified in one of the Member States;
b) they must have their place of business within the European Union, and
c) they must be entitled, within that State, to act as a representative in trade mark matters.
2.2.1 The term ‘legal practitioner’
Directive No 98/5/EC of 16/02/1998, OJ EC L 77, 14/03/1998, of the European Parliament and of the Council defines the term ‘lawyer’ (i.e. legal practitioner). The professional titles are identified in the column ‘Terminology for legal practitioner’ in Annex 1 of this section.
2.2.2 Qualification
The requirement to be qualified in one of the Member States means that the person must be admitted to the bar or be admitted to practice under one of the professional titles identified in Annex 1 pursuant to the relevant national rules. The Office will not verify this unless there are serious doubts in this regard.
2.2.3 Nationality and place of business
There is no r equirement as to nationality. Therefore, the legal practitioner may be a national of a state other than one of the Member States.
The place of business must be i n the European Union (for the definition of what constitutes the European Union, see paragraph 3.1.2, below). A P.O.Box address does not constitute a place of business. The place of business need not necessarily be the only place of business of the representative. Furthermore, the place of business may be in another Member State than the one in which the legal practitioner is admitted to the bar. However, legal practitioners who have their sole place of business outside of the European Union are not entitled to represent before the Office even when they are admitted to practise in one of the Member States.
Where an association of representatives, such as a law firm or a law office, has several places of business, it may perform acts of representation only under a pl ace of business within the European Union, and t he Office will communicate with the legal practitioner only at an address within the European Union.
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2.2.4 Entitlement to act in trade mark and/or design matters
The entitlement to act as a representative in trade mark and/or design matters in a state must include the entitlement to represent clients before the national industrial property office of that state. This condition applies to all Member States.
Legal practitioners referred to in Article 93(1)(a) CTMR who fulfill the conditions laid down in this article are automatically entitled as of right to represent their clients before the Office. This basically means that if a legal practitioner is entitled to act in trade mark and/or design matters before the central industrial property office of the Member State in which they are qualified, they will also be able to act before the OHIM. Legal practitioners are not entered on the list of professional representatives to which Article 93(2) CTMR refers, because the entitlement and t he special professional qualifications referred to in those provisions relate to persons belonging to categories of professional representatives specialised in industrial property or trade mark matters, whereas legal practitioners are by definition entitled to be representatives in all legal matters.
If a legal practitioner (lawyer) who has already been attributed an identification number as a lawyer, requests entry on the list, the number will be maintained but the status will be changed from ‘lawyer’ to ‘professional representative’. The only exception is where a professional representative on t he list is also a l egal practitioner and is allowed, under national law, to act in both contexts.
Annex 1 gives a detailed explanation of the specific rules for each country.
2.3 Professional representatives admitted and entered on the lists maintained by the Office
Article 93(1)(b) and Article 93(2) CTMR and Article 78(1)(b) CDR
The second group of persons entitled to represent third parties professionally before the Office are those persons whose names appear on one of the two lists of professional representatives maintained by the Office, the OHIM prof. rep. list and the designs list.
For this category of professional representatives, the entry on the OHIM prof. rep. list or designs list entitles them to represent third parties before the Office. A representative who is entered on the OHIM prof. rep. list referred to in Article 93(1)(b) is automatically entitled to represent third parties in design matters according to Article 78(1)(b) CDR and w ill not be ent ered on t he special list of professional representatives in design matters (‘designs list').
If a person on the list maintained under Article 93 CTMR requests entry on the designs list maintained for professional representatives authorised to act exclusively in Community Designs matters under Article 78(4) CDR, the request will be rejected.
The designs list is intended only for professional representatives who are entitled to represent clients before the Office in design matters but not trade mark matters.
Annex 2 gives a detailed explanation of the specific rules for each country.
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Entry on the lists is subject to a request being completed and signed individually by the person concerned, using the form established for this purpose by the Office at: http://oami.europa.eu/pdf/forms/prorep_form93_en.pdf
In order to be entered on the list, three requirements must be fulfilled:
a) the representative must be a national of one of the Member States;
b) they must have their place of business within the Community, and
c) they must be entitled under national law to represent third parties in trade mark matters before the national industrial property office. To that end they must provide a certificate attesting this from the national industrial property office of a Member State.
2.3.1 Entitlement under national law
The conditions for entry on the OHIM prof. rep. list and the designs list depend on the legal situation in the Member State concerned.
Article 93(2)(c) CTMR and Article 78(1)(b) CDR
In a large number of Member States, entitlement to represent third parties before the national office in trade mark matters is conditional upon possession of a s pecial professional qualification (Article 93(2)(c), first alternative, CTMR). Therefore, in order to be entitled to act as a representative, the person must have the required qualification. In other Member States, there is no s uch requirement for a s pecial qualification, that is to say, representation in trade mark matters is open to anybody. In this case, the person involved must have regularly represented third parties in trade mark or design matters before the national office concerned for at least five years (Article 93(2)(c), second alternative, CTMR). A sub-category of this category of Member States are those Member States which have a system officially recognising a professional qualification to represent third parties before the national office concerned although such recognition is not a p rerequisite for the exercise of professional representation. In this case, persons who are so recognised are not subject to the requirement of having regularly acted as a representative for at least five years.
First alternative - Special professional qualifications
Where, in the Member State concerned, entitlement is conditional upon having special professional qualifications, persons applying to be ent ered on t he list must have acquired this special professional qualification.
This special professional qualification (often by means of an examination) is required in Austria, Bulgaria, Croatia, the Czech Republic, Estonia, France, Germany, Hungary, Ireland, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and the United Kingdom.
However, if the person confirms that they work for two different associations of representatives or from two different addresses, then they can have two different numbers attributed. It is also possible to have two different numbers, one as a lawyer and one as an OHIM professional representative where such a dual qualification is allowed under national law (e.g., this is not compatible in Belgium and France).
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Second alternative - Five years’ experience
Where, in the Member State concerned, the entitlement is not conditional upon possession of special professional qualifications, persons applying to be entered on the list must have regularly acted as professional representatives for at least five years before a central industrial property office of a Member State.
It is possible for the President to grant an exemption from this requirement (see paragraph 2.3.4)
This is the case for Benelux, Denmark, Malta, Finland and Sweden.
Third alternative - Recognition by a Member State
Persons whose professional qualification to represent natural or legal persons in trade mark and/or design matters before the central industrial property office of one of the Member States is officially recognised in accordance with the regulations laid down by that State shall not be subject to the condition of having exercised the profession for at least five years.
This alternative has been applied in rare cases, in Luxembourg and the Netherlands.
2.3.2 Nationality and place of business
Article 93(2)(a) and (b) and Article 93(4) CTMR
The professional representative requesting to be entered on the list must be a national of a Member State and must have their place of business or employment in the European Union. Entitlement to act as a representative in other Member States, and professional experience obtained therein, can be taken into account only within the scope of Article 93(4) CTMR. It is possible for the President to grant an exemption from this requirement (see paragraph 2.3.4).
2.3.3 Certificate
Article 93(3) CTMR
Fulfilment of the abovementioned conditions laid down in Article 93(2) CTMR must be attested by a certificate provided by the national office concerned. Some national offices issue individual certificates while others provide the Office with block certificates. They send regularly up-dated lists of professional representatives entitled to represent clients before their office (see Communication No 1/95 of the President of the Office of 18/09/1995; OJ OHIM 1995, 16). Otherwise, the person concerned must accompany their request with an individual certificate (see http://oami.europa.eu/pdf/forms/prorep_form93_certificate_en.pdf).
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2.3.4 Exemptions
Article 93(4) CTMR
The President of the Office may, under special circumstances, grant exemption from the requirement to be a national of a Member State and from the requirement of having regularly represented in trade mark matters for at least five years, provided that the professional representative furnishes proof that they have acquired the required qualification in another way. This power is of a discretionary nature.
All the cases presented to the President of the Office so far have allowed him to grant an exemption from the nationality requirement. Exemptions from the requirement for five years’ experience are limited to where a qualification to act as a representative in trade mark matters acquired in another way has already been valid for the equivalent period.
For example, this comprises cases where the professional representative, before becoming an industrial property agent, was responsible for trade mark operations within a company without having personally acted before the national office concerned. The experience must have been acquired in a Member State.
2.3.5 Procedure for entry on the list
Article 93(3) and Article 88 CTMR
Entry on the list is confirmed by notification of a positive decision, which contains the indication of the ID number attributed to the professional representative. Entries on the OHIM prof. rep. list or designs list are published in the Official Journal of the Office.
If any of the requirements for entry on the list are not fulfilled, and after the applicant has been g iven the opportunity to reply to the Office’s deficiency notification to that effect, a rejection decision will be i ssued unless the applicant remedies the said deficiency. The party concerned may file an appeal against this decision. (Articles 58(1) and 133 CTMR).
Professional representatives may obtain an additional copy of the decision without the payment of a fee. The files relating to requests for entry on the OHIM prof. rep. list or designs list are not open to public inspection.
2.3.6 Amendment of the list of professional representatives
2.3.6.1 Deletion
First alternative, upon own request
Rule 78 (1) and (6) CTMIR
The entry of a professional representative on the OHIM prof. rep. list or designs list will be deleted at the request of that representative.
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The deletion will be entered in the files kept by the Office. The notification of deletion will be s ent to the representative and t he deletion will be publ ished in the Official Journal of the Office.
Second alternative, automatic deletion from the list of professional representatives
Rule 78(2) and (5) CTMIR, Article 64(2) CDR
The entry of a professional representative in the OHIM prof. rep. list or designs list will be deleted automatically
a) in the event of the death or legal incapacity of the professional representative;
b) where the professional representative is no longer a national of a Member State; however, the President of the Office may still grant an ex emption under Article 93(4)(b) CTMR;
c) where the professional representative no l onger has their place of business or employment in the EU; or
d) where the professional representative is no longer entitled to represent third parties before the central industrial property office of a Member State.
Where the professional representative changes from a D esign Attorney to a T rade mark Attorney they will be removed from the designs list and introduced in the OHIM prof. rep. list.
The Office may be informed of the above events in a number of ways. In case of doubt, the Office will, prior to deletion from the list, seek clarification from the national office concerned. It will also hear the professional representative, in particular where there is a possibility that they are entitled to remain on the list on another legal or factual basis.
The deletion will be entered in the files kept by the Office. The decision of the deletion will be not ified to the representative and t he deletion will be publ ished in the Official Journal of the Office. The party concerned can lodge an appeal against this decision. (See Decision 2009-1 of 16 J une 2009 of the Presidium of the Boards of Appeal regarding Instructions to Parties in Proceedings before the Boards of Appeal).
2.3.6.2 Suspension of the entry on the list
Rule 78(3) and (5) CTMIR
The entry of the professional representative on the OHIM prof. rep. list or designs list will be suspended of the Office’s own motion where their entitlement to represent natural or legal persons before the national industrial property office of a Member State has been suspended.
The national industrial property office of the Member State concerned must, where aware of any such events, promptly inform the Office thereof. Before taking a decision to suspend the entry, which will be open t o appeal, the Office will inform the representative and give them an opportunity to make comments. (See Decision 2009-1 of 16 J une 2009 o f the Presidium of the Boards of Appeal regarding Instructions to Parties in Proceedings before the Boards of Appeal).
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2.3.7 Reinstatement in the list of professional representatives
Rule 78(4) CTMIR
A person whose entry has been deleted or suspended will, upon request, be reinstated in the list of professional representatives if the conditions for deletion or suspension no longer exist.
A new request must be s ubmitted in accordance with the normal procedure for obtaining an entry on the list of professional representatives (see paragraph 2.2, above).
2.4 Representation by an employee
Article 92(3) CTMR
Natural or legal persons whose domicile, principal place of business or real and effective industrial or commercial establishment is in the Community may act before the Office through a natural person employed by them (‘employee’).
Employees of the abovementioned legal persons may also act on behalf of other legal persons who have economic connections with the first legal person (decision of 25/01/2012, R 0466/2011-4 'FEMME LIBRE', para. 10) (see paragraph 2.4.2). This applies even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the EU (see paragraph 2.4.2). Where a legal person from outside the EU is represented in this way, it is not required to appoint a professional representative within the meaning of Article 93(1) CTMR, as an exception to the rule that parties to the proceedings domiciled outside the EU are obliged to appoint a professional representative.
Rule 83(1)(h) CTMIR
On the forms made available by the Office pursuant to Rule 83(1) IR, the employee signing the application or request must indicate their name and tick the checkboxes relating to employees and authorisations, and fill in the field reserved for professional representatives on page 1 of the form or the sheet with details relating to professional representatives.
Rule 12(b) and Rule 84(2)(e) CTMIR
The name(s) of the employee(s) will be entered in the database and published under ‘representatives’ in the Community Trade Marks Bulletin.
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2.4.1 Employees acting for their employer
Article 92(3) CTMR, Rule 76(2) CTMIR
Where employees act for their employer, this is not a c ase of professional representation under Article 93(1) CTMR. As such, Rule 94(7)(d) is not applicable for the apportionment and fixing of costs in inter partes proceedings (decision of 03/02/2011, R 0898/2010-1 'MYBEAUTY', paras 11 and 12).
Natural or legal persons party to proceedings before the Office may act through their employees, subject only to the requirement that the employee must file an authorisation (decision of 25/01/2012, R 0466/2011-4 'FEMME LIBRE', para 9). No other requirements, for example that the employees be qualified to represent third parties before national offices, need be met.
The Office will not generally verify whether there actually is an employee relationship with the party to the proceedings, but may do so where it has reason to doubt that an employment relationship exists, such as when different addresses are indicated or when one and the same person is nominated as the employee of different legal persons.
2.4.2 Representation by employees of a l egal person with economic connections
Article 92(3) CTMR
Employees of legal persons may represent other legal persons provided that the two legal persons have economic connections with each other. Economic connections in this sense exist when there is economic dependence between the two legal persons, either in the sense that the party to the proceedings is dependent on the employer of the employee concerned, or vice versa. This economic dependence may exist
- either because the two legal persons are members of the same group, or - because of management control mechanisms.
In accordance with Article 2 of Commission Directive 80/723/EEC of 25/06/1980 (OJ EC L 195 p. 35) on the transparency of financial relations between Member States and public undertakings, and Article 10 of Commission Regulation No 240/96 of 31/01/1996 on the application of Article 85(3) of the Treaty to certain categories of technology transfer agreements (OJ EC L 31 p. 2), one enterprise has economic connections with another
- if it holds more than half of the capital of the other, or - if it holds more than half of the voting rights, or - if it may appoint more than half the members of the managing body, or - if it has the right to manage the affairs of the undertaking.
In accordance with the jurisprudence on Article 106 TFEU, there are also economic connections where both enterprises form an economic unit within which the subsidiary or branch does not have genuine autonomy in determining its marketing strategy.
On the other hand, the following are not sufficient to establish economic connections:
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- a connection by virtue of a trade mark licensing agreement, - a contractual relationship between two enterprises aimed at mutual
representation or legal assistance, - a mere supplier/client relationship, e.g., on the basis of an exclusive distribution
or franchising agreement.
Where an employee representative wishes to rely on economic connections, they must tick the relevant section in the official form, and indicate their name and the name and address of their employer. It is recommended to give an indication of the nature of the economic connection, unless evident from the documents submitted. The Office will not generally make any enquiries in this regard, unless it has reason to doubt that economic connections exist. In this case, the Office may ask for further explanation and, where necessary, documentary evidence.
2.5 Legal representation
Legal representation refers to the representation of natural or legal persons through other persons in accordance with national law. For example, the president of a company is the legal representative of that company.
Legal persons can act only through natural persons. Where that natural person is not simply an employee but a person who, under the law governing the legal person, is as of right authorised to represent the legal person in all legal undertakings, it is not necessary to refer to that person as an ‘employee’, and not necessary to file a written authorisation for them. It is sufficient in this case to indicate, underneath the signature(s), the name(s) of the individual person(s) signing and their status within the company, e.g., ‘president’, ‘chief executive officer’, ‘gérant’, ‘procuriste’, ‘Geschäftsführer’ or ‘Prokurist’.
Furthermore, there is no representation within the meaning of the CTMR when, in accordance with the applicable national law, a natural or legal person acts, in particular circumstances, through a legal representative, for example when minors are represented by their parents or by a c ustodian, or a c ompany is represented by a liquidator. In these cases, the person actually signing must demonstrate their capacity to sign, but is not required to provide an authorisation.
It should be bor ne in mind, however, that a legal person addressing the OHIM from outside the European Union must be r epresented by a pr ofessional representative within the European Union. This obligation exists for all proceedings before the Office, except for the act of filing a CTM (representation is not required for applications to renew CTMs or RCDs or for filing an application for inspection of files). See paragraph 3.2.1 below on t he consequences of not appointing a representative, when representation is mandatory, once the CTM application has been filed.
3 Appointment of a Professional Representative
3.1 Conditions under which appointment is mandatory
Subject to the exception outlined in paragraph 2.4 above, the appointment of a professional representative is mandatory for parties to proceedings before the Office which have neither domicile nor their principal place of business nor a r eal and
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effective industrial or commercial establishment in the European Union. This obligation exists for all proceedings before the Office, except for the filing of a CTM.
The same applies to international registrations designating the EU. For further information on this point, please consult the Manual Part M International Marks.
3.1.1 Domicile and place of business
The criterion for mandatory representation is the domicile or place of business or commercial establishment, not nationality. For example, a French national domiciled in Japan has to be represented, but an Australian national domiciled in Belgium does not have to be. The Office will determine this criterion with respect to the address indicated. Where the party to the proceeding indicates an address outside of the EU, but relies on a pl ace of business or establishment within the EU, it must give the appropriate indications and explanations, and any correspondence with that party will have to be m ade to the address in the EU. The criteria of the principal place of business or real and e ffective industrial or commercial establishment are not fulfilled where the party to the proceedings merely has a post office box or an address for service in the EU, nor where the applicant indicates the address of an agent with a place of business in the EU. A subsidiary is not a r eal and e ffective industrial or commercial establishment since it has its own legal personality (decision of 01/04/2014, R1969/2013-4 ‘DYNATRACE’, paras 17-19). Where the party to the proceedings indicates an address within the EU as its own address, the Office will not investigate the matter further unless exceptional reasons give rise to some doubt.
For legal persons, the domicile is determined in accordance with Article 65 TFEU. The actual seat or main domicile must be i n the EU. It i s not sufficient that the law governing the company is the law of a Member State.
3.1.2 The notion of ‘in the Community’
Article 92(2) CTMR
In applying Article 92(2) CTMR, the relevant territory is the territory of the European Union, which refers to all of the Member States to which the TFEU applies under Article 355. It should be borne in mind that members of the European Economic Area falling outside the EU (i.e., EFTA Member States) are not considered to fulfil this requirement (decision of 22/06/2011, R 2020/2010-4 'GRAND PRIX', paras 13-14).
3.2 Consequences of non-compliance when appointment is mandatory
Article 93(1) CTMR
Where a party to proceedings before the Office (applicant, proprietor, opponent, cancellation applicant) is in one of the situations described under paragraph 3.1, but has failed to appoint a professional representative within the meaning of Article 93(1) CTMR in the application or request, or where compliance with the representation requirement ceases to exist at a later stage (e.g., where the representative withdraws) the legal consequences depend on the nature of the proceedings concerned.
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3.2.1 During registration
Article 92(2) CTMR, Rule 9(3) CTMIR
Where representation is mandatory and the CTM applicant fails to designate a professional representative in the application form, the examiner will, at an early stage of the proceedings and, as a part of the formality examination pursuant to Rule 9(3) CTMIR, invite the applicant to appoint a representative within a two-month time limit. Where the applicant fails to comply with this communication, the CTM application will be refused.
The same course of action will be t aken where the appointment of a r epresentative ceases to exist later during the registration process, up until any time before actual registration, that is to say even within the period between publication of the CTM application and registration of the CTM.
Where a s pecific (‘secondary’) request is introduced on behal f of the CTM applicant during the registration process, e.g., a r equest for inspection of files, a request for registration of a licence or a r equest for restitutio in integrum, the appointment of a representative need not be repeated. The Office will in this case communicate with the representative on file, and the representative for the recordal applicant, where different.
3.2.2 During opposition
For CTM applicants, the preceding paragraphs apply. The procedure to remedy any deficiencies relating to representation will take place outside the opposition proceedings, which are terminated by the refusal of the CTM application where the applicant fails to comply with the communication.
Rule 15(2)(h)(ii) and 17(4) CTMIR
As regards the opponent, any initial deficiency relating to representation is a ground for inadmissibility of the opposition. Where the notice of opposition fails to contain the appointment of a representative, the examiner will, pursuant to Article 93(1) CTMR, invite the opponent to appoint a r epresentative within a t wo-month time limit. The opposition will be rejected as inadmissible unless this requirement is satisfied within the time limit set. (See paragraph 2.4.2.6 of the Guidelines, Part B, Section 1).
When a r epresentative resigns, the proceedings continue with the opponent themselves if they are from the EU. The other party is informed of the resignation of the representative. If the party whose representative has resigned is from outside the EU, a letter is sent informing the party concerned that under the terms of Article 92(2) CTMR, parties not having their domicile or their place of business or a r eal and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 93(1) CTMR in all proceedings other than in filing the application and t hat a new representative must be appointed within a t wo-month time limit.
Failure to do so will result in the opposition being rejected as inadmissible.
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When there is a change of representative during opposition proceedings, the Office will inform the other party of such a c hange by sending a c opy of the letter and o f the authorisation (if submitted).
3.2.3 Cancellation
Rule 37(c)(ii) and Rule 39(3) CTMIR
In cancellation proceedings, the above paragraph concerning opposition applies mutatis mutandis to the applicant for revocation or declaration of invalidity of a CTM
Where the proprietor of the CTM is no longer represented, the examiner will invite them to appoint a representative. If they do not do so, procedural statements made by them will not be t aken into account, and the request will be deal t with on t he basis of the evidence which the Office has before it. However, the CTM will not be cancelled simply because the CTM proprietor is no longer represented after registration.
3.3 Appointment of a representative when not mandatory
Where the party to the proceedings before the Office is not obliged to be represented, they may nevertheless, at any time, appoint a representative within the meaning of Article 92 or 93 CTMR. If they do so, paragraph 3.4 is applicable, as are the requirements concerning authorisation (see paragraph 5 below).
Where a representative has been appoi nted, the Office will communicate solely with that representative (see under paragraph 4 below).
3.4 Appointment of a representative
3.4.1 Explicit appointment
A representative is normally appointed in the official form of the Office initiating the procedure involved, e.g., the Application Form or the Opposition Form. More than one representative (up to a maximum of two) may be appointed by ticking the appropriate box ‘multiple representatives’ and giving the necessary details for each of the additional representatives.
A representative may also be appoi nted in a subsequent communication, whether signed by the party to the proceedings or by the representative (self-appointment). The appointment must be unequivocal.
A communication made in respect of a p articular procedure (e.g., registration or opposition), accompanied by an authorisation signed by the party to the proceedings, implies the appointment of the representative. This also applies where a General Authorisation is filed in that same way. For information about General Authorisations, see paragraph 5.2 below.
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3.4.2 Implicit appointment
Submissions, requests, etc. filed on behalf of the parties by a representative (hereafter: the ‘new’ representative) other than the one who appears in our register (hereafter: the ‘old’ representative) will initially be accepted.
The Office will then send a letter to the ‘new’ representative inviting them to confirm their appointment within one m onth. The letter will include a warning that if the representative does not reply within the time limit, the Office will assume that they have not been appointed as representative.
If the ‘new’ representative confirms their appointment, the submission will be taken into account and the Office will send further communications to the ‘new’ representative.
If the ‘new’ representative does not reply within one month or if they confirm that they are not the ‘new’ representative, the proceedings will go on with the ‘old’ representative. The submission and the answer from the ‘new’ representative will not be taken into account and will be forwarded to the ‘old’ representative for information purposes only.
In particular, when the submission leads to closure of the proceedings (withdrawals/limitations) the ‘new’ representative must confirm their appointment as representative so that the closure of proceedings or the limitation can be accepted. In any case, the proceedings will not be suspended.
3.4.3 Associations of representatives
Rule 76(9) CTMIR
An association of representatives (such as firms or partnerships of lawyers or professional representatives or both) may be appointed rather than the individual representatives working within that association.
This must be indicated accordingly, with only the name of the association of representatives to be i ndicated, and no t the names of the individual representatives working within that association. Experience has shown that in many instances equivocal indications are made. In such cases, the Office will, wherever possible, interpret such indications as the appointment and authorisation of an association of representatives, but if appropriate, advise the representative for future cases.
The appointment of an association of representatives automatically extends to any professional representative who, subsequent to the initial appointment, joins that association of representatives. Conversely, any representative who leaves the association of representatives automatically ceases to be authorised under that association. It is neither required nor recommended to provide information to the Office of the names of the representatives of whom the association consists. However, it is strongly recommended that any changes and information concerning representatives leaving the association be notified to the Office. The Office reserves the right to verify whether a given representative actually works within the association if this is justified under the circumstances of the case.
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Article 93(1) CTMR, Rule 79 CTMIR
The appointment of an association of representatives does not result in departure from the general rule that only professional representatives within the meaning of Article 93(1) CTMR may perform legal acts before the Office on behalf of third parties. Thus, any application, request or communication must be signed by a physical person possessing this qualification. The representative must indicate their name underneath the signature. They may also indicate their individual ID number, if given by the Office, although it is not necessary to obtain an individual ID number, as the Association ID number prevails.
3.4.4 ID numbers
On any form and in any communication sent to the Office, the representative’s address and telecommunication details may, and preferably should, be r eplaced by the ID number attributed by the Office, together with the representative’s name. Not only the OHIM professional representatives entered on the list maintained by the Office (see paragraph 2.2, above), but also legal practitioners and associations of representatives will have such ID numbers. Furthermore, where representatives or associations of representatives have several addresses, they will have a different ID number for each of those addresses.
The ID number can be found by consulting any of the files of the representative in question through our website: www.oami.europa.eu
4 Communication with Representatives
Rule 77 CTMIR
Any notification or other communication addressed by the Office to the duly authorised representative will have the same effect as if it had been addressed to the represented person, and any communication addressed to the Office by the duly authorised representative will have the same effect as if it originated from the represented person (decision of 24/11/2011, R 1729/2010-1 'WENDY’S OLD FASHIONED HAMBURGERS', para. 21).
Rule 1(1)(e), Rule 67(2) and Rule 76(8) CTMIR
A party to the proceedings before the Office may appoint several representatives, in which case each of the representatives may act either jointly or separately, unless the authorisation given to the Office provides otherwise. The Office, however, will as a matter of course communicate only with the first-named representative, except in the following cases:
- where the applicant indicates a di fferent address as the address for service in accordance with Rule 1(1)(e);
- where the additional representative is appointed for a s pecific secondary procedure (such as inspection of files or opposition), in which case the Office will proceed accordingly.
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Rule 75(1) CTMIR
Where there is more than one CTM applicant, opponent or any other party to proceedings before the Office, the representative appointed by the CTM applicant, etc., named first in the official form will be the common representative for all those persons. If the person named first has not appointed a professional representative and one of the other persons is obliged to, and does, appoint a professional representative, that representative will be considered to be the common representative for all those persons.
Where one of the co-owners is obliged to be represented before the Office but does not appoint a professional representative, the Office will communicate with the first person named in the official form who is based within the EU.
Articles 92 and 93 CTMR, Rule 67 CTMIR
Where a r epresentative within the meaning of Articles 92 or 93 CTMR has been appointed, the Office will communicate solely with that representative.
5. Authorisation
Articles 92(3) and 93(1) CTMR, Rule 76 CTMIR
In principle, professional representatives do not need t o file an au thorisation to act before the Office. However, any professional representative (legal practitioner or OHIM professional representative entered on the list, including an association of representatives) acting before the Office must file an authorisation for insertion in the files if the Office expressly requires this or, where there are several parties to the proceedings in which the representative acts before the Office, if the other party expressly asks for this.
In such cases, the Office will invite the representative to file the authorisation within a specific time limit (see The Manual Part A, Section 1, Means of communication, time limits). The letter will include a warning that if the representative does not reply within the time limit, the Office will assume that they have not been appoi nted as representative and proceedings will continue directly with the party represented. Where representation is mandatory, the party represented will be invited to appoint a new representative and paragraph 3.2, above, applies. Any procedural steps, other than the filing of the application, taken by the representative will be deemed not to have been taken if the party represented does not approve them within a period specified by the Office.
Employees acting on behalf of natural or legal persons must file a signed authorisation for insertion in the files.
An authorisation must be signed by the party to the proceedings. In the case of legal persons, it must be signed by a person who is entitled, under the applicable national law, to act on behalf of that person. The Office will not verify this.
Simple photocopies of the signed original may be submitted, including by telecopy. Original documents become part of the file and, therefore, cannot be returned to the person who submitted them.
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Authorisations may be submitted in the form of individual or general authorisations.
5.1 Individual authorisations
Rule 76(1) and Rule 83(1)(h) CTMIR
Individual authorisations may be made on the form established by the Office pursuant to Rule 83(1)(h) CTMIR. The procedure to which the authorisation relates must be indicated (e.g., ‘concerning CTM application number 12345’). The authorisation will then extend to all acts during the lifetime of the ensuing CTM registration. Several proceedings may be indicated.
Individual authorisations, whether submitted on the form made available by the Office or on the representative’s own form, may contain restrictions as to its scope.
5.2 General authorisations
Rule 76(1) and Rule 83(1)(h) CTMIR
A General Authorisation authorises the representative, the association of representatives or the employee to perform all acts in all proceedings before the Office, including, but not limited to, the filing and prosecution of CTM applications, the filing of oppositions and the filing of requests for a declaration of revocation or invalidity, as well as in all proceedings concerning registered Community designs and international marks. The authorisation should be made on the form made available by the Office, or a form with the same content. The authorisation must cover all proceedings before the Office and may not contain limitations. For example, where the text of the authorisation relates to the ‘filing and prosecution of CTM applications and defending them’, this is not acceptable because it does not cover the authority to file oppositions and requests for a declaration of revocation or invalidity. Where the authorisation contains such restrictions, it will be treated as an individual authorisation.
5.2.1 Registration of General Authorisations
Since April 2002, and in accordance with Communication No. 2/03 of the President of the Office of 10/02/2003, representatives will no longer be i ssued an authorisation number and w ill not be notified in any way regarding the internal handling of authorisations following receipt at the Office. However, termination of issuing such authorisation numbers does not affect the issuing of ID numbers to representatives entered in the database of representatives.
5.3 Consequences where authorisation expressly requested by the Office is missing
a) If representation is not mandatory, the proceedings will continue with the person represented.
b) If representation is mandatory, paragraph 3.2 above will apply.
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6 Withdrawal of a Representative’s Appointment or Authorisation
A withdrawal or change of representative may be brought about by an ac tion of the person represented, the previous representative or the new representative.
6.1 Action taken by the person represented
Rule 79 CTMIR
The person represented may at any time revoke, in a written and s igned communication to the Office, the appointment of a representative or the authorisation granted to them. Revocation of an authorisation implies revocation of the representative’s appointment.
Rule 76(6) CTMIR
Where the person represented declares the revocation to their representative and not to the Office, this will have no e ffect on any proceedings before the Office until the revocation is communicated to the Office. Where the party to the proceedings is obliged to be represented, paragraph 3.2 above will apply.
6.2 Withdrawal by the representative
The representative may at any time declare, by a signed communication to the Office, that they withdraw as a representative and l ay down their representation. If they declare that representation will as from that moment be taken over by another representative, the Office will record the change accordingly and correspond with the new representative. If the represented person is obliged to be represented, paragraph 3.2 above will apply.
7 Death or Legal Incapacity of the Party Represented or Representative
7.1 Death or legal incapacity of the party represented
Rule 76(7) CTMIR
In the event of the death or legal incapacity of the authorising party, the proceedings will continue with the representative, unless the authorisation contains provisions to the contrary.
Rule 73(1)(a) CTMIR
Depending on the proceedings, the representative will have to apply for registration of a transfer to the successor in title. However, the representative may apply for an interruption to the proceedings. For more information on the interruption of opposition proceedings following death or legal incapacity, see Part C, Section 1, Procedural Matters.
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For insolvency proceedings, once a liquidator has been nominated, they will assume the capacity to act on behalf of the bankrupt person and m ay, or in the case of mandatory representation, must appoint a new representative, or confirm the appointment of the existing representative.
For more information on Insolvency proceedings, see Part E, Register operations, Section 3, Chapter 5, Insolvency.
7.2 Death or legal incapacity of the representative
Rule 73(1)(c) and (3)(a) and (b) CTMIR
In the event of the death or legal incapacity of a representative, the proceedings before the Office will be interrupted. If the Office has not been informed of the appointment of a new representative within a period of three months after the interruption, the Office will
- where representation is not mandatory, inform the authorising party that the proceedings will now be resumed with them;
- where representation is mandatory, inform the authorising party that the legal consequences will apply, depending on the nature of the proceedings concerned (e.g. the application will be deem ed to have been withdrawn, or the opposition will be rejected) if a new representative is not appointed within two months from the date of notification of that communication.(decision of 28/09/2007, R 0048/2004-4 ‘PORTICO’, paras 13, 15)
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Annex 1
COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
Austria Rechtsanwalt Lawyers are fully entitled Patentanwalt Notaries may represent third parties before the Austrian central industrial property office because of their special professional qualification. Therefore, notaries may apply to be en tered on the list of professional representatives.
Belgium Avocat, Advocaat, Rechtsanwalt
Lawyers are fully entitled but a person cannot be a lawyer and a professional representative at the same time
In Dutch: Merkengemachtigde In French: Conseil en Marques / Conseils en propriété industrielle In German: Patentanwalt
Falls under the Benelux Treaty for Intellectual Property (Article 4.1). Any person having an address in Benelux territory may represent clients in IP matters. The entitlement is not conditional upon the need for special professional qualifications; persons applying to be entered on the list must have regularly acted as professional representatives for at least five years before a central industrial property office of a Member State.
Bulgaria Адвокат / Практикуващ Право Advokat / Praktikuvasht Pravo
Lawyers are not entitled Spetsialist po targovski marki / Spetsialist po dizayni Специалист по търговски марки / Специалист по дизайни
Special professional qualification is required. The Bulgarian Patent Office is able to certify that someone has acted as representative for five years.
Croatia Odvjetnik Lawyers are fully entitled Zastupnik Za Žigove Special professional qualification is required. The ‘authorised representative’ is the person who passed an exam for TM representatives before the Croatian Office
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COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
Czech Republic
Advokát Lawyers are fully entitled Patentový zástupce The Czech Republic has a two-part examination. Persons who have passed part B (trade marks and appellation of origin) may act as representatives in this field and hence be entered on the list of Article 93 CTMR. Patent attorneys, who have passed both parts of the examination, are entitled to represent applicants in all procedures before the Office.
Cyprus Δικηγόρος Dikigoros
Lawyers ONLY are entitled nihil Not relevant
Denmark Advokat Lawyers are fully entitled Varemaerkefuldmaegtig The entitlement is not conditional upon the need for special professional qualifications; persons applying to be entered on the list must have regularly acted as professional representatives for at least five years before a central industrial property office of a Member State.
Estonia Jurist, Advokaat Lawyers are not entitled unless dually qualified as IP agent
Patendivolinik The examination consists of two independent parts: on the one hand, patents and ut ility models and, on the other, trade marks, designs and geographical indications. Both types of representatives are ‘patendivolinik’. Persons who have only passed the patents part of the examination may not be ent ered on the list of Article 93 CTMR. Entry on t he list is open to persons who have passed the trade marks, industrial designs and geographical indications part.
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COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
Finland Asianajaja, Advokat Lawyers are fully entitled In Finnish: Tavaramerkkiasiamies In Swedish: Varumaerkesombud
The entitlement is not conditional upon the need for special professional qualifications; persons applying to be entered on the list must have regularly acted as professional representatives for at least five years before a central industrial property office of a Member State.
Professional Representation
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COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
France Avocat Legal practitioners are entitled but a person cannot be a l awyer and a professional representative at the same time
Conseil en Propriété Industrielle marques et modèles ou juriste.
INPI maintains two different lists: The Liste des Conseils en propriété industrielle and the Liste des Personnes qualifiées en P ropriété industrielle.
Only persons on t he ‘Liste des Conseils en propriété industrielle’ are entitled to represent third parties before the French Patent Office. Therefore only these persons are entitled to be on the OHIM Prof Rep List. These people appear on the block certificate.
A ‘Conseil en PI’ is the person who works for an Association (Cabinet). The ‘Personne qualifiée en PI’ is the person who works for a private company (e.g. in the trade marks department). They are automatically switched from one l ist to the other in France.
Since the ‘personne qualifiée’ acquired the same professional qualifications as the ‘Conseils’ they are entitled to apply for entry on our list, but they have to provide an i ndividual certificate signed by the Directeur des Affaires Juridiques et Internationales
Professional Representation
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COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
Germany Rechtsanwalt Lawyers are fully entitled Patentanwalt / Patentassessor
A ‘Patentassessor’ is the person who is employed under a contract for an employer; when they resign or their contract is not prolonged, they will be removed from the ‘Patentanwälte’ list in Germany) Since the ‘Patentassesor’ acquired the same qualifications as the ‘Patentanwälte’, they can continue to appear on the OHIM prof. rep. list
Greece Δικηγόρος - Dikigoros
ONLY Lawyers are entitled nihil Not relevant
Hungary Ügyvéd Legal advisers are not allowed to act as legal practitioners in procedures relating to industrial property matters. Therefore they may not be entered on the OHIM prof. rep. list.
Szabadalmi ügyvivő A special professional qualification is required to be a patent attorney. Patent attorneys are entitled to represent clients in all procedures before the Office.Notaries are not allowed to act as legal practitioners in procedures relating to industrial property matters. Therefore, they may apply to be entered on the OHIM prof.rep list.
Ireland Barrister, Solicitor Lawyers are fully entitled Trade Mark Agent The person has to be entered in the Register of TM Agents
Italy Avvocato Lawyers are fully entitled Consulenti abilitati / Consulenti in Proprietà Industriale
The person has to be entered in the Register of ‘Consulenti in Proprietà Industriale’ (‘Albo’) kept by the Bar (‘Consiglio dell’Ordine’) and the register communicated to the Italian Trade mark and P atent Office (‘UIBM’).
Professional Representation
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COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
Latvia Advokāts Lawyers can onl y represent clients whose permanent residence is in the European Union. Clients whose permanent residence is not in the EU have to be r epresented by a professional representative
Patentu pilnvarotais / Preču zīmju aģents / Profesionâls patentpilnvarotais
There is a trade mark examination. Clients whose permanent residence is not in the EU have to be r epresented by a pr ofessional representative. Notaries cannot act as representatives by right.
Lithuania Advokatas Lawyers can onl y represent clients whose permanent residence is in the European Union. Clients whose permanent residence is not in the EU have to be represented by a professional representative
Patentinis patikėtinis. Clients whose permanent residence is not in the EU have to be r epresented by a pr ofessional representative. Notaries cannot act as representatives by right.
Professional Representation
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COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
Luxembourg Avocat / Rechtsanwalt
Lawyers are fully entitled but a person cannot be a lawyer and a professional representative at the same time
In French: Conseil en Marques / Conseils en propriété industrielle In German: Patentanwalt
Falls under the Benelux Treaty for Intellectual Property (Article 4.1). Any person having an address in the Benelux territory may represent clients in IP matters. The entitlement is not conditional upon the need for special professional qualifications; persons applying to be entered on the list must have regularly acted as professional representatives for at least five years before a central industrial property office of a Member State.
Malta Avukat, Prokuratur Legali
Lawyers are fully entitled Anyone with a l egal background, including notaries, can act as a trade mark agent. No documentary proof of the qualification of legal practitioners acting as trade mark agents is required.
Poland Adwokat, radca prawny
Lawyers are not fully entitled. The lawyer can only represent in opposition and cancellation (invalidity) proceedings
Rzecznik Patentowy The representative has to be on the list of patent attorneys maintained by the Polish Patent Office. In Poland, a trade mark attorney must be appointed for any proceeding other than opposition and cancellation. Trade mark attorneys must have passed the appropriate examinations.
Portugal Avogado Lawyers are fully entitled Agente Oficial da P ropriedade Industrial
5 years’ experience or special qualifications A notary is not a legal practitioner and, therefore, may apply to be entered on the list
Professional Representation
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COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
Romania Avocat Lawyers are not fully entitled
Consilier în proprietate industrialǎ
In Romania, three lists are maintained. Representatives are required to have special qualifications or five years’ experience and be a member of a national chamber. A special professional qualification is required to be a professional representative.
Slovakia Advokát, Komerčný Pravnik
Lawyers are fully entitled Patentový zástupca In Slovakia, legal practitioners (‘advokáts’) listed in the Slovak BAR Association may act as representatives before the Industrial Property Office of the Slovak Republic.
Slovenia Odvetniki Lawyers are fully entitled Patentni zastopnik Legal practitioners who are not entered in the Slovenian register as patent/trade mark agents are not allowed to represent parties before the office. Notaries are not entitled by right.
Spain Abogado Lawyers are fully entitled Agente Oficial de la Propiedad Industrial
Entry on the list is conditional upon an examination
Sweden Advokat Lawyers are fully entitled Varumaerkesombud Entitlement is not conditional upon the need for special professional qualifications; persons applying to be entered on the list must have regularly acted as professional representatives for at least five years before a central industrial property office of a Member State.
Professional Representation
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COUNTRY National terminology for legal practitioner
Entitlements / Specific rules for representing clients in trade mark and design matters
National terminology for person with the special qualification – Patent/Trade mark/ Design Attorney (the OHIM PROF REP)
Entitlements / Specific rules for representing clients in trade mark and design matters
The Netherlands
Advocaat Lawyers are fully entitled but a person cannot be a lawyer and a professional representative at the same time
Merkengemachtigde Falls under the Benelux Treaty for Intellectual Property (Article 4.1). Any person having an address on Benelux territory can represent clients in IP matters. The entitlement is not conditional upon the need for special professional qualifications; persons applying to be entered on the list must have regularly acted as professional representatives for at least five years before a central industrial property office of a Member State.
United Kingdom
Advocate, Barrister, Solicitor
Lawyers are fully entitled Registered Trade Mark Agent Upon examination.
Professional Representation
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Annex 2
The list below shows the countries where a title exists for a person who is only entitled to represent in design matters. If the country is not on the list it means that the relevant entitlement also covers trade mark matters and so this person would not be on the special Design list.
COUNTRY Design Attorney Belgium Modellengemachtigde,
Conseil en modèles Czech Republic Patentový zástupce (the
same denomination as trade mark agent)
Denmark Varemaerkefuldmaegtig Estonia Patendivolinik Finland Tavaramerkkiasiamies,
Varumaerkesombud Ireland Registered Patent Agent Italy Consulente in brevetti Latvia Patentpilnvarotais
dizainparaugu lietas Luxembourg Conseil en Propriété
Industrielle Romania Consilier de pr oprietate
industriala Sweden Varumaerkesombud The Netherlands Modellengemachtigde United Kingdom Registered Patent Agent
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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 2
FORMALITIES
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Table of Contents
1 Introduction................................................................................................ 5
2 Filing of Applications ................................................................................ 5 2.1 Applicants...................................................................................................5 2.2 Where a Community trade mark application can be filed........................5
3 The Fees..................................................................................................... 5 3.1 Fees in general ...........................................................................................5 3.2 Basic fee deficiency ...................................................................................6 3.3 Class fee deficiency ...................................................................................6 3.4 Fee refunds upon withdrawal ....................................................................6
4 Filing Date .................................................................................................. 7 4.1 Filing date requirements............................................................................7 4.2 Applications filed electronically ................................................................7 4.3 Applications filed through national offices (intellectual property
office of a member state or Benelux Office) .............................................8 4.4 Applications received directly at OHIM.....................................................8 4.5 List of goods and services ........................................................................8
5 Signature .................................................................................................... 8
6 Languages / Translations ......................................................................... 8 6.1 First and second languages ......................................................................9 6.2 The correspondence language..................................................................9 6.3 Reference language for translations.......................................................10 6.4 Translation of multilingual elements.......................................................10 6.5 Restriction of goods and services ..........................................................11
7 Owner, Representative and Address for Correspondence.................. 12 7.1 Applicant...................................................................................................12 7.2 Representative..........................................................................................13 7.3 Change of name / address .......................................................................13 7.4 Transfer of ownership..............................................................................13
8 Kind of Mark............................................................................................. 13 8.1 Individual marks .......................................................................................14 8.2 Collective marks.......................................................................................14
8.2.1 Character of collective marks ....................................................................... 14
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8.2.2 Applicants for collective marks ..................................................................... 14 8.2.3 Documents to be filed................................................................................... 15 8.2.4 Examination of formalities relating to collective marks................................. 15
8.2.4.1 Regulations governing use not submitted..................................................15 8.2.4.2 Regulations governing the use submitted but with deficiencies.................15
8.2.5 Changes of the kind of mark (from collective to individual) .......................... 15
9 Mark Type................................................................................................. 16 9.1 Word marks...............................................................................................16 9.2 Figurative marks.......................................................................................17 9.3 Three-dimensional marks ........................................................................19 9.4 Sound marks.............................................................................................21
9.4.1 Electronic sound file ..................................................................................... 22 9.4.2 Musical notations.......................................................................................... 22 9.4.3 Sonographs .................................................................................................. 22
9.5 Colour per se ............................................................................................23 9.6 Holograms ................................................................................................25 9.7 Smell / Olfactory marks............................................................................25 9.8 Other marks ..............................................................................................26
9.8.1 Animated marks (movement) ....................................................................... 26 9.8.2 Position marks .............................................................................................. 27 9.8.3 Tracer marks................................................................................................. 29
9.9 Correction of the mark type.....................................................................30 9.9.1 General rules ................................................................................................ 30 9.9.2 Examples of recurring mark type deficiencies.............................................. 30
9.9.2.1 Word marks ...............................................................................................30 9.9.2.2 Figurative marks........................................................................................30
10 Series Marks ............................................................................................ 32 10.1 Multiple figurative representations .........................................................32
11 Indication of Colour................................................................................. 33
12 Mark Descriptions ................................................................................... 35
13 Disclaimer ................................................................................................ 40
14 (Convention) Priority............................................................................... 41 14.1 Principle of first filing...............................................................................43 14.2 Triple identity............................................................................................43
14.2.1 Identity of the marks ..................................................................................... 43 14.2.2 Identity of the goods and services ................................................................ 44 14.2.3 Identity of the owner ..................................................................................... 44
14.3 Priority requirements not satisfied .........................................................45 14.4 Priority documents not provided ............................................................45
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14.5 Language of previous application...........................................................45 14.6 Priority date check after changing of the filing date..............................45 14.7 Treatment of priority examination deficiencies......................................45 14.8 Examples of priority claims .....................................................................46
14.8.1 First filing ...................................................................................................... 46 14.8.2 Comparison of the marks ............................................................................. 46 14.8.3 Comparison of the goods and services ........................................................ 51 14.8.4 Priority claims based on series marks.......................................................... 52 14.8.5 Claiming priority for three-dimensional or ‘other’ marks............................... 52 14.8.6 Priority claims involving collective marks ..................................................... 53
15 Exhibition Priority.................................................................................... 53
16 Seniority ................................................................................................... 54 16.1 Harmonised seniority information ..........................................................54 16.2 Seniority examination ..............................................................................55 16.3 Identity of the marks ................................................................................56 16.4 Goods and services .................................................................................56 16.5 Treatment of seniority examination deficiencies ...................................56 16.6 Examples of seniority claims...................................................................57
17 Transformation ........................................................................................ 58
18 Amendments to the CTM application..................................................... 58 18.1 Amendments to the representation of the mark.....................................58
19 Conversion............................................................................................... 60
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1 Introduction
Every Community trade mark (CTM) application must abide by certain formality rules. The purpose of these Guidelines is to lay down Office practice in relation to those formality rules.
2 Filing of Applications
2.1 Applicants
Article 5 CTMR
Any natural or legal person, including authorities established under public law, may apply for a CTM, irrespective of their nationality or domicile.
2.2 Where a Community trade mark application can be filed
Article 25(1) CTMR Rule 82 CTMIR Decision EX-05-3 and EX-11-3 of the President of the Office
The applicant may file the application for a CTM directly at OHIM, at the central industrial property office of a Member State or at the Benelux Office.
CTM applications may be sent to OHIM electronically (through e-filing), by fax, by regular mail or private delivery services, or handed in personally at the reception desk of the Office.
3 The Fees
Articles 2, 7 and 8 CTMFR Article 27 CTMR Rule 4 and Rule 9(5) CTMIR Decision EX-96-1, amended in 1996, 2003 and 2006; Decision EX-11-3 of the President of the Office
3.1 Fees in general
For the application of a CTM the following fees are applicable:
Trade Mark Basic Fee up to 3 Classes Additional Class Fee
E-filed EUR 900 EUR 150
Paper filed EUR 1 050 EUR 150
Collective EUR 1 800 EUR 300
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The fee must be paid in Euros. Payments made in other currencies are invalid and will entail a l oss of rights. There is no reduction in the fee for filing a collective mark electronically.
For more information on fees, please refer to the Guidelines, Part A, General rules, Section 3, Payments of fees, costs and charges.
3.2 Basic fee deficiency
If the basic fee is not paid within one month from the date the Office received the application, the provisional filing date will be lost (see below under paragraph 4, Filing Date).
However, the filing date can be maintained if the applicant provides evidence that the payment was made to a bank or a transfer order was placed in a Member State and within the one-month time limit and the applicant pays a surcharge of ten per cent.
However, the surcharge need not be pa id if the applicant provides evidence that the payment was initiated more than ten days before expiry of the one-month time limit.
3.3 Class fee deficiency
Where the application covers more than three classes of goods and/or services, an additional class fee is payable for each additional class.
• Where the fees paid or the amount covered by the current account is less than the total sum of fees due for the classes selected in the application form, a deficiency letter will be issued setting a t wo-month time limit for payment. If payment is not received within the time limit specified, the application will be deemed to be w ithdrawn for the classes not covered by the fee paid. In the absence of other criteria to determine which classes are intended to be covered by the amount paid, the Office will take the classes in the order of the classification (starting with the lowest); the application will be deemed to have been withdrawn with regard to those classes for which the class fees have not been paid (in full).
• Where additional class fees become payable following the rectification of a classification deficiency, a de ficiency letter will be issued setting a two-month time limit for payment. If payment is not received within the time limit specified, the application will be deemed to have been withdrawn for those classes resulting from the re-classification not covered by the fees actually paid. In the absence of other criteria to determine which classes are intended to be covered by the amount paid, the Office will take the classes in the order of the classification (starting with the lowest); the application will be deemed to have been withdrawn with regard to those classes for which the class fees have not been paid (in full).
3.4 Fee refunds upon withdrawal
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On withdrawal of the CTM application the application fee and c lass fees will only be refunded in certain circumstances.
For more information on t his see the Guidelines, Part A, General rules, Section 3, Payment of fees, costs and charges.
4 Filing Date
Article 25(3), Articles 26 and 27 CTMR Rule 9(1) CTMIR
4.1 Filing date requirements
When an appl ication is received at the Office by any means other than e-filing, a provisional filing date is accorded and the Office immediately issues a receipt with this provisional filing date. After one month and p ayment of the fee, the filing date is accorded, provided the application fulfils the following requirements:
• the application is a request for the registration of a CTM; • the application contains information to identify the applicant; • the application contains a representation of the trade mark; • the application contains a list of goods/services.
If any of the above requirements are not met, a def iciency letter will be s ent out requesting the applicant to provide the missing item within a time limit of two months from notification of the deficiency letter. This time limit is not extendable. If the deficiency is not remedied, the CTM application will be ‘deemed not filed’ and all fees already paid will be r eimbursed and t he case closed. If the missing information is provided within the time limit set in the deficiency letter, the filing date will be changed to the date on which all mandatory information is complete, including the payment.
In some cases, applicants file more than one representation of the mark (in this context see below under paragraph 9.3, Three-dimensional marks and paragraph 10, Series marks). As the application does contain a representation of the mark, this is not to be considered a filing date deficiency. Rather, the applicant is required to indicate which of the representations filed should be used as the representation of the CTM application; this should be done via a deficiency letter, and the Office will set a two-month time limit for the applicant to specify the correct representation.
4.2 Applications filed electronically
For electronically filed CTM applications, the system issues an i mmediate automatic filing receipt that appears on the screen of the computer from which the application was sent. This receipt will contain the provisional filing date and should be saved or printed by the applicant as the Office will routinely not send an additional receipt.
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4.3 Applications filed through national offices (intellectual property office of a member state or Benelux Office)
If a CTM application is filed at the central industrial property Office of a Member State or at the Benelux Office for Intellectual Property, it will have the same effect as if it had been filed at OHIM on that same day, provided that it is received at OHIM within two months from the date it was filed at the National Office.
If the CTM application does not reach OHIM within two months, it will be deemed to have been filed on the date that it is received by OHIM.
4.4 Applications received directly at OHIM
If an applicant files a CTM application at OHIM, the filing date will be the reception date provided that the application is complete.
4.5 List of goods and services
Article 26 and Article 43(2) CTMR
The presence of a list of goods and services is a filing date requirement. A reference in the respective field on the CTM application form to a previous CTM may be used to indicate the list of goods and services.
The scope of protection defined by the original list of goods and services cannot be extended. If an appl icant wants to protect additional goods or services after filing, a new application must be filed. For further information on the classification of goods and services please refer to the Guidelines, Part B, Examination, Section 3, Classification.
5 Signature
Rules 80(3) and 82(3) CTMIR
Application forms lodged by fax, post, private delivery service or personal delivery must be signed either on the form itself or on an accompanying letter. The signature may be that of the applicant or the representative. If an application communicated to the Office is not signed, the Office shall invite the party concerned to correct the irregularity within a two-month time limit. If the deficiency is not remedied within the time limit, the application will be rejected.
If an appl ication is filed electronically, the indication of the name of the sender is deemed to be equivalent to a signature.
6 Languages / Translations
Articles 119, 120 and Article 43(2) CTMR
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Communication 4/04 of the President of the Office
A CTM application may be filed in any of the official languages of the European Union. A second language must be indicated on the application form, which must be one of the five languages of the Office, namely, English, French, German, Italian or Spanish.
A different language version of the application form from the language chosen as the first language may be used. However, the application form must be completed in that first language, including the list of goods and services, indication of colour(s), mark description and disclaimer, where appropriate.
6.1 First and second languages
All information on the application form must be in the first language, otherwise, a deficiency letter is sent. If the deficiency is not remedied within two months, the application will be rejected.
The second language serves as a potential language for opposition and cancellation proceedings. The second language must be di fferent from the language selected as the first language. Under no circumstances can the choice of first and second language be changed once filed.
When filing the application, the applicant may choose to provide a translation into the second language of the list of goods and services and where relevant any mark description, disclaimer and colour indication. Where such a translation is provided on its own motion, the applicant is responsible for ensuring that the translation corresponds to the first language and the Office will not check this. It is very important for the applicant to ensure the accuracy of the translation as, in particular the translation provided by the applicant may be used as basis for translation of the application into all the remaining languages of the European Union (see paragraph 6.3 Reference language for translations below).
6.2 The correspondence language
The correspondence language is the language used in correspondence between the Office and the applicant in examination proceedings until registration of the mark. If the language that the applicant has selected as the first language is one of the five languages of the Office, then this will be used as the correspondence language.
Only where the language selected as the first language is not one of the five languages of the Office can the applicant indicate that it wants the correspondence language to be the second language. This request can be made on the application form by ticking the respective box or can be requested later on, either by explicit request, or implied by sending a communication to the Office in the second language. However, such a request will be refused where the Office has already issued a deficiency or objection letter in the first language.
In cases where the applicant selects one of the five languages of the Office as the first language but then indicates that the second language is to be the correspondence
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language, the Office will change the correspondence language to the first language and inform the applicant.
Example
First language selected Second language selected Correspondence language selected
French English English
The correspondence language will be changed to French.
For more information on languages, please refer to the Guidelines, Part A, General rules, Section 4, Language of proceedings.
6.3 Reference language for translations
The list of goods and services are translated into the official languages of the EU. The source language for translations is defined the reference language. If the first language of the application is one of the five languages of the Office, it will always be the reference language.
If the first language of the application is not one of the five languages of the Office and the applicant has provided a t ranslation of the goods and services in the second language, the reference language will be t he second language. If no t ranslation is provided, the first language will be the reference language.
6.4 Translation of multilingual elements
Multilingual elements contain information on the application which needs, in principle, to be t ranslated. These elements are mark descriptions, colour indications and disclaimers.
If a translation of goods and services is supplied in the second language, the Office will check that all relevant multilingual elements (mark description, colour indication, disclaimer) have also been translated; However, the accuracy of the translation will not be checked by the Office. If the applicant has only provided a partial translation, a deficiency letter will be sent to the applicant, requesting that the additional translations are provided within two months from notification of the deficiency. If the applicant fails to provide the omitted translations, then all translations provided by the applicant will be disregarded and the Office will proceed as if no translation had been provided. Translations of simple colours will be added by the Office.
Before sending the application for translation, the Office will ensure that the information contained in the multilingual elements is correct and ac ceptable. The details can be seen below in the relevant paragraphs on colour indications, mark descriptions and disclaimers (paragraphs 11, 12 and 13 respectively). Furthermore, before requesting translation of an application, ‘non-translatable elements’ will be i dentified as such by putting them into inverted commas (“”), as agreed as a formatting rule with the Translation Centre for the Bodies of the European Union (CdT).
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The following elements are not to be translated and will be put into inverted commas:
1. mark descriptions: where the acceptable mark description refers to a verbal element of the mark, this element should not be translated:
Mark description Mark
CTM 10 003 317
The word “Rishta” in a stylised script on a diamond shaped background with a shadow effect and the words “Premium Quality” in a smaller font on a rectangular block positioned above the word “Rishta” and below the upper point of the diamond shape.
(For information on the examination of mark descriptions see paragraph 12 below.)
2. colour indications: where the colour indication includes a r eference to an international coding system (e.g. “Pantone”), this must be identified with inverted commas, as it should not be translated:
Colour indication Mark
CTM 10 171 452
Blå (“Pantone 3115”), Grå (“Cool Grey 9”).
(For information on the examination of colour indications see paragraph 11 below.)
3. disclaimers: if a word element of the mark is disclaimed, this word element should be identified with inverted commas, as it must not be translated:
Disclaimer Mark
“socks” DOODAH SOCKS
(For information on the examination of disclaimers see paragraph 13 below.)
6.5 Restriction of goods and services
Rule 95(a) CTMIR
If the first language of the CTM application is one of the five languages of the Office, a restriction in examination proceedings can only be accepted in the first language of the application.
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In cases where the first language of the application is not one of the five languages of the Office, a restriction in examination proceedings can only be accepted in the second language if the second language has been indicated as the correspondence language.
Example of acceptable restriction request
1st language NL 2nd language EN
A restriction sent to the Office in English would be accepted provided that English has been indicated as the correspondence language of the application.
Example of unacceptable restriction request
1st language IT 2nd language EN
A restriction sent to the Office in English would not be accepted, as in this case Italian is one of the five languages of the Office and is therefore the only language in which a restriction will be accepted.
7 Owner, Representative and Address for Correspondence
7.1 Applicant
Articles 3, 5 and 92 CTMR Rule 1(1)(b), Rules 26 and 76 CTMIR
Any natural or legal person, including authorities established under public law (e.g. a university) may be the proprietor of a CTM. Filings in the name of a legal entity in the process of foundation will be accepted.
In a CTM application the applicant must state its name, address, nationality and t he State in which it is domiciled or has its seat or establishment. The Office strongly recommends indicating the State of Incorporation for US companies, where applicable, in order to differentiate clearly between different owners in its database. Names of natural persons must be indicated by the person’s family name and given name(s). The names of legal entities shall be given in full and only its legal forms may be abbreviated in a customary manner, e.g. PLC, S.A. If the legal form is not specified or is incorrectly indicated, a deficiency letter requesting this information will be issued. If the missing or the correct legal form is not given, the application will be rejected.
The address should contain, if possible, the street, street number, city/town or state/county, postal code and country. The applicant should indicate only one address, but if there are several the first one listed will be recorded as the address for service, unless the applicant specifically designates a different one.
If the applicant has been given an ID number by the Office in a previous case, it will be sufficient for it to indicate that number together with the name of the applicant.
For more information on communication with the Office, please refer to the Guidelines, Part A, General rules, Section 1, Means of communication, time limits.
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7.2 Representative
If the applicant has its domicile, principal place of business or a r eal and ef fective industrial or commercial establishment in the EU, there is no obligation for it to be represented.
If the applicant does not have its domicile, principal place of business or a r eal and effective industrial or commercial establishment in the EU, regardless of its nationality, representation must be sought to act for it in all proceedings except the filing of the CTM application and the payment of the application fee. Every representative in the sense of Article 93 CTMR, who files an appl ication with OHIM is placed on t he Representative database and g iven an I D number. If the representative has been allocated an identification number by the OHIM, it is sufficient to indicate only that ID number and the name.
For more information on representation, please refer to the Guidelines, Part A, General rules, Section 5, Professional representation.
7.3 Change of name / address
The name and address of the applicant may be amended. A change in the name of the applicant is a c hange that does not affect the identity of the applicant, whereas a transfer is a change in the identity of the applicant.
7.4 Transfer of ownership
Article 17(5), Articles 24 and 87 CTMR Rule 31(8) and Rule 84(3)(g) CTMIR
CTM registrations and applications may be transferred from the previous proprietor/applicant to a new proprietor/applicant, primarily by way of assignment or legal succession. The transfer may be limited to some of the goods and/or services for which the mark is registered or applied for (partial transfer). Upon request, transfers of registered CTMs are entered in the Register and transfers of CTM applications are noted in the files.
For more information on t he recording of transfers of ownership see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer.
8 Kind of Mark
The CTM regulation distinguishes between two kinds of marks: individual and collective.
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8.1 Individual marks
Article 5 CTMR
Any natural or legal person, or person equivalent to these persons under the national law applicable to them, including authorities established under public law, may be the proprietor of a Community individual trade mark, irrespective of their nationality.
8.2 Collective marks
Article 66-68 CTMR Rules 3 and 43 CTMIR
8.2.1 Character of collective marks
A collective mark is a s pecific type of trade mark which indicates that the goods or services bearing that mark originate from members of an association, rather than just one trader. Collective does not mean that the mark belongs to several persons (co- applicants / co-owners) nor that it designates / covers more than one country.
Collective marks can be us ed to publicise products which are characteristic of a particular region, and may be used together with the individual mark of the producer of a given good. This allows members of an association to differentiate their own products from those of competitors.
For further information as to the substantive requirements of Community collective marks please see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal and Community Collective Marks.
8.2.2 Applicants for collective marks
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 or be sued, as well as legal persons governed by public law, may apply for a collective mark. There are essentially two criteria to be m et. Firstly, the applicant must be an association or a public body and secondly it must exist as an entity in itself.
For further information as to the substantive requirements of Community collective marks please see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal and Community Collective Marks.
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8.2.3 Documents to be filed
In addition to the information to be f iled when applying for an i ndividual trade mark, applications for a Community collective trade mark require regulations governing use of the mark. These regulations shall specify:
1. the name of the applicant and its office address; 2. the object of the association or the object for which the legal person governed by
public law is constituted; 3. the bodies authorised to represent the association or the said legal person; 4. the conditions for membership; 5. the persons authorised to use the mark; 6. where appropriate, the conditions governing use of the mark, including sanctions; 7. if the mark designates the geographical origin of goods or services, authorisation
for any person whose goods or services originate in the geographical area concerned to become a member of the association.
8.2.4 Examination of formalities relating to collective marks
8.2.4.1 Regulations governing use not submitted
If the regulations are not submitted with the application, a deficiency letter will be sent, setting a time limit of two months to provide them.
If the regulations are not submitted within this two-month time limit, the application will be rejected.
8.2.4.2 Regulations governing the use submitted but with deficiencies
If the regulations have been submitted but fail to specify the required information as listed at paragraph 8.2.3 above, a deficiency letter will be sent, setting a time limit of two months to provide the missing information.
If the deficiency is not remedied within this two-month time limit, the application will be rejected.
8.2.5 Changes of the kind of mark (from collective to individual)
If a natural person has applied for a collective mark by mistake, i.e. they have erroneously entered / selected the kind of mark as ‘collective’ on the application form, they may change the mark from collective to individual, since collective marks cannot be granted to natural persons. The fee surplus will also be refunded.
Where a l egal person claims to have applied for a c ollective mark by mistake, the amendment will also be allowed and the fee surplus refunded. However, the filing of a collective mark would not be seen as an obv ious error, and t he amendment request would be rejected, where there are indications that the applicant intended to apply for this kind of mark, for example:
• the mark representation includes the words ‘collective mark’;
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• or the name of the applicant states that it is an association; • or regulations of use of the collective mark are submitted.
9 Mark Type
Articles 4 and 26, Article 7(1)(a) CTMR Rule 3 CTMIR
The categorisation of marks serves a nu mber of functions. Firstly, it establishes the legal requirement for the mark to be represented; secondly, it can help the Office understand what the applicant is seeking to register; and finally, it facilitates research in the OHIM database.
A trade mark may consist of any sign capable of being represented graphically. It is a requirement of filing that there is a representation of the mark on the application form. The mark must be represented graphically and this representation cannot be replaced by a description of the mark. If the applicant fails to graphically represent its mark, a deficiency letter is sent and a filing date will not be r ecorded (see above under paragraph 4, Filing Date).
Where the application contains a representation of the mark without specifying the desired mark type, the Office will, based on the representation provided and any mark description, accord the appropriate mark type and i nform the applicant in writing, setting a two-month time limit for observations.
Where the applicant has selected a mark type which does not correspond to the mark representation, together with any mark description provided, the mark type will be corrected following the indications set out below under paragraph 9.9, Correction of the mark type.
The examples of mark types in these Guidelines are given only in the context of formalities issues without prejudice to the outcome of the examination proceedings.
Verbal elements consist of letters in the alphabet of any official EU language and keyboard signs. Where a mark, other than a w ord mark, contains any such verbal element that is visible from the representation, it must be included in the respective field. This allows for the mark to be searched within the database and also forms the basis of the language check for marks that is carried out in all official languages of the EU.
9.1 Word marks
A word mark is a typewritten mark with elements including letters (either lowercase or uppercase), words (either in lowercase or uppercase letters), numerals, keyboard signs or punctuation marks written across a single line. The Office accepts the alphabet from any official EU language as a word mark. A mark consisting of text written across more than one line will not be categorised as a word mark, as these marks are considered to be figurative.
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Examples of acceptable word marks
CTM 6 892 351 europadruck24
CTM 6 892 806 TS 840
CTM 6 907 539 4 you
CTM 2 221 497 ESSENTIALFLOSS
CTM 0 631 457 DON’T DREAM IT, DRIVE IT
CTM 1 587 450 ?WHAT IF!
CTM 8 355 521 ΕΙΔ ΕΛΛΗΝΙΚΟ ΙΝΣΤΙΤΟΥΤΟ ΔΙΑΤΡΟΦΗΣ (Greek)
CTM 8 296 832 Долината на тракийските царе (Cyrillic)
9.2 Figurative marks
A figurative mark is a mark consisting of:
• exclusively figurative elements, • a combination of verbal and figurative or otherwise graphical elements, • verbal elements in non-standard fonts, • verbal elements in colour, • verbal elements on more than one line, • letters from non-EU alphabets, • signs that cannot be reproduced by a keyboard, • combinations of the above.
Marks depicting a pattern are ‘figurative’ marks in accordance with Office practice.
Examples of figurative marks
CTM 1 414 366
Purely graphic element with no colour
CTM 9 685 256
Purely graphic element in colour
CTM 4 705 414
Combination of graphic element and text in standard font, no colour
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Examples of figurative marks
CTM 9 687 336
Combination of stylised font and figurative elements, no colour
CTM 4 731 725
Combination of stylised font and figurative elements in colour
CTM 9 696 543
Verbal element in stylised font with no colour
CTM 2 992 105
Verbal elements in stylised font with no colour
CTM 9 679 358
Verbal elements in different fonts in colour
CTM 9 368 457
Verbal elements only, over more than one line
CTM 9 355 918
Slogan in two different fonts, letters in different sizes, on more than one line, and in colour
CTM 9 681 917
Verbal element in non-EU alphabet (Chinese)
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Examples of figurative marks
CTM 0 015 602
CTM 7 190 929
9.3 Three-dimensional marks
Article 43(2) CTMR Rule 3(4) CTMIR Communication 2/98 of the President of the Office
A three-dimensional mark is a mark consisting of a three-dimensional shape (including containers, packaging and t he product itself). The photographic or graphic representation may consist of up to six perspectives of the same shape which must be submitted in one single JPEG file in the case of e-filed applications or on one single A4 sheet in the case of paper-filed applications. While up to six perspectives may be filed, a single view of the shape is sufficient where the shape to be protected can be ascertained from that single view.
In some cases, applicants file different perspectives of a three-dimensional object on several sheets of paper (e.g. one pag e per picture/perspective). In such a c ase, a deficiency should be raised, setting a two-month time limit for the applicant to indicate which of the representations filed should be us ed as the representation of the CTM application.
Applicants applying for registration of a three-dimensional mark must make a corresponding indication in the application. If no mark type is indicated and only one view of the object has been provided and the mark description – if any – does not say that the mark filed is three-dimensional, the Office will treat it as a figurative trade mark.
Example
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No mark type was selected for this sign and no mark description was provided. The Office will treat this as a figurative mark.
Examples of acceptable representations of three-dimensional marks
CTM 4 883 096
Four different drawings of the same object
CTM 4 787 693
Six photographs of the same object from different perspectives, with text
CTM 30 957
Two photographs in colour showing different perspectives of the same object
CTM 8 532 475
Six views in colour showing six different perspectives of the same object
Examples of marks that are not acceptable as three-dimensional marks
CTM 6 910 021
Five views, but not showing the same object
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Examples of marks that are not acceptable as three-dimensional marks
CTM 7 469 661
No text in addition to the representation of the mark is allowed (text below the photo of the bottle)
CTM 9 739 731
The first and third bottles show two different perspectives of the same bottle, both with a gr ey lid. The second bottle has a blue lid, and is therefore a di fferent object to those pictured in the first and third bottles. The fourth image is completely different, showing two bottle tops and a label. Of the four perspectives, only the first and third are views of the same object.
Where views of different objects on one A4 sheet or in one JPEG are filed for the application of a three-dimensional CTM, the deficiency cannot be remedied since the deletion of one or more of these different objects would mean a considerable alteration of the mark representation (see below under paragraph 18, Amendments to the CTM application). In this case, the application must be rejected as the representation does not show a single three-dimensional shape.
9.4 Sound marks
Article 4 CTMR; Decision EX-05-3 of the President of the Office
A sound mark must be represented graphically using the standard methods for reproducing sound graphically, in particular musical notation. A description of the sound in words is not sufficient (see decision of 27/09/2007, R 708/2006-4, ‘TARZAN YELL’). The lyrics of a song combined with musical notations and t he tempo is acceptable. A sonograph alone is not an ac ceptable graphical representation of a sound mark if it is not accompanied by an electronic file containing the sound. Where the sound applied for cannot be depicted in conventional musical notation, for example the roar of a l ion, a s onograph together with a s ound file is the only means of representing the mark.
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9.4.1 Electronic sound file
The attachment of an MP3 sound file is optional where musical notation has been provided and this is only possible in e-filings. The Office will not accept the filing of an electronic sound file on its own, since a graphical representation is required. Where an application does not include a graphic representation of the mark, a filing date deficiency will be raised (for more information on filing dates, see paragraph 4 of these Guidelines).
The sound file must be in MP3 format and its file size cannot exceed two megabytes. Office requirements do not allow the sound to stream or loop. Any other attachments or attachments that do not comply with these criteria shall be deemed not to have been filed.
9.4.2 Musical notations
The applicant may file musical notation alone. This will satisfy the requirement for graphically representing the mark. In these cases an el ectronic sound file may be attached, but this is not mandatory.
9.4.3 Sonographs
The applicant cannot file a s onograph alone (see decision of 27/09/2007, R 708/2006-4, ‘TARZAN YELL’). In these cases an electronic sound file is mandatory, since the Office and third parties cannot deduce the sound from the sonograph alone. Any colours used in a sonograph are not part of the mark, as the applicant is applying for a sound mark. Therefore, no colour indication is to be recorded and where such indication is provided, it will be deleted by the Office.
Examples of acceptable sound marks
CTM 8 116 337
Sonograph that was accompanied by a sound file
CTM 9 199 134
Sonograph that was accompanied by a sound file
CTM 1 637 859
Musical notation
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Examples of acceptable sound marks
CTM 6 596 258
Musical notation including musical directions
9.5 Colour per se
Colour per se means that trade mark protection is sought for one or several colours, regardless of any specific shape or configuration. What is protected is the shade of colour(s) and in the case of more than one colour, also protected is the ratio in which the colours are distributed. The representation of a colour per se mark must consist of a representation of the colour or colours without contour. Where there is more than one colour, the proportion of each colour must be specified in the mark description field. If this has not been done in the application, the Office will notify the deficiency, allowing two months for the information to be provided.
If the representation contains other matter, such as words or images it is not a colour per se mark but a figurative mark. For information on the Correction of the mark type, see paragraph 9.9 of these Guidelines.
When applying for a colour per se mark, the provision of a mere sample of the colour on its own is not sufficient; the colour or colours that are the subject of the mark must be described in words in the ‘Indication of Colour(s)’ field. Furthermore, internationally recognised colour codes are highly recommended to be provided in addition (see judgment of 06/05/2003, C-104/01, ‘Libertel’, paras 31-38). For more on indication of colour see paragraph 11 of these Guidelines.
An application for a colour per se mark may be represented by showing the colour or colours as they will be applied to something, an example of which can be seen below (see also judgment of 12/11/2013, T-245/12, ‘Dégradé de v erts’, paras 38 to 39). In such cases, a mark description is required in order to clarify the nature of the mark.
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Examples of acceptable colour per se marks
CTM 962 076
Colour indicated: Brown
CTM 31 336
Colour indicated: Lilac/violet
Description: Lilac/violet, single colour as shown in the representation. The values (specific coordinates in the colour space) for the present mark are: L => 53,58 /- 08; A => 15,78 /- 05; B => 31,04 /- 05. The mark can be located in Pantone’s Process Book between the shades with number E 176-4 and E 176-3.
CTM 8 298 499
Colours indicated: Green, Pantone 368 C, anthracite, Pantone 425 C, orange, Pantone 021 C
Description: The trade mark consists of the colours green: Pantone 368 C; anthracite: Pantone 425 C; orange: Pantone 021 C, as shown in the illustration; the colours are applied to a basic component of the exterior of vehicle service stations (petrol stations) in the ratio green 60%, anthracite 30% and orange 10%, creating the impression of a green and anthracite-coloured petrol station (green predominating) with small orange accents.
CTM 4 381 471
Colours indicated: Blue (Pantone 2747 C) and silver (Pantone 877 C)
Description: Protection is claimed for the colours blue (Pantone 2747 C) and silver (Pantone 877 C) juxtaposed as shown in the representation of the colour mark applied for. The ratio of the colours is approximately 50%-50%.
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Examples of acceptable colour per se marks
CTM 2 346 542
Colours indicated:
RAL 9018 NCS S 5040G5OY + RAL 9018 1: 4 NCS S 5040G5OY + RAL 9018 2: 3 NCS S 5040G50Y + RAL 9018 3: 2 NCS S 504050Y + RAL 9018 4: 1
NCS S 5040G50Y.
CTMA 9 869 256
Colours indicated: Blue RGB 46-122-184
Description The Mark consists of the colour blue, defined as RGB: 46-122-184, as applied to a seal in a pneumatic valve cap as depicted in the illustrative representation attached to the application.
9.6 Holograms
Holograms are particularly difficult to graphically represent as a paper representation does not allow the image to ‘change’ as it would naturally on holographic paper. However, with a clear mark description and enough views of the mark, a hologram can be graphically represented. Therefore, where a hologram is applied for more than one mark representation can be filed provided all different views are on one single A4 sheet in the case of paper filings or in one single JPEG file in the case of e-filing.
9.7 Smell / Olfactory marks
Smell or olfactory marks are not currently acceptable. This is because a graphical representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (see judgment of 12/12/2002, C-273/00, ‘Sieckmann’). As in the case of all the other types of marks, a mark description cannot replace the graphical representation. Although it may be graphic, a d escription of a s mell is neither clear, precise nor objective and therefore no filing date can be attributed because the mark cannot be graphically represented. Such cases (see also decision of 04/08/2003, R 120/2001-2 ‘The taste of artificial strawberry flavour’) will not be rejected but rather deemed not filed.
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9.8 Other marks
Other marks must contain an i ndication in the mark description of what is meant by ‘other’. ‘Other’ marks can be, for example, animated marks (movement marks), position marks or tracer marks (coloured stripes or threads applied to certain products).
9.8.1 Animated marks (movement)
The number of mark representations is practically unlimited as long as they are all on one single A4 sheet in the case of paper filings or in one single JPEG document in the case of e-filing. The mark representation must be accompanied by a mark description explaining the animation.
The representations together with the mark description must clearly explain the movement that is to be protected. Where the movement cannot be perceived (e.g. the representations are out of sequence), or the mark description does not match the sequence of representations, the Office will issue a deficiency allowing two months for the representations and / or description to be clarified. If the deficiency is not remedied within the time limit, the application will be rejected.
Where the representations include colour, the colour(s) used must be indicated in words.
Examples of acceptable animated marks (movement)
CTM 5 338 629
Description: The mark is an animated sequence with two flared segments that join in the upper right portion of the mark. During the animation sequence, a geometric object moves up adjacent to the first segment and then down adjacent to the second segment, while individual chords within each segment turn from dark to light. Stippling down in the mark is for shading only. The entire animated sequence has a duration of between one and two seconds.
Representations: Mark representation in black and white and shades of grey only; no colour indication.
CTM 9 742 974
Description: The mark comprises a moving image consisting of a toothbrush moving towards a tomato, pressing onto the tomato without breaking the skin, and moving away from the tomato.
Representations
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Example of an unacceptable animated mark (movement)
CTM 7 227 218
Description: The mark consists of a moving image mark, consisting of an animated sequence showing a series of rectangular video screens of varying sizes, with or without discernible images contained therein, that fly inward in whirlwind fashion, as if from the viewer’s location, toward the center of the viewer’s screen, where they coalesce to form a word.
Mark where the movement cannot be grasped from the images and the description does not change this.
9.8.2 Position marks
A position mark is a sign positioned on a particular part of a product in a constant size or particular proportion to the product. The sign must be represented graphically. As the applicant is aiming to protect the placement or ‘position’ of the mark, a mark description detailing its positioning is a formality requirement. The mark description must also contain an indication that it is a ‘position mark’ and, where a representation in colour is filed, the colour(s) used must be indicated in words.
Insofar as a pos ition mark covers some goods for which the positioning is clear and other goods for which the positioning would not be clear, a formality deficiency must be notified in respect of those goods on which the mark could not (clearly) be positioned in the way specified in the mark description. The applicant is given two-months to amend the application. If the application is not limited to such goods for which the positioning is clear, the application must be rejected for those goods and/or services for which the positioning is doubtful / impossible.
Examples of acceptable position marks
CTM 4 717 914
Colour indication: Red
Description: Red edging 2mm in width, running along the edge of the ankle opening and the lace- up section.
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Examples of acceptable position marks
CTM 3 799 574
Colour indication: Green (Pantone 347 C)
Description: Green ring positioned between the lamp base’s electric connectors.
CTM 9 045 907
Colours indicated: Red, black and grey
Description: The mark consists of the combination of the colours red, black and grey as applied to the exterior surfaces of a tractor, namely red as applied to the bonnet, roof and wheel arches, light and dark grey as applied to the bonnet in a horizontal stripe and black as applied to the front bonnet grill, chassis and vertical trim – as depicted in the illustrative representation attached to the application.
CTM 6 900 898
Description: Two Curves Crossed in One Point Design inserted in a Pocket; the mark consists of a decorative stitching made of Two Curves Crossed in One Point Design inserted in a Pocket; one of the curves is characterized by an arched form, drawn with a f ine stroke, while the second one is characterized by a sinusoidal form, drawn with a t hick stroke; the unevenly broken lines represent the perimeter of the pocket to which the applicant makes no claim and which serves only to indicate the position of the mark on the pocket.
CTM 8 586 489
Description: The trademark is a position mark. The mark consists of two parallel lines positioned on the outside surface of the upper part of a shoe. The first line runs from the middle of the sole edge of a shoe and slopes backwards towards the instep of a shoe. The second line runs parallel with the first line and continues in a curve backwards along the counter of a shoe to the heel of a shoe and ends at the sole edge of a shoe. The dotted line marks the position of the trademark and does not form part of the mark.
Position marks are not acceptable if the description shows that the position may vary – e.g.: ‘The mark consists of [description of the device] applied to the outside of the
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goods’. The position of the mark must be clearly defined and evident from the representation and description.
Examples of unacceptable position marks / descriptions
CTM 8 682 213
Description: Trademark protection is claimed for a stripe positioned on the casing of a s oil displacement hammer (so-called displacement mole), the stripe being shown in the isometric overall view of the soil displacement hammer as a black, circular band, which is set off from the other parts of the casing by means of the pattern visible in the additional view, which shows an enlarged (semi-circular) detail of this stripe in a side view of the soil displacement hammer, the pattern being formed by a m ultitude of circular grooves; the stripe is positioned on a s ection of the casing, which, viewed from the cone point of the soil displacement hammer, equals the second quarter of the total length of the soil displacement hammer; other forms visible in the representation and/or arrangements are not part of the mark.
Depiction together with description do not clearly define what the sign is and how it is to be placed on the goods:
(It is unclear from the representation from which perspective a semi-circular detail should be visible.)
CTM 8 316 184
Description: The trade mark is a positional trade mark whereby a n arrow copper ring made of copper is positioned and visible between two metal layers at the upper rim of the body of a pot or pan.
Sign which is defined in relation to specific goods – the sign is objectionable for other goods, if the positioning on those other goods is unclear.
(Sign objectionable for ‘cooking utensils’, as their shape can vary and the positioning would be unclear for anything but a pot or pan)
9.8.3 Tracer marks
Tracer marks are coloured lines or threads applied to certain products. These marks are popular in the textile industry. Other examples are coloured lines on hos es or cables. The mark description should indicate that the mark is a ‘tracer mark’ and any colours, must be indicated in words.
Examples of acceptable tracer marks
CTM 7 332 315
Description: The trade mark consists of a pi pe, tube or extruded profile with continuous thin black horizontal lines set at an equal distance apart on the exterior of the pipe, tube or extruded profile, between two parallel red lines running along the length of the pipe, tube or extruded profile.
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Examples of acceptable tracer marks
CTM 3 001 203
Colours indicated: Gold on a light background
Description: Golden band incorporated into a light-coloured functional band, in particular a lead band, for curtains, drapes, table covers and similar goods as an identifying marking.
9.9 Correction of the mark type
9.9.1 General rules
Where the indication of the mark type in the application is clearly wrong or where there is an ob vious contradiction between the mark type selected and t he representation, including any mark description, the Office will correct the mark type and inform the applicant, giving a two-month time limit for observations. If there is no response, the correction made by the Office is considered accepted by the applicant. If the applicant disagrees with the amendment, the Office will restore the original indication of type of mark, however, the application may then be rejected as the nature of the mark is not clear.
9.9.2 Examples of recurring mark type deficiencies
9.9.2.1 Word marks
Where the mark type chosen is ‘word’, but the mark is actually a ‘figurative’ mark such as in the examples in paragraph 9.2 above (representation in several lines, stylised fonts etc.), the Office will correct the mark type and update the figurative image in the system. The Office will send a letter to the applicant informing them of the amendment and setting a two-month time limit for observations. If the applicant does not reply within the time limit, the amendment will be deemed to have been accepted. If the applicant files observations objecting to the amendment, and the Office disagrees with the observations, the mark type will be c hanged back to ‘word’ mark, but the application will be rejected.
9.9.2.2 Figurative marks
If no m ark type has been i ndicated at all and the mark is clearly figurative corresponding to the examples given above, the type of mark is introduced by the Office and an explanatory letter sent.
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Sometimes ‘figurative’ marks in colour are erroneously filed as ‘colour marks’. Furthermore, the differences in typology of the miscellaneous marks within the EU Member States may lead to a mark type deficiency, in particular with regard to marks combining a word and a figurative element which are often incorrectly filed as ‘other’ rather than as ‘figurative’ marks. In such cases, the Office will correct the mark type to ‘figurative’ and inform the applicant, setting a two-month time limit for observations.
Example 1
A figurative mark applied for as a colour per se mark.
The Office will change the mark type from colour per se to figurative and send a letter confirming the amendment. If the applicant disagrees, they may submit observations. If the Office disagrees with the observations, it will restore the original indication of the mark type, but the application will then be rejected. If however there is no r esponse within the time limit, the change of mark type will be considered as accepted and the application will proceed.
Example 2
The following marks applied for as mark type ‘other’:
CTM 9 328 121
CTM 9 323 346
When the applicant has chosen as the type of mark ‘other’, instead of ticking ‘figurative’, and has added in the explanatory field of the ‘other mark’ terms like ‘text and logo’, ‘marque sémi-figurative’, ‘marca mixta’, ‘Wort-Bild-Marke’, or even ‘colour per se’ (because its mark contains elements in colour), but the mark applied for is clearly a figurative trade mark as defined above, the Office will change the mark type from other to figurative and send a l etter to the applicant informing them of the amendment and giving two months for observations to be filed. If the applicant does not reply within the two-month time limit, the change of mark type will be deemed to have been accepted and the application will proceed. If the applicant files observations objecting to the amendment, and the Office disagrees with the observations, the Office will restore the original indication of the mark type, but the application will then be rejected.
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Example 3
In some cases, marks may be filed as, for example, ‘figurative’, but the representation and/or mark description show that a three-dimensional mark is intended.
CTM application 10 318 897
Mark type chosen: Figurative
Description: The mark consists of a shape for a shelf for the goods. The ends of the shelf have an elliptical shape. The front edge of the shelf has a tapered shape. The portion of the mark shown in dotted lines is not part of the mark and serves only to show positioning or placement of the mark
In this case the mark description which refers to ‘a shape for a shelf’ is contradictory to the mark type ‘figurative’. Therefore, the applicant was requested to amend the mark type to ‘three-dimensional’ or to delete the mark description.
10 Series Marks
In all applications for no matter which kind or type of mark, protection can only be sought for one single trade mark. Unlike some national systems, the CTM Regulations do not allow for series marks. When different versions of a trade mark are required, a separate CTM application is required for each of those versions.
Example 1
A word mark filed as ‘BRIGITTE brigitte Brigitte’ will not be ‘interpreted’ as ‘the word “Brigitte”, written either in uppercase letters or in lowercase letters or in ‘normal’ script’; it will be seen as the word mark containing the female name ‘Brigitte’ three times.
Example 2
A word mark filed as ‘Linea Directa / Direct Line / Ligne Directe’ will not be ‘interpreted’ as ‘the term “direct line”, either in Spanish or in English or in French’; it will be seen as a word mark containing all three language versions in the same sequence as applied for. No deficiency letter will be sent and no changes to the mark will be accepted.
10.1 Multiple figurative representations
In an application submitted through e-filing the reproduction of the mark must be uploaded as a s ingle JPEG file. When the paper application form is used, the mark reproduction must be attached on a single A4 sheet.
The A4 sheet or JPEG file shall only contain the one r epresentation of the mark as applied for and no additional text whatsoever.
When a paper -filed application contains more than one A 4 sheet showing different marks, albeit very similar ones, the Office issues a def iciency letter requesting the
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applicant to choose one mark from among the different variations. If the applicant wants to protect the others as well, it will have to file a new application for each of the other marks it wishes to register. When there is no r esponse to the deficiency letter within the time limit set therein, the application will be rejected.
Where an appl ication, filed electronically or on paper, contains a JPEG file or an A4 sheet showing what might be seen as more than one m ark representation, the combination as a whole of all those variations, as they appear on that one page, will be deemed as the mark for which protection is sought. Changes to the mark representation are not allowed.
CTM 8 975 286
Since the JPEG document attached to the above application contained all of the above images on a single page, the entirety of variations of logos and colours and t exts is deemed one single trade mark.
11 Indication of Colour
Rule 3(5) and Rule 80 CTMIR
Word marks and sound marks cannot be i n colour, since it is the word(s) and the sound(s) that are protected even if a sonograph is represented in colour.
Figurative, three-dimensional, holograms and other marks can be applied for in colour or without colour.
When a mark is to be registered in colour, a coloured mark representation must be filed with the application and t he colours used indicated in words. An international colour code such as a Pantone number can be added to the colour indication, although it cannot replace the indication in words (e.g. green, blue, red).
Where a c oloured representation is supplied, the Office considers that the applicant implicitly claims colour and the application is therefore considered to be for registration of a mark in colour. It is not possible to change the application to a black and white mark (see decision of 25/08/2010, R 1270/2010-4, ‘Form von Prüfköpfen (3D MARKE)’). The only option for the applicant is to file a new application with a black and white representation.
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If in an application for a mark in colour the colours grey, black and white are used other than for contrasting or delimiting, these must also be claimed.
Expressions like ‘multicolour’, ‘of various colours’, ‘in any possible combination’ or ‘in any proportion’ are not acceptable (see decision of 25/08/2010, R 1270/2010-4, ‘Form von Prüfköpfen (3D MARKE)’).
Where the indication of colour(s) has been o mitted, the Office shall propose the colour(s) to the applicant, setting a two month time limit for response. If no reply is received before expiry of the time limit, the insertion of the colour(s) indicated by the Office will be deem ed to have been ac cepted. If the applicant disagrees with the insertion of the colours, the Office will delete the indication. However, in such cases if the applicant fails to indicate acceptable colours, the application will be rejected.
If it is not possible to establish the colour(s), the Office will request that the applicant provide the colours. If the applicant fails to submit an acceptable colour indication within the time limit of two months, the application will be rejected (Rules 9(4) and 3(5) CTMIR).
If the application contains a colour claim but no mark representation in colour has been received, there is a formal discrepancy between the black and white trade mark applied for and the colour(s) claimed. Any colour indication will be corrected by the Office (i.e. to black, white and/or grey) and the applicant will be informed.
The only exception to this rule is when the application is filed by fax, in which case the applicant can (on its own motion) send a representation in colour by post within one month of sending the application. This one-month time limit cannot be extended. When the representation in colour is received within this time limit, the original representation in black and white will be substituted by the new representation in colour. If the applicant does not send the representation of the mark in colour, the Office will not request it. If a colour representation is not submitted within the one-month time limit, any colour indication will be corrected to black, white and/or grey as appropriate and the applicant will be informed. The colour claim should not be deleted as the applicant has provided a colour claim, which has been corrected by the Office.
Black, grey and white are considered ‘colours’. The indication of the colours made by the applicant (‘black and white’ or ‘black, grey and white’ etc.) is subject to the same rules as with any other colour indications described above.
When the mark representation is filed by other means than fax and in black and white – including grey – it cannot be altered into a mark in colour even if the black and white mark was filed along with a c olour claim, a c olour indication and /or a description referring to colours.
It is to be noted that indications like ‘transparent’ or ‘without colour’, ‘colourless’ are not indications of colours and shall not be used. When a mark representation shows, for example, a ‘colourless’ object made of glass or a s imilar material before a c oloured background, the mark description is the appropriate place to explain that the object in question is colourless and shown in front of a coloured background which is not part of the mark. A transparent object can still be in colour like a standard wine bottle which is often green and us ually transparent. Where the applicant considers ‘transparent’ an important feature of its mark, it shall add a mark description to this end.
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Examples of colour indications
CTM 10 275 519
No colour indication
No colour indication required. However, black and white may be claimed by the applicant if these colours are to be considered a feature of the mark.
CTM 8 401 572
Colour indication: Cream, blue, orange, brown, red, pink, yellow, black, green, maroon
Black must be indicated as the application is for a mark in colour and black is not only used for contrasting and delimiting, i.e. black is also used for the tail, eye, nose and ears.
CTM 10 456 762
No colour indication
No colour indication required. However, black, white and gr ey may be claimed if these colours are to be considered a feature of the mark.
CTM 9 732 793
Colour indication: Red, orange, yellow, mint green, sea green, blue, purple, pink
Black should be claimed in this application as this is a mark in colour and black is used other than for contrasting and delimiting, i.e. for the letters.
CTM 10 336 493
Colour indication: Purple, blue, yellow, white, orange, red and black.
Black is claimed, however, the Office would accept the colour indication without black as it is used only for delimiting – around the words ‘POP- UP!’
In cases where the colour indication includes information that is not relevant to this field, but is relevant to another field of the application, the Office will move the text to the relevant field and i nform the applicant. Examples of this are where the colour indication includes a mark description, disclaimer or list of goods and services.
12 Mark Descriptions
Rule 3(3) CTMIR
A mark description is mandatory for CTM applications that have the mark type ‘other’. This is because an ex planation of what is meant by ‘other’ is required to clarify the
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scope of protection (define the nature of what is to be protected). If the description is missing or is unclear, a deficiency will be raised. If it is not remedied, the mark will be rejected.
Likewise, where colour per se combinations are applied for, the specification of the ratio of the colours must be provided.
Word marks cannot have a m ark description; if a des cription is included, it will be removed by the Office and the applicant will be informed. No time limit for observations will be set, as a mark description is not foreseen for word marks.
For the remaining mark types, a mark description is not mandatory, but it may be useful in assisting the Office to determine the nature of the mark or clarify the representation. If the description does not match the representation of the mark, the applicant will be asked to delete or amend it. The representation cannot be changed to match the mark description.
Where the CTM application is intended to be u sed as the basis for an international application, the applicant should consider including a mark description in its CTM application as a de scription is a formality requirement in some countries. For more details, see the Guidelines, Part M, International marks.
A mark description can only define what can be s een in the mark representation or heard in a s ound mark. It must not contain an i nterpretation of what is meant by a certain combination of letters or graphic elements or what the designer had in mind or an indication that the mark will only be us ed in certain Member States etc. Nor is it possible to state in a mark description that the mark can contain, for example, the colours blue and green or red and yellow; the description should state either blue/green or red/yellow – namely what can be seen in the coloured mark representation.
The representation of the mark together with a description, if any, must be sufficient for the Office to see and understand what is being sought to be registered.
Where a mark consists of or includes letters from a non-EU alphabet and the applicant provides a transliteration or translation together with a transliteration of the term in the mark description, this is acceptable.
When a mark description is deleted, the applicant will be informed. In no case can the mark representation be changed to match the mark description.
Where the mark description does not match the representation of the mark, the Office will raise a def iciency and the applicant will have two months to remedy. If the deficiency is not remedied:
1. the office will reject the CTM application for ‘colour per se combinations’ and ‘other’ marks which require a mark description to explain the scope of protection;
2. in all other cases, as the description is not mandatory, the Office will delete it.
Where the mark description includes information that is not a relevant description and the information is not relevant to any other field on the application form (e.g. the text interprets the meaning/symbolism of the mark or indicates in which Member States the
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mark will be used), the Office will delete the mark description and inform the applicant, without setting a time limit for observations.
Where the mark description includes information that is not a relevant description and the information is relevant to another field the Office will move the text to the relevant field and inform the applicant without setting a time limit for observations.
Examples of this are where colours are mentioned in the mark description field, they are valid as colour indication and will be keyed-in in the relevant field for the indication of colours.. Where goods and s ervices are mentioned in the mark description field rather than in the field for goods and services, the Office will delete them from the mark description and if the goods and services are not already covered in the specification, the Office will inform the applicant that it may add the goods and services.
This principle applies mutatis mutandis in all cases where necessary information on the mark is included in the wrong field of the application.
A mark description can be amended or added after the filing of the mark in order to more clearly describe the content of the mark, e.g. the movement depicted. However, such an amendment must not alter the nature of the mark substantially. An amendment of the description is not possible after registration.
Examples of accepted mark descriptions
CTM 1 915 248
Mark type: Figurative
Description: Trade mark consisting of the word ‘ALBALUNA’ written in special lettering, in which the letter ‘L’ is superimposed on the outline of a quarter moon.
CTM 2 023 950
Mark type: Figurative
Description: The trade mark consists of the word ‘AIA’ in red, stylised uppercase lettering, with the letter I surmounted by a red circle, inserted in a white oval delimited by a green rectangular frame, the whole outlined by a gold border.
CTM 8 837 502
Mark type: Other (Position)
Description: The position mark consists of a logo comprising a rectangle with rounded corners with an encircling light-coloured border and t he two light-coloured letters PP arranged next to one another on a dark background. The logo is displayed on a screen during the broadcasting of a television programme or other programme in the upper right-hand corner of the screen.
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Examples of accepted mark descriptions
CTM 6 453 104
Mark type: Three-dimensional
Description: Three-dimensional trade mark consisting of a bottle shape which is wider in the centre than at the base. This bottle has a distinctive spiral decoration made up of a golden dotted line, interrupted by golden butterflies; at the end of the line, at the front, there are two butterfly figures, one large and one small, in red with a black and gold double outline. Below these two figures is the word ‘BELLAGIO’ in uppercase white letters with a red outline; below this are the words ‘The Beautiful Life’ in gold. The bottle is closed with a burgundy red cap on which there are several aligned golden butterflies.
CTM 1 027 747
Mark type: Other (position)
Description: Red stripe placed longitudinally along an item of footwear partly covering the rear area of the sole and partly the rear area of the item of footwear. Any moulding seen on the sole or on the rear part of the item of footwear and/or production characteristics are not part of the trade mark.
CTM 7 332 315
Mark type: Other (tracer mark)
Description: The trade mark consists of a pi pe, tube or extruded profile with continuous thin black horizontal lines set at an equal distance apart on the exterior of the pipe, tube or extruded profile, between two parallel red lines running along the length of the pipe, tube or extruded profile.
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Examples of accepted mark descriptions
CTM 2 818 334
Mark type: Other (movement)
Description: Two hands form a ‘T’, in which, from the position of the viewer, the right hand, stretched out flat with fingertips pointing upwards (so that only the narrow edge of the hand is visible) moves from the upper left of the image to the centre, while the left hand, also stretched out flat with fingertips pointing upwards and viewed from the side, moves from the upper right of the image to the centre; both hands then meet in the centre of the image with the upwards-pointing fingertips of the right hand touching the surface of the left hand roughly in the centre; the viewer therefore sees a side view of the descending left hand coming to rest on t he fingertips of the ascending right hand; as a r esult of this movement, the viewer is able at this point to recognise the letter ‘T’.
CTM 5 090 055
Mark type: Sound
Description: The marks consists of the yell of the fictional character TARZAN, the yell consisting of five distinct phases, namely sustain, followed by ululation, followed by sustain, but at a higher frequency, followed by ululation, followed by sustain at the starting frequency, and being represented by the representations set out below, the upper representation being a plot, over the time of the yell, of the normalised envelope of the air pressure waveform and the lower representation being a normalised spectrogram of the yell consisting of a three dimensional depiction of the frequency content (colours as shown) versus the frequency (vertical axis) over the time of the yell (horizontal axis) the mark also being reproduced in the attached electronic file containing the sound.
Mark type: Figurative
Description: The mark consists of three blue shapes and three red shapes, facing in opposite directions.
Example of a mark description which would not be accepted
Mark type: Figurative
Mark Description: The mark consists of two hands grasping the air.
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13 Disclaimer
Article 37 CTMR Rule 1(3) CTMIR
A disclaimer is a statement by the applicant that they disclaim any exclusive right to an element of the trade mark representation which is not distinctive.
An applicant cannot disclaim use of its trade mark on a particular good or service in its specification. If the applicant wishes to reduce the scope of the goods and services that the CTM application has protection for, it will need to request a restriction to the list of the goods and services.
Typically, elements which designate the kind, quality, quantity, value or geographical origin of goods or services need not be disclaimed. Similarly, ordinary words which would be common to many marks (the, of, etc.) or other non-distinctive matter (borders, commonplace shapes of containers, etc.) do not need to be disclaimed. Where a trade mark consists of a combination of elements each of which in itself is clearly not distinctive, there is no need for a disclaimer of the separate elements. For example, if a periodical had as its trade mark ‘Alicante Local and International News’, the individual elements within it would not need to be disclaimed.
This is not a mandatory field on t he application form. The Office inserts the wording requested as a disclaimer whereas no additional requested information will be added in this field.
Example of an acceptable disclaimer
Mark
DOODAH SOCKS
Goods
Class 25
Disclaimer
‘socks’
Examples of unacceptable disclaimers
Mark
DOODAH SOCKS
Goods and services
Classes 1 to 45
Disclaimer
The mark will not be used in Germany
Mark
DOODAH SOCKS
Goods
Socks in Class 25.
Disclaimer
The applicant disclaims any use of the mark for men’s socks
This is not a disclaimer, but a limitation of the goods, and the text will be deleted.
Mark
Gelamondo
Goods in Class 30: Ice cream; ice-cream products; ice cream drinks; ice-cream cakes; ice
cream mixes; instant ice cream mixes; ice; binding agents for ice.
Disclaimer
Softeis (Soft ice-cream)
This is not a disclaimer and the text will be deleted.
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Disclaimers may be added to the trade mark application at a later stage, if appropriate (e.g. if the application is being opposed and the parties agree on a disclaimer to reach a friendly settlement).
More on di sclaimers can be found in the Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, Chapter 4, Distinctiveness.
If the disclaimer is objectionable on formality grounds, a deficiency letter will be sent to the applicant to remedy the deficiency. If the deficiency is not remedied, the disclaimer will be deleted.
14 (Convention) Priority
Articles 29 and 31 CTMR Rules 6 and 9 CTMIR Decision EX-03-5 and Decision EX-05-05 of the President of the Office
The right of priority shall have the effect that the date of priority shall count as the date of filing of the Community trade mark application for the purposes of establishing which rights take precedence.
The principles of priority were first laid down in the Paris Convention for the Protection of Industrial Property of March 20, 1883, several times revised and l ast amended in 1979 and ratified by many Contracting States. Article 4 of this Convention – with regard to trade marks – corresponds to Article 29 CTMR.
The ‘convention priority’ right is a right limited in time, which is triggered by the first filing of a trade mark. It may be claimed during the six months following the first filing, provided the country of first filing was a party to the Paris Convention or to the WTO, or a country with a r eciprocity agreement (cf. Rule 101 CTMIR – reciprocity findings by the Commission).
The below mentioned States and other entities are not members of any of the relevant conventions nor do t hey benefit from reciprocity findings. Therefore, priority claims based on filings in these countries will be rejected.
Independent States (not member of PC, WTO or reciprocity agreement):
• Afghanistan (AF) • Aruba (AW) • Cape Verde (CV) • Cook Islands (CK) • Eritrea (ER) • Ethiopia (ET) • Kiribati (KI) • Marshall Islands (MH) • Micronesia (Federated States of) (FM) • Nauru (NR) • Palau (PW) • Somalia (SO)
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• Tuvalu (TV). •
Other entities (not member of PC, WTO or reciprocity agreement):
• Abkhazia • American Samoa (AS) • Anguilla (AI) • Bermuda (BM) • Cayman Islands (KY) • Falkland Islands (FK) • Guernsey (Channel Island) (GC) • Isle of Man (IM) • Jersey (Channel Island) (JE) • Montserrat (MS) • Pitcairn Island (PN) • Saint Helena (SH) • Somalia (SO) • Turks and Caicos Islands (TC) • (British) Virgin Islands (VG).
A priority claim of a previous CTM is acceptable if that CTM was granted a filing date. A priority claim of an i nternational registration is not acceptable. This is because the principle of first filing applies (Article 29(4) CTMR – see paragraph 14.1 below) and the priority claim can only be based on the relevant basic mark.
The applicant may claim the priority of one or more previous trade mark applications, namely a nat ional (or Benelux) application filed in or for a S tate party to the Paris Convention, a Member of the TRIPS Agreement, a State for which the Commission has confirmed reciprocity, or a CTM application. See paragraph 14.1 ‘Principle of first filing’ for information on applications which claim priority of more than one earlier application.
Any filing that is equivalent to a regular national filing under the domestic law applicable to it will be recognised as giving rise to the right of priority. A regular national filing means any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever the subsequent fate of the application may be.
The priority right claimed must always be an ear lier application and c annot bear the same date as the CTM application.
Priority claims may be filed either in the CTM application or subsequent to the filing of the application, in which case the applicant must submit the declaration of priority, indicating the date on which and the country in which the previous application was made, within a time limit of two months from the filing date.
The claim may be implicit so the submission of the priority documents (within the time limit of two months) will be construed as a declaration of priority. Simple filing receipts containing the country and the date of the earlier application are accepted.
If the mark concerned is a l ogo in colour, the submission of colour photocopies concerning the earlier filing is mandatory.
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Within three months of the receipt of the declaration of priority at OHIM, the applicant must provide the Office with the file number(s) of the previous application(s).
Priority will be granted if the following requirements are met:
1. the mark in the earlier application and the CTM applied for are the same; 2. the goods and services are identical or are contained within those of the earlier
application (it is sufficient that one good or service is the same); 3. the proprietor is the same; 4. the filing date of the CTM is within 6 m onths of the filing date of the earlier
application; 5. the priority must be claimed with the application or within 2 months from the filing
date.
It is possible to claim both priority and seniority based on the same prior application/registration if the first filing was registered in due time.
14.1 Principle of first filing
The previous application must be a first filing. The Office will therefore check on the certificate that there was no priority claim made on the prior application and no seniority claim made for the CTM application for a m ark with a f iling date prior to that of the priority mark. The Office will equally check that the CTM application is filed no later than six months from the date of filing of the earlier application.
Where priority of more than one ear lier application is claimed, the goods and / or services covered by each of those applications must be different in order for the principle of first filing to be met. For examples please see paragraph 14.8.1 below.
14.2 Triple identity
The Office will check that the CTM application and the priority documents contain the same mark, refer to the same applicant and have at least one good or service in common.
14.2.1 Identity of the marks
The Office and a number of trade mark offices of the European Union have agreed on a common practice under the European Trade Mark and Design Network concerning the identity of trade marks filed in black and white and / or greyscale as compared to those filed in colour. The offices believe that the Common Practice Note is a reflection of the current case law that a trade mark filed in black and white and / or greyscale is, for the purposes of assessing priority, not identical to the same mark filed in colour unless the differences in colour or in the shades of the grey are so insignificant that they could go unnoticed by the average consumer (see judgment of 19/01/2012, T-0103/11, ‘justing, para. 24, judgment of 20/02/2013, T-378/11, ‘Medinet’ and judgment of 09/04/2014, T-623/11, ‘Sobieraj (MILANÓWEK CREAM FUDGE)’). An insignificant difference between two marks is one that a reasonably observant consumer will perceive only upon examination of the marks side by side.
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The principle described above applies to all cases where marks are compared for the purpose of priority claims. In relation to word marks, the mark applied for will in most cases be deemed to be the same as the earlier mark where there is a difference only in respect of type face or where one mark is in uppercase letters and the other in lowercase. Furthermore, a di fference in punctuation or the addition of a s pace separating two words will not usually prevent the marks from having identity (see decision of 09/10/2012, R 797/2012-2, ‘Water Jel’ and decision of 15/07/1998, R10/1998-2 ‘THINKPAD’).
The Office will also check the mark type of the earlier application, because a different mark type may mean that the CTM application is different from the earlier mark. For example, a figurative mark is not the same as a three-dimensional mark, or a position mark. However, a word mark can be considered to be the same as a figurative mark if standard type is used in the figurative mark (see the examples below at paragraph 14.8.2).
In assessing the marks, the Office will also consider any colour indication in the earlier application.
14.2.2 Identity of the goods and services
The Office will check that there is at least one corresponding good or service in the lists covered by the first filing and the CTM application. The examination will not extend to all the goods and services covered under the lists and it will not be l imited to class numbers only.
14.2.3 Identity of the owner
Priority can be claimed by the applicant of the first application or its successor in title. In the latter case, the transfer must have taken place prior to the filing date of the CTM application and documentation to this effect must be provided. The right of priority as such may be t ransferred independently of whether or not the first application as a whole is transferred. Priority can therefore be accepted even if the owners of the CTM application and the earlier right are different, provided evidence of the assignment of the priority right is supplied; in this case, the execution date of the assignment must be prior to the filing date of the CTM application.
Subsidiary or associated companies of the applicant are not considered the same as the CTM applicant.
Where the applicant of the first application states that it has changed its name since the first filing and files the CTM application under its new name, the applicant is considered to be the same person.
For the distinction between a c hange of name and a transfer, see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer.
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14.3 Priority requirements not satisfied
If the priority claim does not satisfy any of the above requirements, the applicant will be invited to remedy the deficiency or make observations within two months. If the deficiency is not remedied, the Office will inform the applicant that the priority right is lost and that it may request a decision on this loss of rights (details see below under paragraph 14.7, Treatment of priority examination deficiencies).
14.4 Priority documents not provided
If the priority documents are not submitted with the application, the Office will check on the National office website to determine if the relevant information can be found online. If the information to grant the priority claim cannot be found online, the Office will send a letter to the applicant requesting it. The applicant will be g iven a t ime limit of two months to remedy the deficiency; as a rule, this time limit will not be extended. Usually, the deficiency letter will be issued before expiry of the original time limit to submit the priority documents (three months from date of receipt of the priority claim). In this case, the two-month deficiency time limit will be calculated from the date of expiry of the original time limit for submission of the priority documents. In accordance with Decision No EX-03-5, certified copies are not necessary. Simple filing receipts that do not contain all the necessary information for examining the priority claim (e.g. they only contain class numbers for the goods and services of the prior application and not the full text version indicating all the goods and services) are not acceptable.
14.5 Language of previous application
If the language of the previous application is not one of the official EU languages, the Office will invite the applicant to file a translation within three months. The time limit for filing the translation may be extended at the request of the applicant. An extension in this case may be for up to two months.
14.6 Priority date check after changing of the filing date
If the CTM application has a filing date change, the Office must check that the new filing date is still within six months of the priority claim.
14.7 Treatment of priority examination deficiencies
If the first application is not identical to the CTM application, the filing number of the first filing is not indicated, the priority is claimed out of time (i.e. after the six-month period or later than two months after the filing of the CTM application), or the priority documents are not acceptable (i.e. as to country of first filing and triple identity requirements), the applicant will be notified by a deficiency letter, and a two-month time limit to make observations or remedy the deficiency will be set.
If a translation must be requested, the Office will notify the applicant by sending a deficiency letter and set a three-month time limit.
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If there is no response or if the deficiencies are not remedied within the time limit, the Office will notify the loss of right to the applicant and set a two-month time limit during which the applicant may request a formal, appealable decision on the loss of right.
If the applicant formally requests a decision within the time limit, the Office will issue a formal decision on the loss of right.
If the priority is claimed later than two months after the filing date of the CTM application or if the CTM application is filed after the six-month priority period, the applicant will be notified and a time limit for observations will be set. Where there is no reply and the deficiencies are not remedied, the Office will inform the applicant of the loss of the priority right and the possibility to request a formal (i.e. appealable) decision on the loss of the priority right.
14.8 Examples of priority claims
14.8.1 First filing
In the example below, priority cannot be c laimed from a first filing in Somalia, since Somalia is not a Member State of the Paris Convention or the World Trade Organisation and has no r eciprocity agreement confirmed by the EU Commission. Therefore, the first filing in Italy is the one considered for the priority claim; the other filing cannot be taken into consideration.
First filing Country Goods/services CTM filed Goods/services
5 April Somalia Cars, T-shirts Cars, T-shirts
7 July Italy Cars, T-shirts 2 October Cars, T-shirts
In the example below, the two earlier trade mark applications were filed for exactly the same goods. The priority claim based on the Greek application has to be rejected since the trade mark was applied for in Spain before; thus the Greek application is no longer a first filing.
First filing Country Goods/services CTM filed Goods/services
6 April Spain Cheese, wine Cheese, wine
7 April Greece Cheese, wine 4 October Cheese, wine
14.8.2 Comparison of the marks
Examples of acceptable priority claims
CTM application (word mark)
EVAL
Priority claim (word mark)
EVAL
CTM application (word mark)
Luna
Priority claim (word mark)
Luna
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Examples of acceptable priority claims
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
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Examples of unacceptable priority claims
CTM application (colour per se) Priority claim (colour per se)
CTM application (word mark)
Chocolate Dream
Priority claim (word mark)
Chocalate Dream
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
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Examples of unacceptable priority claims
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
CTM application (figurative mark) Priority claim (figurative mark)
Further examples with regard to word marks
First trade mark CTM application the same not the same
Word mark
Percy & Reed
Word mark
Percy + Reed X
Word mark
Percy & Reed
Word mark
Percy and Reed X
Word mark
Percy & Reed
Word mark
Percy & Reed X
Word mark
Percy & Reed
Word mark
Percy & REED X
Word mark
Percy & Reed
Word mark
PERCY & REED X
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Further examples with regard to word marks
First trade mark CTM application the same not the same
Word mark
Percy & Reed
Word mark
Percy & Reed X
Word mark
POPEYE
Word mark
POPeye X
Word mark
POPEYE
Word mark
PopEye X
Word mark
POPEYE
Word mark
POP-EYE X
Word mark:
POPEYE
Word mark:
POP EYE X
Word mark
POPEYE®
Word mark
POPEYE X*
Word mark
POPEYE
Word mark
POPEYE!? X
Word mark
POPEYE
Word mark
POPEYE· X
* The symbols ™ and ® are not considered parts of the mark.
Examples regarding identity between figurative signs as compared to word marks
First trade mark CTM application the same not the same
Word mark
Percy & Reed
Figurative mark
Percy & Reed
(figurative mark in standard type face)
X
Word mark
Percy & Reed
Figurative mark
Percy &
Reed
(words distributed over several lines)
X
Word mark
Percy & Reed
Figurative mark
Percy & Reed
(colour claim)
X
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Further examples with regard to figurative marks
First trade mark CTM application the same not the same
X
X
®
X*
* The symbols ™ and ® are not considered parts of the mark.
14.8.3 Comparison of the goods and services
The first example below is the most standard situation: The prior application corresponds fully to the CTM application.
First filing Country G&S CTM filed G&S CTM
5 April UK Hats, shoes 1 October Hats, shoes
In the next example, both priority claims can be accepted since application number XY 1234 is the first filing with respect to ‘cars’ and application number XY 1235 is the first filing with regard to ‘airplanes’.
First filing Country JP application No G&S CTM filed G&S CTM
5 April Japan XY 1234 Cars
5 April Japan XY 1235 Airplanes 2 October Cars, airplanes
In the next example, the priority claim concerns ‘hats’ and ‘shoes’ which are common to the first filing and the CTM application. No priority will apply with respect to ‘bags’.
First filing Country G&S CTM filed G&S CTM
5 April USA Cars, hats, shoes 1 October Hats, shoes, bags
In the last example, priority is claimed for first filings in France, Canada and China. The CTM application has been filed within six months of each of the first filings and t he priority claims will be accepted, although with regard to ‘hats’ the Canadian application does not constitute a first filing (‘hats’ appear in the French application which had been
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filed before). Comparing the dates and the lists of goods and services of the three priorities, the priority claims will be accepted.
First filing Country G&S CTM filed G&S CTM
5 April France Hats, shoes
6 April Canada Cars, hats, beer 5 October
7 April China Wine,
telecommunication services
Hats, shoes, cars, beer, wine,
telecommunication services
14.8.4 Priority claims based on series marks
A series of trade marks means a number of trade marks which resemble each other as to their material details and di ffer only as to matters of non-distinctive character. Whereas the Community Trade Mark Regulation does not allow for the filing of series marks, some national Offices (e.g. the United Kingdom, Australia etc.) do, and such a series of marks filed in one single application can contain numerous very similar marks. When the first filing consists of a s eries mark, two or more slightly different mark representations will be s een. The priority claim is acceptable with regard to the one reproduction which is identical to that showing the mark applied for as a CTM.
Examples of priority claims based on series marks
First filing CTM Priority claim acceptable
Series of marks
Yes
Series of marks
Café@Home CAFÉ@HOME Café@Home
CAFÉ@HOME
CAFÉ@HOME Yes
14.8.5 Claiming priority for three-dimensional or ‘other’ marks
Some national IP offices do not allow the filing of more than four representations in the case of three-dimensional or other marks.
If a CTM application claims priority of such a first filing, and six (or more, in the case of ‘other’ marks) depictions/perspectives of the mark are filed with the CTM application, the marks in question will still be considered identical if the presentations of the first filing coincide with a part of what was sent for the CTM application and if the object is doubtlessly the same.
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14.8.6 Priority claims involving collective marks
Priority can be c laimed from a c ollective mark when applying for an i ndividual Community trade mark and vice versa.
15 Exhibition Priority
Article 33 CTMR; Rule 7 CTMIR
Exhibition priority entails claiming as priority date of the CTM application the date on which the goods or services covered by the CTM application were displayed at an officially recognised exhibition under the mark as filed. The applicant can claim exhibition priority within six months of the first display. Evidence of the display must be filed.
Like ‘convention priority’, exhibition priority can be claimed either in the application or subsequently to the filing of the CTM application. Where the applicant wishes to claim an exhibition priority subsequent to the filing of the application, the declaration of priority indicating the name of the exhibition and the date of first display of the goods or services must be submitted within a time limit of two months of the filing date.
Within three months of the receipt of the declaration of priority the applicant must provide the Office with a certificate issued at the exhibition by the responsible authority. This certificate must state that the mark was in fact used for the goods or services, the opening date of the exhibition and, where the first public use did not coincide with the opening date of the exhibition, the date of the first public use. The certificate must be accompanied by an i dentification of the actual use of the mark, duly certified by the authority.
Priority can only be granted where the application for a CTM is filed within six months of first display at an exhibition recognised for this purpose, namely a world exhibition within the meaning of the Convention of 22 November 1928. These exhibitions are very rare and Article 33 does not protect the display at other, national exhibitions. The exhibitions can be found on t he website of the Paris Bureau International des Expositions: http://www.bie-paris.org/site/en/.
As to the triple identity of the trade mark, applicant and list of goods and services, the same criteria apply as for ‘convention priorities’ mentioned in paragraph 14 above.
If there is no objection from the Office, the priority claim will be noted on the file and appear in the online database. No express confirmation will be sent to the applicant.
The claim may be implicit. Where there is no indication of the claim in the application, the submission of the exhibition priority documents (within the time limit of two months) will be construed as a declaration of priority.
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16 Seniority
Article 34 CTMR Rules 8, 28 and Rule 96(2) CTMIR Communication 2/00, Decision EX-03-5 and Decision EX-05-05 of the President of the Office
The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as a CTM for goods or services which are identical with or contained within those for which the earlier trade mark has been r egistered, may claim for the CTM application the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.
Seniority has the sole effect that where the proprietor of a CTM surrenders the earlier trade mark for which seniority has been claimed or allows it to lapse, it shall be deemed to continue to have the same rights as it would have had if the earlier trade mark had continued to be registered.
This means that the CTM application represents a c onsolidation of earlier national registrations. If an applicant claims seniority for one or more earlier registered national marks and the seniority claim is accepted, the applicant may decide not to renew the earlier national registrations but still be in the same position as if the earlier trade mark had continued to be registered in those member states where the earlier marks were registered.
Seniority under Article 34 CTMR must be claimed with the application or within two months from the filing date of the CTM application. The documents in support of the claim must be provided within three months of the claim. The seniority claim may be implicit. If the applicant sends only the documents concerning the earlier registrations within two months from the filing date of the CTM application, the Office will construe this as a seniority claim concerning these earlier registrations.
Seniority may be claimed not only for earlier national registrations, but also for an international registration with effect in an E U country. No seniority claim is possible, however, for an ear lier CTM registration or local registrations, even if the territory is part of the European Union (e.g. Gibraltar).
16.1 Harmonised seniority information
In order to be able to properly manage seniorities, all seniority entries in the system need to have the same format as that is used in the databases of the National offices.
To enhance harmonisation between OHIM and participating IP offices, a list with the required format for seniorities has been established. This list provides a description of the format / formats used in each of the national offices, insofar as this has been determined.
Therefore, when checking seniority, the Office must verify if the format of the seniority in the system corresponds to the format used at the national level.
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16.2 Seniority examination
A valid claim consists of:
1. the Member State or Member States of the EU in or for which the earlier mark, for which seniority has been claimed, is registered;
2. the filing date of the relevant registration; 3. the number of the relevant registration; 4. the goods or services for which the mark is registered.
Pursuant to Decision No EX-05-5 of 01/06/2005, the proprietor is not required to file a copy of the registration if the required information is available on t he website of the respective national offices. If the copy of the registration is not submitted, the Office will first search for the necessary information on the respective website and only if the information is not available there will it ask the proprietor for a copy by means of a deficiency letter. Pursuant to Article 3 of Decision No EX-03-5, the copy of the relevant registration must consist of a c opy (simple photocopies suffice) of the registration and / or renewal certificate or extract from the Register, or an extract from the relevant national Gazette, or an extract or printout from an official database. Extracts and printouts from private databases are not accepted. Examples of extracts that are not accepted are DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK or COMPUMARK, SAEGIS.
Seniority may only be claimed for an earlier registration, not for an earlier application.
The Office must check both that the earlier mark was registered at the time the CTM application was filed and that the earlier registration had not lapsed at the moment the claim was made (on the duration of protection of national marks see the Guidelines, Part C, Opposition, Section 1, Procedural matters).
If the earlier registration had l apsed at the moment the claim was made, seniority cannot be claimed, even if the relevant national trade mark law provides for a six month grace period for renewal. While some national legislation allows for a ‘grace’ period, if the renewal is not paid, the mark is considered to be not registered from the day it was due for renewal. Therefore, the claim is not acceptable, unless the applicant shows that it has renewed the earlier registration(s).
The seniority claimed for the Community trade mark shall lapse if the earlier trade mark the seniority of which is claimed is declared to have been revoked or to be invalid or if it is surrendered prior to the registration date of the Community trade mark (Article 34(3) CTMR).
In the context of an enlargement of the EU, the following details have to be born in mind. Where a national trade mark of, or an international registration with effect in, a new Member State was registered before the seniority claim is made, seniority may be claimed even though the priority, filing or registration date of the CTM to which the seniority claim relates predates the priority, filing or registration date of the national mark/IR with effect in the new Member State. This is because the CTM at issue only has effect in the new Member State from the date of accession. The national trade mark/IR with effect in the new Member State for which seniority is claimed is therefore ‘earlier’ than the CTM within the sense of Article 35 CTMR, provided the national trade mark/IR with effect in the new Member State enjoys a priority, filing or registration date prior to the accession date.
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Examples of acceptable seniority claims for new Member States
CTM Filing date Seniority claim country Filing date of earlier right
2 094 860 TESTOCAPS 20/02/2001 Cyprus 28/02/2001
2 417 723 PEGINTRON 19/10/2001 Hungary 08/11/2001
352 039 REDIPEN 02/04/1996 Bulgaria 30/04/1996
7 073 307 HydroTac 17/07/2008 Croatia 13/10/2009
Explanation: In all cases, although the filing date of the CTM application is earlier than the filing date of the mark for which seniority is claimed, as all countries concerned acceded to the European Union after the filing date of the CTM application (i.e. on 1 May 2004 for Cyprus and Hungary and on 01/01/2007 for Bulgaria and Romania) and it is from that date that the CTM application has protection in those Member States, seniority can be claimed for any national marks filed prior to the date of accession.
If the claim to seniority is in order, the Office will accept it and – once the CTM application has been registered – inform the relevant central industrial property office(s) of the Member State(s) concerned (Rule 8(3) CTMIR).
Seniority can also be claimed after the CTM is registered under Article 35. For further details, see the Guidelines, Part E, Register Operations, Section 1, Changes in a registration.
16.3 Identity of the marks
Examination of seniority claims is limited to the formal requirements and to the identity of the marks (see Communication of the President No 2/00 of 25/02/2000).
As regards the triple-identity requirement (same owner, same mark, same goods and services), it is for the applicant to make certain that these requirements are met. However, the Office will examine only whether the marks are the same.
The comparison of the mark representations for the purposes of seniority claims is the same as that for priority claims detailed above at paragraph 14.2.1.
16.4 Goods and services
Applicants may claim seniority for part of the goods and s ervices of the earlier registration(s). Effectively the claim to seniority will be valid to the extent that there is an overlap between the goods and services of the CTM application and the registration relied on. The applicant is not required to specify those goods and services, but may simply claim ‘seniority for all the goods which are found in the earlier mark to the extent they are also found in the CTM application’ (generic seniority claim).
16.5 Treatment of seniority examination deficiencies
If the claim is not valid, if the earlier registration is not identical to the CTM application, if the seniority is claimed out of time (i.e. after the two-month time limit following the
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filing of the CTM application), or the seniority documents are not acceptable and the relevant information cannot be found online, the Office will issue a deficiency letter.
If the deficiencies are not remedied within the time limit set by the Office, the applicant will be notified in writing of the loss of right. At the same time the applicant is informed that it can ask for a formal decision within two months of the notification.
If within the time limit the applicant formally requests a decision, the Office will issue a formal decision on the rejection of the seniority claim.
16.6 Examples of seniority claims
Example of an acceptable seniority claim
CTM application (word mark)
CELOTAPE
Seniority claim (word mark)
Celotape
CTM application (word mark)
Daisys Gingerbread
Seniority claim (word mark)
Daisy’s Gingerbread
Examples of unacceptable seniority claims
CMTA: 9 817 735 (figurative mark)
Seniority Claim (figurative mark)
CTM application (word mark)
Great changes in education PLC
Seniority claim (word mark)
Grate changes in education PLC
CTM application 8 786 485 (figurative mark)
Seniority claim (figurative mark)
For further examples of acceptable and unacceptable seniority claims, see paragraph 14.8.2 above.
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17 Transformation
Transformation is a l egal feature introduced in the Madrid Protocol to soften the consequences of the five-year dependency period between the international registration and t he basic mark. In the event that the international registration designating the EU is cancelled at the request of the Office of origin in respect of all or some of the goods and services, the holder of the international registration may file a CTM application for the registration of the same mark in relation to the goods and services that have been cancelled. That application shall be treated as if it had been filed on the date of the designation of the EU in the international registration and shall enjoy the same priority, if any. For more details on transformation, see the Guidelines, Part M, International marks.
18 Amendments to the CTM application
Articles 43 and 44 CTMR Rule 3 and Rule 13(a) CTMIR
The applicant may at any time withdraw its CTM application or restrict the list of goods and services covered by it. Other changes are only foreseen to correct certain mistakes.
Any change requested on t he same day of filing of the CTM application will be accepted.
This part of the Guidelines will only describe the Office practice concerning amendments of the mark representation. For further details on w ithdrawal or restrictions, see the Guidelines, Part B, Examination, Section 1, Proceedings.
18.1 Amendments to the representation of the mark
The Office practice on amendments of the mark representation is very strict. The two conditions for allowing a change to the mark once filed are cumulative:
• the mistake must be obvious, AND • the amendment must not substantially change the mark as filed.
Even if the amendment is not a substantial one, if the mistake is not obvious the Office will not accept the amendment.
In cases where the desired positioning of a mark is not obvious, the representation of the mark shall indicate the correct position by adding the word ‘top’ to the reproduction of the sign. Where the application is filed by electronic means, the unusual positioning may be indicated in the mark description.
In cases where the desired positioning of a mark is not obvious (e.g. a mark containing a verbal element is filed in a vertical position) and there is no indication of the intended positioning in the application, the applicant will be allowed to amend the position of the
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mark upon r equest. This is because the unusual positioning of the mark will be considered an obvious mistake.
If a pr iority or seniority claim is filed at the same time as the CTM application, an obvious error may be proven by comparing the ‘correct’ mark in the claim with the mark on the CTM application. However, if the priority or seniority claim is filed after the CTM application, no evidence from these claims can be taken into account.
If the mistake is obvious, the mark must then be assessed by the next criterion, namely whether the requested change substantially alters the mark as filed.
Example of an acceptable amendment
CTM 546 010
Mark filed as ‘TOPFLOW’
Proposed change
‘TOP FLOW’
In the application form the applicant claimed priority for the mark ‘TOP FLOW’, meaning that it was obvious that a typographical error had been made. The amendment was not considered to be a substantial alteration of the mark as the addition of a space between the words ‘TOP’ and ‘FLOW’ does not alter the meaning and pronunciation of the mark and the visual impact of the amendment is low (decision of 05/08/2002 R 851/1999-2 – ‘TOP FLOW’)
Examples of unacceptable amendments
CTM 321 109
Mark filed as ‘RANIER’
Proposed change
‘RAINIER’
This change will not be allowed since the correction shows the addition of another letter ‘I’ which would substantially change the mark as filed. ‘RANIER’ and ‘RAINIER’ are two different words.
CTM 6 013 668
Mark filed as ‘ELECTROLITIC BOLUS’
Proposed change
‘ELECTROLITYC BOLUS’
This change will not be a llowed as the correct English spelling for this word is ‘ELECTROLYTIC’. Consequently the mark as filed had 1 erroneous letter whilst the amendment proposal would have 2 erroneous letters. This would substantially alter the mark and therefore is unacceptable.
In the case of figurative elements, only elements of minor importance can be amended and this will be dealt with on a case-by-case basis. Giving a ‘fresh look’ to a figurative mark (this is a frequent practice in the industry to adapt the appearance of a figurative mark to current design and fashion trends from time to time) will not be allowed.
CTM 6 538 524
CTM as filed Proposed change
The applicant filed a priority claim with the CTM application which showed that the first filing consisted of the single representation of the mark. In addition, the CTM application contained a mark description that described the single representation and not the two images that had been filed. Therefore, the mistake was considered to be obvious. The amendment request was however rejected as the amendment would substantially change the mark from that which was filed.
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Notwithstanding the aforementioned principles and ex amples, any alteration of the mark that would be al lowable after registration will also be al lowable in respect of a CTM application.
Regarding alterations of a r egistered CTM, please refer to the Guidelines, Part E, Register Operations, Section 1, Changes in a registration.
19 Conversion
Articles 112(1) and 113(1) CTMR Rule 44(1)(f) CTMIR
The applicant of a CTM application or proprietor of a registered CTM may request the conversion of their CTM application or registered CTM. For more information on conversion see the Guidelines, Part E, Section 2, Conversion.
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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
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1 General Principles ..................................................................................... 4 1.1 Reasoned objection ...................................................................................4 1.2 Dialogue with the applicant .......................................................................4 1.3 European criteria........................................................................................5 1.4 Irrelevant criteria ........................................................................................5
1.4.1 Term not used................................................................................................. 6 1.4.2 Need to keep free ........................................................................................... 6 1.4.3 Factual monopoly ........................................................................................... 6 1.4.4 Double meaning ............................................................................................. 6
1.5 Scope of objections on the goods and services ......................................7 1.6 Timing of objection ....................................................................................7 1.7 Disclaimers .................................................................................................8 1.8 Relationship between the various grounds of refusal .............................8
2 Absolute Grounds (Article 7 CTMR)......................................................... 8 2.1 Article 7(1)(a) CTMR ...................................................................................8
2.1.1 General remarks............................................................................................. 8 2.1.2 Examples of trade mark applications refused or accepted under
Article 7(1)(a) ................................................................................................ 10 2.1.3 Relationship with other CTMR provisions .................................................... 14
2.2 Distinctiveness (Article 7(1)(b) CTMR)....................................................14 2.2.1 General remarks........................................................................................... 14 2.2.2 Word elements.............................................................................................. 15 2.2.3 Titles of books............................................................................................... 16 2.2.4 Colours ......................................................................................................... 17 2.2.5 Single letters ................................................................................................. 19 2.2.6 Slogans: assessing distinctive character...................................................... 21 2.2.7 Simple figurative elements ........................................................................... 23 2.2.8 Commonplace figurative elements ............................................................... 24 2.2.9 Typographical symbols................................................................................. 25 2.2.10 Pictograms.................................................................................................... 26 2.2.11 Common / non-distinctive labels................................................................... 27 2.2.12 Three-dimensional trade marks.................................................................... 28 2.2.13 Pattern marks ............................................................................................... 32 2.2.14 Position marks .............................................................................................. 35
2.3 Descriptiveness (Article 7(1)(c) CTMR)...................................................36 2.3.1 General remarks........................................................................................... 36 2.3.2 Word marks .................................................................................................. 40 2.3.3 Figurative marks ........................................................................................... 55 2.3.4 Figurative threshold ...................................................................................... 56
2.4 Customary signs or indications (Article 7(1)(d) CTMR) ......................... 66 2.4.1 General remarks........................................................................................... 66 2.4.2 Point in time of a term becoming customary ................................................ 66 2.4.3 Assessment of customary terms .................................................................. 67 2.4.4 Applicability of Article 7(1)(d) CTMR in relation to plant variety names ....... 67
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2.5 Shapes with an essentially technical function, substantial aesthetic value or resulting from the nature of the goods ( Article 7(1)(e) CTMR)........................................................................................................68 2.5.1 General remarks........................................................................................... 68 2.5.2 Shape which results from the nature of the goods ....................................... 70 2.5.3 Shape of goods necessary to obtain a technical result ................................ 70 2.5.4 Shape which gives substantial value to the goods....................................... 74
2.6 Acquired distinctiveness .........................................................................77 2.6.1 Introduction ................................................................................................... 77 2.6.2 Request ........................................................................................................ 77 2.6.3 The point in time ........................................................................................... 77 2.6.4 Consumer ..................................................................................................... 78 2.6.5 Goods and Services ..................................................................................... 78 2.6.6 Territorial Aspects......................................................................................... 79 2.6.7 What has to be Proved ................................................................................. 81 2.6.8 The evidence and its assessment ................................................................ 82 2.6.9 Consequences of Acquired Distinctiveness ................................................. 86
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1 General Principles
1.1 Reasoned objection
Where the examiner finds that an absolute ground for refusal exists, a reasoned objection must be i ssued which specifies all the individual grounds for refusal found and provides clear and distinct reasoning for each ground separately. Piecemeal objections (so-called step-by-step objections) should be avoided. In other words, each ground for refusal should have its own reasoning. In many instances some grounds for refusal overlap, e.g. distinctiveness and des criptiveness. Even in these cases, each ground of refusal must be given separate reasoning. For example, where a word mark is found to have a semantic meaning which makes it objectionable under both Articles 7(1)(b) and 7(1)(c) CTMR, the notification of grounds of refusal should deal with each of these grounds in separate paragraphs. In such a case it should be clearly indicated whether the lack of distinctiveness arises out of the same, or different, considerations from those which lead to the mark being deemed descriptive.
It suffices for the refusal of a Community trade mark that there is one of the grounds mentioned in Article 7 in only part of the European Union. However, examiners are encouraged to list at this stage all grounds for refusal which are applicable.
Occasionally, arguments brought forward by the applicant or a restriction (partial withdrawal) of the list of goods and services will lead to the application of other grounds for refusal. Examiners are reminded that if the rejection of the CTM applied for had to be based on new grounds for refusal or on new arguments, the party must be given the opportunity to comment thereon.
1.2 Dialogue with the applicant
During examination proceedings, the examiner should seek dialogue with the applicant.
At all stages of the proceedings, the examiner should carefully consider the observations submitted by the applicant. The examiner should equally consider, of his own motion, new facts or arguments that plead in favour of acceptance of the mark. This is because the application can only be refused if, at the point in time the decision is taken, the examiner is convinced that the objection is well founded.
Where the applicant has not submitted any observations, and pr ovided that the examiner has not found any reasons of his own motion that might change his view, the application will be refused by a not ification which will include the original objection letter(s), state that the application is hereby refused, and c ontain a not ice on the availability of an appeal. It is not correct to limit the final decision to a refusal for ‘the reasons given in the objection’.
If the applicant contests the reasons given in the original notification, the refusal should first provide the original reasoning given, and then address the arguments of the applicant. Where the examiner needs to provide new facts or arguments to sustain a refusal, the applicant must be given the opportunity of commenting on this before a final decision is taken.
Where the applicant tries to overcome the objection by restricting the list of goods and services, it is possible that the restriction raises a new ground for refusal, for example, deceptiveness in addition to descriptiveness. In this case another objection letter
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should be issued, so as to give the applicant the opportunity to comment on all grounds for refusal found pertinent.
A specification of goods or services which is restricted by a condition that the goods or services do not possess a par ticular characteristic should not be a ccepted (see judgment of 12/02/2004, C-363/99, ‘Postkantoor’, para. 114). For example, in respect of the trademark ‘Theatre’, a specification claiming ‘books, except for books about theatre’ should not be accepted. In contrast, restrictions which are worded in a positive way can usually be acceptable, such as ‘books about Chemistry’.
As regards the proof of acquired distinctiveness [Article 7(3)], the applicant has the right to claim that its mark has acquired distinctiveness through use and submit the relevant proof of use. The point in time where the applicant shall send its proof of use is after the objection letter and before the final decision is taken by the examiner. In that regard, the applicant may file a r equest for an extension of time limits after the objection letter pursuant to Rule 71 CTMR. If the examiner wishes to accept the mark on the basis of Article 7(3), then no r efusal letter should be s ent. If in spite of the submitted proof of use the examiner determines that the CTMA still falls foul under Article 7(1) because the proof of use was not convincing, the refusal letter shall contain a statement on the availability of an appeal to be lodged before the Boards. It shall also contain the reasoning why the mark falls foul under any of the grounds mentioned in Article 7(1) and separate reasoning regarding why the applicant’s claim of acquired distinctiveness fails.
1.3 European criteria
Article 7(1) CTMR is a European provision and has to be interpreted on the basis of a common European standard. It would be incorrect to apply different standards of distinctiveness, based on different national traditions, or to apply different (i.e. more lenient or stricter) standards on the breach of public order or morality, depending on the country concerned.
However, Article 7(2) CTMR excludes an appl ication from registration if a g round for refusal pertains in only part of the European Union.
That means that it suffices for a refusal if the trade mark is descriptive, or lacks distinctive character, in an official language in the UE. As regards other languages, a refusal will be raised if the trade mark is objectionable under Article 7(1) in a language understood by a s ignificant section of the relevant public in at least a part of the European Union (see below under paragraph 2.3.1.2 The reference base, and judgment of 13/09/2012, T-72/11, ‘Espetec’, paras 35-36).
Where the objection is not based on a semantic meaning of a word, the ground for refusal will normally pertain to the Community as a whole. However, the perception of the sign by the relevant public, the practice in trade, or the use of the goods and services claimed may be different in some parts of the European Union.
1.4 Irrelevant criteria
Applicants often advance arguments that have already been declared irrelevant by the courts. These arguments should be rejected and the corresponding passages of the applicable judgments cited.
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1.4.1 Term not used
The fact that a des criptive use of the term applied for cannot be ascertained is irrelevant. Examination of Article 7(1)(c) CTMR has to be m ade by means of prognostics (assuming that the mark will be used with respect to the goods or services claimed). It follows clearly from the text of Article 7(1)(c) CTMR that it suffices if the mark ‘may serve’ to designate characteristics of the goods and services (see judgment of 23/10/2003, C-191/01, ‘Doublemint’, para. 33).
1.4.2 Need to keep free
Frequently it is claimed that other traders do not need t he term applied for, can use more direct and straightforward indications or have synonyms at their disposal to describe the respective characteristics of the goods. All these arguments must be refused as irrelevant.
Although there is a pu blic interest underlying Article 7(1)(c) CTMR that descriptive terms should not be registered as trade marks so as to remain freely available to all competitors, it is not necessary for the Office to show that there is a present or future need or concrete interest of third parties to use the descriptive term applied for (no konkretes Freihaltebedürfnis) (see judgment of 04/05/1999, C-108/97, ‘Chiemsee’, para. 35; judgment of 12/02/2004, C-363/99, ‘Postkantoor’, para. 61).
Whether there are synonyms or other even more usual ways of expressing the descriptive meaning is thus irrelevant (see judgment of 12/02/2004, C-265/00, ‘Biomild’, para. 42).
1.4.3 Factual monopoly
The fact that the applicant is the only person offering the goods and services for which the mark is descriptive is not relevant for Article 7(1)(c) CTMR. However, in this case the applicant will be more likely to succeed on acquired distinctiveness.
1.4.4 Double meaning
The frequent argument of applicants that the terms applied for have more than one meaning, one of them not being descriptive for the goods/services, should be rejected. It suffices for a r efusal under Article 7(1)(c) CTMR if at least one o f the possible meanings of the term is descriptive in relation to the relevant goods and services (see judgment of 23/10/2003, C-191/01, ‘Doublemint’, para. 32; confirmed by judgment of 12/02/2004, C-363/99, ‘Postkantoor’, para. 97).
Given that the examination must focus on the goods/services covered by the application, arguments concerning other possible meanings of the word/s making up the applied for trade mark (which are unrelated to the goods/services concerned) are irrelevant. Equally, when the applied for trade mark is a composite word mark, what matters for examination purposes is the meaning, if any, associated with the sign considered as a w hole, and no t the possible meanings of its individual elements considered separately (see judgment of 08/06/2005, T-315/03, ‘Rockbass’, para 56).
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1.5 Scope of objections on the goods and services
Almost all absolute grounds for refusal, and in particular the most pertinent ones of lack of distinctiveness, descriptiveness, genericness and dec eptiveness, have to be assessed with respect to the goods and s ervices actually claimed. If an objection is raised, the examiner must specifically state which ground (or grounds) for refusal apply to the mark in question, in relation to each claimed good or service. It is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is considered a group of goods and/or services which have a sufficiently direct and s pecific link to each other (judgment of 02/04/2009, T-118/06, ‘ULTIMATE FIGHTING CHAMPIONSHIP’, para. 28). Where the same ground or grounds for refusal is given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be us ed (judgment of 15/02/2007, C-239/05, ‘Kitchen company’, para. 38).
As regards descriptiveness, an objection applies not only to those goods/services for which the term/s making up the applied for trade mark is/are directly descriptive, but also to the broad category which contains (potentially at least) an identifiable subcategory or specific goods/services for which the applied for mark is directly descriptive. In the absence of a suitable restriction by the applicant, the descriptiveness objection necessarily affects the broad category as such. For example, ‘EUROHEALTH’ is to be refused for ‘insurances’ as a whole and not only for health insurances (see judgment of 07/06/2001, T-359/99, ‘Eurohealth’, para. 33).
An objection also arises for those goods and services which are directly linked to those for which the descriptive meaning pertains. Furthermore, if the descriptive meaning arises for an activity involving the use of several goods or services mentioned separately in the specification, then the objection arises for all of them (see judgment of 20/03/2002, T-355/00, ‘Tele Aid’, for a number of goods and services that are in conjunction with, or are applied in, offering aid to car drivers at a distance).
It is possible to claim goods and services as so-called auxiliary goods or services in the sense that they are meant to be used with, or support, the use of the main goods or services. Typically, this covers paper and instruction manuals for the goods to which they belong or which are packed in them, advertisement or repair. In these cases, the auxiliary goods are by definition intended to be used and sold together with the main product (e.g., vehicles and instruction manuals). It follows that if the CTM is found to be descriptive of the main goods, logically it is also descriptive of the auxiliary goods which are so closely related.
1.6 Timing of objection
Objections should be raised as early and as completely as possible. However, in rare cases the Office will reopen ex officio the examination procedure if the mark had been clearly accepted by mistake or if according to new case-law the same conclusions apply to a mark that had been previously accepted (judgment of 08/07/2004, T 289/02, ‘Telepharmacy Solutions). In the case of CTM applications, this can happen at any time before registration, i.e. even after publication. In the case of international registrations designating the EU, this can happen as long as the opposition period (six months after republication) has not started (Rule 112(5) CTMIR) and any interim status declaration previously sent would be revoked. The Office can also reopen the examination procedure as a result of third party observations (Article 40 CTMR).
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1.7 Disclaimers
Article 37(2) CTMR allows for the possibility of the examiner requesting, as a condition of registration, that an element of a mark which is not distinctive should be disclaimed. In practice examiners will not generally make recourse to this provision. Provided a mark is judged to be neither exclusively descriptive nor devoid of distinctive character it will generally be accepted without a disclaimer. As a general rule a disclaimer will not help to overcome an absolute grounds objection.
Where a t rade mark consists of a combination of elements each of which in itself is clearly not distinctive, there is no need for a disclaimer of the separate elements. For example, if a periodical had as its trade mark ‘Alicante Local and International News’, the individual elements within it would not need to be disclaimed.
If the applicant’s disclaimer does not overcome the ground for refusing registration or the applicant does not agree to the condition, then the application must be refused to the extent that is required.
Where the applicant has made a di sclaimer of a non -distinctive element in its application, the disclaimer should stay even if the examiner does not consider it necessary. Disclaimers of distinctive elements must be refused by the examiner since they would result in a trade mark with an unclear scope of protection.
1.8 Relationship between the various grounds of refusal
An objection and any subsequent refusal shall include all grounds for refusal which are pertinent. Each ground for refusal should be reasoned separately. In particular, to avoid confusion as to whether a r efusal was based on Article 7(1)(b) CTMR, Article 7(1)(c) CTMR or both, each of those grounds for refusal should receive a separate heading. If the applicant amends the list of goods and services in such a way that a new ground for refusal becomes relevant, the said ground should be raised. This may occur, for example, where the applicant restricts the list of claimed goods and services in such a way that the mark becomes misleading. If several grounds for refusal are raised, the applicant must overcome all of them, since a refusal can be based on a single ground for refusal (judgment of 19/09/2002, C-104/00 P, ‘Companyline’, para. 28).
The following paragraphs of this Guideline will address each individual subsection of Article 7(1) CTMR in alphabetical order beginning with 7(1)(a) CTMR and ending with 7(1)(k). This is followed by a paragraph regarding acquired distinctiveness under Article 7(3) CTMR, and a final paragraph covering collective marks.
2 Absolute Grounds (Article 7 CTMR)
2.1 Article 7(1)(a) CTMR
2.1.1 General remarks
Article 7(1)(a) CTMR reflects OHIM’s obligation to refuse signs that do not conform to the requirements of Article 4 CTMR. According to Article 4 CTMR, a Community trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods and their packaging, provided that such signs are capable of distinguishing the goods or
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services of one unde rtaking from those of other undertakings. It follows that, to be capable of constituting a trade mark for the purposes of Article 4 CTMR, the subject matter of an application must satisfy three conditions: (a) it must be a s ign, (b) it must be capable of being represented graphically, and (c) it must be capable of distinguishing the goods or services of one undertaking from those of others (judgment of 25/01/2007, C-321/03, ‘Transparent bin’, para. 28).
a) Sign
According to Article 4 CTMR a trade mark may consist of any sign, subject to certain conditions. Although the particular examples listed in this provision are all signs that are two- or three-dimensional and are capable of being perceived visually, the list is not exhaustive. Therefore, the subject matter is not necessarily limited to signs that can be perceived visually.
On the other hand, in order not to deprive Article 4 CTMR of any substance, this provision cannot be interpreted so broadly as to allow any non-specific subject-matter to necessarily qualify as a s ign. Thus, abstract concepts and i deas or general characteristics of goods are not specific enough to qualify as a sign, as they could apply to a variety of different manifestations (T-7/09, ‘Spannfutter’, para. 25). For this reason, the Court rejected, for example, an application for a ‘transparent collecting bin forming part of the external surface of a vacuum cleaner’, as the subject matter was not a particular type of a bin, but rather, in a general and abstract manner, all conceivable shapes of a transparent bin with a m ultitude of different appearances (judgment of 25/01/2007, C-321/03, ‘Transparent bin’, paras 35, 37).
b) Graphic representation
A sign that is not capable of being represented graphically will be barred from registration as a Community trade mark under Article 7(1)(a) CTMR.
The function of the requirement of graphic representation is to define the mark itself in order to determine the precise subject matter of the protection afforded by the registered mark to its proprietor. It has been clearly established by case-law that a graphic representation in terms of Article 2 of the Trade Mark Directive, which corresponds to Article 4 CTMR, must enable the sign to be represented visually, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective (judgment of 12/12/2002 , C-273/00, ‘Sieckmann’, paras 46-55, and judgment of 06/05/2003, ‘Libertel’, C-104/01, paras 28-29). The requirement of ‘objectivity’ means that the sign must be perceived unambiguously and consistently over time in order to function as a guarantee of indication of origin. The object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.
c) Distinguishing character
Article 4 CTMR refers to the capacity of a sign to distinguish the goods of one undertaking from those of another. Unlike Article 7(1)(b) CTMR, which concerns the distinctive character of a trade mark with regard to specific goods or services, Article 4 CTMR is merely concerned with the abstract ability of a sign to serve as a badge of
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origin, regardless of the goods or services. Only in very exceptional circumstances is it conceivable that a sign could not possess even the abstract capacity to distinguish the goods or services of one undertaking from those of another. A conceivable example for the lack of abstract capacity in the context of any goods or services could be, e.g., the word “Trademark”. In practice, a sign that does not even possess abstract distinguishing character will already be objected to during the formalities examination and will not proceed to be examined in terms of substance under Article 7(1)(a) CTMR.
2.1.2 Examples of trade mark applications refused or accepted under Article 7(1)(a)
The list of examples given below is not exhaustive. Further examples and guidance on registrability under Article 4 CTMR can be found in the Guidelines, Part B, Section 2, Examination of Formalities, Chapter 9.4 – 9.8: Mark Type)
2.1.2.1 Smell / olfactory marks
There is currently no means of graphically representing smells in a satisfactory way. As regards a chemical formula, few people would recognise the odour in question in such a formula. Moreover, a deposit of an odour sample would not constitute a graphic representation for the purposes of Article 4 CTMR, as an odour sample is not sufficiently stable or durable. In other words, the requirements of graphic representation of an olfactory mark are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements (see judgment of 12/12/2002, C-273/00, ‘Sieckmann’, paras 69-73).
At the present time, there is no generally accepted international classification of smells which would make it possible, as with international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell (judgment of 27/10/2005, T-305/04, ‘Smell of ripe strawberries’, para. 34). Although, as follows from ‘Sieckmann’, a des cription cannot graphically represent olfactory signs which are capable of being described in many different ways, it cannot however be ruled out that in the future an olfactory sign might possibly be the subject of a representation which satisfies all the requirements laid down by Article 4 CTMR, as interpreted by the case-law (judgment of 27/10/2005, T-305/04, ‘Smell of ripe strawberries’, para. 28).
In the above cited case neither the graphic representation (of a red strawberry) nor the description in words (‘smell of ripe strawberries’) were considered to satisfy the requirements set. The smell of strawberries varies from one variety to another and the description ‘smell of ripe strawberries’ can refer to several varieties and therefore to several distinct smells. The description was found neither unequivocal nor precise and did not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed. Likewise, the image of a strawberry represents only the fruit which emits a smell supposedly identical to the olfactory sign at issue, and not the smell claimed, and t herefore does not amount to a gr aphic representation of the olfactory sign.
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2.1.2.2 Taste marks
The arguments mentioned above under paragraph 2.1.2.1 are applicable in a s imilar way for taste marks (see decision of 04/08/2003, R 120/2001-2 – ‘The taste of artificial strawberry flavour’).
2.1.2.3 Sound marks
If a sound mark consists of music, the Office will accept traditional musical notation as a graphic representation of the sound applied for (in accordance with the criteria of the judgement of 27/11/2003, C-283/01, ‘Shield Mark’). Where the mark consists of a non- musical sound, a mere description of the sound in words is not sufficient (R 708/2006-4, ‘TARZAN YELL’). In such cases, a graphic representation consisting of an oscillogram or sonogram will be ac ceptable provided that it is accompanied by a corresponding sound file submitted via e-filing (see decision of the President EX-05-3 of 10/10/2005).
Examples of acceptable sound marks
CTM 9 199 134
Sonograph that was accompanied by a sound file
CTM 1 637 859
Musical notation
Example of an unacceptable sound mark
CTM 143 891 R 781/1999-4 (“ROARING LION”)
The (alleged) sonograph was considered incomplete, as it did not contain a representation of scale of the time axis and the frequency axis (para. 28)
2.1.2.4 Movement marks
Movement marks must also comply with the requirements with respect to graphic representation. The mark’s representation must be ac companied by a description clearly explaining the movement for which protection is sought. In its decision of 23/09/2010, R 443/2010-2 – ‘RED LIQUID FLOWING IN SEQUENCE OF STILLS (MOVEMENT MARK)’, the Second Board of Appeal stated that in cases where a sign is defined by both a graphic representation and a textual description, in order for the representation to be, inter alia, clear, precise, intelligible, and objective, the description must coincide with what can be seen in the graphic representation. In the present case, the examiner was of the opinion that the stills provided in the representation, in
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conjunction with the description, did not clearly indicate the movement, particularly as it was not sufficiently clear how the movement progressed between the different stills:
The Second Board, however, considered in this regard that the graphic representation and the verbal description of the sign are perfectly compatible and complementary. The applicant had supplied a sufficient number of stills to clearly represent the flow of the movement, together with a precise and detailed textual description of the progression, thus leaving no doub t as to the concept of the movement mark. According to the criteria established by the Second Board, a m ovement mark may only be r efused registration under 7(1)(a) CTMR when a ‘reasonably observant person has to make particularly high intellectual efforts to perceive what the movement mark is’.
No limit has been set up and the number of stills depends on the movement concerned as long as they fulfil the formalities requirements. As for the description of the mark, its content has to be ac curate and adapted to the consistency and c omplexity of the movement to properly and efficiently describe the sign.
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Example of acceptable movement mark
CTM 5 338 629
Description: The mark is an animated sequence with two flared segments that join in the upper right portion of the mark. During the animation sequence, a geometric object moves up adjacent to the first segment and then down adjacent to the second segment, while individual chords within each segment turn from dark to light. Stippling down in the mark is for shading only. The entire animated sequence has a duration of between one and two seconds.
Representations: Mark representation in black and white and shades of grey only; no colour indication.
2.1.2.5 Formless and shapeless combination of two or more colours ‘in any manifestation’
The formless and shapeless combination of two or more colours ‘in any manifestation’ does not satisfy the requirements under the ‘Sieckmann’ and ‘Libertel’ cases regarding the clarity and c onstancy of a graphical representation which is a c ondition for the ability to act as a t rade mark (see also decision of 27/07/2004, R 730/2001-4 – ‘YELLOW/BLUE/RED’).
The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, does not exhibit the qualities of precision and uni formity required by Article 4 CTMR (judgment of 24/06/2004, ‘Colours blue and yellow’, C-49/02, para. 34).
Moreover, such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark. Accordingly, a g raphic representation consisting of two or more colours, designated in the abstract and without contours must be systematically arranged by associating the colours concerned in a pr edetermined and uniform way (judgment of 14/06/2012, T-293/10, ‘Colour per se’, para. 50)
2.1.2.6 Ambiguous and contradictory descriptions incoherent with the nature of the sign
A description which is ambiguous and contradictory is not acceptable. Furthermore, the description must be coherent with the nature of the sign. In its judgment of 14/06/2012, T-293/10, ‘SEVEN SQUARES OF DIFFERENT COLOURS’, the General Court considered that the mark’s description (‘Six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs characterised by: (i) any two adjacent surfaces having different colours and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments.’) was too difficult to understand:
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A sign so defined is not a colour mark per se but a three-dimensional mark, or figurative mark, which corresponds to the external appearance of a pa rticular object with a specific form, a cube covered in squares with a particular arrangement of colours. Even if the description had been clear and easily intelligible – which it was not – it would in any event have contained an inherent contradiction in so far as concerns the true nature of the sign (paras 64 and 66).
2.1.3 Relationship with other CTMR provisions
When the mark is objectionable under Article 7(1)(a) CTMR, no further examination of the mark under the remaining possible grounds for refusal, such as 7(1)(b) or 7(1)(c) CTMR is necessary.
According to Article 7(3) CTMR, the absolute grounds for refusal under Article 7(1)(a) CTMR cannot be overcome through acquired distinctiveness in consequence of the use of the mark.
2.2 Distinctiveness (Article 7(1)(b) CTMR)
2.2.1 General remarks
According to settled case-law, the distinctiveness of a m ark within the meaning of Article 7(1)(b) CTMR means that the sign serves to identify the product and/or services in respect of which registration is applied for as originating from a par ticular undertaking, and t hus to distinguish that product from those of other undertakings (judgment of 29/04/2001, joined cases C-468/01 P to C-472/01 P, para. 32; judgment of 21/10/2004, C-64/02 P, para. 42; judgment of 08/05/2008, C-304/06 P, para. 66; and Audi v OHIM, para. 33). According to settled case-law, such distinctiveness can be assessed only by reference first to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (judgment of 29/04/2001, joined cases C-468/01 P to C-472/01 P, para. 33; judgment of 08/05/2008, C-304/06 P, para. 67; and A udi v OHIM, para. 34) (judgment of 14/062012, T-293/10, ‘Colour per se’, judgment of 12/07/2012, C-311/11 P, ‘Wir machen das Besondere einfach’, paras 23).
Although it is commonly accepted that a minimum degree of distinctiveness suffices, it must also be taken into account that in order to be distinctive as a Community trade mark, the mark must be distinctive with regard to the European Union as a whole.
According to the case-law of the European Courts, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) CTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) CTMR (see judgment of 12/06/2007, T-190/05, ‘TWIST & POUR’, para. 39).
In a similar vein, even though a given term might not be clearly descriptive with regard to the goods and s ervices concerned, as to the point that an objection under Article 7(1)(c) CTMR would not apply, it would still be objectionable under Article 7(1)(b) CTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin. This was the case with the term ‘medi’, which was considered as merely providing information to the relevant public about the medical or
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therapeutic purpose of the goods or of their general reference to the medical field (judgment of 12/07/2012, T-470/09, ‘Medi’, para. 22).
An objection under Article 7(1)(b) CTMR would also apply in those cases where the lexical structure employed, although not correct from a grammatical point of view, can be considered to be common in advertising language and in the commercial context at issue. This was the case of the combination ‘ECO PRO’, where the laudatory element PRO is placed after the descriptive element ECO and which would be perceived by the relevant public as an indication that the designated goods are intended for ‘ecological professionals’ or are ‘ecological supporting’ (judgment of 25/04/2013, T-145/12, ‘ECO PRO’, paras 29-32).
2.2.2 Word elements
Words are non-distinctive or cannot convey distinctiveness to a composite sign if they are so frequently used that they have lost any capacity to distinguish goods and services. The following terms, alone or in combination with other unregistrable elements, fall foul under this provision.
Terms merely denoting a particular positive or appealing quality or function of the goods and services should be refused if applied for either alone or in combination with descriptive terms:
• ECO as denoting ‘ecological’ (judgment of 24/04/2012, T-328/11, ‘EcoPerfect’, para. 25 and judgment of 15/01/2013, T-625/11, ‘ecoDoor’ para. 21);
• MEDI as referring to ‘medical’ (judgment of 12/07/2012, T-470/09, ‘medi’);
• MULTI as referring to ‘much, many, more than one’ (decision of 21/07/1999, R 99/1999-1 – ‘MULTI 2 ‘n 1’; decision of 17/11/2005, R 904/2004-2 – ‘MULTI’)
• MINI as denoting ‘very small’ or ‘tiny’ (decision of 17/12/1999, R 62/1999-2 – ‘MINIRISC’);
• Premium/PREMIUM as referring to ‘best quality’ (judgment of 22/05/2012, T-60/11, paras 46-49, 56 and 58; and j udgment of 17/01/2013, joined cases T-582/11 and T-583/11, ‘PREMIUM L’, ‘PREMIUM XL’, para. 26)
• PLUS, as denoting ‘additional, extra, of superior quality, excellent of its kind’. (decision of 15/12/1999, R 329/1999-1 – ‘PLATINUM PLUS’);
• ULTRA1 as denoting ‘extremely’ (decision of 09/12/2002, R 333/2002-1 – ‘ULTRAFLEX’)
• UNIVERSAL as referring to goods which fit for general or universal use (judgment of 02/05/2012, T-435/11, ‘UniversalPHOLED’, paras 22 and 28)
Top level domain endings, such as ‘.com’, only indicate the place where information can be r eached on the internet and thus cannot render a des criptive or otherwise objectionable mark registrable. Therefore, www.books.com is as objectionable for
1 Amended on 23/06/2010
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printed matter as the term ‘books’ alone. This has been confirmed by the General Court in its judgment of 21/11/2012, T-338/11, ‘photos.com’, para. 22, where it was stated that the element ‘.com’ is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, it may also indicate that the goods and services covered by the trade mark application can be obtained or viewed on-line, or are internet-related. Accordingly, the element in question must also be considered to be devoid of distinctive character in respect of the goods or services concerned.
Abbreviations of the legal form of a company such as Ltd., GmbH cannot add to the distinctiveness of a sign.
Likewise, terms designating that the goods and services are rendered by a group of people are unregistrable, such as ‘company, people’ (for establishments) ‘Club’. For example, ‘Kitchen Company’ is unregistrable for kitchens. This is different if the sign as a whole does not merely refer to the goods and services in the abstract but creates the overall impression of a distinct, identifiable entity. Examples: ‘Royal Society for the Prevention of Cruelty to Animals’, ‘International Trade Mark Association’ would all be registrable.
Names of individual persons are distinctive, irrespective of the frequency of the name and even in the case of the most common surnames names such as Smith or García. Refer to judgment of 16/09/2004, C-404/02, ‘Nichols’, paras 26 and 30. The same is true for names of prominent persons, including heads of states.
2.2.3 Titles of books
Trade marks consisting solely of a famous story or book title may be non-distinctive under Article 7(1)(b) in relation to goods and services which could have that story as their subject matter. The reason for this is that certain stories (or their titles) have become so long established and well known that they have ‘entered into the language’ and are incapable of being ascribed any meaning other than that of a particular story.
For example ‘Peter Pan’ or ‘Cinderella’ or ‘The Iliad’ are perfectly capable of being distinctive trade marks for (e.g.) paint, clothing or pencils. However, they are incapable of performing a distinctive role in relation to (e.g.) books or films because consumers will simply think that these goods refer to the story of Peter Pan or Cinderella, this being the only meaning of the terms concerned.
Objections should only be raised in such cases where the title in question is famous enough to be truly well known to the relevant consumer and where the mark can be perceived in the context of the goods/services as primarily signifying a famous story or book title. A finding of non-distinctiveness in this regard will be more likely where it can be shown that a large number of published versions of the story have appeared and/or where there have been numerous television, theatre and film adaptations reaching a wide audience.
Depending on the nature of the mark in question, an objection may be taken in relation to printed matters, films, recordings, plays and shows (this is not an exhaustive list).
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2.2.4 Colours
This paragraph is concerned with single colours or combinations of colours as such (‘colour per se’).
Where colours or colour combinations as such are applied for, the appropriate examination standard is whether they are distinctive either if applied to the goods or their packaging, or if used in the context of delivery of services. It is a sufficient ground for a mark to be refused if the mark is not distinctive in either of these situations. For colour combinations, examination of distinctiveness should be ba sed on t he assumption that the colour combination in the way it is filed appears on the goods or their packaging, or in advertisement or promotional material for the services.
2.2.4.1 Single colours
As regards the registration as trade marks of colours per se, the fact that the number of colours actually available is limited means that a s mall number of trade mark registrations for certain services or goods could exhaust the entire range of the colours available. Such an ex tensive monopoly would be i ncompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a s ingle trader. Nor would it be c onducive to economic development or the fostering of the spirit of enterprise for established traders to be able to register the entire range of colours that is in fact available for their own benefit, to the detriment of new traders. Nor would it be c onducive to economic development or the fostering of the spirit of enterprise for established traders to be able to register the entire range of colours that is in fact available for their own benefit, to the detriment of new traders. (judgment of 06/05/2003, C-104/01, ‘Libertel’).
As has been c onfirmed by the Court of Justice, consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not used as a means of identification in current commercial practice (judgment of 06/05/2003, C-104/01, ‘Libertel’). A colour is not normally inherently capable of distinguishing the goods of a par ticular undertaking (para. 65). Therefore, single colours are not distinctive for any goods and services except under very special circumstances.
Such very special circumstances require that the applicant demonstrates that the mark is absolutely unusual or striking, in relation to these specific goods. These cases will be extremely rare, for example in the case of the colour black for milk. It is not necessary for a refusal that one of the factors listed in paragraph 2.2.4.2 below is present, but if this is the case, it should be used as a further argument in support of the refusal. Where the single colour is found to be commonly used in the relevant sectors and/or to serve a decorative or functional purpose, the colour must be refused. The public interest is according to the Court an obstacle to the monopolisation of a single colour irrespective of whether the relevant field of interest belongs to a very specific market segment (judgment of 13/09/2010, T-97/08, ‘Shade of orange’ paras 44-47).
2.2.4.2 Colour combinations
Where a combination of colours per se is applied for, the graphic representation filed must spatially delineate these colours so as to determine the scope of the right applied
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for (what you see is what you get). The graphic representation should clearly indicate the proportion and position of the various colours, thus systematically arranging them by associating the colours in a pr edetermined and uni form way (judgment of 24/06/2004, C-49/02 ‘Blue and yellow’, para. 33 and judgment of 14/06/2012, T-293/10, ‘Colour per se’, para. 50).
For example, a mark comprising a small yellow stripe on top of red is different from red and yellow presented in even proportion, red being on the left side. An abstract claim, in particular as to two colours ‘in any possible combination’ or ‘in any proportion’, is not allowable and l eads to an obj ection under Article 7(1)(a) CTMR (decision of 27/07/2004, R 730/2001-4 – ‘GELB/BLAU/ROT’, para. 34). This must be distinguished from the indication on how the colour combination would appear on the product, which is not required because what matters in connection with the assessment of inherent distinctiveness is the subject-matter of the registration, not the way it is or can be used on the product.
In the case of colour combination, a refusal can only be based on specific facts or arguments, and where such specific arguments to refuse are not established, the mark shall be accepted. If one of the two colours is either the commonplace colour for the product or is the natural colour of the product, i.e. a colour is added t o the usual or natural colour of the product, an objection applies in the same way as if there was only one colour. Examples: grey is the usual colour for the grip of gardening tools, and white is the natural colour of washing tablets. Therefore, a washing tablet which is white with another layer in red in fact is to be judged as a case which involves the addition of a colour.
The situations in which a combination of two colours should nevertheless be refused include the following.
• In many instances, a colour would merely be a d ecorative element of the goods or comply with the consumer’s request (e.g. colours of cars or T-shirts), irrespective of the number of colours concerned.
• A colour can be the nature of the goods (e.g. for tints).
• A colour can be technically functional (e.g. colour red for fire extinguishers, various colours used for electric cables).
• A colour may also be usual or generic (e.g. again, red for fire extinguishers; yellow for postal services).
• A colour may indicate a particular characteristic of the goods such as a taste (yellow for lemon taste, pink for strawberry taste).
• A colour combination should also be refused if the existence of the colour combination can already be found on the market, in particular if used by several different competitors (e.g. we were able to show that the colour combination red and yellow is used by various enterprises on beer or soft drink cans).
In all these cases the trade mark should be objected to but with the careful analysis of the goods and services concerned and the situation on the market.
The criteria to assess the distinctiveness of colour marks designating services should not be different from those applicable to colour marks designating goods (as recalled
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by the General Court in its judgment of 12/11/2010, T-404/09, ‘GREY-RED’). In this case, the colour combination applied for was considered not to differ for the relevant consumer in a perceptible manner from the colours usually used for the services concerned. The General Court concluded that the colour combination applied for was very close to the combination ‘white/red’ used on the railway crossing gates and traffic signs associated with train traffic and that the sign, as a whole, would be recognised by the relevant public as a functional or decorative element and not as an indication of the commercial origin of the services.
The higher the number is, the less distinctiveness is likely, because of the difficulty to memorise a high number of different colours and their sequence.
For the names of colours see paragraph 2.3.2.9.
2.2.5 Single letters2
2.2.5.1 General considerations
In its judgment of 09/09/2010, C-265/09 P (α), the Court of Justice ruled that, in the case of trade marks consisting of single letters represented in standard characters with no graphic modifications, it is necessary to assess whether the sign at issue is capable of distinguishing the different goods and services in the context of an examination, based on the facts, focusing on the goods or services concerned (para. 39).
The Court recalled that, according to Article 4 CTMR, letters are among the categories of signs of which a Community trade mark may consist, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings (para. 28) and emphasised that registration of a sign as a trade mark does not require a specific level of linguistic or artistic creativity or imaginativeness on part of the applicant.
Although acknowledging that it is legitimate to take into account the difficulties in establishing distinctiveness which may be associated with certain categories of trade marks because of their very nature and t hat it may prove more difficult to establish distinctiveness for marks consisting of a s ingle letter than for other word marks (para. 39), the Court clearly stated that these circumstances do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law (paras 33-39).
As to the burden of proof, the Court stated that when examining absolute grounds for refusal, the Office is required under Article 76(1) CTMR to examine, of its own motion, the relevant facts which might lead it to raise an objection under Article 7(1) CTMR and that that requirement cannot be made relative or reversed, to the detriment of the CTM applicant (paras 55-58). Therefore, it is for the Office to explain, with a motivated reasoning, why a t rade mark consisting of a s ingle letter represented in standard characters is devoid of any distinctive character.
It is therefore necessary to carry out a thorough examination based on the specific factual circumstances of the case in order to assess if a given single letter represented in standard characters can function as a trade mark in respect of the goods/services
2 This part deals with single letters under Article 7(1)(b). For single letters under Article 7(1)(c), see Point 2.3.2.8
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concerned. This need of a factual assessment implies that it is not possible to rely on assumptions (such as that consumers are generally not accustomed to seeing single letters as trademarks).
Consequently, when examining single letter trade marks, generic, unsubstantiated arguments such as those relating to the availability of signs should be avoided, given the limited number of letters. The Office is obliged to establish, on the basis of a factual assessment, why the applied for trade mark would be objectionable.
It is therefore clear that the examination of single letter trade marks should be thorough and stringent, and that each case calls for a careful examination of whether a given letter can be c onsidered inherently distinctive having regard to the goods and/or services concerned.
2.2.5.2 Examples
For instance, in technical domains such as those involving computers, machines, motors and tools, it is more likely that single letters will be per ceived as technical, model or catalogue references rather than as indicators of origin, although that this is the case should result from a factual assessment.
Depending on the outcome of the prior examination, a trade mark consisting of a single letter represented in standard characters might be objectionable under Article 7(1)(b) CTMR on the ground that it is devoid of inherent distinctiveness for the goods and/or services concerned or part thereof.
This would be the case, for example, of a trade mark consisting of the single letter ‘C’ for ‘fruit juices’, as this letter is commonly used to designate the vitamin C. The relevant public would not perceive it as a sign distinguishing the commercial origin of the goods in question.
Other examples of lack of distinctiveness would be single letter trade marks applied for in respect of toy cubes, which are often used to teach children how to construct words by combining letters appearing on the cubes themselves, without however describing the product as such, or single letters applied for in respect of lottery services, sector in which letters are often used to indicate different series of numbers.
Although in both the above cases there is no direct descriptive relationship between the letters and the goods/services, a t rade mark consisting of a s ingle letter would lack distinctiveness because consumers are more used, when it comes to toy cubes and lotteries, to seeing single letters as having either a functional or a u tilitarian connotation, rather than as indicators of commercial origin.
On the other hand, if it cannot be established that a given single letter is devoid of any distinctive character in respect of the goods and/or services concerned, then it should be accepted, even if represented in standard characters or in a fairly basic manner.
For example, the letter was accepted in respect of ‘transport; packaging and storage of goods; travel arrangement’ in Class 39 and ‘services for providing food and drink; temporary accommodation’ in Class 43 (see decision of 30/09/2010, R 1008/2010-2, paras 12-21).
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For further examples see paragraph 2.3.2.8 below.
2.2.6 Slogans: assessing distinctive character
The Court of Justice has ruled that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character (judgment of 12/07/12, C-311/11 P, ‘WIR MACHEN DAS BESONDERE EINFACH’ and case-law cited).
Advertising slogans are objectionable under Article 7(1)(b) CTMR when the relevant public perceives them only as a mere promotional formula. However, they are deemed to be distinctive if, apart from their promotional function, the public perceives them as an indication of the commercial origin of the goods or services in question.
The Court of Justice has provided the following criteria that should be used in assessing the distinctive character of a slogan (judgments of 21/01/2010, C-398/08 P, ‘VORSPRUNG DURCH TECHNIK’, para. 47, and of 13/04/2011, T-523/09, ‘WIR MACHEN DAS BESONDERE EINFACH’, para. 37).
An advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because it:
• has a number of meanings and/or • constitutes a play on words and/or • introduces elements of conceptual intrigue or surprise, so that it may be
perceived as imaginative, surprising or unexpected, and/or • has some particular originality or resonance and/or • triggers in the minds of the relevant public a cognitive process or requires an
interpretative effort.
In addition to the above, the following characteristics of a slogan may contribute towards a finding of distinctiveness:
• unusual syntactic structures • the use of linguistic and stylistic devices such as alliteration, metaphor, rhyme,
paradox, etc.
However, the use of unorthodox grammatical forms must be carefully assessed because advertising slogans are often written in a simplified form, in such a way as to make them more concise and s nappier (see, inter alia, judgment of 24/01/2008, T-88/06, ‘SAFETY 1ST’, para. 40). This means that a l ack of grammatical elements such as definite articles or pronouns (THE, IT, etc.), conjunctions (OR, AND, etc.) or prepositions (OF, FOR, etc.) may not always be s ufficient to make the slogan distinctive. In ‘SAFETY 1ST’, the Court considered that the use of ‘1ST’ instead of ‘FIRST’ was not sufficiently unorthodox to add distinctiveness to the mark.
A slogan whose meaning is vague or impenetrable or whose interpretation requires considerable mental effort on the part of the relevant consumers is also likely to be distinctive since consumers would not be able to establish a clear and direct link with the goods and services claimed.
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The fact that the relevant public is a specialist one and its degree of attention is higher than average cannot decisively influence the legal criteria used to assess the distinctive character of a sign. As stated by the Court of Justice, ‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’ (judgment of 12/07/12, C-311/11 P, ‘WIR MACHEN DAS BESONDERE EINFACH’, para. 48).
The following examples show some of the different functions that slogans may serve and the arguments that can support an objection under Article 7(1)(b) CTMR.
CTM Main function Case No
CTM No 5 904 438 MORE THAN JUST A CARD
for Class 36 (bank, credit and debit card services)
Customer service statement R 1608/2007-4
Objected to under Article 7(1)(b) CTMR
The slogan merely conveys information about the goods and services applied for. It is the kind of language an English speaker would use to describe a bank card which is a l ittle out of the ordinary. It conveys the notion that the card has welcome features which are not obvious at first sight. The fact that the slogan leaves open what these features are, that is, that the mark does not describe a specific service or characteristic of the ‘card’, does not make the mark distinctive.
CTM Main function Case No
CTM No 7 394 414 WE PUT YOU FIRST. AND KEEP YOU AHEAD
for Class 40 Customer service statement
(Examiner’s decision
without BOA case)
Objected to under Article 7(1)(b) CTMR
The mark is a promotional laudatory message, highlighting the positive aspects of the services, namely that they help to procure the best position in the business and maintain this position in the future.
CTM Main function Case No
CTM No 6 173 249 SAVE OUR EARTH NOW
for Classes 3, 17, 18, 20, 22, 24, 25 and 28 Value statement or political motto R 1198/2008-4
Objected to under Article 7(1)(b) CTMR
The sign is a simple and straightforward appeal to take action and contribute to the earth’s wellbeing by favouring the purchase of environment-friendly products. Contrary to the appellant’s contentions that the word ‘now’ constitutes an original element since nobody will believe that by purchasing the goods in question they will literally save the earth now, the word ‘NOW’ is an emotional word commonly used in marketing to urge consumers to consume, to get what they want without waiting; it is a call to action. The relevant consumer will immediately recognise and perceive the sign as a promotional laudatory expression indicating that the goods represent an environment-friendly alternative to other goods of the same sort, and not as an indication of commercial origin.
CTM Main function Case No
CTM No 4 885 323 DRINK WATER, NOT SUGAR
for Classes 32 and 33 Inspirational or motivational statement R 718/2007-2
Objected to under Article 7(1)(b) CTMR
The mark is a banal slogan, which merely conveys the idea that the consumer will be drinking real water rather than a sugary drink. The mark lacks any secondary or covert meaning, has no fanciful elements, and its message to the consumer is plain, direct and unambiguous. For these reasons, it is unlikely to be perceived as a sign of trade origin. It is easily seen that the mark consists merely of good counsel, namely that it is better from a health point of view to drink water that has not been sugared. What better way to promote such goods than by an expression such as DRINK WATER, NOT SUGAR? Consumers will read this with approval, but will look elsewhere on the product for the trade mark.
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CTM Main function Case No
VALORES DE FUTURO for Class 41 Value statement
Judgment of 06/12/2013,
T-428/12
Objected to under Article 7(1)(b) CTMR
The relevant public when confronted with the expression VALORES DE FUTURO will perceive a laudatory message whose only objective is to give a positive view to the services involved.
Some examples of accepted slogans:
• DEFINING TOMORROW, TODAY, decision of 07/02/2012, R 1264/2011-2, CTM No 9 694 431, for goods and services in Classes 9, 10, 16, 35, 41, 44 and 45.
• SITEINSIGHTS, Board of Appeal decision of 08/11/2011, R 879/2011-2, CTM No 9 284 597, for goods and services in Classes 9 and 42.
• THE PHYSICIAN DRIVEN IMAGING SOLUTION, IR No W 01 096 100, for goods and services in Classes 9, 16 and 42.
• UNMASKING THE SOCIAL NETWORK OF FRAUD, CTM No 10 477 941, for goods and services in Classes 9, 36 and 45.
A slogan is objectionable under Article 7(1)(c) CTMR if it immediately conveys information about the kind, quality, intended purpose or other characteristics of the goods or services (see paragraph 2.3.2.5 below).
2.2.7 Simple figurative elements
Simple geometric devices such as circles, lines, rectangles or common pentagons are unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as a trade mark.
As set out by the Court, an extremely simple sign, composed of a basic geometric figure such as a c ircle, a line, a rectangle or a pentagon is not capable, as such, of conveying a message which the consumers can remember, with the result that they will not consider it as a trademark (see T-304/05, par. 22)
Examples of refused trade marks
Sign G&S Reasoning Case
Class 33
The sign consists merely of a usual pentagon, a simple geometric figure. The geometric form, if it happened to be the form of the label, would be perceived as having a functional or aesthetic purpose rather than an origin function.
Judgment of 12/09/2007, T-304/05,
‘Pentagon’
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Sign G&S Reasoning Case
Classes 9, 14,16, 18, 21, 24, 25, 28, 35-39,
41-45
The sign will be per ceived as an ex cessively simple geometric shape, essentially as a parallelogram. To fulfil the identification function of a t rade mark, a parallelogram should contain elements which singularise it in relation to other parallelograms’ representations. The two characteristics of the sign are the fact that it is slightly inclined towards the right and that the base is slightly rounded and stretched out towards the left. Such nuances would not be perceived by the general consumer.
Judgment of 13/04/2011, T-159/10,
‘Parallelogram’
Classes 14, 18, 25
The sign does not contain any elements which may be e asily and i nstantly memorised by an attentive relevant public. It will be perceived only as a decorative element, regardless of whether it relates to goods in Class 14 or to those in Classes 18 and 25.
Judgment of 29/09/2009, T-139/08, ‘Representation of the
half a smiley smile
Class 9
The sign consists of a basic equilateral triangle. The inverted configuration and red outline of the triangle do not serve to endow the sign with distinctive character. The sign’s overall impact remains that of a simple geometric shape which is not capable of transmitting a trade mark message prima facie.
International Registration
No W01 091 415
Class 3, 18, 24, 43, 44
The sign consists of merely a s imple geometric figure and in a green colour. The specific colour is commonly and w idely used in advertising and in the marketing of goods and services for their power to attract without giving any precise message.
Judgment of 09/12/2010, T-282/09,
‘Green square’
Example of an accepted trade mark
Sign G&S Reasoning Case
Class 35, 41
The sign consists of a design featuring overlapping triangular elements. The overall impression created is far more complex than that of a simple geometric shape.
CTM No 10 948 222
2.2.8 Commonplace figurative elements
The following representation of a vine leaf is not distinctive for wine:
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Similarly, the following representation of a cow for milk products is not distinctive:
CTM No 11 345 998, claiming Classes 29 (milk and milk products, etc.) and 35.
The above sign was refused, as representations of cows are commonly used in relation to milk and milk products. The fact that the subject mark consists of an ‘aerial’ picture of a cow is not sufficient to confer distinctive character to the sign, as slight alterations to a commonplace sign will not make that sign distinctive. The same reasoning would be applicable also to related goods such as ‘milk chocolate’.
2.2.9 Typographical symbols
Typographical symbols such as dot, coma, semicolon, quotation mark or exclamation mark will not be c onsidered by the public as an indication of origin. Consumers will perceive them as a sign meant to catch the consumer’s attention but not as a sign that indicates commercial origin. A similar reasoning applies to common currency symbols, such as the €, £, $ s igns; depending on the goods concerned, these signs will only inform consumers that a specific product or services is traded in that currency.
The following marks were objected to.
Sign G&S Reasoning Case
Classes 14, 18 and 25
The GC confirmed the finding of the BoA that the trade mark applied for is devoid of the necessary degree of distinctive character. It consists merely of a punctuation mark with no special additional features immediately apparent to customers, and is a commonplace sign which is frequently used in business or in advertising. In view of its frequent use, the relevant consumer will see the exclamation mark as being merely laudatory advertising or something to catch the eye (see judgment of 30/09/2009, T-75/08, ‘!’).
CTM No 5 332 184
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Sign G&S Reasoning Case
Classes 29, 30, 31 and
32
The sign applied for was refused because, in the case of the claimed goods (foodstuff and beverages), percentages are particularly important in relation to the price. For example, the percentage sign indicates clearly that there is a favourable cost/benefit ratio because the price has been reduced by a particular percentage in comparison with the normal price. Such a percent sign in a r ed circle is also frequently used in connection with clearance sales, special offers, stock clearances or cheap no-name products etc. The consumer will regard the sign merely as a pictogram conveying the information that the goods claimed are sold at a reduced price’ (see decision of 16/10/2008, R 998/2008-1 – ‘Prozentzeichen’).
CTM No. 5649256
2.2.10 Pictograms
Pictograms are basic and unornamented signs and symbols which one will interpret as having purely informational or instructional value in relation to the goods or services concerned. Examples would be signs which indicate mode of use (like a picture of a telephone in relation to pizza delivery services) or which convey a universally understandable message (like a knife and fork in relation to provision of food).
Commonly used pictograms, for example a white ‘P’ on a blue background to designate a parking place (this sign could also be ob jectionable under Article 7(1)(d)) or the design of an i ce cream to designate that ice cream is sold in the vicinity, are not distinctive in relation to the goods or services in respect of which they are used.
Sign Reasoning Case
Taking into account the kind of goods and services applied for in Classes 9, 35, 36, 38 and 42 (for example cash dispensers, banking services), the public will see the sign as a practical indication or as directional arrows showing where the magnetic card has to be inserted into the distributor. The association of the triangles to the other elements of the trade mark applied for means that the public concerned will perceive them as directional arrows. Consumers see this type of practical information every day in all kinds of places, such as banks, supermarkets, stations, airports, car parks, telephone boxes, etc. (paras 37-42).
Judgment of 02/07/2009, T-414/07, ‘A hand holding a card
with three triangles’
CTM No 9 894 528 for goods in Class 9
The above sign was refused as it is identical to the core of the international safety symbol known as ‘high voltage symbol’ or ‘caution, risk of electric shock’. It has been officially defined as such by ISO 3864 as the standard high voltage symbol, whereby the device applied for is contained within the triangle which denotes that it is a hazard symbol. Because this sign essentially coincides with the customary international sign to indicate a risk of high voltage, it was refused under Article 7(1)(b) CTMR.
Decision of 21/09/2012,
R 2124/2011-5 – ‘Device of lightning
bolt’
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2.2.11 Common / non-distinctive labels
A figurative sign may be composed of shapes, designs or figures that will be perceived by the relevant public as non-distinctive labels. Also in this case the reason for the refusal lies in the fact that such figurative elements are not capable of impressing themselves in the consumer’s mind, since they are too simple and/or commonly used in connection with the goods/services claimed.
See the following examples
Sign Reasoning Case
CTM No 4373403, filed as a three dimensional mark
claiming goods in Class 16 (Adhesive labels; adhesive
labels for use with hand labelling appliances; and
labels (not of textile))
The mark applied for is ‘devoid of any distinctive character’ and was refused under Article 7(1)(b) CTMR as it is as banal and ordinary as it is possible to get in relation to adhesive labels. The sign says a lot about the nature of the goods and very little, if anything, about the identity of the producer (para. 11).
Decision of 22/05/2006,
R 1146/2005-2
CTM No 9 715 319 for goods in Classes 6, 7, 8,
9 and 20
The mark was refused, as its basic shape combined only with a bright colour yellow cannot, in the minds of the relevant professional and general public, serve to distinguish the goods applied for as originating from a par ticular undertaking. Here, the colour yellow may be perceived as a decoration of the goods, as well as for the purpose of attracting attention to the goods, without giving any specific information or precise message as to the commercial origin of the goods. In addition, as is generally known, the bright colour yellow is commonly used in a functional way in relation to a wide range of goods, i.e., inter alia, for increasing the visibility of objects, highlighting or warning. For these reasons, the relevant consumers will not recognise this colour as a t rade mark, but will perceive it in its alerting function or its decorative function.
Decision of 15/01/2013,
R 444/2012-2 – ‘Device of a label in
yellow colour’
In the same way, the following marks were rejected.
CTM No 11 177 912 claiming Classes 29, 30 and 31
CTM No 11 171 279 claiming Classes 29, 30 and 31
CTM No 10 776 599 claiming, inter alia, goods in Classes 32
and 33
Absolute Grounds for Refusal
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In the three preceding cases, both the colour and the shape of the labels are quite commonplace. The same reasoning applies to the stylised representation of the fruits in the last of the three cases. Furthermore, the said figurative element represents or at least strongly alludes to the ingredients of some of the claimed goods, such as, for example, fruit juices.
2.2.12 Three-dimensional trade marks
2.2.12.1 Preliminary remarks
Article 7(1)(b) CTMR does not distinguish between different categories of trade marks in determining whether a trade mark is capable of distinguishing the goods or services of one undertaking from those of other undertakings (see judgment of 05/03/2003, T-194/01, ‘Ovoid tablet’, para. 44). In applying this uniform legal standard to different trade marks and categories of trade marks a distinction must be made in accordance with consumer perception and market conditions.
For signs consisting of the shape of the goods themselves, no stricter criteria shall apply than for other marks, but it may be m ore difficult to come to a f inding of distinctiveness, as such marks will not necessarily be perceived by the relevant public in the same way as a word or figurative mark (see judgment of 08/04/2002, C-136/02 P, ‘Maglite’, para. 30).
Three-dimensional trade marks can be grouped into three categories:
• shapes unrelated to the goods and services themselves • shapes that consist of the shape of the goods themselves or part of the goods • the shape of packaging or containers.
2.2.12.2 Shapes unrelated to the goods or services themselves
Shapes which are unrelated to the goods or services themselves (e.g. the Michelin Man) are usually distinctive.
2.2.12.3 Shape of the goods themselves or shapes related to the goods or services.
The case-law developed for three-dimensional marks which consist of the representation of the shape of the product itself is also relevant for figurative marks consisting of 2-dimensional representations of the product or elements of it (see judgment of 14/09/2009, T-152/07, ‘Representation of a watch’).
For a s hape which is the shape or the packaging of the goods applied for, the examination should be conducted in the three following steps.
Step 1: Article 7(1)(e) CTMR analysis
In principle, the examiner should first examine whether one of the grounds for refusal under Article 7(1)(e) CTMR applies, as those cannot be ov ercome through acquired distinctiveness. With regards to this first step, see below under paragraph 2.5 Shapes with an essentially technical function, substantial aesthetic value or resulting from the nature of the goods.
Absolute Grounds for Refusal
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Step 2: Identifying the elements of the three-dimensional trade mark
In the second step, the examiner should determine whether the representation of the three-dimensional trade mark contains other elements such as words or labels which might render the trade mark a distinctive character. As a general principle, any element which on i ts own is distinctive will render the 3D trade mark distinctive character as long as it is perceivable in the normal use of the product. Typical examples are words or figurative elements or the combination of them that appear on the exterior of the shape and r emain clearly visible, such as labels on bot tles. Consequently, even the standard shape of a product can be registered as a 3D trade mark if a distinctive word mark or label appears on it.
However, non-distinctive elements or descriptive elements combined with a s tandard shape will not endow distinctiveness upon t hat shape (judgment of 18/01/2013, T-137/12, ‘Shape of a vibrator’, paras 34-36).
Step 3: Criteria for distinctiveness of the shape itself
Lastly, the criteria for distinctiveness of the shape itself must be checked. The basic test is whether the shape is so materially different from basic, common or expected shapes that it enables a consumer to identify the goods just by their shape and to buy the same item again if he has had positive experiences with the goods. A good example for this are frozen vegetables in the form of a crocodile
The following criteria are relevant when examining the distinctiveness of three dimensional trade marks consisting exclusively of the shape of the goods themselves:
• A shape is non-distinctive if it is a basic shape (see judgment of 19/09/2001, T-30/00, ‘TABS-SQUARE / RED / WHITE’) or a combination of basic shapes (see decision of 13/04/2000, R 263/1999-3).
• To be distinctive, the shape must depart significantly from the shape which is expected by the consumer, and i t must depart significantly from the norm or customs of the sector. The more closely the shape resembles the shape that is most likely to be taken by the product in question, the greater the likelihood that it is not distinctive (see judgment of 08/04/2002, C-136/02 P, ‘Maglite’, para. 31).
• It is not enough for the shape to be just a variant of a common shape or a variant of a number of shapes in an area where there is a huge diversity of designs (see judgment of 08/04/2002, C-136/02 P, ‘Maglite’, para. 32 and judgment of 07/02/2002, T-88/00, ‘Maglite’, para. 37).
• Functional shapes or features of a three dimensional mark will be perceived by the consumer as such. For example, for washing tablets, bevelled edges avoid damage to the laundry, and layers of different colours represent the presence of different active ingredients.
While the public is accustomed to recognising a three-dimensional mark as an indicator of source, this is not necessarily the case where the three-dimensional sign is indistinguishable from the product itself. Consequently, an assessment of distinctive character cannot result in different outcomes for a three-dimensional mark consisting of the design of the product itself and for a figurative mark consisting of a faithful
Absolute Grounds for Refusal
Guidelines for Examination in the Office, Part B, Examination. Page 30
FINAL VERSION 1.0 01/02/2015
representation of the same product (judgment of 19/09/2001, T-30/00, ‘TABS-SQUARE / RED / WHITE’, para. 49).
The following is a list of examples of shapes of goods applied for and the analysis of them.
Sign Reasoning Case
Figurative marks showing a graphic representation of a naturalistic reproduction of the goods themselves are not distinctive in relation to such goods. The representation of a tablet for ‘washing or dishwashing preparations in tablet form’ was refused. The shape, namely a rectangular tablet, is a ba sic shape and a n obvious one for a product intended for use in washing machines or dishwashers. The slightly rounded corners of the tablet are not likely to be perceived by the consumer as a distinctive feature of the shape at issue (judgment of 19/09/2001, T-30/00, ‘TABS-SQUARE / RED / WHITE’, paras 44 and 53). The same approach has been confirmed by several judgments, including the judgment of 04/10/2007, C-144/06 P, ‘TABS’.
Judgment of 19/09/2001, T 30/00,
‘TABS-SQUARE / RED / WHITE’
This shape was refused as it is merely a variant of a common shape of this type of product, i.e. flashlights (para. 31).
Judgment of 08/04/2002,
C-136/02 P, ‘Maglite’
This shape was refused because it does not depart significantly from the norm or customs of the sector. Even though the goods in this sector typically consist of long shapes, various other shapes exist in the market which are spherical or round (para. 29). The addition of the small descriptive word element ‘fun factory’ does not remove the overall shape from the scope of non- distinctiveness (para. 36).
Judgment of 18/01/2013, T-137/12, ‘Shape of a vibrator’.
The Court of Justice confirmed the refusal of this three-dimensional sign as being not sufficiently different from the shapes and colours of those commonly used in the sweets and chocolate sectors. The combination with figurative elements will not lead to the application of the criteria for two-dimensional marks.
Judgment of 06/09/2012, C-96/11 P,
‘Milk mice’
Absolute Grounds for Refusal
Guidelines for Examination in the Office, Part B, Examination. Page 31
FINAL VERSION 1.0 01/02/2015
Sign Reasoning Case
This three-dimensional mark consisting of a handle, applied for goods in Class 8 (hand- operated implements used in agriculture, horticulture and forestry, including secateurs, pruning shears, hedge clippers, shearers (hand instruments), was refused.
Judgment of 16/09/2009, T-391/07,
‘Hand grip’
Sign Reasoning Case The Court confirmed the case law on non - distinctiveness of three-dimensional trade marks in the form of a product or its packaging. Even if the oval shape in the CTMA has a complex hollow on its surface, this cannot be considered as a significant difference to the shapes of confectionary available on the market.
Judgment of 12/12/2013, T-156/12
‘Oval shape’
Analogous criteria, mutatis mutandis, apply to shapes related to services, for example the device of a washing machine for laundry services.
2.2.12.4 Shape of the packaging
The same criteria apply for the shape of bottles or containers for the goods. The shape applied for must be m aterially different from a c ombination of basic or common elements and must be striking. Also in the area of containers, regard must be had to any functional character of a given element. As in the field of containers and bottles the usage in trade might be different for different types of goods, it is recommended to make a search as to which shapes are on the market, by choosing a sufficiently broad category of the goods concerned (i.e. in order to assess the distinctiveness of a milk container, search must be effected in relation to containers for beverages in general; see, in that regard, the opinion of the Advocate General in C-173/04, ‘Standbeutel’).
Sign Reasoning Case
The shape applied for was refused as it was considered that bunny-shaped chocolate with gold wrapping is a common phenomenon on the market corresponding to the concerned industry. An analysis of the individual elements, that is, the shape of a rabbit, the gold foil wrapping and the red ribbon with a bell, were held both individually and cumulatively devoid of distinctive character (paras 44-47).
Judgment of 24/05/2012, C-98/11 P,
‘Shape of a bunny made of chocolate with
a red ribbon’
The above mark, the representation of a t wisted wrapper serving as packaging for sweets (and thus not the product itself) was refused registration as it is a ‘normal and traditional shape for a sweet wrapper and that a l arge number of sweets so wrapped could be found on the market’ (para. 56). The same applies in respect of the colour of the wrapper in question, namely ‘light brown (caramel)’. This colour is not unusual in itself, and neither is it rare to see it used for sweet wrappers (para. 56). Therefore, the average consumer will not perceive this packaging in and of itself as an indicator of origin, but merely as a sweet wrapper.
Judgment of 10/11/2004, T-402/02,
‘Sweet wrapper’
Absolute Grounds for Refusal
Guidelines for Examination in the Office, Part B, Examination. Page 32
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Sign Reasoning Case
The refusal of the applied for shape was confirmed by the General Court. The stretched neck and the flattened body do not depart from the usual shape of a bottle containing the claimed goods, namely food products including juices, condiments and dairy products. In addition, neither the length of the neck, its diameter nor the proportion between the width and thickness of the bottle is in any way individual (para. 50). Furthermore, even if the ridges around the sides of the bottle could be considered distinctive, alone it is insufficient to influence the overall impression given by the shape applied for to such an extent that it departs significantly from the norm or customs of the sector (para. 53).
Judgment of 15/03/2006, T-129/04,
‘Shape of a plastic bottle’
Sign Reasoning Case
The Court confirmed the case law on non - distinctiveness of three-dimensional trade marks in the form of a product or its packaging. Even if the oval shape in the CTMA has a complex hollow on its surface, this cannot be considered as a significant difference to the shapes of confectionary available on the market.
Judgment of 12/12/2013, T-156/12
‘Oval shape’
It is a well-known fact that bottles usually contain lines and creases on i t. The relief on the top is not sufficiently striking but will be perceived as a mere decorative element. As a w hole, a combination of the elements is not sufficiently distinctive. The average consumer of the goods in Class 32 would not consider the shape as an indicator of origin of goods in Class 32.
Judgment of 19/04/2013
‘Shape of a drinking bottle’
2.2.13 Pattern marks
A figurative trade mark can be considered as a ‘pattern’ mark when it consists of a set of elements which are repeated regularly.
Pattern marks may cover any kind of goods and services. However, in practice they are more commonly filed in relation with goods such as paper, fabrics, clothing articles, leather goods, jewellery, wallpaper, furniture, tiles, tyres, building products, etc., i.e. goods that normally feature designs. In these cases, the pattern is nothing else than the outward appearance of the goods. In this regard it must be not ed that though patterns may be represented in the form of squared/rectangular labels, they should nonetheless be assessed as if they cover the entire surface of the goods applied for.
It must also be t aken into account that when a pattern mark claims goods such as beverages or fluid substances in general, that is, goods that are normally distributed and sold in containers, the assessment of the design should be made as if it covered the outward surface of the container/packaging itself.
It follows from the above that, as a rule, in the assessment of the distinctive character of patterns the examiner should use the same criteria that are applicable to three dimensional marks that consist of the appearance of the product itself (see judgment of 19/09/2012, T-329/10, ‘Black, grey, beige and dark red coloured checked pattern’).
With regard to services, examiners should bear in mind that pattern marks will be used in practice on l etterhead and c orrespondence, invoices, internet web sites, advertisements, shop signs etc.
Absolute Grounds for Refusal
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In principle, if a pat tern is commonplace, traditional and/or typical it is devoid of distinctive character. In addition, patterns that consist of basic/simple designs usually lack distinctiveness. The reason for the refusal lies in the fact that such patterns do not convey any ‘message’ that could make the sign easily memorable for consumers. Paradoxically, the same applies to patterns composed of extraordinarily complex designs. In these cases the complexity of the overall design will not allow the design’s individual details to be committed to memory (judgment of 09/10/2002, T-36/01, ‘Texture of glass surface’, para. 28). Indeed, in many cases the targeted public would perceive patterns as merely decorative elements.
In this regard, it must be taken into account that usually the average consumer tends not to look at things analytically. A trade mark must therefore enable average consumers of the goods/services in question, who are reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an anal ytical or comparative examination and without paying particular attention (judgments of the Court of Justice of 12/02/2004, C-218/01, ‘Perwoll bottle’, para. 53, and judgment of 12/01/2006, C-173/04, ‘Stand-up pouches’, para. 29).
The fact that the pattern may also have other functions and/or effects is an additional argument to conclude that it lacks distinctive character. By contrast, if a pat tern is fanciful, unusual and/or arbitrary, departs from the norm or customs of the sector or is, more generally, capable of being easily memorised by the targeted consumers, it usually deserves protection as a CTM.
As seen above, the distinctive character of pattern marks must usually be as sessed with regard to goods. Nevertheless, a pattern mark which has been considered devoid of distinctive character for the goods it covers must also be regarded as lacking distinctiveness for services which are closely connected to those goods. For example, a stitching pattern which is devoid of distinctive character for clothing articles and leather goods must be regarded as lacking distinctiveness also for retail services concerning those goods (see by analogy decision of 29/07/2010, R 868/2009-4, – ‘Device of a poc ket’). The s ame considerations would apply to a f abric pattern with regard to services such as manufacture of fabrics.
The following is a non-exhaustive list of examples of pattern marks.
Sign Reasoning Case
CTM No 8 423 841, filed as a figurative mark in
Classes 18, 24 and 25
The criteria for three-dimensional marks consisting of the appearance of the product itself are also applicable to figurative marks consisting of the appearance of the product itself. In general, a mark consisting of a decorative pattern that is simple and commonplace is considered devoid of any element that could attract the consumers’ attention, and insufficient to indicate the source or origin of goods or services. The above pattern mark was a t extile pattern, and therefore considered to comprise the appearance of the products itself, as the mark was applied for in Classes 18, 24 and 25.
Judgment of 19/09/2012, T-326/10, ‘Light grey, dark grey, beige, dark red and
brown coloured checked pattern’, paras 47 and 48
Absolute Grounds for Refusal
Guidelines for Examination in the Office, Part B, Examination. Page 34
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Sign Reasoning Case
CTM No 8 423 501, filed as a figurative mark in
Classes 18, 24 and 25
In this case, similarly to the previous case, the General Court confirmed the refusal of the mark.
Judgment of 19/09/2012, T-329/10, ‘Black, grey, beige and
dark red coloured checked pattern’
CTM No 5 066 535 filed as figurative mark in Class 12
(tyres)
Where the mark consists of a stylised representation of the goods or services, the relevant consumer will see prima facie the mere representation of a s pecific part of or the entire product. In this case of an application for tyres, the relevant consumer would perceive the mark as merely a representation of the grooves of a tyre, and not an indication of source or origin. The pattern is banal and the mark cannot fulfil its function as indicator of origin.
Examiner’s decision without BOA case
CTM No 9 526 261, filed as a figurative mark (Series of stylised V letters), claiming goods in Classes 16, 18, 25
The mark was rejected for Classes 18 and 25. It was accepted for Class 16. Though the sign was described as a ‘series of stylised V letters’, the sign would most probably be per ceived by the relevant public either as a series of zigzag stitching or as a s et of rhomboidal geometric figures. In any case, the pattern is quite simple and banal and thus devoid of any distinctive character.
Examiner’s decision without BOA case
CTM No 9 589 219, filed as a figurative mark for goods
in Class 9
The sign, applied for ‘multi-well plates that can be used in chemical or biological analysis using electrochemiluminescence for scientific, laboratory or medical research use’, was refused as it does not serve the purpose of indicating origin. The application described the mark as corresponding to a pattern contained on the bottom of the goods, and the examiner was found to be correct in stating that due to the lack of any eye-catching features, the consumer will be unable to perceive it as anything other than a mere decoration of the goods.
Decision of 09/10/2012,
R 412/2012-2 – ‘Device of four
identically sized circles’
Absolute Grounds for Refusal
Guidelines for Examination in the Office, Part B, Examination. Page 35
FINAL VERSION 1.0 01/02/2015
Sign Reasoning Case
CTM No 6 900 898, claiming goods in Classes 18 and 25
The above mark was refused as patterns stitched on pockets are commonplace in the fashion sector, and this particular pattern does not contain any memorable or eye-catching features likely to confer a minimum degree of distinctive character to enable a consumer to perceive it as anything other than a mere decorative element.
Judgment of 28/09/2010, T-388/09,
paras 19-27
CTM No 3 183 068, filed as a figurative mark, claiming
goods in Classes 19 and 21
The mark, which was to be applied to glass surfaces, was refused under Article 7(1)(b) CTMR. It was reasoned that the relevant consumer is not used to perceiving designs applied to glass surfaces as an indication of origin and that the design is recognisable as a functional component to make the glass opaque. Furthermore, the complexity and fancifulness of the pattern are insufficient to establish distinctiveness, attributable to the ornamental and decorative nature of the design’s finish, and do not allow the design’s individual details to be committed to memory or to be apprehended without the products inherent qualities being perceived simultaneously.
Judgment of 09/10/2002, T-36/01, ‘Glass-sheet surface’,
paras 26-28
CTM No 10 144 848, filed as a figurative mark claiming
goods in Classes 3, 5, 6, 10, 11, 12, 16, 18, 20 and 21
The mark was refused as it is composed of very simple elements and is a basic and banal sign as a whole. For the claimed goods, such as cleaning cloths and antiseptic wipes, the sign applied for can represent their appearance in the sense that the fabric used may have this structure. The sign is merely a repetition of identical squares which does not display any element or noticeable variation, in particular in terms of fancifulness or as regards the way in which its components are combined, which would distinguish it from the usual representation of another regular pattern consisting of a d ifferent number of squares. Neither the shape of each individual square nor the way they are combined are immediately noticeable features which may catch the average consumer’s attention and cause the consumer to perceive the sign as a distinctive one.
Decision of 14/11/2012,
R 2600/2011-1 – ‘Device of a black and
white pattern’
2.2.14 Position marks
Applications for position marks effectively seek to protect a s ign which consists of elements (figurative, colour, etc.) positioned on a particular part of a product and being in a par ticular proportion to the size of the product. The representation of the mark applied for must be ac companied by a des cription indicating the exact nature of the right concerned.
The factors to be taken into account when examining three dimensional marks are also relevant for position marks. In particular, the examiner must consider whether the relevant consumer will be able to identify a sign which is different from the normal appearance of the products themselves. A further relevant consideration in dealing with position marks is whether the positioning of the mark upon t he goods is likely to be understood as having a trade mark context.
Absolute Grounds for Refusal
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Note that even where it is accepted that the relevant public may be a ttentive to the different aesthetic details of a product, this does not automatically imply that they will perceive it as a trade mark. In certain contexts, and given the norms and customs of particular trades, a pos ition mark may appeal to the eye as an i ndependent feature being distinguishable from the product itself and thus communicating a t rade mark message.
The following are examples of the assessment of position marks.
Sign Reasoning Case
In this case, the General Court upheld an objection under Article 7(1)(b) CTMR. The mark description specified that ‘The mark consists of the position of the circular and rectangular fields on a watch face’. The Court considered that the mark was not independent or distinguishable from the form or design of the product itself and that the positioned elements were considered not substantially different from other designs on the market.
Judgment of 14/09/2009, T-152/07, ‘Representation of a
watch’
In this case involving hosiery consisting of an orange strip covering the toe area, the General Court considered that there was no evidence to suggest that the colouring of this part of the product would normally be perceived as having trade mark character. On the contrary it was considered that this feature would be likely to be perceived as a decorative feature falling within the norms and customs of the market sector. The Article 7(1)b CTMR objection was therefore maintained.
Judgment of 15/06/2010, T-547/08, ‘Orange colouring of
the toe of a sock’
Buttons are common decorative elements of soft toys. A button is a simple geometrical form which does not depart from the norm or customs of the sector. It is not uncommon to attach badges, rings, ribbons, loops and embroideries to the ears of a soft toy. The relevant public will therefore perceive the two signs applied for as ornamental elements but not as an indication of commercial origin.
Judgments of 16/01/2014 T-433/12
and T-434/12
2.3 Descriptiveness (Article 7(1)(c) CTMR)
2.3.1 General remarks
2.3.1.1 The notion of descriptiveness
A sign must be refused as descriptive if it has a m eaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. This is the case where the sign provides information about, among other things, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and s ervices must be sufficiently direct and s pecific (judgment of 20/07/2004, T-311/02, ‘Limo’, para. 30; judgment of 30/11/2004, T-173/03, ‘Nurseryroom’, para. 20), as well as concrete, direct and understood without further reflection (judgment of 26/10/2000, T-345/99, ‘Trustedlink’, para. 35). If a mark is descriptive, it is also non-distinctive.
Absolute Grounds for Refusal
Guidelines for Examination in the Office, Part B, Examination. Page 37
FINAL VERSION 1.0 01/02/2015
Article 7(1)(c) CTMR does not apply to those terms which are only suggestive or allusive as regards certain characteristics of the goods and/or services. Sometimes this is also referred to as vague or indirect references to the goods and/or services (judgment of 31/01/2001, T-135/99, ‘Cine Action’, para. 29).
The public interest underlying Article 7(1)(c) CTMR is that exclusive rights should not exist for purely descriptive terms which other traders might wish to use as well. However, it is not necessary for the examiner to show that there is already a descriptive use by the applicant or its competitors. Consequently, the number of competitors that could be affected is totally irrelevant. Therefore, if a word is descriptive in its ordinary and pl ain meaning, this ground for refusal cannot be overcome by showing that the applicant is the only person who produces, or is capable of producing, the goods in question.
2.3.1.2 The reference base
The reference base is the ordinary understanding of the relevant public of the word in question. That can be corroborated by dictionary entries, examples of the use of the term in a descriptive manner found on internet websites, or it may clearly follow from the ordinary understanding of the term.
It is not necessary for the examiner to prove that the word is the subject of a dictionary entry in order to refuse a sign. In particular for composite terms, dictionaries do not mention all possible combinations. What matters is the ordinary and plain meaning. In addition, terms used as specialised terminology to designate the respective relevant characteristics of the goods and s ervices are to be c onsidered descriptive. In these cases it is not required to show that the meaning of the term is immediately apparent to the relevant consumers to which the goods and services are addressed. It suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description of the claimed goods or services, or a c haracteristic of the goods and services (see judgment of 17/09/2008, T-226/07, ‘PRANAHAUS’, para. 36).
The following principles in respect of both language and dictionary use apply, with regards to the reference base:
• The sign must be refused if it is descriptive in any of the official languages of the European Union, regardless of the size or population of the respective country.•
Systematic language checks are only performed in the official languages of the European Union.,
• Should there be convincing evidence that a given term has a meaning in a language other than the official languages of the Union and is understood by a significant section of the relevant public in at least a part of the European Union, this term must also be refused pursuant to Article 7(2) CTMR (see judgment of 13/09/2012, T-72/11, ‘Espetec’, paras 35-36). For example, the term HELLIM is the Turkish translation of the word ‘Halloumi’, a type of cheese. Since Turkish is an official language in Cyprus, it is a language that is understood and spoken by part of the population of Cyprus, and therefore the average consumer in Cyprus may understand that HELLIM is a de scriptive term for cheese (see judgment of 13/06/2012, T-534/10, ‘HELLIM/HALLOUMI’).
Absolute Grounds for Refusal
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The evidence can come by individual knowledge of the particular examiner, or is produced via third party observations or by way of documentation included in cancellation requests.
• An internet search is also a valid means of evidence for the descriptive meaning, in particular for new terms, technical jargon or slang words, but the evidence should be carefully assessed in order to find out whether the word is actually used in a des criptive manner, as often the difference between descriptive and trade mark use on the internet is vague and the internet contains a vast amount of unstructured, unverified information or statements.
• The objection should clearly state which language or languages are concerned, which makes the ground for refusal applicable at least for the Member State in which this language is the official language or one of the official languages, and excludes conversion for that Member State (see Rule 45(4) CTMIR).
Article 7(1)(c) also applies to transliterations. In particular, transliterations into Latin characters of Greek words must be t reated in the same way for the purpose of examining absolute grounds for refusal as words written in Greek characters and vice versa (judgment of 16/12/2010, T-281/09, ‘CHROMA’, para. 34). This is because the Latin alphabet is known to Greek-speaking consumers. The same applies to the Cyrillic alphabet, which is used in the EU by Bulgarians, who are also familiar with Latin characters.
2.3.1.3 Characteristics mentioned under Article 7(1)(c) CTMR
Kind of goods and services
This includes the goods or services themselves, that is, their type or nature. For example, ‘bank’ for financial services, ‘Perlé’ for wines and sparkling wines (judgment of 01/02/2013, T-104/11, ‘Perle'’) or ‘Universaltelefonbuch’ for a universal telephone directory (judgment of 14/06/2001, joined cases T-357/99 and T-358/99, ‘Universaltelefonbuch’) or constituent parts or components of the goods (judgment of 15/01/2013, T-0625/11, ‘ecoDoor’, para. 26).
Quality
This includes both laudatory terms, referring to a s uperior quality of the respective goods or services, as well as the inherent quality of the goods or services. It covers terms such as ‘light’, ‘extra’, ‘fresh’, ‘hyper light’ for goods that can be extremely light (decision of 27/06/2001, R 1215/00-3 – ‘Hyperlite’). In addition, figures may refer to the quality of a product or a service, such as 24/7 for service availability, such as ‘2000’ refers to the size of the motor or ‘75’ refers to the horse power (kw) of the motor.
Quantity
This covers indications of the quantity in which the goods are usually sold, such as ‘six pack’ for beer, ‘one litre’ for drinks, ‘100’ (grams) for chocolate bars, Only quantity measurements relevant in trade, not those that are hypothetically possible, count. For example, 99.999 for bananas would be acceptable.
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Intended purpose
The intended purpose is the function of a good or service, the result that is expected from its use or, more generally, the use for which the good or service is intended. An example is ‘Trustedlink’ for goods and services in the IT-Sector aimed at securing a safe (trusted) link (judgment of 26/10/2000, T-345/99, ‘Trustedlink’). Marks that have been refused registration on this basis include ‘Therapy’ for massage tools (decision of 08/09/1999, R 144/99-3 – ‘THERAPY’) and ‘SLIM BELLY’ for fitness training apparatus, sport activities, medical and beauty care services (judgment of 30/04/2013, T-61/12, ‘SLIM BELLY’). This objection also applies as regards accessories: a term that described the type of goods also describes the intended purpose for accessories to those goods. Therefore, ‘New Born Baby’ is objectionable for accessories for dolls and ‘Rockbass’ for accessories for rock guitars (judgment of 08/06/2005, T-315/03, ‘Rockbass’ (appeal C-301/05 P settled)).
Value
This covers both the (high or low) price to be paid, as well as the value in quality. It covers therefore not only expressions such as ‘extra’ or ‘top’, but also expressions such as ‘cheap’ or ‘more for your money’. It also covers expressions indicating, in common parlance, goods or services that are superior in quality,
Geographical origin
See paragraph 2.3.2.6 below under Assessment of geographical terms.
Time of production of the goods or of rendering of the service
This covers expressions concerning the time on which services are rendered, either expressly (‘evening news’, ‘24 hours’) or in a usual manner (24/7). It also covers the time at which goods are produced if that is relevant for the goods (late vintage for wine). For wine, the numeral ‘1998’ indicating the vintage year would be relevant, but not for chocolate.
Other characteristics
This covers other characteristics of the goods or services and shows that the preceding list of items in Article 7(1)(c) is not exhaustive. In principle, any characteristic of the goods and s ervices must lead to a r efusal under Article 7(1)(c) CTMR. It does not matter whether the characteristics of the goods or services are commercially essential or merely ancillary or whether there are synonyms of those characteristics (judgment of 12/2/2004, C-363/99, ‘Postkantoor’, para. 102 and judgment of 24/04/2012, T-328/11, ‘EcoPerfect’, para. 41).
Examples of ‘other characteristics’
• the subject matter contained within the claimed goods or services: (see paragraph 2.3.2.7 below under Goods and s ervices which may contain subject matter)
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• the identification of the targeted consumer: ‘children’ or ‘ellos’ (judgment of 27/02/2002, T-219/00, ‘Ellos’) for clothing.
2.3.2 Word marks
2.3.2.1 One word
Descriptive terms are those which merely consist of information about the characteristics of the goods and services This means that descriptive terms cannot fulfil the function of a trade mark. Consequently, the ground for refusal applies irrespective of whether a term is already used by other competitors in a descriptive manner for the goods and services at issue.
In particular, a w ord is descriptive if either for the general public (if the goods or services are addressed to them) or for a specialised public (irrespective whether the goods are also addressed to the general public) the trade mark has a descriptive meaning:
• The term ‘RESTORE’, is descriptive for surgical and medical instruments and apparatus; stents; catheters; and guide wires (judgment of 17/01/2013, C-21/12 P, ‘Restore’)
• • ‘CONTINENTAL’ is descriptive for ‘live animals, i.e., dogs’ and ‘the keeping and breeding of dogs, i.e. puppies and ani mals for breeding’. Indeed, the word ‘Continental’ indicates a breed of bulldogs (judgment of 17/04/2013, T-383/10, ‘Continental’).
Furthermore, as seen above, objections should also be r aised against terms which describe desirable characteristics of the goods and services.
However, it is important to distinguish laudatory terms which describe – although in general terms – desirable characteristics of goods and s ervices as being cheap, convenient, of high quality etc. and which are excluded from registration, from those terms which are laudatory in a br oader sense, i.e. they refer to vague positive connotations or to the person of the purchaser or producer of the goods without specifically referring to the goods and services themselves.
Not descriptive:
• ‘BRAVO’, as it is unclear who says ‘BRAVO’ to whom, and what is being praised (judgment of 04/10/2001, C-517/99).
2.3.2.2 Combinations of words
As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services themselves, remains descriptive of those characteristics. Merely bringing those elements together without introducing unusual variations, in particular as to syntax or meaning, cannot result in anything other than a descriptive sign. However, if due to the unusual nature of the combination in relation to the goods or services a combination creates an impression which is sufficiently far
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removed from that produced by the mere combination of meanings lent by the elements of which it is composed, that combination will be considered more than the sum of its parts (judgment of 12/02/2004, C-265/00, ‘Biomild’, paras 39 and 43). These notions, ‘unusual nature of the combination’, ‘impression sufficiently far removed’ and ‘more than the sum of its parts’ have to be interpreted as meaning that Article 7(1)(c) CTMR does not apply when the way in which the two descriptive elements are combined is in itself fanciful.
The following examples have been refused registration:
• ‘Biomild’ for yoghurt being mild and organic (judgment of 12/02/2004, C-265/00)
• ‘Companyline’ for insurance and financial affairs (judgment of 19/09/2002, C-104/00 P)
• ‘Trustedlink’ for software for e-commerce, business consulting services, software integration services and education services for e-commerce technologies and services (judgment of 26/10/2000, T-345/99)
• ‘Cine Comedy’ for the broadcast of radio and television programmes, production, showing and rental of films, and allocation, transfer, rental and other exploitation of rights to films (judgment of 31/01/2001, T-136/99)
• ‘Teleaid’ for electronic devices for transferring speech and data, repair services for automobiles and v ehicle repair, operation of a c ommunications network, towing and r escue services and c omputing services for determining vehicle location (judgment of 20/03/2002, T-355/00)
• ‘Quickgripp’ for hand tools, clamps and pa rts for tools and c lamps (order of 27/05/2004, T-61/03)
• ‘Twist and Pour’ for hand held plastic containers sold as an integral part of a liquid paint containing, storage and pouring device (judgment of 12/06/2007, T-190/05)
• ‘CLEARWIFI’ for telecommunications services, namely high-speed access to computer and communication networks (judgment of 19/11/2009, T-399/08)
• ‘STEAM GLIDE’ for electric irons, electric flat irons, electric irons for ironing clothes, parts and fittings for the aforementioned goods (judgment of 16/01/2013, T-544/11).
• ‘GREEN CARBON’ for reclaimed rubber, namely, recycled carbonaceous materials, namely plastic, elastomeric, or rubber filled materials obtained from pyrolized tire char and plastic, elastomeric, or rubber compounds formulated using such filler material (judgment of 11/04/2013, T-294/10).
In the same way, combinations of the prefix ‘EURO’ with purely descriptive terms must be refused where the ‘EURO’ element reinforces the descriptiveness of the sign as a whole or where there is a reasonable connection between that term and the goods or services concerned. This is in line with the judgment of 07/06/2001, T-359/99, ‘Eurohealth’.
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A combination of words can be held as a descriptive indication even though it does not follow the usual grammatical rules. If on the other hand the combination does amount to more than the mere sum of its parts, it may be acceptable” [see para. 20 of ULTRAPROTECT decision of 03/06/2013, R 1595/2012-1.
For combinations consisting of nouns and ad jectives, it should be assessed whether the meaning of the combination changes if its elements are inverted. For example, ‘Vacations direct’ (not registrable, decision of 23/01/2001, R 33/2000-3) is tantamount to ‘direct vacations’, whereas ‘BestPartner’, is not the same thing as ‘PartnerBest’.
The same reasoning applies to words consisting of the combination of an adjective and a verb. Consequently, the word ‘ULTRAPROTECT’ must be considered descriptive for sterilising and sanitary preparations even though it consists of the combination (not grammatically correct) of an adj ective (ULTRA) with a verb (PROTECT), since its meaning remains clearly understandable (decision of 03/06/2013, R 1595/2012-1).
Furthermore, it must be taken into account that in the world of advertising definite articles and pronouns (THE, IT, etc.), conjunctions (OR, AND, etc.) or prepositions (OF, FOR, etc.) are frequently omitted. This means that a lack of such grammatical elements may not always be sufficient to make the mark distinctive.
Finally, combinations made up of words from different languages may still be objectionable, provided that the relevant consumers will understand all without further effort.
2.3.2.3 Misspellings and omissions
A misspelling does not necessarily change the descriptive character of a sign. First of all, words may be misspelled due to influences of another language or the spelling of a word in non-EU areas, such as American English, in slang language or to make the word more fashionable. Examples of signs that have been refused:
• ‘Xtra’ (decision of 27/05/1998, R 20/1997-1) • ‘Xpert’ (decision of 27/07/1999, R 0230/1998-3) • ‘Easi-Cash’ (decision of 20/11/1998, R 96/1998-1) • ‘Lite’ (judgment of 27/02/2002, T-79/00) • ‘Rely-able’ (judgment of 3074/2013, T-640/11).
Furthermore, consumers will, without further mental steps, understand the ‘@’ as the letter ‘a’ or the ‘€’ as the letter ‘e’. Consumers will replace specific numerals by words, e.g. ‘2’ as ‘to’ or ‘4’ as ‘for’.
On the other hand, if the misspelling is fanciful and/or striking or changes the meaning of the word (accepted: ‘MINUTE MAID’, CTM No 2 091 262, (instead of ‘minute made’)), the sign is acceptable.
As a rule, misspellings endow the sign with a sufficient degree of distinctive character when:
• they are striking, surprising, unusual, arbitrary and/or
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• they are capable of changing the meaning of the word element or require some mental effort from the consumer in order to make an immediate and di rect link with the term that they supposedly refer to.
The following marks were refused.
Sign Reasoning Case
ACTIVMOTION SENSOR
CTM No 10 282 614 claiming goods in Class 7 (swimming pool and spa
cleaning equipment, namely, sweepers, vacuums, and
parts therefor)
The mark merely consists of ‘ACTIV’, an obvious misspelling of the word ‘ACTIVE’, ‘MOTION’ and ‘SENSOR’. Combined, the words form a perfectly comprehensible and plainly descriptive combination, and was thus refused.
Decision of 06/08/2012,
R 716/2012-4 – ‘ACTIVMOTION
SENSOR’, para. 11
XTRAORDINARIO
International registration designating the EU
No 930 778, claiming goods in Class 33
(tequila)
The above term is a nonexistent word but closely resembles the Spanish adjective ‘extraordinario’. Spanish and Portuguese consumers will perceive the sign as a m isspelling of a w ord meaning ‘remarkable’, ‘special’, ‘outstanding’, ‘superb’ or ‘wonderful’, and as such, attribute a descriptive meaning to the sign.
Decision of 08/03/2012,
R 2297/2011-5 – ‘Xtraordinario’, paras
11-12
On the other hand, the following marks were accepted:
Sign Reasoning Case
LINQ
CTM No 1 419 415 covering goods and services in
Classes 9 and 38
This word is an invented word, not existing in any known dictionary, and it was not shown that this word is a c ommon misspelling used in the trade circles of interest to the appellant. Additionally, because the word is short, the ending letter ‘Q’ will be noticed as a peculiar element, and thus the fanciful spelling is obvious
Decision of 04/02/2002,
R 9/2001-1 – ‘LINQ’, para. 13
LIQID
CTM No 5 330 832 initially covering goods in
Classes 3, 5 and 32
In this word mark, the combination ‘QI’ is highly uncommon in the English language, as the letter ‘Q’ is normally followed by a ‘U’. The striking misspelling of the word ‘liquid’ would allow even a consumer in a hurry to notice the peculiarity of the word ‘LIQID’. Further, the spelling would not only have an effect on the visual impression produced by the sign, but also the aural impression, as the sign applied for will be pr onounced differently from the word ‘liquid’.
Decision of 22/02/2008,
R 1769/2007-2 – ‘LIQID’, para. 25
2.3.2.4 Abbreviations and acronyms
Abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, whether general or specialised, recognises them as being identical to the full descriptive meaning. The mere fact that an abbreviation is derived from a descriptive term is not enough (see judgment of 13/06/2014, T-352/12, ‘FLEXI’).
The following signs were refused because the descriptive meaning for the relevant public could clearly be shown:
• SnTEM (judgment of 12/01/2005, T-367/02 to T-369/02) • TDI (judgment of 03/12/2003, T-16/02 (appeal C-82/04 P was settled))
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• LIMO (judgment of 20/07/2004, T-311/02) • BioID (judgment of 05/12/2002, T-91/01 (appeal C-37/03 P set aside GC
judgment and dismissed decision of 2nd BoA)).
Note that use of internet databases such as ‘AcronymFinder.com’ as a reference base should be made with the greatest care. Use of technical reference books or scientific literature are preferable, for example, in the field of computing. Alternatively, use of the abbreviation by a number of traders in the appropriate field on the internet is sufficient to substantiate actual use of the abbreviation.
Signs consisting of an independently non-descriptive acronym which precedes or follows a des criptive word combination should be objected to as descriptive if it is perceived by the relevant public as merely a word combined with an a bbreviation of that word combination, for example ‘Multi Markets Fund MMF’. This is because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked (judgment of 15/03/2012, C-90/11 and C-91/11, ‘Natur-Aktien-Index / Multi Markets Fund’, paras 32 and 40). This will be the case even where the acronym does not account for the mere ‘accessories’ in the word combination, such as articles, prepositions or punctuation marks, demonstrated in the following examples:
• ‘NAI – Der Natur-Aktien-Index’ • ‘The Statistical Analysis Corporation – SAC’
While the above rule will cover most cases, not all instances of descriptive word combinations juxtaposed with an abbr eviation of that word will be considered descriptive as a whole. This will be t he case where the relevant public will not immediately perceive the acronym as an a bbreviation of the descriptive word combination, but rather as a distinctive element which will make the sign as a whole more than the sum of its individual parts, as demonstrated in the following example:
• ‘The Organic Red Tomato Soup Company – ORTS’.
2.3.2.5 Slogans
A slogan is objectionable under Article 7(1)(c) CTMR when it immediately conveys the kind, quality, intended purpose or other characteristics of the goods or services.
The criteria established by case-law for the purpose of determining whether a slogan is descriptive or not are identical to those applied in the case of a word mark containing only a single element (judgment of 06/11/2007, T-28/06, ‘VOM URSPRUNG HER VOLLKOMMEN’, para. 21). It is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of signs, especially considering that the term ‘slogan’ does not refer to a special subcategory of signs (judgment of 12/07/2012, C-311/11 P, ‘WIR MACHEN DAS BESONDERE EINFACH’, paras 26 and 40).
Example of a descriptive slogan
• An application in Class 9 (satellite navigation systems, etc.) for ‘FIND YOUR WAY’, (decision of 18/07/2007, R 1184/2006-4) was objected to under Article 7(1)(b) and (c) CTMR. The expression FIND YOUR WAY in relation to the goods applied for in Class 9 is clearly intended to inform the relevant consumer that the appellant’s goods help consumers to identify geographical locations in
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order to find their way. The message conveyed by the sign applied for directly refers to the fact that consumers will discover the route for travelling from one place to another when using the specified goods.
• BUILT TO RESIST could have only one possible meaning in relation to paper, paper goods and office requisites in Class 16, leather, imitations of leather, travel articles not included in other classes and saddlery in Class 18 and clothing, footwear and headgear in Class 25, namely that the goods are manufactured to last and ar e, therefore, tough and resistant to wear and t ear (judgment of 16/09/2009, T-80/07, ‘BUILT TO RESIST’, paras 27-28).
2.3.2.6 Geographical terms
A geographical term is every existing name of a place, for example a country, region, city, lake or river. This list is not exhaustive. Adjectival forms are not sufficiently different from the original geographical term to cause the relevant public to think of something other than that geographical term (judgment of 15/10/2003, T-295/01, ‘OLDENBURGER’, para. 39). For example, ‘German’ will still be perceived as referring to Germany, and ‘French’ will still be per ceived as referring to France. Furthermore, outdated terms such as ‘Ceylon’, ‘Bombay’ and ‘Burma’ fall within this scope if they are still commonly used or generally understood by consumers as a designation of origin.
This paragraph uses the words ‘geographical term’ to refer to any geographical indication in a Community trade mark application, whereas the terms ‘protected geographical indication’ and ‘protected designation or appellation of origin’ are used only in the context of specific legislation protecting them. Designations of origin and geographical indications protected under specific EU Regulations are dealt with under the section on Articles 7(1)(j) and (k).
If the sign contains other non-descriptive or distinctive elements, the registrablility of the combination (of the sign as a whole) must be assessed in the same manner as in cases where descriptive elements are coupled with distinctive or non-descriptive elements (see below under paragraph 2.3.4 Figurative threshold).
Assessment of geographical terms
As with all other descriptive terms, the test is whether the geographical term describes objective characteristics of the goods and services. The assessment must be m ade with reference to the claimed goods and services and with reference to the perception by the relevant public. The descriptive character of the geographical term may relate to:
• the place of production of the goods; • the subject matter of a good (e.g. the city or region a travel guide is about); • the place where the services are rendered. • the kind of cuisine (for restaurants)
The first step in assessing the geographical term is to determine whether it is understood as such by the relevant public. In most cases, this understanding will be determined by taking into account a reasonably well informed consumer with a sufficient common knowledge as a basis, without being a specialist in geography.
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The second step is to determine whether the geographical term applied for designates a place which is currently associated with the claimed goods or services in the mind of the relevant public, or if it will reasonably be associated in the future (judgment of 04/05/1999, joined cases C-108/97 and C-109/97, ‘Chiemsee’, para. 31). In other words, the geographical term must not be understood as a mere suggestive or fanciful term. For example, whereas the North Pole and Mont Blanc are commonly known geographical terms, in the context of ice cream or sports cars they would not be understood as a possible place of production, but as a merely suggestive and fanciful term. The same applies to fashionable city names for goods and services unrelated to the reason for which the city is known (‘Hollywood’ for chewing gum) or to names of certain fashionable suburbs or shopping streets (‘Champs Élysées’ for bottled water, ‘Manhattan’ for tomatoes, ‘Denver’ for lighting equipment or ‘Port Louis’ for textiles).
On the other hand, there are some geographical terms which may be refused, merely due to their widespread recognition and fame for the high quality of the products or services. A detailed assessment of the link is not necessary in such a case (judgment of 15/12/2011, T-377/09, ‘Passionately Swiss’, paras 43-45). For example, ‘Milano’ should be refused for clothing, Zürich for financial services and Islas Canarias for tourist services.
With regard to reasonable future association, an Article 7(1)(c) CTMR refusal cannot solely be based on the argument that the goods or services can theoretically be produced or rendered in the place designated by the geographical term (judgment of 08/07/2009, case T-226/2008, ‘ALASKA’).
On the contrary, the degree of familiarity amongst the relevant public with the geographical term, the characteristics of the place designated by the term and the category of goods or services must be assessed (judgment of 04/05/1999, joined cases C-108/97 and C-109/97 ‘Chiemsee’, paras 32 and 37).
In particular, such an assessment must take into account the relevance of the geographical origin of the goods in question, and the customs of the trade in using geographical names to indicate the origin of the goods or to refer to certain qualitative and objective criteria of the goods.
For agricultural products or drinks (mineral water, beer), geographical terms are usually meant to refer to the place of production (judgment of 24/06/2014, T-207/13, ‘The Spirit of Cuba’, paragraph 26; decision of 06/02/2014, R 0343/2013-1, ‘Brasil’). However, this may not be the case in all Member States, and depends on the size of the geographical place or zone (judgment of 15/10/2003, T-295/01, ‘OLDENBURGER’). In this paragraph, the geographical terms referred to are neither protected geographical indications nor protected designations of origin.
For textile and body care products, it is helpful to establish whether there is an actual production of these goods and whether that fact is known at a national or international level by the relevant public. Nevertheless, this requirement is not to be confused with the reputation of a geographical indication as such, and does not necessarily satisfy the requirement that there be a link between the geographical term and the goods or services concerned (judgment of 15/10/2008, T-230/06, ‘Port Louis’, paras 28-35).
In the event of any doubt, it is advisable to consult a na tional from the respective Member State.
The abovementioned principles also apply to the names of countries.
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Finally, the mere fact that a geographical term is used by only one pr oducer is not sufficient to overcome an objection, although it is an important argument to be taken into account in assessing acquired distinctiveness.
2.3.2.7 Terms describing subject matter in goods or services
Where a s ign consists exclusively of a word that describes what may be the subject matter or content of the goods or services in question, it should be objected to under Article 7(1)(c) CTMR. Terms commonly known and likely to be l inked to a par ticular thing, product or activity by the relevant public are capable of describing subject matter and should therefore be kept free for other traders (judgment of 12/06/2007, T-339/05, ‘LOKTHREAD’, para. 27).
The essential question is whether the sign applied for may be used in trade in relation to the goods or services applied for in a manner which will be perceived by the relevant public ineluctably as descriptive of the subject matter of those claimed goods or services, and should therefore be kept free for other traders.
For example, a widely known name such as ‘Vivaldi’ will immediately create a link to the famous composer, just as the term ‘skis’ will immediately create a link to the sport of skiing. While Class 16 (books) is a prime example of a category of goods which contains subject matter or content, an ob jection made under this section may occur also with respect to other goods and services, such as data carriers, DVDs, CD ROMs or editorial services. With regards to this section, the terms ‘subject matter’ and ‘content’ are used interchangeably. See also 2.2.3. on ‘Titles of books’.
Names of famous persons (in particular musicians or composers) can indicate the category of goods if due to the wide spread use, the time lapse, the date of death, or the popularisation, recognition, multiple performers, or musical training, the public can understand them as generic. This would be the case, for example, with respect to ‘Vivaldi’, whose music is played by orchestras all over the world and the sign ‘Vivaldi’ will not be understood as an indicator of origin for music.
Objections based on the above:
• will apply only to goods (e.g. books) or services (e.g. education) which contain subject matter regarding other things, products and/or activities (e.g. a book about history, or an educational course on history),
• when the sign consists exclusively of the word identifying that subject matter (e.g. ‘VEHICLES’ or ‘HISTORY’), and
• will be made on a case-by-case basis by assessing multiple factors, such as the relevant public, the degree of attention or the descriptive character of the term in question (see below).
Goods and services which may contain subject matter
For most cases, the goods or services which may consist of or contain objectionable subject matter are the following:
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• Class 9: Magnetic data carriers, software, recording discs, electronic publications (downloadable).
○ Objectionable
— STATISTICAL ANALYSIS for software — ROCK MUSIC for CDs.
• Class 16: Printed matter, photographs and teaching materials as long as these include printed matter.
○ Objectionable
— HISTORY for books — PARIS for travel guides — CAR for magazines — ANIMALS for photographs — TRANSCENDENTAL MEDITATION for instructional and teaching
material
• Class 28: Board games
o Objectionable
- — ‘Memory’ (order of 14/03/2011, C-369/10)
• Class 35: Trade fairs, advertising, retail services.
○ Objectionable
— ELECTRONICA for trade fairs related to electronic goods (judgment of 05/12/2000, T-32/00, ‘Electronica’, paras 42-44)
— LIVE CONCERT for advertising services — CLOTHING for retail services
• Class 38: Telecommunications
○ Objectionable
— NEWS for telecommunications — MATH for providing online forums
• Class 41: Education, training, entertainment, electronic publications (non- downloadable).
○ Objectionable
— GERMAN for language courses — HISTORY for education — COMEDY for television programmes — TRANSCENDENTAL MEDITATION for education services
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The above list of Nice classes is not exhaustive, although it will apply to the vast majority of cases. Consequently, objections based on des criptive subject matter should be raised primarily in the context of the goods and services listed above.
Where the sign applied for is a descriptive term for a particular characteristic of goods or services, a designation of goods or services which excludes that particular characteristic described by the sign applied for will not avoid an obj ection based on subject matter. This is because it is unacceptable for an applicant to make a claim of goods or services subject to the condition that they do not possess a par ticular characteristic (see judgment of 12/02/2004, C-363/99, ‘Postkantoor’, paras 114-116). The following invented examples illustrate designations of goods or services which will not avoid an objection:
• COMEDY for television broadcasting, except for comedy programming • PENGUINS (in plural!) for books, except for books about penguins • TECHNOLOGY for classes, except for classes about computers and technology.
Distinguishable from the examples above are positive claims of goods or services, under which it is impossible for the sign applied for to describe any subject matter or content. For example, the following invented examples would not be objectionable, at least with regards to signs being descriptive of subject matter:
• COMEDY for television broadcasting of economic news, politics and technology • PENGUIN for comic books with country western, medieval and anc ient Roman
themes • TECHNOLOGY for classes about creative fiction writing.
2.3.2.8 Single letters and numerals
Single letters3
General considerations
The Court stated that when examining absolute grounds for refusal, the Office is required, under Article 76(1) CTMR, to examine, of its own motion, the relevant facts which might lead it to raise an obj ection under Article 7(1) CTMR and that that requirement cannot be made relative or reversed, to the detriment of the CTM applicant (paras 55-58). Therefore, it is for the Office to explain, with motivated reasoning, why a trade mark consisting of a s ingle letter represented in standard characters is descriptive.
Consequently, when examining single letter trade marks, generic, unsubstantiated arguments such as those relating to the availability of signs, given the limited number of letters, should be avoided. Similarly, it would not be appropriate to base an objection on speculative reasoning as to the different meanings that a sign could possibly have. The Office is obliged to establish, on t he basis of a factual assessment, why the applied for trade mark would be objectionable.
3 This part deals with single letters under Article 7(1)(c). For single letters under Article 7(1)(b), see Point 2.2.5
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It is therefore clear that the examination of single letter trade marks should be thorough and stringent, and that each case calls for a careful examination.
Examples
For instance, in technical domains such as those involving computers, machines, motors and tools, it may be that particular letters have a descriptive connotation if they convey sufficiently precise information about the goods and/or services concerned.
The letter ‘E’ was also considered to be descriptive in respect of ‘wind power plants and parts thereof, generators, rotor blades for wind power plants, rotors for wind power plants’ in Class 7, ‘control switches for wind power plants, frequency converters, measuring, signalling and checking (supervision) instruments’ in Class 9 and ‘towers for wind power plants’ in Class 19, since it may be seen as a reference to ‘energy’ or ‘electricity’ (judgment of 21/05/2008, T-329/06, ‘E’, paras 24-31 and dec ision of 08/09/2006, R 394/2006-1, paras 22-26).
An objection might be j ustified also in respect of goods and/or services meant for a broader public. For example, the letters ‘S’, ‘M’ or ‘L’ in respect of clothing would be objectionable as these letters are used to describe a particular size of clothing, namely as abbreviations for ‘Small’, ‘Medium’ or ‘Large’.
On the other hand, if it cannot be established that a given single letter is descriptive for the goods and/or services concerned, and provided that the applied for trade mark is not open t o objection under another provision of Article 7(1) CTMR, then the application should be accepted.
See paragraph 2.2.5.2 above for further examples.
Numerals
In its judgment of 10/03/2011, C-51/10 P, ‘1000’, the Court of Justice ruled that signs composed exclusively of numerals with no graphic modifications may be registered as trademarks (paras 29-30).
The Court referred by analogy to its previous judgment of 09/09/2010, C-265/09 P, (α) in respect of single letters (para. 31) and emphasised that trademarks consisting of numerals must be examined by with specific reference to the goods and/or services concerned (para. 32).
Therefore, a numeral may be registered as a Community trade mark only if it is distinctive in relation to the goods and s ervices covered by the application for registration (para. 32) and is not merely descriptive or otherwise non-distinctive in respect of those goods and services.
For example, the Board confirmed the refusal of the trade mark ‘15’ applied for in respect of ‘clothing, footwear, headgear’ in Class 25, on the ground that the numeral ‘15’ is linked direct and specifically to these goods, as it contains obvious and di rect information regarding their size. The Board also confirmed the refusal of this sign in respect of ‘beers’ in Class 32, as practical experience connected with the marketing of the relevant goods – and relied upon by the examiner – showed that a number of very strong beers with an alcohol content of 15% vol. exist on the Community market (decision of 12/05/2009, R 72/2009-2, paras 15-22).
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It is well-known that numerals are often used to convey relevant information as to the goods and/or services concerned. For example, in the following scenarios an objection would apply on the ground that the sign applied for is descriptive since it refers to:
• the date of production of goods/provision of services, when this factor is relevant in respect of the goods/services concerned. For instance, 1996 or 2000 for ‘wines’ would be objectionable, since the age of the wine is a very relevant factor when it comes to the purchasing choice,
• the size: 1600 for cars, 185/65 for tyres, 10 for women’s clothing in the UK, 32 for women’s clothing in France,
• the quantity: 200 for cigarettes,
• telephone codes: 0800 or 0500 in the UK, 800 in Italy, 902 in Spain, etc.,
• the time of provision of services:, 24/7,
• the power of goods: 115 for engines or cars,
• the alcoholic content: 4.5 for lager, 13 for wines,
• the number of pieces: 1 000 for puzzles.
On the other hand, where the numeral does not appear to have any possible meaning in respect of the goods and services, it is acceptable, i.e. ‘77’ for financial services or ‘333’ for ‘clothing.
2.3.2.9 Names of colours
A sign consisting exclusively of the name of a colour must be objected to under Article 7(1)(c) CTMR when the application claims any goods for which the colour can reasonably be perceived by the public as a description of one of its characteristics. For example, the name of the colour BLUE in relation to cheese describes a specific kind of cheese, the colour GREEN a specific kind of tea. The name of the colour BROWN in relation to sugar describes the colour and kind of the sugar. This rule applies mainly to common colours, for example primary colours or SILVER and GOLD. When the claimed goods concern colorants, such as paint, ink, dyes, cosmetics, etc., the name of colours may describe the actual colour of the goods, and signs consisting exclusively of a colour should be objected to under Article 7(1)(c) CTMR. In these cases names of colours would not be s een as trade marks but merely as elements describing the principal characteristic of the goods.
The following guidelines should generally be applied.
• Where colour is a typical feature of the goods and relevant for consumer choice, such as clothing and motor cars, colour names such as EMERALD or APRICOT, which, although having alternative meanings, are recognised as having a strong connotation with definite colours, and should be objected to;
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• Words such as SAPPHIRE or FLAMINGO do not have a sufficiently strong colour connotation to overwhelm the other non-colour meaning, and t hus should generally not be objected to if they are not likely to be per ceived as having a colour meaning with respect to the claimed goods or services.
Colours in combination with other words may be registrable if the sign as a whole is distinctive: ICE COFFEE, VANILLA ICE and MISTY BLUE. Descriptive combinations such as DEEP BLUE should not be accepted. Dictionary words which are descriptive but obscure and unlikely to be used by others can be accepted: LUNA (alchemists name for silver) and C ARNELIAN (an alternative name for CORNELIAN, a r ed gem stone which is less well known).
2.3.2.10 Plant variety names
Plant variety names describe cultivated varieties or subspecies of live plants or agricultural seeds. As such, they will not be perceived as trade marks by the relevant public.
This section only concerns plant variety names that happen t o be us ed in trade but which are not simultaneously registered by the Community Plant Variety Office in accordance with Regulation No 2100/94. How to deal with applied for CTMs that contain or consist of a registered plant variety names is explained in another section of the Guidelines, in the context of Article 7(1)(f) CTMR (see 2.6.1.2).
The criteria for assessing the descriptiveness of a trade mark for plants are no different from those applicable to other categories of trade marks. The provisions of trade mark law apply to plants in the same way as they apply to other categories of goods. It follows that the name of a plant variety must be rejected under Article 7(1)(c) CTMR unless it has acquired distinctiveness under the conditions of Article 7(3) CTMR.
Whenever a C TM application consists of wordings for live plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent ones, the examiner will have to verify, by means of a search in the Internet, whether the term making up the applied for trade mark coincides with the name of a specific plant variety which happens to be already used in trade.
If the search discloses that the term in question is already used in trade either in the EU or in another jurisdiction, then the examiner must raise an objection under Article 7(1)(c) CTMR, objecting that the term in question describes the nature of the goods concerned.
Depending on the circumstances of the case, and provided the evidence available shows that the term in question has been used to such an extent as to have become customary in trade in the EU, then an obj ection both under Article 7(1)(c) and ( d) CTMR would be appropriate (see also 2.4.4).
For example, in its decision of 01/03/2012, R 1095/2011-5 SHARBATI, the Fifth Board of Appeal confirmed the refusal of the trade mark ‘SHARBATI’ applied for in respect of rice; flour and preparations made from cereals, bread, pastry and confectionery in Class 30, since it is descriptive thereof: Sharbati is a type of rice as well as a type of wheat which gives its name to a certain kind of flour, known in India.
Even though most of the evidence provided had its source in India, part of it referred to export trade on commodities markets. Therefore, the fact that a certain word is the
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name of a rice variety in India was already a strong indication that the product would be distributed in the European Union.
However, the Board considered that there was not sufficient evidence that the term SHARBATI had bec ome generic in the European Union. Even though it had been demonstrated that Sharbati rice or Sharbati wheat had been offered to traders in the European Union, actually imported into the European Union and that there was no other precise name for that product, there was insufficient evidence that, at the filing date of the CTM application, the products were known to the extent required under Article 7(1)(d) CTMR.
An objection should also be r aised when the applied for trade mark is only a slight variation (i.e. minor differences which do not alter the visual and aural perception of the sign) of the plant variety name used in trade, thus inducing consumers to believe that they are confronted with the descriptive or generic name of a plant variety.
Another example in this respect is to be found in decision of 03/12/2009, R 1743/2007-1 – VESUVIA. The Board held that evidence which had its source in the United States and Canada was sufficient to conclude that the name ‘Vesuvius’ of a variety of roses may become a descriptive indication within the European Union in the sense of Article 7(1)(c) CTMR and that the trade mark applied for ‘VESUVIA’ came close to it. The Board justified its refusal with the fact that roses are usually referred to in the feminine form.
Lastly, it should be not ed than an obj ection should be r aised not only in respect of applied for trade marks which are identical to (or are slight variations of) a plant variety name which is already used in trade, but also in respect of any good and/or service which can be directly linked to the plant variety name in question (for example, import- export of the plant variety in question).
2.3.2.11 Names of banks and newspapers/magazines
In the field of banks, newspapers and m agazines consumers are accustomed to recognising descriptive combinations of terms as badges of origin. This due to:
• the relevant entity being identified as the only one with the right to use the combination (see, for example ‘BANK OF ENGLAND’ or ‘BANCO DE ESPAÑA’ or other central banks names) or
• a long standing and i ntensive presence on t he market (see for example, ‘IL GIORNALE’ – the newspaper – in Italy) or
• the combination being still likely to identify a specific entity (see, for example, ‘COSTA BLANCA NEWS’ or ‘BANCO DE ALICANTE’)
In these cases, no objection should be raised. Nevertheless, descriptive combinations such as ‘ONLINEBANK’, ‘E-BANK’ or ‘INTERNETNEWS’ remain objectionable since they do not create, at least prima facie, the impression of a clearly identifiable entity.
2.3.2.12 Names of hotels
In the hotel sector, hotel names often consist of the combination of the word ‘HOTEL’ together with a geographical term (i.e. the name of an i sland, a c ity, a country etc.).
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They usually indicate specific establishments that do not have any link with the geographical term they refer to, since they are not situated in that specific location. Consequently, due to these trade habits, consumers would not perceive expressions such as ‘HOTEL BALI’, ‘HOTEL BENIDORM’ or ‘HOTEL INGLATERRA’ as descriptive indications (describing that the services are provided by a hotel that is situated in that specific location) but rather as badges of origin. Indeed, such expressions are not equivalent to the grammatically correct ones ‘HOTEL IN BALI’, ‘HOTEL DE BENIDORM’ or ‘HOTEL EN INGLATERRA’, which are clearly objectionable. This is even truer in cases where the hotel name consists of the names of two different cities, (or of two geographical terms in general), for example ‘HOTEL LONDRES SAN SEBASTIAN’. Indeed, in this case the presence of the wording SAN SEBASTIAN (a city in the north of Spain) clearly indicates that ‘HOTEL LONDRES’ must be regarded as a fanciful expression. Therefore, no objection should be raised. Nevertheless, in those cases where the geographical term precedes the word ‘HOTEL’ the situation may change according to the different languages. For example, in English the wording ‘BALI HOTEL’, would be per ceived as an ex pression merely indicating any hotel located in the island of Bali, which is clearly objectionable. Consequently, each case should be as sessed on its own merits. Finally, descriptive combinations such as ‘LEADING HOTELS’ remain objectionable since they do not create, at least prima facie, the impression of a clearly identifiable entity.
2.3.2.12 Combinations of names of countries/cities with a number indicating a year
Marks consisting of the combination of the name of a c ountry/city with a number indicating a year must be refused under Article 7(1)(b) and (c) CTMR for all the goods and services claimed. As an e xample, the mark ‘GERMANY 2006’ has been considered as a descriptive indication for a w ide list of goods and s ervices, ranging from unexposed films in Class 1 to vehicle maintenance in Class 37. In particular, the decision in case R 1467/2005-1 of 21/07/2008 stated that this mark:
• is descriptive of the kind and content of those services ‘of actually preparing, organising and promoting an event in Germany in 2006’ (ibidem, para. 29, referring to the organisation of sporting events related to or associated with football championships etc.);
• is descriptive of ‘the purpose and t hereby in part the level of quality of goods or services, during such competitions in Germany in the year 2006, as being suitable for competitions of the highest standard or that it has been successfully used in the context of such competitions’ (ibidem, para. 30, referring to medical instruments, soccer balls etc.);
• qualifies the goods as souvenir articles (ibidem, para. 31, referring to goods such as stickers, confetti, pyjamas etc.).
With regard to souvenir articles, the Board underlined that ‘merchandising and c o- branding is not limited to “classic” souvenir products. It is public knowledge that there is a tendency to try to find new markets by combining various goods with the brand of some other unrelated popular event or names’ (ibidem, para. 34, referring to goods such as eyeglasses, televisions, toilet paper etc., all related to or associated with football championships).
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2.3.3 Figurative marks
Signs represented in languages other than Latin, Greek or Cyrillic are considered for formality purposes as figurative trade marks. However, this does not mean that the semantic content of these signs shall not be taken into consideration for the purpose of the application of Article 7(1)(c).
Where a figurative mark consists exclusively of a bas ic natural form which is not significantly different from a t rue-to-life portrayal that serves to indicate the kind, intended purpose or other characteristic of the goods or services, it should be objected to under Article 7(1)(c) CTMR as descriptive of a characteristic of the goods or services in question.
Sign Case
Judgment of 08/07/2010, T-385/08 ‘Representation of a dog’
Judgment of 08/07/2010, T-386/08 ‘Representation of a horse’
In these cases the General Court held that for goods in Classes 18 and 31 the depiction of a dog or horse, respectively, serves to indicate the type of animal for which the goods are intended.
In the first case, the Court noted that the goods in Class 18 were specially produced for dogs, such as dog leads, dog collars and other dog accessories including bags. In the field of animal accessories, it is common practice for true-to-life or stylised but realistic portrayals of animals to be used for indicating the type of animal concerned. Therefore, for the goods in Class 18 the relevant public will immediately perceive the image’s message that those goods are for dogs, without any further mental steps. The portrayal of a dog, therefore, indicates an essential characteristic of the goods concerned. The sign applied for is, therefore, descriptive (paras 25-28).
The same applies to goods in Class 31. As foodstuffs for domestic animals include dog food, the mark applied for is a descriptive indication for the goods at issue which will be immediately understood by the relevant public (para. 29).
In the second case, the Court held that for clothing, headgear and belts in Class 25 the portrayal of a horse was descriptive of the kind or intended purpose of the goods, namely that they are particularly developed or suitable for horse riding. As the relevant public would make a direct link between a horse and horse riding, the Court maintained that there was an immediate and concrete link between the portrayal of a horse and the goods concerned (paras 35-38).
By way of example, the sign below was held to be s ufficiently highly stylised to significantly differ from a true-to-life portrayal serving to indicate the kind or intended purpose of the goods or services, and, thus, were registered.
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Sign CTM No Goods and services
CTM No 844 Classes 1, 3, 5, 6, 7, 8, 9, 11, 16, 17, 18, 19, 20, 21, 22, 26, 28, 31,
41, 42
2.3.4 Figurative threshold4
2.3.4.1 Preliminary remarks
Terms or signs which are non-distinctive, descriptive or generic may be brought out of the scope of a refusal based on Article 7(1)(b), (c) or (d) CTMR if combined with other elements which make the sign as a whole distinctive. In other words, refusals based on Article 7(1)(b), (c) and/or (d) may not apply to signs consisting of a n on-distinctive, descriptive or generic element combined with other elements which bring the sign as a whole beyond a minimum level of distinctiveness.
In practice this means that one of the main questions that examiners must answer in their daily work is whether the mark is figurative enough to reach the minimum degree of distinctive character that is requested for registration.
The presence of figurative elements may give distinctive character to a sign consisting of a des criptive and/or non-distinctive word element so as to render it eligible for registration as a C TM. Therefore, the question to be considered by the examiner is whether the stylisation and/or the graphical features of a sign are sufficient to make it act as a trademark.
For the purposes of this document, the expression ‘figurative element’ includes any graphic element/stylisation appearing in the sign, such as the typeface, the font size, the colours and the position/arrangement of the words/letters. It also encompasses geometric shapes, labels, patterns and symbols, as well as any combination of the abovementioned elements.
As a rule, when a figurative element that is distinctive on its own is added to a descriptive and/or non-distinctive word element, then the mark is registrable, provided that the figurative element is, due its size and position, clearly recognisable in the sign.
Sign CTM No Goods and services
CTM No 11 418 605 Class 24
The above sign was objected to, as the typeface is not distinctive, because it does not depart significantly from commonly used typefaces in trade, and s ince the red device appearing on t he letter ‘i’ is hardly recognisable.
4 NB: This part is intended to be updated in line with the developments of the Convergence Programme 3 (CP3). Some examples already agreed on in that CP3 have already been incorporated in the text
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Even when the figurative element complies with the abovementioned requisites, it is still necessary to assess the sign as a whole in relation to the goods and services claimed.
It must be taken into account that, when the verbal element is descriptive/devoid of distinctive character, it must be checked in particular if the figurative element is:
• striking and/or surprising, and/or unexpected, and/or unusual, and/or arbitrary;
• capable to create in the consumers’ mind an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the word element;
• of such a na ture as to require an e ffort of interpretation from the part of the relevant public in order to understand/ the meaning of the word element.
Sign CTM No Goods and services
CTM No 11 595 601 products in Class 3(sign under examination)
The above trade mark applied for was objected to as it is clearly descriptive (and devoid of distinctive character) in relation to the claimed goods in Class 3. The descriptive content of the term overrides the figurative appearance of the letter ‘L’, even if that figurative letter ‘L’ in isolation were to be considered registrable for the same goods and services.
Finally, the fact that a s ign contains figurative elements does not prevent it from still being misleading or contrary to the public order or from falling under other grounds of refusal, such as those set forth by Article 7(1)(h), (i), (j) and (k) CTMR.
2.3.4.2 Stylised word elements
As a rule, descriptive or non-distinctive word elements appearing in basic or standard typeface, with or without font effects such as ‘bold’ or ‘italics’, are not registrable. The more legible and/or common a typeface is, the less distinctive it is. The same reasoning applies to handwritten typefaces. Easily legible and/or common handwritten typefaces are normally devoid of distinctive character. In other words, in order to add distinctive character to a sign, the typeface’s stylisation should be of such a nature as to request a mental effort from consumers to understand the meaning of the verbal element in relation to the claimed goods and services.
• Lower case + capital letters
Sign CTM No Goods and services
CyberDOCS CTM No 310 888 Classes 9 and 16
‘The use of capital letters for the final syllable of “CyberDOCS” does not enhance the distinctiveness of the mark. The Office rightly treats any sign as a word mark if it is written in standard characters, regardless of whether lower case or capital letters are used. A descriptive word mark does not cease to be descriptive simply because it is written partly in lower case letters and partly in capitals’ (see decision R 133/1999-1, para. 14).
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• Standard Typeface + Italics
Sign CTM No Goods and services
CTM No 4 651 683 inter alia, goods in Classes 1, 7and 22.
The above sign was refused. Here, ‘Foam’ is written in a standard font and ‘plus’ is written in simple italics. As neither of these forms is in any way striking or extraordinary, the relevant public will not regard the visual elements as conferring on the sign the function of indicating origin (decision of 07/05/2008, R 655/2007-1 – ‘Foamplus’, para. 16).
• Special Typeface
Sign CTM No Goods and services
CTM No 5 456 207 Classes 12, 25 and 28
The term ‘Superleggera’ means ‘Super light’ in English, and the refusal of this mark was confirmed by the General Court (see judgment of 19/05/2010, T-464/08, ‘Superleggera’, paras 33-34). The GC observed that while the font contains a certain peculiarity, the fact remains that the style is not likely to create an immediate and lasting memory on the part of the relevant public, or to distinguish the applicant’s goods from other suppliers in the market. This is because, as regards the form of handwritten letters, they are usual in the commercial field. Therefore, this style remains largely normal in the eyes of consumers and, in this case, the relevant public. As far as the applicant’s argument that the use of a capital ‘S’ at the beginning changes the way the expression ‘Superleggera’ is perceived is concerned, the GC states that the use of a capital letter does not have as a consequence that the expression will not be perceived as giving information to the public as to the goods at issue.
Sign Goods and services
Example taken from CP3
cinematographic works on image medium or other data media;
printed matter; organising large events; entertainment
The mark means: Bollywood makes one happy
Sign Goods and services
CTM 5 225 156 Cancellation Decision of 31/01/2014 No. 7675C
Classes 29 and 30
• Colour
The mere ‘addition’ of a colour or combination of colours that is basic and/or commonly used in the market is not sufficient to make a descriptive and/or non-distinctive word element registrable. See the following example of a mark which was refused despite the addition of a colour.
Sign CTM No Goods and services
CTM No 7 147 689 goods and services in Classes 9and 38
• Typeface, font size or arrangement of the words and/or letters
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The way in which the word elements are positioned can add distinctive character to a sign when it is capable to affect the consumer’s perception of the meaning of the word elements. In other words, the arrangement must be of such a nature as to require a mental effort from the consumer to perceive the link existing between the word elements and the claimed goods and services. As a rule, the fact that the word elements are arranged in vertical, upside-down or in one, two or more lines is not sufficient to endow the sign with the minimum degree of distinctive character that is necessary for registration.
Sign CTM No Goods and services
CTM No 8 294 233 goods in Class 3
The above mark for cosmetics, body and beauty care products was refused registration, as the typeface is banal and the presentation of the two word elements, one over the other, cannot be regarded as unusual. The fact that the ‘b’ is larger than the rest of the letters in ‘beauty’ is barely perceptible. These facts alone cannot confer a distinctive character on the sign applied for (judgment of 11/07/2012, T-559/10, ‘Natural beauty’, para. 26).
The following marks are considered to be acceptable.
Sign CTM No Goods and services
CTM No 2795771 goods and services in Classes 9and 38.
The acronym ‘DVB’ means ‘Digital Video Broadcasting’, an expression that indicates a particular type of broadcasting technology. ‘Without being led by prior knowledge of the acronym DVB, some mental effort is required, followed by a measure of interpretation, to divine the meaning of the sign depicted above. The letters comprising the sign are not clearly identifiable individually, as the sign may be a stylised DV3, D13, DVB or even LV3 or LVB. Further, the typeface does not depart significantly from common typefaces. By possessing at least a minimum of distinctive character, the sign above is therefore capable of functioning as a trade mark (decision of 09/10/2008, R 1641/2007-2, paras 23-25).
Sign Goods and services
Example taken from CP3 perfumery; services of
a fashion designer; clothing
2.3.4.3 Word elements combined with other figurative elements
Word elements combined with banal shapes or designs
Basic shapes and figures include points, lines, line segments, circles and polygons such as triangles, squares, rectangles, parallelograms, pentagons, hexagons etc. It must also be t aken into account that there are shapes, figures and d esigns which despite not being ‘geometric’ are still too simple/banal to add distinctive character to a sign.
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Descriptive or non-distinctive verbal elements are unlikely to be acceptable when they are combined with basic/simple/banal shapes/figures/designs, geometric or not. This is mainly due to the following circumstances:
• when consumers look at a mark, the verbal element is generally the element most likely to be recognised and to be easily remembered;
• such shapes/figures do not convey any ‘message’ to the consumers and therefore they are not able to divert their attention from the descriptive/non- distinctive meaning of the word element.
The use of a colour that is basic and/or commonly used in the market does not endow the mark with a sufficient degree of distinctive character.
The following marks are considered to be objectionable.
Sign CTM No Goods and services
CTM No 6 039 119 goods in Class 24
Sign Goods and services
Example taken from CP3 books and magazine editing
Sign Goods and services
Example taken from CP3 coffee
On the other hand, complex shapes, figures and designs can add distinctiveness to a sign. As a rule, the more complex shapes/figures/designs are, the more distinctive they are. The following is an example of a distinctive sign (it is assumed that the geometrical shape is not a representation of the packaging of the goods).
Sign Goods and services
Example taken from CP3 coffee
Nevertheless, in order to conclude for the existence of a sufficient degree of distinctive character, other factors should also be taken into account, such as the following:
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• the shape/figure/design should not consist of a non-distinctive combination of basic/simple/banal shapes/figures/designs, geometric or not. In these cases, it is also necessary to properly assess the ‘visual impact’ of the figurative element in relation to that of the word element;
• the shape/figure/design should not consist of a common/non-distinctive label;
• the shape/figure/design should not be commonly used in trade in relation with the claimed goods and services;
• the shape/figure/design should not be a pattern that cannot be easily memorised by the relevant public;
• the shape/figure/design should not possess merely decorative/functional features;
• the shape/figure/design should not consist of a descriptive/non-distinctive two- dimensional representation of the goods and/or services (or of a part of them) nor should it reinforce the descriptive and/or promotional message conveyed by the word element;
• the shape/figure/design should not consist of a non-distinctive two-dimensional representation of the container/packaging of goods claimed;
• the shape/figure/design should not consist of a non-distinctive representation of the external appearance/silhouette of the goods or of a part of them;
• the shape/figure/design should not consist of the non-distinctive two-dimensional representation of the place/space/area/location where the goods/services are sold/provided/distributed/displayed.
These ‘features’ may overlap and could also be present at the same time in the same sign.
Here below are listed some examples of figurative elements belonging to some of the abovementioned categories.
Figurative elements consisting of a des criptive / non-distinctive representation of the goods or services or of a part of them
In some cases the figurative element consists of a r epresentation of the goods or services claimed (or of a part of them). In principle, the representation is considered to be descriptive and/or devoid of distinctive character whenever:
• it is a ‘faithful’ or ‘true-to-life’ representation of the goods and services;
• it consists of a symbolic/stylised – but still realistic – representation of the goods and services.
In both cases, to be objectionable, the representation of the goods/services should not depart significantly from those that are commonly used in trade. The following are considered to be non-distinctive.
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Sign Goods and services
Example taken from CP3 fish
Sign Goods and services
Example taken from CP3 fish
Figurative elements that reinforce the descriptive and/or promotional ‘message’ conveyed by the verbal element
The figurative element is also regarded as descriptive and/or devoid of distinctive character when it merely reinforces the descriptive and/or promotional message conveyed by the verbal element.
Sign CTM No Goods and services
International registration designating the EU No 1 131 046
Classes 36 (charitable fund raising services), 42 and 45.
The figurative element merely reinforces the message conveyed by the verbal elements, i.e. you can make a donation with a single click
Sign CTM No Goods and services
CTM No 1 088 576 Class 29
‘Fra Danmark’ means ‘From Denmark’ in English. The device element (though not a heraldic imitation of the Danish flag) clearly reinforces the message that the claimed goods originate from Denmark. The decision has been confirmed by the Board (see decision R 469/2013-1).
Sign CTM No Goods and services
CTM No 10 909 109 Classes 5, 18, 21, 25, 28 and 31
‘Hundesport’ means ‘dog/canine sport’
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Sign CTM No Goods and services
CTM No 9 117 219 inter alia, coffee in Class 30
The word MOCA indicates a kind of coffee in some European languages, for example, Italian, Spanish and Portuguese. The figurative element between the letters ‘MO’ and ‘CA’ consists of the colours of the Italian flag. Though not objectionable under Article 7(1)(h) CTMR, this element does not add any distinctive character to the sign since it clearly indicates to the consumers the geographical origin/destination of the goods
Figurative elements commonly used in trade in relation to the goods or services
As a rule, figurative elements that are commonly used in trade in relation to the goods and/or services claimed do not add distinctive character to the sign as a whole. See the following marks.
Sign TM No Goods and services
International registration designating the EU No 1 116 291
goods and services in Classes 29, 30, 31 and 43
The German expression ‘Einfach Gut!’ in the above mark means ‘Simply good! /Just Great!’ in English. The red heart is a shape that is commonly used in the market in relation with goods and services, especially foodstuffs such as chocolate and sweets in general, and particularly during special occasions such as the Saint Valentine day. As such, the mark was refused registration.
Sign Case
Judgment of 15/09/2005, C-37/03 P, ‘BioID’
The above mark was refused for goods and services claimed in Classes 9, 38 and 42 regarding password management and security features for software and telecommunication. The relevant public will understand the sign as a whole to mean ‘biometrical identification’, which is indistinguishable from the claimed goods and services, and is not of a character which can guarantee the identity of the origin of the marked product or service to the end-user from the viewpoint of the relevant public (para. 70). Additionally, the absence of any particular distinctive element, the common ‘Arial’ typeface and characters of different boldness do not enable the trade mark applied for to serve as an indicator of origin (para. 71).
Figurative elements consisting of patterns
As a r ule, patterns do not add di stinctive character to signs consisting of descriptive/non-distinctive word elements whenever they are perceived by the relevant public as merely decorative elements. Indeed, in these cases they do not convey any ‘message’ that could make the sign easily memorable for consumers.
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Combinations of non-distinctive and / or banal figurative elements
As a rule, combinations of banal figurative elements (geometric or not), do not add distinctive character to signs consisting of word elements whenever they are not capable to divert the consumer’s attention from the descriptive/non-distinctive message conveyed by the latter. In these cases, it is necessary to properly assess the ‘visual impact’ of the figurative element in relation to that of the word element.
See, for example, the following rejected marks.
Sign CTM No Goods and services
CTM No 11 439 932 For services in Classes 39 and 41
(including car club services) Withdrawn
In this case the ‘swoosh’ is insufficient to add distinctive character to the mark. Indeed, it is not eye catching, noticeable or memorable nor is it dominant with regard to the remaining word and figurative elements. Furthermore, the swoosh (as well as the other figurative elements, i.e. the typefaces, the colours and the label) is not able to divert the consumers’ attention from the clear descriptive/non- distinctive message conveyed by the expression ‘SUPERCAR EXPERIENCE’.
A similar reasoning applies, mutatis mutandis, to the figurative element of the following sign.
Sign CTM No Goods and services
CTM No 11 387 941 Classes 9, 35 and 41
On the other hand, the following marks have been considered acceptable.
Sign CTM No Goods and services
CTM No 10 894 996 goods and services in Classes 12,
35 and 36 (registered)
CTM No 10 834 299 goods and services in Classes 9,
38 and 42 (registered)
In both cases some of the figurative elements (the sign before the word ‘Specialized’ and the five rectangles having a circular arrangement that are placed at the right side of the word ‘ECO’) have an autonomous visual impact, with the same level of influence on the overall impression of the sign as the word element, and are therefore capable of attracting the consumer’s attention.
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Word elements combined with common / non-distinctive labels
In some cases descriptive and/or non-distinctive word elements are combined with devices that, though not being simple geometric shapes, consist nonetheless of common/non-distinctive labels. These labels are not capable of impressing themselves in the consumer’s mind since they are too simple and/or commonly used in trade in relation with the goods/services claimed. See the following example.
Sign CTM No Goods and services
CTM No 116 434 Class 32(refused)
Sign CTM No Goods and services
CTM No 1 166 164 services in Classes 35, 37 and 42
With regards to the perception of the shape and colour of the price tag by the relevant public, coloured price tags are commonly used in trade for all kinds of goods and services. Therefore, the fact that the tag in the above mark may attract the public´s attention will not affect the meaning of the dominant word elements. Moreover, the shape tends to reinforce the promotional character of the word elements in the minds of the relevant public (judgment of 03/07/2003, T-122/01, ‘Best Buy’, paras 33-37).
Also in these cases the addition of ‘common’ colours (or a combination of them) does not add distinctive character to the sign. This is even more so when the claimed colour possesses functions other than mere decoration.
See, as an example, the following mark.
Sign CTM No Goods and services
CTM No 10 849 263 services in Classes 35, 36, 38,
41, 42, 43, 44 and 45 (refused).
The fact that this kind of label is normally used for goods (such as liquors, nougat etc.) is not sufficient to endow the sign with a s ufficient degree of distinctive character in relation to services.
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2.4 Customary signs or indications (Article 7(1)(d) CTMR)
2.4.1 General remarks
Article 7(1)(d) CTMR excludes from registration signs which consist exclusively of words or indications which have become customary in the current language or in the bona fide and established practices of the trade at the relevant point in time (see 2.4.2 below). In this context, the customary nature of the sign usually refers to something other than the properties or characteristics of the goods or services themselves.
Although there is a clear overlap between the scope of Article 7(1)(d) and 7( 1)(c) CTMR, signs covered by Article 7(1)(d) CTMR are excluded from registration not because they are descriptive, but on the basis of their current usage in trade sectors covering the goods or services for which the mark is applied for (judgment of 04/10/2001, C-517/99, ‘Bravo’, para. 35).
Moreover, signs or indications which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that sign are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and do not, therefore, fulfil the essential function of a trade mark (judgment of 16/03/2006, T-322/03, ‘WEISSE SEITEN’, para. 52).
This ground for refusal also covers words which had or iginally no m eaning or had another meaning, for example, ‘weiße Seiten’ (= ‘white pages’). It also covers certain abbreviations which have entered informal or jargon usage and have thereby become customary in trade.
Furthermore, a refusal based on Article 7(1)(d) CTMR also covers figurative elements which are either frequently used pictograms or similar indications or have even become the standard designation for goods and s ervices, for example a w hite ‘P’ on a bl ue background for parking places, the Aesculapian staff for pharmacies, or the silhouette of a knife and fork for restaurant services.
Sign Reasoning Case No
CTM No 9 894 528 covering goods in Class 9
‘This device is identical to the international safety symbol known as “high voltage symbol” or “caution, risk of electric shock” ... It has been officially defined as such by the ISO 3864 as the standard high voltage symbol, whereby the device applied for is contained within the triangle which denotes that it is a h azard symbol ... Consequently, since it essentially coincides with the customary international sign to indicate a risk of high voltage, the Board deems it to be ineligible for registration as a C ommunity trade mark in accordance with Article 7(1)(d) CTMR’ (paragraph 20)
R 2124/2011-5
2.4.2 Point in time of a term becoming customary
The customary character must be assessed with reference to the filing date of the CTMA ( judgments of 05/03/2003, T-237/01, ‘BSS’, para. 46, and o f 05/10/2004, C-192/03, paras 39-40). Whether a term or figurative element was non-descriptive or
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distinctive long before that day, or when the term was first adopted, will in most cases be immaterial, since it does not necessarily prove that the sign in question had no t become customary by the filing date (judgment of 05/03/2003, T-237/01, ‘BSS’, para. 47, similarly, see judgment of 24/05/2014, T-553/12, ‘Bateaux-Mouches’).
In some cases, a sign applied for may become customary after the filing date. Changes in the meaning of a sign that lead to a sign becoming customary after the filing date do not lead to a declaration for invalidity ex tunc under Article 52(1)(a) CTMR, but can lead to a revocation with effect ex nunc under Article 51(1)(b) CTMR. For example, the CTM registration ‘STIMULATION’ was cancelled on the grounds that it has become a term customarily used in relation to energy drinks.
2.4.3 Assessment of customary terms
Whether a mark is customary must be assessed, firstly, by reference to the goods or services in respect of which registration is sought, and, secondly, on the basis of the target public’s perception of the mark (judgment of 07/06/2011, T-507/08, ‘16PF’, para. 53).
As regards the relevant public, the customary character must be assessed by taking account of the expectations which the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, is presumed to have in respect of the type of goods in question (judgment of 16/03/2006, T-322/03, ‘Weisse Seiten’, para. 50).
However, in cases where intermediaries participate in the distribution to the consumer or the end user of a product, the relevant public to be taken into account in determining the sign’s customary character comprise not only all consumers and end us ers and, depending on the features of the market concerned, all those in the trade who deal with that product commercially (judgments of 29/04/2004, C-371/02, ‘Bostongurka’, para. 26 and of 06/03/2014, C-409/12, ‘Kornspitz’, para 27).
The General Court has held that Article 7(1)(d) CTMR is not applicable when the sign’s use in the market is by one single trader (other than the CTM applicant) (judgment of 07/06/2011, T-507/08, ‘16PF’). In other words, a m ark will not be r egarded as customary purely for the simple reason that a competitor of the CTM applicant also uses the sign in question. For customary character to be demonstrated, it is necessary for the examiner to provide evidence (which will generally come from the internet) that the relevant consumer has been exposed to the mark in a non-trade mark context and that, as a r esult, they recognise its customary significance vis-à- vis the goods and services claimed.
As regards the link with the goods and s ervices in respect of which registration is sought, Article 7(1)(d) CTMR will not apply where the mark consists of a more general laudatory term which has no par ticular customary link with the goods and s ervices concerned (see judgment of 04/10/2001, C-517/99, ‘Bravo’, paras 27 and 31).
2.4.4 Applicability of Article 7(1)(d) CTMR in relation to plant variety names
The issue of generic character may arise in the context of the examination of trade marks that consist exclusively of the name of a plant variety which is not simultaneously registered by the Community Plant Variety Office in accordance with
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Regulation No 2100/94. In the latter case, the mark would be objectionable under Article 7(1)(f) CTMR Therefore, if the evidence available shows that a g iven plant variety name has become customary in the European Union as the generic denomination of the variety in question, then the examiners – in addition to objecting to the applied for trade mark under Article 7(1)(c) and (b) CTMR on the ground that the applied for trade mark is descriptive – should also object under Article 7(1)(d) CTMR on the additional ground that the trade mark consists exclusively of a term that has become generic in the relevant field of trade in the European Union. See paragraphs 2.3.2.10 and 2.6.1.2 Plant variety names.
2.5 Shapes with an es sentially technical function, substantial aesthetic value or resulting from the nature of the goods (Article 7(1)(e) CTMR)
2.5.1 General remarks
Article 7(1)(e) CTMR excludes from registration signs which consist exclusively of (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; or (iii) the shape which gives substantial value to the goods.
The wording of this provision infers that it does not apply to signs for which registration is sought in respect of services.
It should be borne in mind that an objection under Article 7(1)(e) CTMR would not be justified when the applied for sign consists of a s hape combined with additional, distinctive matter (be it word and/or figurative elements), as the sign as a whole would not then consist exclusively of a shape.
Article 7(1)(e) CTMR does not, however, define the type of signs which must be considered as shapes within the meaning of that provision. It makes no distinction between three-dimensional shapes, two-dimensional shapes, or two-dimensional representations of three-dimensional shapes. Hence, it must be held that Article 7(1)(e) CTMR may apply to trademarks reproducing shapes, regardless of the dimension in which they are represented (judgment of 08/05/2012, T-331/10, ‘Surface covered with black dots’, para. 24). Therefore, the applicability of Article 7(1)(e) CTMR is not confined to three-dimensional shapes.
It should be noted, in this respect, that according to settled case-law the classification of a m ark as ‘figurative’ does not always rule out the applicability of the grounds for refusal foreseen in Article 7(1)(e) CTMR. The Court of Justice and the General Court have held that the case-law developed in respect of three-dimensional marks consisting of the appearance of the product also applies to ‘figurative’ marks that consist of two-dimensional representations of products (judgment of 22/06/2006, C-25/05 P, ‘Sweet wrapper’, para. 29; judgment of 04/10/2007, C-144/06, ‘Tabs’, para. 38).
Article 7(3) CTMR makes it clear that shapes which follow from the nature of the goods (whether existing in nature or manufactured), essentially functional shapes or shapes giving substantial value to the goods cannot overcome an objection under Article 7(1)(e) CTMR by demonstrating that they have acquired distinctive character. Accordingly, trade mark protection is excluded when a shape falls within Article 7(1)(e)
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CTMR, regardless of whether that particular shape might actually be distinctive in the marketplace.
In this respect, it should be noted that the Court of Justice, in its preliminary ruling of 20/09/2007, C-371/06, ‘BENETTON’, concerning the interpretation of the third indent of Article 3(1)(e) of First Council Directive No 89/104 (TMD) (which is equivalent to Article 7(1)(e) CTMR) ruled that the shape of a product which gives substantial value to that product cannot constitute a trade mark under Article 3(3) TMD (equivalent to Article 7(3) CTMR), even where, prior to the application for registration, it acquired attractiveness as a r esult of its recognition as a distinctive sign following advertising campaigns presenting the specific characteristics of the product in question.
Furthermore, the Court of Justice, in its preliminary ruling of 08/04/2003, joined cases C-53/01, C-54/04 and C-55/01, ‘Linde’, para. 44, stated that since Article 3(1)(e) TMD is a preliminary obstacle that may prevent a sign consisting exclusively of the shape of goods from being registered, it follows that if any one of the criteria listed in that provision is satisfied, the sign cannot be registered as a trade mark.
The Court also stated that if that preliminary obstacle is overcome, it is still necessary to ascertain whether a three-dimensional shape of the goods must be r efused registration under one or more of the grounds for refusal set out in Article 3(1)(b) to (d) (joined cases C-53/01, C-54/04 and C-55/01, ‘Linde’, para. 45).
If the examination of a sign under Article 7(1)(e) CTMR leads to the conclusion that one of the criteria mentioned in that provision is met, it follows that it is no longer necessary to address the issue of whether the sign has acquired distinctiveness through use, since an objection under Article 7(1)(e) CTMR cannot be overcome by invoking Article 7(3) CTMR (judgment of 06/10/2011, T-508/08, ‘Representation of a loudspeaker’, para. 44). The above circumstance explains the advantage of undertaking a pr ior examination of the sign under Article 7(1)(e) CTMR where several of the absolute grounds for refusal provided for in Article 7(1) CTMR may apply.
Therefore, for the sake of sound and efficient administration of justice and economy of proceedings, examiners are requested to raise all objections to registration of the sign under Article 7(1) CTMR, including Article 7(1)(e) CTMR, as soon as possible when found to be applicable and preferably all at once.
Thus, when the sign applied for consists of a shape which is likely to be perceived by the relevant public both as merely functional and as a s hape that does not depart significantly from the norms of the sector, the examiner should raise an objection under Article 7(1)(e) and 7(1)(b) CTMR, even if the evidence of lack of distinctiveness is stronger than that relating to functionality.
However, it may also happen that following an initial objection only under Article 7(1)(b) and/or (c) CTMR, the evidence submitted by the applicant shows that all the essential features of the shape in question serve a t echnical function or that the shape gives a substantial value to the goods. In such cases, a further objection under Article 7(1)(e)(ii) or (iii) should be r aised, so that the applicant may make its submissions in that respect.. In such a scenario, the applicant can try to overcome the objection only by arguments, since the evidence of acquired distinctiveness would not be taken into account in the context of an objection under Article 7(1)(e) CTMR.
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2.5.2 Shape which results from the nature of the goods
Under Article 7(1)(e)(i) CTMR, signs which consist exclusively of the shape which results from the nature of the goods themselves cannot be registered.
This ground of refusal will apply only when the trade mark applied for, whether a 2D or 3D mark, consists exclusively of the only natural shape possible for the goods (whether manufactured or existing in nature): for example, the realistic representation below of a banana for bananas:
It should be noted that whenever a given product may come in different shapes, it would not be app ropriate to raise an ob jection under Article 7(1)(e)(i) CTMR, since there is not only one possible natural shape of the goods. For example, it would not be proper to apply this ground of refusal to the below shape of the head of an el ectric shaver where the specification was for ‘electric shavers’, since these do not necessarily have to be manufactured with this configuration:
Nevertheless, other grounds of refusal may still apply, such as, in the present case, an objection under Article 7(1)(e)(ii) CTMR, as the shape in question is functional in its essential features (judgment of 18/06/2002, C-299/99, ‘Philips’).
In all those cases where the applied for CTM consists exclusively of the shape of the goods which follows from their nature, an objection may additionally be raised under Article 7(1)(c) CTMR, on t he ground that the shape in question is descriptive of the nature of the goods.
2.5.3 Shape of goods necessary to obtain a technical result
Article 7(1)(e)(ii) CTMR excludes from registration signs which consist exclusively of the shape of goods which is necessary to obtain a technical result.
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The Court of Justice has rendered two leading judgments concerning the subject of essentially functional shapes, which provide guidance concerning the examination of trade marks consisting exclusively of functional shapes (preliminary ruling of 18/06/2002, C-299/99, ‘Philips’, and j udgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’), interpreting, inter alia, Article 3(1) TMD, which is the equivalent of Article 7(1) CTMR.
Regarding the above sign, the Court of Justice held that when it comes to signs consisting exclusively of the shape of a product necessary to obtain a technical result, Article 3(1)(e)(ii) TMD is intended to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a pr oduct incorporating such a function, or at least limit their freedom of choice with regard to the technical solution they wish to adopt in order to incorporate such a function in their product (preliminary ruling of 18/06/2002, C-299/99, ‘Philips’, para. 79).
It should be not ed that Article 7(1)(e)(ii) CTMR, by referring to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, is aimed at ensuring that solely shapes of goods which only incorporate a t echnical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered (judgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’, para. 48).
A sign consists ‘exclusively’ of the shape of goods which is necessary to obtain a technical result when all the essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant in that context (judgment of 14/09/2010, C-48/09 P, ‘Red Lego Brick’, para. 51). The fact that there may be al ternative shapes, with other dimensions or another design, capable of achieving the same technical result does not in itself preclude the application of this provision (judgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’, paras 53-58).
However, Article 7(1)(e)(ii) cannot apply if the shape of the goods incorporates a major non-functional element, such as a dec orative or imaginative element which plays an important role in the shape (judgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’, para. 52 and decision of 29/10/2008, R 1462/2007-4, ‘VOLLEY BALL’).
In contrast, the presence of one or more minor arbitrary elements in a t hree- dimensional sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a t echnical result (judgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’, para. 52).
The correct application of Article 7(1)(e)(ii) requires that the essential characteristics of the three-dimensional sign at issue be properly identified. The expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign (judgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’, paras 68-69).
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The identification of those essential characteristics must be carried out on a case-by- case basis. Moreover, the examiner may base their assessment directly on the overall impression produced by the sign or first examine in turn each of the components of the sign concerned (judgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’, para. 70).
Unlike in the situation covered by Article 7(1)(b) CTMR, how the sign is presumed to be perceived by the average consumer is not a decisive element when applying the ground for refusal under Article 7(1)(e)(ii) CTMR, but, at most, may be a r elevant assessment criterion of assessment for the examiner when the latter identifies the sign’s essential characteristics (judgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’, para 76).
Once the sign’s essential characteristics have been i dentified, it will have to be established whether they all perform the technical function of the goods at issue (judgment of 14/09/2010, C-48/09 P, ‘Red Lego brick’, para 72).
In assessing a CTM application against Article 7(1)(e)(ii), consideration should be given to the meaning of the expression ‘technical result’. This expression should be interpreted broadly and includes shapes which, for example:
• fit with another article • give the most strength • use the least material • facilitate convenient storage or transportation.
One of the leading cases concerning essentially functional shapes concerned the shape of a building block in a construction toy set.
In that case, following a cancellation action, two instances of the Office (firstly by the Cancellation Division and secondly by the Grand Board) declared CTM No 107 029 invalid for the three-dimensional sign below in relation to ‘construction toys’ in Class 28:
Sign CTM No Goods and services
CTM No 107 029 Class 28(construction toys)
In particular, the Grand Board, held that the various features of the ‘Red Lego brick’ all performed particular technical functions, namely (i) the bosses [studs]: height and diameter for clutch power; number for fixing versatility; layout for fixing arrangement; (ii) the secondary projections: clutch-power, the number for best clutch-power in all positions; the thickness of the wall to act as a spring; (iii) the sides: connected with sides of other bricks to produce a wall; (iv) the hollow skirt: to mesh with the bosses and to enable fixing for clutch power and (v) the overall shape: brick shape for building; size for children to hold (decision of 10/07/2006, R 856/2004-G, para. 54).
The General Court dismissed the appeal against the above decision and confirmed the findings of the Grand Board, holding that the latter had c orrectly applied Article 7(1)(e)(ii) CTMR (judgment of 12/11/2008, T-270/06, ‘Red Lego brick’).
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Following an appeal, the Court of Justice, in its ruling of 14/09/2010, C-48/09 P, ‘Red Lego brick’, confirmed the judgment of the General Court, holding that
… the solution incorporated in the shape of goods examined is the technically preferable solution for the category of goods concerned. If the three-dimensional sign consisting of such a s hape were registered as a trade mark, it would be difficult for the competitors of the proprietor of that mark to place on the market shapes of goods constituting a real alternative, that is to say, shapes which are not similar and which are nevertheless attractive to the consumer from a functional perspective’ (para. 60).
Importantly, the Court clarified that the essential characteristics of a s hape must be determined as objectively as possible for the purposes of applying Article 7(1)(e)(ii) CTMR. The Court added that such an identification may, depending on the case, and in particular in view of its degree of difficulty, be carried out by means of a simple visual analysis of the sign or, on the other hand, be based on a detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned (para. 71).
Furthermore, the Court held that
… the technical functionality of the characteristics of a shape may be assessed, inter alia, by taking account of the documents relating to previous patents describing the functional elements of the shape concerned’ (para. 85).
Therefore, the fact that the shape concerned is, or has been, the subject of a claim in a registered patent or patent application constitutes prima facie evidence that those aspects of the shape identified as being functional in the patent claim are necessary to achieve a technical result (this approach has been followed by the Boards of Appeal, for example, in their decision of 17/10/2013 in Case R 42/2013-1).
A case regarding the following shape applied for ‘knives and knife handles’ provides an example as to how to identify the essential characteristics of a shape and how to assess if all of those characteristics perform a technical function:
Sign Case
Judgment of 19/09/2012, T-164/11 ‘Shape of knife handles’
In this case, the shape applied for was described as
... a slightly curved knife handle characterised by a small angle of 5 to 10 degrees between the knife blade and the longitudinal axis of the shell grip,
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which has a middle section with a somewhat rounded outer cross section, which broadens towards a tapered rear end. The handle also incorporates a knurled screw in the shell of the knife.
The Court stated that
As is apparent from that patent [relied upon by the invalidity applicant], the technical effect of the angle between the knife blade and t he longitudinal axis of the mother-of-pearl handle is to facilitate cutting. The intermediate section is of particular importance for long cuts. It makes the cut more precise while allowing greater pressure to be exerted. Finally, the knurled screw allows the shell to be opened and the blades of the knife to be changed without using other tools and without hindering manipulation of the knife during use (para. 30).
and concluded that the most important elements of the sign, constituting its essential characteristics, are all exclusively functional (para. 33).
2.5.4 Shape which gives substantial value to the goods
Under Article 7(1)(e)(iii) CTMR, signs which consist exclusively of the shape which gives substantial value to the goods cannot be registered or if registered they are liable to be declared invalid.
Whereas the same shape can, in principle, be protected both as a des ign and as a trade mark, it should be not ed that Article 7(1)(e)(iii) CTMR only refuses trade mark protection for shapes in certain specific cases, namely, when the sign consists exclusively of a shape which gives substantial value to the product.
The concept of ‘value’ should be interpreted not only in commercial (economic) terms, but also in terms of ‘attractiveness’, i.e., the likelihood that the goods will be purchased primarily because of their particular shape. It should not, however, be i nterpreted as meaning ‘reputation’, since application of this absolute ground for refusal is justified exclusively by the effect on the value added to the goods by the shape and not by other factors, such as the reputation of the word mark that is also used to identify the goods in question (see in this regard, decision of 16 /01/2013 in Case R 2520/2011-5, para. 19).
As the Court has reiterated, the immediate purpose in barring registration of shapes which bestow substantial value on the goods is the same as that in the case of merely functional shapes, that is, to prevent the exclusive and permanent right conferred by a trade mark from serving to extend the life of other rights which the legislature has sought to make subject to ‘limited periods’ (judgment of 06/10/2011, T-508/08, ‘Representation of a loudspeaker’, para. 65).
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To date, the leading case when it comes to shapes bestowing substantial value on the goods concerns the three-dimensional representation below of a loudspeaker.,.
Sign Case Goods
Decision of 10/09/2008, R 497/2005-1
Judgment of 06/10/2011, T-508/08,
‘Representation of a loudspeaker’
Apart from loudspeakers, other apparatus for the reception, processing, reproduction,
regulation or distribution of sound signals in Class 9 as well as music furniture in Class 20.
The General Court, in its judgment of 06/10/2011, T-508/08, ‘Representation of a loudspeaker’, confirmed the Board of Appeal’s finding that the sign at issue fell within the scope of Article 7(1)(e)(iii) CTMR. This judgment constitutes, until now, the only ruling by the judicature of the European Union to address the substance of the issue of ornamental shapes bestowing substantial value on goods.
The Court held that for goods such as those listed above, the design was an element which would be very important in the consumer’s choice even if the consumer took other characteristics of the goods at issue into account. After having stated that the shape for which registration was sought revealed a very specific design and that it was an essential element of the applicant’s branding that increased the appeal of the product and, therefore, its value, the Court also noted that it was apparent from the evidence on record, namely extracts from the distributors’ websites and on-line auction or second-hand websites, that the aesthetic characteristics of that shape were emphasised first and that the shape was perceived as a kind of pure, slender, timeless sculpture for music reproduction, which made it an important selling point (para. 75). The Court thus concluded that independently of the other characteristics of the goods at issue, the shape for which registration was sought bestowed substantial value on the goods concerned.
It follows from the above judgment that it is important to determine whether the aesthetic value of a shape can, in its own right, determine the commercial value of the product and the consumer’s choice to a large extent. It is immaterial whether the overall value of the product is also affected by other factors, if the value contributed by the shape itself is substantial.
In practice, this ground of refusal will mostly apply to those goods where the shape of the object concerned is the main, although not necessarily exclusive, factor that determines the decision to buy it. For example, this will be the case with objects of art and items such as jewellery, vases and o ther objects that are bought primarily because of the aesthetic value associated with their shape.
On the other hand, the fact that the shape may be pleasing or attractive is not sufficient to exclude it from registration. If that was the case, it would be virtually impossible to imagine any trade mark of a shape, given that in modern business there is no product of industrial utility that has not been the subject of study, research and industrial design before its eventual launch on t he market (decision of 03/05/2000, R 395/1999-3 – ‘Gancino quadrato singolo’, paras 1-2 and 22-36).
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For example, the Board held that the below shape does not give substantial value to the goods.
Sign Case
Decision of 14/12/2010, R 486/2010-2 ‘Shape of a chair’
The Board held that, although the above shape was aesthetically pleasing and had some eye-appeal, it did not depart sufficiently from the norms of presentation of chairs on the filing date of the application. It further held that the chair was also bought to be sat on and used as a comfortable piece of office furniture in the home or workplace. It distinguished this case from the abovementioned ‘Loudspeaker’, noting that features such as the fact that its backrest is curved and thus provides lumbar support and that the armrests also add to its comfort as do the four rollers on the legs were visible from the shape, unlike the technical features of the loudspeaker in the ‘Loudspeaker’ decision.
The Board considered that the ‘design icon’ status invoked by the CTM proprietor in respect of the above chair did not automatically show that the value of the product lied primarily in the shape per se, being rather the result of the fact that the chair has a solid, comfortable and ergonomic design which has become famous due, in particular, to the considerable marketing efforts over the years.
The Board also noted that the CTM proprietor had not argued that the shape’s value lied in its eye-appeal and that the invalidity applicant had not brought forward evidence proving that sellers advertised the chair in question mainly relying on i ts aesthetic appearance (paras 21-23).
For the examination of these trade marks a case-by-case approach is necessary. In most of these cases a proper examination will only be possible where, due to information and documents provided by the applicant (or a third party) there is evidence that the aesthetic value of the shape can, in its own right, determine the commercial value of the product and the consumer’s choice to a large extent. This has been, precisely, the case in the two cases referred to above: in the ‘loudspeaker’ case it was only after a careful assessment of the evidence filed by the applicant that the Board objected on this ground; and in the case described just above, the evidence had been provided by the invalidity applicant, but proved to be insufficient.
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2.6 Acquired distinctiveness
2.6.1 Introduction
In accordance with Article 7(3) CTMR, a trade mark may still be registered despite the fact that it does not comply with Article 7(1)(b), (c) or (d) CTMR, provided that ‘the mark has become distinctive in relation to the goods and services for which registration is requested in consequence of the use which has been made of it’.
Article 7(3) CTMR constitutes an exception to the rule laid down in Articles 7(1)(b), (c) or (d) CTMR, whereby registration must be refused for trade marks which are per se devoid of any distinctive character, for descriptive marks, and for marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.
Distinctive character acquired through use means that although the sign ab initio lacks inherent distinctiveness with regard to the goods and services claimed, owing to the use made of it on the market, the relevant public has come to see it as identifying the goods and services claimed in the CTM application as originating from a particular undertaking. Thus, the sign has become capable of distinguishing goods and services from those of other undertakings because they are perceived as originating from a particular undertaking. In this way, a sign originally unable to be r egistered under Article 7(1)(b), (c) or (d) CTMR can acquire a new significance and its connotation, no longer purely descriptive or non-distinctive, permits it to overcome those absolute grounds for refusal of registration as a trade mark that would have otherwise applied.
2.6.2 Request
The Office will only examine the acquired distinctive character following a request from the CTM applicant, which may be filed at any time during the examination proceedings.
2.6.3 The point in time
The evidence must prove that distinctiveness through use was acquired prior to the CTMA’s filing date. In the case of an IR, the relevant date is the date of registration by the International Bureau. Where priority is claimed, the relevant date is the priority date. Hereafter, all these dates are referred to as the ‘filing date’.
2.6.3.1 Examination proceedings
Since a trade mark enjoys protection as of its filing date, and since the filing date of the application for registration determines the priority of one mark over another, a t rade mark must be r egistrable on t hat date. Consequently, the applicant must prove that distinctive character has been acquired through use of the trade mark prior to the date of application for registration (judgment of 11/06/2009, C-0542/07P, ‘Pure Digital’, paras 49 and 51; and judgment of 07/09/2006, C-0108/05, ‘Europolis’, para. 22). Evidence of use made of the trade mark after this date should not be automatically disregarded, to the extent that it may provide indicative information regarding the situation prior to the date of application (judgment of 28/10/2009, T-137/08, ‘Green/Yellow’, para. 49).
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2.6.3.2 Cancellation Proceedings
In Cancellation Proceedings, a trade mark which was registered in breach of the provisions of Article 7(1)(b), (c) or (d) CTMR may nevertheless no longer be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a di stinctive character for the goods or services for which it is registered (Article 52(2) CTMR).
The precise purpose of this norm is to maintain the registration of those marks which, due to the use which has been made of them, have in the meantime – that is to say, after their registration – acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 CTMR (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 86 and judgment of 15/10/2008, T-405/05, ‘Manpower’ para. 127).
2.6.4 Consumer
Distinctive character, including that acquired through use, of a sign must be assessed in relation to the presumed perception of the average consumer for the category of goods or services in question. These consumers are deemed to be reasonably well- informed, and reasonably observant and c ircumspect. The definition of the relevant public is linked to an examination of the intended purchasers of the goods or services concerned, since it is in relation to those purchasers that the mark must perform its essential function. Consequently, such a definition must be arrived at by reference to the essential function of a trade mark, namely to guarantee the identity of the origin of the goods or services covered by the mark to consumers or end-users by enabling them, without any possibility of confusion, to distinguish the goods or services from others which have another origin (judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paras 33, 38).
The relevant consumer includes, therefore, not only persons who have actually purchased the goods and s ervices but also any potentially interested person, in the strict sense of prospective purchasers (judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paras 41 et seq.).
Prospective purchasers are defined by the precise product or service for which registration is sought. If the claimed goods or services are broad (for example, bags or watches), it is irrelevant that the actual products offered under the sign are extremely expensive luxury items – the public will include all the prospective purchasers for the goods claimed in the CTMA, including non-luxury and cheaper items if the claim is for the broad category.
2.6.5 Goods and Services
Since one of the main functions of a trade mark is to guarantee the origin of goods and services, acquired distinctiveness must be a ssessed in respect of the goods and services at issue. Consequently, the applicant’s evidence must prove a l ink between the sign and the goods and services for which the sign is applied for, establishing that the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark (judgment of 04/05/1999, C-0108/97 & C-0109/97, ‘Chiemsee’, para. 52; and judgment of 19/05/2009, T-0211/06, ‘Cybercrédit et al.’, para. 51).
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2.6.6 Territorial Aspects
Pursuant to Article 1 CTMR, a Community trade mark has a unitary character and has equal effect throughout the European Union. Article 7(2) CTMR provides that a trade mark must be r efused registration if an abs olute ground exists only in part of the European Union.
As a l ogical consequence thereto, acquired distinctiveness must be established throughout the territory in which the trade mark did not, ab initio, have such character (judgment of 22/06/2006, C-0025/05P, ‘Sweet wrapper’, paras 83, 86; and judgment of 29/09/2010, T-0378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, para. 30).
This is because the unitary character of the Community trade mark requires a sign to possess distinctive character, inherent or acquired through use, throughout the European Union (judgment of 17/05/2011, T-7/10, ‘υγεία’, para. 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) TMD that a Member State has to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 100).
2.6.6.1 Special provisions with respect to the accession of new Member States
In accordance with the provisions of the EU Accession Treaties, a C TM applied for before the date of accession of a given Member State may only be rejected for reasons which already existed before the date of accession. Hence, in the Office’s examination proceedings, acquired distinctiveness must be demonstrated only with respect to Member States of the EU at the time of the CTM application, and not those which have joined the EU subsequently.
2.6.6.2 3D marks, colours per se and figurative trade marks
If the objection exists throughout the European Union, as is normally the case for 3D marks, colours per se and figurative trade marks consisting exclusively of the depiction of the goods in question, acquired distinctiveness must be proven throughout the entire European Union. For the possibility of extrapolating the evidence, see paragraph 2.6.8.7 below.
2.6.6.3 Language area
Where the CTM applied for is rejected with respect to its meaning in a s pecific language, acquired distinctiveness through use must be shown at least with respect to the Member States in which that language is an official language.
Particular care should be taken when a language is an official language in more than one EU Member State. In such cases, when dealing with an absolute grounds objection based on t he meaning of wording in a certain language, acquired distinctiveness through use must be proven for each of the Member States where that language is official (as well as any other Member States or markets where it will be understood).
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(a) Examples of languages being official languages in more than one EU Member State include:
• German
German is an o fficial language in Germany and Austria as well as in Luxembourg and Belgium. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an abs olute grounds objection based on t he meaning of German language wording must automatically be examined for all these countries.
• Greek
Greek is an o fficial language not only in Greece but also in Cyprus. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of Greek language wording must automatically be examined for both these countries.
• English
English is an o fficial language in the United Kingdom, in Ireland and in Malta. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of English language wording must automatically be examined for all these countries.
• French
French is an official language not only in France but also in Belgium and Luxembourg. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of French language wording must automatically be examined for all these countries.
• Dutch
Dutch is an o fficial language not only in the Netherlands but also in Belgium. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of Dutch language wording must automatically be ex amined for both these countries.
• Swedish
Swedish is an official language not only in Sweden but also in Finland. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on t he meaning of Swedish language wording must automatically be examined for both of these countries.
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(b) Understanding of a Member State language in Member States where it is not official
In addition to the Member States where the language of a sign’s wording is an official EU language, it must also be c onsidered whether a given official EU language is understood in other Member States where it is not official. This may be bec ause, depending on the goods and services claimed in the CTMA, the relevant public in that Member State have an elementary understanding of the language in question, or because the relevant public consists of specialists for whom certain technical terms in another EU Member State’s official language are understood. If so, then acquired distinctiveness must be proven for the relevant public in these other EU Member States, and not only the Member States where the language is official.
By way of example, the GC has held that a very large proportion of European consumers and professionals have an elementary knowledge of English (judgment of 26/09/2012, T-301/09, ‘Citigate’, para. 41). Accordingly, depending on the relevant consumer of the goods and services in question and whether the sign consists of an elementary English word or not, acquired distinctiveness may also have to be assessed with respect to further Member States.
Moving from the general public to a more specialist public for goods and services, the GC has held that certain English terms in the medical field (judgment of 29/03/2012, T-242/11, ‘3D eXam’, para. 26), in technical fields (judgment of 09/03/2012, T-172/10, ‘Base-seal’, para. 54) and in financial matters (judgment of 26/09/2012, T-301/09, ‘Citigate’, para. 41) will be understood by the relevant professionals throughout the European Union as English is the commonly used professional language in these areas.
On the other hand, since the understanding of languages is not strictly limited by geographical borders, it may well be that, for historical, cultural or cross-border market reasons, certain (usually elementary) vocabulary of a given language may spread and could be widely understood by the general public in other Member States, particularly those with contiguous land borders. By way of example, German and French are commonly used in the Italian regions of Trentino-Alto Adige and Valle d’Aosta, respectively.
2.6.7 What has to be Proved
The Court of Justice has provided guidance on the conditions which should result in a finding that a t rade mark has acquired a di stinctive character through use: ‘If the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be s atisfied.’ (Judgment of 04/05/1999, C-0108/97 & C-0109/97, ‘Chiemsee’, para. 45 et seq.).
Accordingly, the evidence must demonstrate that a significant proportion of the relevant public for the claimed goods and services in the relevant territory see the trade mark as identifying the relevant goods or services of a specific undertaking, in other words, that the use made of the mark has created a link in the mind of the relevant public with a specific company’s goods or services, regardless of the fact that the wording at issue would lack the distinctiveness to make this link had such use not taken place.
With regards to the extent of market penetration and relevant public recognition a trade mark must achieve to hold that it has acquired distinctiveness through use, in that it
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has come to identify the goods and services of one undertaking as opposed to those of others for the relevant public, case-law does not prescribe fixed percentages of market recognition for the relevant public. Rather than using a fixed percentage of the relevant public in a given market, the evidence should rather show that a significant proportion of the public perceive the mark as identifying specific goods or services.
Finally, the evidence must relate to each of the goods and services claimed in the CTM application. After an initial absolute grounds objection under Article 7(1)(b), (c) or (d) CTMR, only the goods and s ervices claimed in the application for which acquired distinctiveness through use has been proven will be registerable.
2.6.8 The evidence and its assessment
In establishing acquired distinctiveness, evidence of the following items may be taken into consideration: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant public who, because of the mark, identify goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgment of 04/05/1999, C-108/97 & C-0109/97, ‘Chiemsee’, para. 31; and judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, para. 32).
The Office is not bound to examine facts showing that the mark claimed has become distinctive through use within the meaning of Article 7(3) unless the applicant has pleaded them ( judgment of 12/12/2002, T-247/01, ‘Ecopy’, para. 47).
2.6.8.1 The kind of evidence that may be submitted
Examples of evidence which can serve to indicate some or all of the above factors which may show acquired distinctiveness include items such as sales brochures, catalogues, price lists, invoices, annual reports, turnover figures, advertising investment figures and r eports, advertisements (press cuttings, billboard posters, TV adverts) together with evidence as to their intensity and reach, as well as customer and / or market surveys.
Applicants should take great care to make sure that the evidence shows not only use of the mark applied-for but also that it is sufficient to identify the dates of such use and the specific geographical territory of use within the EU. Undated evidence will normally be insufficient to show that distinctiveness had been acquired before the filing date, and evidence of use outside the EU cannot show the required market recognition of the relevant public within the EU. Further, if evidence mixes materials concerning EU and non-EU territories, and does not permit the Office to identify the specific extent of EU- only use, it will be similarly devoid of probative value for the relevant EU public.
Article 78 CTMR contains a non-exhaustive list of means of giving or obtaining evidence in proceedings before the Office, which may serve as guidance to applicants.
2.6.8.2 Assessment of evidence as a whole
Since the Office must assess the evidence as a whole (R 0159/2005-4, ‘Metavit/MEXA- VIT C et al’, para. 37). It is not necessary that any one i tem of evidence alone is
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capable of proving the matter at issue. Such proof can result from an ov erall assessment of all items of evidence submitted (judgment of 07/06/2005, T-303/03, ‘Salvita’, para. 42; and decision of 08/03/2006, R 0358/2004-4, ‘MediQi/MEDICE’, para. 34). In order to assess the evidential value of a doc ument, regard should be given to its credibility. It is also necessary to take into account the origin of the document, the circumstances in which it came into being, the person to whom it was addressed and whether the document appears sound and reliable (judgment of 07/06/2005, T-303/03, ‘Salvita’, para. 42; and judgment of 16/12/2008, T-86/07, ‘DEITECH’ [Fig. Mark], paras 46 et seq.).
2.6.8.3 Market share
The market share held by the trade mark may be relevant for assessing whether that mark has acquired distinctive character through use, to the extent that such market penetration might enable the Office to infer that the relevant public would recognise the mark as identifying the goods or services of a s pecific undertaking, and t hus distinguishing those goods or services from those of other undertakings.
The amount of publicity on the relevant market for the goods or services claimed (as represented by advertising investment in promoting a mark) may also be relevant for assessing whether the mark has acquired distinctive character through use (judgment of 22/06/2006, C-0025/05P, ‘Sweet wrapper’, paras 76 et seq.). However, many attempts to prove distinctiveness acquired through use fail because the applicant’s evidence is not sufficient to prove a link between the market share and advertising, on the one hand, and the consumer perception on the other.
2.6.8.4 Opinion polls and surveys
Opinion polls concerning the level of recognition of the trade mark by the relevant public on the market in question can, if conducted properly, constitute one of the most direct kinds of evidence, since they can show the actual perception of the relevant public. However, it is not an eas y matter to correctly formulate and i mplement an opinion poll so that it can be s een to be truly neutral and r epresentative. Leading questions, unrepresentative samples of the public, and undue editing of responses should be avoided, as these can undermine the probative value of such surveys.
The GC has found that in principle it is not inconceivable that a survey compiled some time before or after the filing date could contain useful indications, although it is clear that its evidential value is likely to vary depending on whether the period covered is close to or distant from the filing date or priority date of the trade mark application at issue. Furthermore, its evidential value depends on the survey method used (judgment of 12/07/2006, T-277/04, ‘Vitacoat’, paras 38-39).
Accordingly, any opinion poll evidence must be assessed carefully. It is important that the questions asked are relevant and not leading. The criteria for the selection of the interviewed public must be assessed carefully. The sample must be indicative of the entire relevant public and, accordingly, must be selected randomly.
Evidence from independent trade associations, consumer organisations and competitors should also be g iven weight. Evidence from suppliers or distributors should, generally, be given less weight, since it is less likely that their evidence will be from a third-party independent perspective. In this regard, the degree of independence
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of the latter will influence the weight to be given to the evidence by the Office (judgment of 28/10/2009 T-137/08, ‘Green/Yellow’).
2.6.8.5 Turnover and advertising
Information concerning turnover is one of the most readily available forms of evidence to companies. The same holds true with respect to advertising expenses.
These figures can have a significant impact on the assessment of the evidence, but in the great majority of cases are not sufficient alone to prove the issue of acquired distinctiveness of a trade mark through use. This is because turnover/advertising costs alone, without additional corroborative details, are frequently too general to allow specific conclusions to be drawn about the use of one particular trade mark: it must be possible to identify with precision the turnover/advertising figures and evidence relating to the mark applied for, and also the relevant goods and services must be identifiable.
Goods and services are often marketed under several trade marks, which renders it difficult to see what the relevant customer perception is of the applied-for mark alone, and turnover/advertising can often include sales or promotion of other trade marks, or of significantly different forms of the trade mark at issue (for example, figurative trade marks rather than word marks, or differing word elements in a figurative mark), or are too general to allow identification of the specific markets under consideration. Consequently, broadly consolidated turnover or advertising figures may not be sufficient to prove whether the relevant public perceives the trade mark at issue as a badge of origin or not.
Where figures for turnover or advertising are supplied, these should relate not only to the trade mark for which registration is sought, but also specifically to the goods or services covered by that mark. It is desirable that the turnover figures be segregated on an annual and market-by-market basis. The specific period(s) of use (including details as to when the use commenced) should be shown by the evidence, so that the Office is able to satisfy itself that the evidence proves that the trade mark acquired distinctiveness before the filing date.
2.6.8.6 Indirect evidence of use
The evidence may consist of or include Member State registrations obtained on t he basis of acquired distinctiveness.
The date to which the evidence filed at national level refers will usually be different from the filing date of the CTM application. These registrations may be taken into account, although they are not binding, when the examiner is able to assess the evidence which was submitted before the national IP office.
2.6.8.7 Extrapolation
Another important issue in the evaluation of evidence is whether the Office can extrapolate from selective evidence to draw broader conclusions. This concerns the extent to which evidence showing distinctiveness acquired through use in certain Member States can be used to make inferences with regard to the market situation in other Member States not covered by the evidence.
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Extrapolating in this way to make broader inferences is of particular relevance to an enlarged European Union comprising many Member States, since it is very unlikely that a party will be able to provide evidence with respect to the whole European Union, but will rather tend to concentrate on some areas.
Extrapolation is possible where the market is homogenous and i f at least some evidence is submitted. The market conditions and t he consumer habits have to be comparable. Consequently, it is particularly important that the applicant submits data concerning the size of the market, its own market share, and if possible that of its main competitors, as well as its marketing expenses. Only if all data is comparable, may the Office extrapolate the results from one territory to another. For example, if the CTM is used in the entire relevant territory but the evidence only refers to a part of it, inference is possible if the circumstances are comparable. However, if the CTM is only used in part of the relevant territory (and the evidence refers to this), it will usually be difficult to extrapolate those facts to other parts of the territory.
2.6.8.8 Manner of use
The evidence should show examples of how the trade mark is used (brochures, packaging, samples of the goods, etc.). Use of a substantially different mark should not be given any weight.
It is sometimes the case that the use shown is of a sign which, while similar to the mark applied for, is in itself distinctive. In such cases the evidence should be disregarded. Acquired distinctiveness must be shown with respect to the sign applied for. However, in accordance with Article 15(1)(a) CTMR, minor amendments to the sign which do not change the distinctive character of the sign may be al lowed (decision of 15/01/2010, R 0735/2009-2, ‘PLAYNOW’; and dec ision of 09/02/2010, R 1291/2009-2, ‘EUROFLORIST’).
It is possible to prove acquired distinctiveness of a sign which has been used together with other trade marks (judgment of 28/10/2009,T-137/08, ‘Green/Yellow’, para. 27), provided that the relevant consumer attributes to the sign in question the identification function (judgment of 07/07/2005, C-353/03, ‘Have a br eak’; judgment of 30/09/2009 T-75/08, ‘!’ [Fig. Mark], para. 43; and judgment of 28/10/2009, T-137/08, ‘Green/Yellow’, para. 46).
2.6.8.9 Length of use
The evidence should indicate when use commenced and should also show that the use was continuous or indicate reasons if there are gaps in the period of use.
As a general rule, long-standing use is likely to be an important persuasive element in establishing acquired distinctiveness. The longer customers and pot ential customers have been exposed to the mark the more likely they are to have made the connection between the mark and a particular source in trade.
Considering, however, that the length of use is only one of the factors to be taken into account, there may be s ituations where exceptions to the above rule are justified, in particular when other factors may also come into play, which are capable of making up for a short length of use. For example, where products or services are the subject of a major advertising launch and / or the sign applied for is a mere variant of a sign already
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in long use, it may be t he case that acquired distinctiveness can be achieved quite quickly.
This could be the case, for instance, where a new version of an existing and widely used computer operating system is launched under a sign which essentially reproduces the structure and / or contents of the trade mark applied to previous versions of the product. The trade mark for such a product would be capable of achieving widespread acquired distinctiveness within a fairly short period of time simply because all existing users will be i mmediately made aware that the sign applied for refers to the upgrading to the new version.
In the same vein, it is in the nature of certain major sporting, musical or cultural events that they take place at regular intervals and are known to have extremely wide appeal. These major sport events are anticipated by millions, the knowledge that the event is due on a particular date preceding the formal announcement of where it will take place. This circumstance creates intense interest in the nominated location of such events and in the announcement thereof. It is therefore reasonable to suppose that the moment a particular event, tournament or games is announced as allocated to a particular city or country this is likely to instantly become known by practically all relevant consumers with an interest in the sport / sports concerned or to professionals in the sector. This may thereby give rise to the possibility of very rapid acquired distinctiveness of a mark concerning a forthcoming event, in particular where the sign reproduces the structure of previously used trade marks with the result that the public immediately perceives the new event as a sequel to a series of well established events.
The assessment of such possible very rapid acquired distinctiveness will follow the general criteria as regards, e.g., the extent of use, the territory, the relevant date or the targeted public, where the general standards apply, as well as regards the onus of the applicant to provide evidence thereof. The only particularity refers to the length of use and the possibility that, under certain circumstances, the acquisition of acquired distinctiveness may occur very rapidly, or even instantaneously. As under any other claim for acquired distinctiveness, it is for the applicant to demonstrate that the public is able to perceive the trademark in question as a distinctive sign.
2.6.8.10 Post-filing date evidence
The evidence must show that prior to the filing date, the trade mark had acquired distinctive character through use.
However, evidence cannot be rejected merely because it postdates the filing date, since it may provide indications as to the situation before the filing date. Accordingly, such evidence must be assessed and due weight given to it.
As an example, a trade mark which enjoys a particularly relevant recognition on the market or a substantially relevant market share a few months after the filing date may have acquired distinctiveness also on the filing date.
2.6.9 Consequences of Acquired Distinctiveness
A trade mark registered in accordance with Article 7(3) CTMR enjoys the same protection as any other trade mark which was found inherently registrable upon examination.
Absolute Grounds for Refusal
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If the CTM application is accepted based on A rticle 7(3) CTMR, this information is published in the CTM Bulletin, using the INID code 521.
Introduction to Opposition
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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 0
INTRODUCTION
Introduction to Opposition
Guidelines for Examination in the Office, Part C, Opposition Page 2
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Table of Contents
1 Overview of Opposition Proceedings – the difference between ‘absolute grounds’ and ‘relative grounds’ for refusal of a CTM application.................................................................................................. 3
2 The grounds for opposition...................................................................... 3
3 The ‘earlier rights’ upon which opposition must be based ................... 4
4 The purpose of opposition proceedings and the most expedient way to treat them............................................................................................... 5
ANNEX............................................................................................................... 7
Content and structure of Opposition Decisions............................................ 7 1 General remarks .........................................................................................7 2 Procedural rules – admissibility, substantiation......................................8 3 Proof of use ................................................................................................9 4 Article 8(1)(a) CTMR ...................................................................................9 5 Article 8(1)(b) CTMR...................................................................................9
5.1 Comparison of goods and services .............................................................. 10 5.2 Comparison of signs..................................................................................... 10 5.3 Distinctive and dominant elements of the trade marks ................................ 11 5.4 Distinctiveness of the earlier mark................................................................ 11 5.5 Relevant public – level of attention............................................................... 11 5.6 Global assessment, other arguments and conclusion ................................. 12
6 Article 8(3) CTMR......................................................................................12 7 Article 8(4) CTMR......................................................................................13
7.1 Use in the course of trade of more than mere local significance ................. 13 7.2 The right under national law ......................................................................... 13 7.3 The opponent’s right vis-à-vis the contested trade mark ............................. 14 7.4 Compliance with the criterion of national law ............................................... 14
8 Article 8(5) CTMR......................................................................................14 8.1 Comparison of signs..................................................................................... 14 8.2 Reputation of the earlier mark ...................................................................... 15 8.3 Encroachment upon reputation .................................................................... 15 8.4 Due cause..................................................................................................... 15
Introduction to Opposition
Guidelines for Examination in the Office, Part C, Opposition Page 3
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1 Overview of Opposition Proceedings – the difference between ‘absolute grounds’ and ‘relative grounds’ for refusal of a CTM application
‘Opposition’ is a pr ocedure that takes place before OHIM when a t hird party, on t he basis of earlier rights it holds, requests the Office to reject a Community trade mark application (the ‘CTMA’) or international registration designating the EU.
When an oppos ition is filed against an international registration designating the EU, any reference in these Guidelines to CTMA must be read to cover international registrations designating the EC. Specific Guidelines have been drafted for International Marks including specificities about oppositions.
Under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (the ‘CTMR’), an opposition must be based on rights held by the opponent in an earlier trade mark or other form of trade sign. The grounds on which an opposition may be based are called ‘relative grounds for refusal’, and the relevant provisions are found in Article 8 CTMR, which bears that title. Unlike absolute grounds for refusal, which are examined ex-officio by the Office (and which may take into account third parties’ observations although third parties do not become parties to the proceedings), relative grounds for refusal are inter partes proceedings based on likely conflict with earlier rights. Such relative grounds objections are not raised ex officio by the Office. The onus is therefore on the earlier right owner to be vigilant concerning the filing of CTMAs by others which could clash with such earlier rights, and to oppose conflicting marks when necessary.
When an opposition is filed within a prescribed time limit and the relevant fee has been paid, the proceedings are managed by the Office’s specialist service (the Opposition Division) and will normally include an exchange of observations from both the opponent and the applicant (the ‘parties’). After considering these observations, and if agreement has not been reached between the parties, the Opposition Division will decide (in an appealable ‘Decision’) either to reject the contested application totally or in part or to reject the opposition. If the opposition is not well founded, it will be rejected. If the CTMA is not totally rejected, and provided there are no other oppositions pending, it will proceed to registration.
2 The grounds for opposition
The grounds on which an opposition may be made are set out in Article 8 CTMR.
Article 8 CTMR enables the proprietors to base oppositions on their earlier rights to prevent the registration of CTMs in a r ange of situations progressing from that of absolute (i.e. double) identity both between goods and/or services and between marks (Article 8(1)(a) CTMR, where likelihood of confusion is presumed, and need not be proved) to that of similarity (Article 8(1)(b) CTMR, where there must be a likelihood of confusion) (see the Guidelines of Trade Mark Practice, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion).
Article 8(3) CTMR allows the proprietor of a mark to prevent the unauthorised filing of its mark by its agent or representative (see the Guidelines, Part C, Opposition, Section 3, Trade Mark Filed by an Agent).
Introduction to Opposition
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Article 8(4) CTMR enables the proprietor of earlier non-registered trade marks or other signs used in the course of trade of more than mere local significance to prevent registration of a later CTMA if the proprietor has the right to prohibit the use of such CTMA. Although likelihood of confusion is not expressly mentioned in this article, the application of the relevant laws that are brought into play under Article 8(4) CTMR will frequently require an anal ysis of likelihood of confusion (see the Guidelines, Part C, Opposition, Section 4, Non-Registered Rights).
Article 8(5) CTMR enables the proprietors of an earlier reputed registered trade mark to prevent registration of a later CTMA that, without due cause, would encroach on the earlier reputed mark. Likelihood of confusion is not a condition for the application of this article. This is because Article 8(5) CTMR specifically (but not exclusively) protects functions and us es of trade marks that fall outside the ambit of the badge of origin protection offered by likelihood of confusion and, as such, is more directed at protecting the heightened effort and financial investment that is involved in creating and promoting trade marks to the extent that they become reputed and to facilitate full exploitation of the value of the marks (see the Guidelines , Part C, Opposition, Section 5, Trade Marks with Reputation).
3 The ‘earlier rights’ upon which opposition must be based
An opposition must be based on at least one earlier right owned by the opponent.
The meaning of ‘earlier’ rights for Article 8(1) and 8(5) CTMR is defined in Article 8(2) CTMR, meaning such rights having an earlier date (not hour or minute, as confirmed by the Court in its judgment of 22/03/2012, C-190/10, ‘Génesis Seguros’) of application for registration than the CTMA, including applicable claimed priority dates, or have become well known in a Member State before the CTMA or, if appropriate, its claimed priority date. See the Guidelines of Trade Mark Practice, Part C, Opposition, Section 1, Procedural Matters.
In essence, these rights consist of EU registered trade marks and applications for such, and ‘well known’ marks in the sense Article 6bis of the Paris Convention (which need not be r egistered). For a det ailed explanation of these ‘well known’ marks under Article 8(2)(c) CTMR, and how they differ from Article 8(5) marks with reputation, see the Guidelines, Part C, Opposition, Section 5: Trade marks with reputation, paragraph 2.1.2.
Under Article 8(3) CTMR, the opponent must show that it is the proprietor of a trade mark, acquired anywhere in the world by registration or by use (to the extent that the law of the country of origin recognises this kind of trade mark right), for which an agent or representative of the proprietor has applied for registration in its own name without the proprietor’s consent.
Article 8(4) CTMR, by contrast, deals with oppositions based on earlier non-registered trade marks or on another sign used in the course of trade of more than mere local significance, in accordance with provisions of EU Member State law. The meaning of ‘earlier’ rights for Article 8(4), as regards the relevant date of acquisition, is thus defined by the relevant national law.
Various legal grounds, based on di fferent earlier rights, may be al leged in either the same or multiple oppositions to the same CTMA.
Introduction to Opposition
Guidelines for Examination in the Office, Part C, Opposition Page 5
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OHIM practice is based on the legal provisions of the CTMR applied directly or by analogy, as confirmed by the case-law of the General Court (judgment of 16/09/2004, T-342/02, ‘MGM’ and 11/05/2006, T-194/05, ‘TeleTech’). Namely:
• Multiple oppositions: Rule 21(2) and (3) CTMIR allows the Office to examine only the ‘most effective’ opposition(s), suspending the rest and ev entually deeming them to have been dealt with if the application is rejected on the basis of the chosen opposition. With regards to the ‘most effective’ opposition, see below.
• Multiple earlier rights in one opposition: the Court has observed that grouping various earlier rights in one opposition is, for practical purposes, the same as presenting multiple oppositions, making it possible for the Office to base the rejection of the application on the ‘most effective’ right(s). With regards to the ‘most effective’ earlier right, see below.
• Multiple legal grounds in opposition(s): if the opposition is successful in its entirety on the basis of the ‘most effective’ legal ground(s), it is not necessary to examine the remaining legal grounds. If a necessary requirement of a legal ground is not fulfilled, it is not necessary to examine the remaining requirements of that provision. With regards to the ‘most effective’ legal ground(s), see below.
4 The purpose of opposition proceedings and the most expedient way to treat them
The Court of Justice has stated that the sole purpose of opposition proceedings is to decide whether the application may proceed to registration and not to pre-emptively settle potential conflicts (e.g. at a national level arising from the possible conversion of the CTMA) (judgment of 11/05/2006, T-194/05, ‘TeleTech’, paragraphs 25-27).
The Court of Justice has confirmed clearly that the Office is under no obligation to examine all the earlier oppositions, rights and legal grounds invoked against the same CTMA, if one of them suffices to reject the CTMA. Nor is it obliged to choose the earlier right with the widest territorial scope so as to prevent the eventual conversion of the application in as many territories as possible (judgment of 16/09/2004, T-342/02, ‘MGM’ and 11/05/2006, T-194/05, ‘TeleTech’).
This principle allows for a more expedient treatment of oppositions. The Office is free to choose what it regards as the ‘most effective’ opposition(s), earlier right(s) and legal ground(s) and which one to examine first in light of the principle of procedural economy.
The ‘most effective’ opposition can normally be defined as the opposition which allows the Office to refuse the registration of the opposed CTMA to the broadest possible extent and in the simplest manner.
The ‘most effective’ earlier right can normally be defined as the most similar (the closest) sign covering the broadest scope of goods and services and/or the right covering the most similar goods and services.
The ‘most effective’ legal ground can normally be defined as the opposition ground which presents the Office with the simplest manner of refusing the registration of the opposed CTMA to the broadest possible extent.
Introduction to Opposition
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Generally speaking, if applicable, Article 8(1)(a) will be the simplest ground in terms of procedural economy on which to reject a CTMA, since the Office will not need to enter into an analysis of similarities and differences between the signs or goods/services, nor will a finding of likelihood of confusion be necessary. Failing that, the factual circumstances of each opposition will determine whether Article 8(1)(b), 8(3), 8(4) or 8(5) are the next ‘most effective’ grounds (for example, if the goods and services of the earlier right and the CTMA are different, Articles 8(1)(b) and (3) cannot serve as a valid basis of opposition, the former requiring at least some similarity in this respect, and the latter requiring at least closely related or commercially equivalent goods and services).
If evidence of use has been requested by the applicant in relation to some of the earlier rights, the Office will normally firstly consider if one earlier right not yet under the use obligation is capable of fully sustaining the opposition. If not, other earlier rights not yet under the use obligation will be examined to see if the opposition can be fully sustained on such a cumulative basis. In these cases, the CTMA will be rejected without it being necessary to consider proof of use. Only if no such earlier right(s) is (are) available, will the Office consider those earlier rights against which proof of use was requested.
Introduction to Opposition
Guidelines for Examination in the Office, Part C, Opposition Page 7
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ANNEX
Content and structure of Opposition Decisions
1 General remarks
Opposition decisions follow a harmonised structure (template) which, depending on the particular context, is adjusted to provide logical coherence to the decision. The use of the template also means that the decisions have a common format.
As regards style and l anguage, opposition decisions are drafted in a formal style using a c orrect language. Language must be c orrect as regards both spelling and grammar, as well as in terms of formal aspects (for instance, coherent and complete sentences, correct references to the mark, to the goods and services, or to the parties, no repetition of paragraphs…). Decisions are sent for proofreading when that possibility is available.
Opposition decisions begin by setting out the parties’ details: the names and addresses of the opponent, the applicant and their respective representatives (if any). The date of the decision is indicated.
This is followed by the Dictum (‘Decision’) which states: whether the opposition is upheld or rejected; if relevant, the goods and services for which the opposition is (partially) upheld (except when the opposition is fully successful and t he CTMA is rejected in its entirety); the decision on costs; and the fixation of costs. The final part of the decision also refers to ‘costs’ and is in line with the fixation of costs in the Dictum. Moreover, regarding costs, the decision contains a paragraph regarding the review of the fixation of costs (deleted when each party bears its own costs).
Next, the ‘Reasons’ part of the decision starts with a ‘factual part’ identifying the contested mark by indicating the CTMA number, the contested goods and services, the earlier rights and all the grounds claimed by the opponent.
• Earlier rights: if an opposition is going to be entirely successful on the basis of one earlier right (and more than one ha s been invoked), the decision will only indicate the relevant earlier right (this will be done in the factual part). Where the opposition is partially or totally rejected, all the earlier rights invoked by the opponent will be identified in the decision (either in the factual part or at the end), by indicating territory (or territories for international registrations), registration number and including a reproduction of the sign1.
• Contested trade mark: if the signs are not compared (e.g. the opposition is inadmissible, non-substantiated, rejected for insufficient proof of use or for dissimilarity of goods), the contested trade mark will be reproduced together with the CTMA number in the factual part.
• Contested goods and services: these will be listed in the comparison of goods and services section. If the comparison of goods and s ervices is omitted (e.g.
1 If a two letter code is used, it should be one of those available at https://www.wipo.int/standards/en/pdf/03- 03-01.pdf except for Community trade marks where the abbreviations CTM or CTMA will be used instead of EM.
Introduction to Opposition
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dissimilarity of signs), then the decision will normally only indicate, in the factual part, the classes to which the contested goods and services belong.
Thereafter, the Office sets out the procedural and substantive aspects of the decision in the order below. However, when deemed appropriate, taking into account the specific circumstances of a particular case, the Office may change the order in which the different factors are examined.
In the decisions of the Office certain procedural and substantive aspects (listed below) are only examined to the extent they are relevant to the outcome of the decision. This can also lead to a process of first examining one or some of the earlier rights invoked (usually those signs that have more similarities with the contested sign and/or cover a broader scope of identical or similar goods/services) and t hen dealing with the remaining earlier rights only to the extent that this is strictly necessary.
All opposition decisions have to incorporate the ‘conclusion’ and/or ‘global assessment’ part (in case of Article 8(1)(b) CTMR) where the result of the decision is reasoned in a c oherent way supported by the arguments developed in the previous sections of the decision.
The decision will also address any remaining issues such as the relevance of other earlier opposing rights, the need to examine other heads of claim such as that under Article 8(5), 8(4), 8(3) and other pertinent matters.
• If an opposition is fully successful on the basis of one of the earlier rights then the Office will not decide on the other earlier rights. A brief statement that these will not be examined for economy of proceedings will be included.
• If an opposition is not successful on the basis of the earlier right that is considered ‘closest’ to the contested sign then it will normally be r efused as regards the other earlier rights with a general statement which: fully identifies them (trade mark number, name (graphic representation) and goods and services) and explains that these earlier rights are considered even less similar to the one examined or, if they cover a broader list of goods and services than the one examined, explains why there is no l ikelihood of confusion as regards this other earlier right.
• Finally, the decision will address any other relevant arguments of the parties (especially the non-standard arguments of the losing party) or relevant procedural issues (such as restitutio in integrum requests, extensions/suspensions requested and s trongly contested by the parties, requests for continuation requested and rejected or strongly contested by the parties).
2 Procedural rules – admissibility, substantiation
An opponent must comply with a range of procedural requirements in order for the opposition to proceed to the judgment on substance, in particular whether the earlier right or rights on which the opposition is based are (i) admissible and (ii) properly substantiated2.
2 See the Guidelines Concerning Opposition. Part 1: Procedural Matters.
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A section dealing with these issues will be included at the beginning of the decision only when it is judged relevant for the outcome.
• As regards admissibility: if the opposition is entirely successful on the basis of one of the earlier rights that has been found admissible, the question of admissibility of the other earlier rights is not addressed. However, if the opposition is totally or partially rejected on the basis of an adm issible and substantiated right that is not the most effective right, the question of admissibility of the most effective right will be dealt with.
• As regards substantiation: if the opposition is successful on the basis of one of the earlier rights that have been substantiated properly, the question of substantiation of other earlier rights will not be addressed. If the opposition is totally or partially rejected on the basis of an admissible and substantiated right that is not the most effective right, the question of substantiation of the most effective right will be dealt with. If the opposition has not been properly substantiated, it will be rejected on this ground only. Likelihood of confusion will not be dealt with. In principle, there is no need to examine the substantiation of one of the two earlier rights invoked when, in any event, it is concluded that there is no likelihood of confusion between the trade marks in conflict.
3 Proof of use
When proof of use of the earlier rights has been requested by the applicant, the Office will also examine whether, and to what extent, use has been proven for the earlier marks, again provided this is relevant for the outcome of the decision at hand.3
4 Article 8(1)(a) CTMR
This ground can only be accepted when there is double identity, namely, the signs are identical and the goods and services are identical.
The examination of identity normally opens with a comparison of the relevant goods/services followed by a comparison of the signs. If double-identity is found, there is no need for an assessment of likelihood of confusion. The conclusion that the opposition is upheld is automatic.
If identity between the goods/services and/or the signs cannot be es tablished, the opposition fails under Article 8(1)(a) CTMR but the examination continues on the basis of Article 8(1)(b) CTMR.4
5 Article 8(1)(b) CTMR
The following sections must in principle be dealt with.
3 Comprehensive guidance on proof of use can be found in the Guidelines, Part C, Opposition, Section 6, Proof of Use. 4 See the Guidelines, Part C, Opposition, Part 2, Double Identity and Likelihood of Confusion, Chapter 1, General Principles and Methodology, paragraph 1.2.1.1.
Introduction to Opposition
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5.1 Comparison of goods and services
Similarity of goods/services is a sine qua non for likelihood of confusion. As such, the examination of likelihood of confusion normally opens by comparing the relevant goods/services.
Comprehensive guidance on the comparison of goods/services can be found in the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 2, Comparison of Goods and Services.
The decision will however not contain a full comparison of the goods and services:
• where the signs have been found dissimilar; and
• where in certain circumstances, for procedural economy, the Opposition Division may carry out an expedited check of goods/services on the assumption that, because there is identity or similarity between some of the relevant goods/services, all are identical or similar. This procedure is normally followed when, even if the degree of similarity of the goods/services were fulfilled to the maximum extent, having considered the remaining factors, no likelihood of confusion would be found. Naturally, this expedited check is only used where it does not affect the rights of either party.
If there is no degree of similarity between the goods/services, the examination will be terminated at this point in so far as likelihood of confusion is concerned.
Otherwise, if there is at least some degree of similarity, the examination continues.
5.2 Comparison of signs
At least some degree of similarity between the signs is a condition for a finding of likelihood of confusion. As seen above, the comparison of signs involves a g lobal appreciation of the visual, aural and/or conceptual characteristics of the signs in question. If the comparison on one o f the levels is not possible (e.g. the phonetic comparison as the mark is figurative), then this level may be left out. If there is similarity on at least one of the three levels, then the signs are similar. Whether the signs are sufficiently similar to result in a l ikelihood of confusion is dealt with in the global assessment of likelihood of confusion. Comprehensive guidance on t he comparison of signs can be f ound in the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 3, Comparison of Signs.
The decision begins by setting out the relevant territory.
The decision then caries out an objective comparison of the signs which highlights the material visual, aural and conceptual similarities and differences between the signs. No consideration or weight is normally given at this point to the importance of the various coinciding or differing elements of the signs (this happens later in the decision). The objective comparison establishes that there is at least a prima facie case for likelihood of confusion by confirming that there is some degree of similarity between the signs.
This objective comparison of the signs also serves as a reference point when the Office later evaluates the dominant and di stinctive components of the trade marks. If the
Introduction to Opposition
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opposition is based on Article 8(5) and/or 8(4), the objective comparison acts as a reference point for the separate analysis that will be carried out under these headings.
If there is no degree of similarity between the signs, the examination of likelihood of confusion will be terminated at this point. The signs are dissimilar only if no similarity can be f ound on any of the three levels. If the signs are found to be d issimilar, no comparison of goods and services (including assumption of identity), no assessment of enhanced distinctiveness of the earlier trade mark or overall assessment will be made. The opposition will be rejected, as far as likelihood of confusion is concerned, in the ‘Conclusion’ part, exclusively on the basis of the dissimilarity of the signs. Otherwise, where the signs are found to be s imilar visually, aurally or conceptually, the examination will continue.
5.3 Distinctive and dominant elements of the trade marks
The global appreciation of the conflicting trade marks must be bas ed on the overall impression given by the trade marks, bearing in mind, in particular, their distinctive and dominant components. Therefore, in this section of the decision, the dominant and/or distinctive elements in the signs are explained and established.
Comprehensive guidance on the analysis of the distinctive and dominant components can be f ound in the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 4, Distinctiveness, and Chapter 5, Dominant Character.
5.4 Distinctiveness of the earlier mark
Where an opponent explicitly claims that an earlier trade mark is particularly distinctive by virtue of intensive use or reputation, this claim will be examined and evaluated. Comprehensive guidance on the distinctiveness of the earlier trade mark can be found in the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 4, Distinctiveness.
In certain circumstances, in the interests of procedural economy, the Office may not investigate a claim to enhanced distinctiveness where it is immaterial to the outcome of the decision. This will only occur where it does not affect the rights of either party.
If no claim is made on distinctiveness, or if the claim is not supported by the evidence, the assessment of the distinctiveness of an earlier trade mark will rest on i ts distinctiveness per se (in other words, its inherent distinctiveness).
5.5 Relevant public – level of attention
Comprehensive guidance on the relevant public and level of attention can be found in the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 6, Relevant Public and Level of Attention.
The decision describes who the relevant consumer is for the relevant goods/services and the significance of this finding. If relevant, it will also indicate the level of attention applied by the relevant consumer.
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5.6 Global assessment, other arguments and conclusion
Comprehensive guidance on Other factors and Global Assessment can be found in the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 7, Other factors, and 8, Global Assessment. In addition to what has been mentioned above in relation to ‘conclusion’ and/or ‘global assessment’ the Global Assessment both:
• sets out and evaluates other factors and principles relevant to the evaluation of likelihood of confusion (such as, a family of marks, coexistence, or the mode of purchase of the goods/services);
• assesses the relative importance of all of the interdependent factors, which may complement or offset each other, in order to reach a dec ision on l ikelihood of confusion (for example, the marks may be distinctive for some of the goods or services but not for others and t hus likelihood of confusion may only exist in relation to the goods and services for which the earlier mark is considered distinctive).
6 Article 8(3) CTMR
The grounds for refusal of Article 8(3) CTMR are subject to the following requirements:
• the opponent is the owner of the mark on which the opposition is based; • the applicant is an agent or representative of the owner of the earlier mark; • the application is filed in the name of the agent or representative; • the application was filed without the owner’s consent; • the agent or representative fails to justify its acts; • the signs are identical or have slight differences and the goods/services are
identical or equivalent.
These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) CTMR cannot succeed.
The following sections are in principle contained within the Opposition Decision:
1) Entitlement of the opponent; 2) Agent or representative relationship; 3) Application in the agent’s or representative name; 4) Application without the owner’s consent; 1) Absence of justification on the part of the applicant; 6) Comparison of signs; 7) Comparison of goods and services; 8) Conclusion.
However, depending on the case and its outcome, it might not be necessary to include all the above sections in the decision. The order of the sections can be modified, e.g. if the opposition can be rejected because the signs are dissimilar, comparison of the signs can be the first and the only section to be included in the decision.
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Arguments and evidence provided by the parties must be examined and the reasoning provided in order to establish whether the requirements have been met.
Under the sections ‘Comparison of signs’ and ‘Comparison of goods and services’, it has to be established whether or not the signs are identical (or have slight differences which do not substantially affect their distinctiveness) and whether or not the goods/services are identical (or equivalent in commercial terms).
Comprehensive guidance on Article 8(3) can be found in the Guidelines, Part C, Opposition, Section 3, Unauthorised filing by agents of the trade mark proprietor.
7 Article 8(4) CTMR
Comprehensive guidance on types of rights falling under Article 8(4) CTMR can be found in the Guidelines, Part C, Opposition, Section 4, Rights under Article 8(4) CTMR, paragraph 3.1 Types of rights falling under Article 8(4) CTMR.
The grounds for refusal of Article 8(4) CTMR are subject to the following cumulative requirements:
• the earlier right must be a non-registered trade mark or a similar sign; • the sign must be used in the course of trade; • the use must be of more than mere local significance; • the right must be acquired prior to the filing date of the contested mark; • the proprietor of the sign must have the right under the terms of the national law
governing this right to prohibit the use of the contested mark.
However, if one of the abovementioned requirements is not met the opposition must be rejected, and it becomes unnecessary to address the other requirements.
Accordingly, the following sections must in principle be deal t with in the opposition decision.
7.1 Use in the course of trade of more than mere local significance
The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.
Comprehensive guidance on the use in the course of trade can be found in the Guidelines, Part C, Opposition, Section 4, Rights under Article 8(4) CTMR.
7.2 The right under national law
It has to be dem onstrated in the decision whether the opponent has acquired the invoked right in accordance with the law governing the sign in question (e.g. in some cases national laws demand registration, or reputation), whether the right was acquired prior to the filing date and whether and under what conditions the law governing the
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sign in question confers to its proprietor the right to prevent the use of a subsequent trade mark.
For the abovementioned purposes the information provided in the Guidelines (list of ‘earlier rights’ in the sense of Article 8 CTMR) and/or the evidence submitted by the parties has to be checked.
7.3 The opponent’s right vis-à-vis the contested trade mark
This part of the decision examines whether the conditions set by the law governing the earlier sign are met in respect of the contested trade mark. This usually also requires a comparison of the signs and of the goods and services or business activities, and a conclusion in this regard.
7.4 Compliance with the criterion of national law
Once the goods and s ervices and t he signs have been compared, it has to be established whether the conditions set down by national law as established in the section ‘The right under national law’ are met, e.g. likelihood of confusion.
8 Article 8(5) CTMR
The grounds for refusal of Article 8(5) CTMR are subject to the following requirements:
• The signs in conflict must be either identical or similar.
• The opponent’s trade mark must have a reputation. The reputation must also be prior to the contested trade mark; it must exist in the territory concerned and in connection to the goods and/or services on the basis of which the opposition was entered.
• Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
The abovementioned requirements are cumulative and therefore the absence of any of them leads to the rejection of the opposition under Article 8(5) CTMR. However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant/holder establishes a due cause for the use of the contested trade mark.
Accordingly, the following sections must in principle be deal t with in the opposition decision.
8.1 Comparison of signs
The application of Article 8(5) CTMR requires a positive finding of similarity between the signs. Provided that the signs have already been compared under the examination of the grounds of Article 8(1)(b) CTMR, reference is made to the respective findings
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which are equally valid under Article 8(5) CTMR. It follows that, if in the examination of Article 8(1)(b) CTMR the signs were found to be di ssimilar, the opposition will necessarily fail under Article 8(5) CTMR. However, the mere fact that the signs at issue are similar is not sufficient for it to be concluded that a l ink between the signs will be established in the mind of the relevant public. The existence of such a l ink must necessarily be proven once the signs have been found to be similar.
Comprehensive guidance on the Similarity of the signs and The link between the signs can be found in the Guidelines Part C, Opposition, Section 5, Trade Marks with Reputation Article 8(5), paragraph 3.2, Similarity of the signs, and paragraph 3.3, The link between the signs.
8.2 Reputation of the earlier mark
The evidence filed in order to prove reputation should be properly indicated. There is no need to list and describe each and every item. Only the evidence relevant for the respective conclusion (whether it is sufficient or not in order to prove reputation) should be mentioned, in a general manner.
Comprehensive guidance on Scope, assessment and proof of reputation can be found in the Guidelines, Part C, Opposition, Section 5, Trade marks with reputation Article 8(5), paragraph 3.1.2, Scope of reputation, paragraph 3.1.3, Assessment of reputation, and paragraph 3.1.4, Proof of reputation.
8.3 Encroachment upon reputation
This section deals with the examination of whether detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose the opponent should file evidence or at least put forward a coherent line of argument, showing what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an ev ent is indeed likely in the ordinary course of events.
The examination of the opponent’s claim(s) concerning encroachment should be preceded by identification against which goods and/or services the opposition is directed and in relation to which goods and/or services the reputation has been found.
Comprehensive guidance on Forms of encroachment and Proof of encroachment can be found in the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation Article 8(5), paragraph 3.4.3, Forms of encroachment, and paragraph 3.4.4, Proof of encroachment upon reputation.
If the opposition is entirely successful on the basis of one of the forms of encroachment there is no need to examine whether other forms also apply.
8.4 Due cause
Due cause is examined only if the CTM applicant has claimed it, and provided that there is similarity of signs, existence of reputation and existence of at least one of the forms of encroachment.
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Comprehensive guidance on Due cause can be f ound in the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation Article 8(5), paragraph 3.5, Use without due cause.
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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 1
PROCEDURAL MATTERS
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Table of Contents
1 Introduction: General Outline of the Opposition Proceedings.............. 6
2 Admissibility Check................................................................................... 7 2.1 Notice of Opposition in writing..................................................................7
2.1.1 Early oppositions against an international registration................................... 7 2.1.2 Early opposition against a CTM application ................................................... 8
2.2 Payment ......................................................................................................8 2.2.1 Notice of Opposition late, payment within the opposition period.................... 8 2.2.2 Time of payment ............................................................................................. 9 2.2.3 Consequences in the event of non-payment................................................ 10 2.2.4 Fee refund .................................................................................................... 10
2.3 Languages and translation of the Notice of Opposition........................ 10 2.4 Admissibility check ..................................................................................12
2.4.1 Absolute admissibility requirements ............................................................. 12 2.4.1.1 Identification of the contested CTM application.........................................13 2.4.1.2 Identification of the earlier marks / rights...................................................14 2.4.1.3 Identification of grounds ............................................................................17
2.4.2 Relative admissibility requirements .............................................................. 18 2.4.2.1 Dates.........................................................................................................18 2.4.2.2 Representation of earlier mark / sign.........................................................18 2.4.2.3 Goods and services...................................................................................20 2.4.2.4 Earlier mark with a reputation: scope of reputation ...................................22 2.4.2.5 Identification of the opponent ....................................................................22 2.4.2.6 Professional representation.......................................................................26 2.4.2.7 Signature...................................................................................................27 2.4.2.8 Relative admissibility requirements: sanctions ..........................................28
2.4.3 Optional indications ...................................................................................... 28 2.4.3.1 Extent of the opposition.............................................................................28 2.4.3.2 Reasoned statement .................................................................................29
2.5 Notification of the Notice of Opposition .................................................29
3 Cooling-Off Period................................................................................... 30 3.1 Setting the cooling-off period in motion.................................................30 3.2 Extension of the cooling-off period.........................................................31
4 Adversarial Stage .................................................................................... 32 4.1 Completion of the opposition..................................................................32 4.2 Substantiation ..........................................................................................32
4.2.1 CTMs and CTM applications ........................................................................ 33 4.2.2 Converted CTM(A)s...................................................................................... 33
4.2.2.1 Opposition based on (to be) converted CTM(A) ........................................33 4.2.3 Trade mark registrations or applications that are not CTMs ........................ 34
4.2.3.1 Certificates issued by the appropriate official body ...................................34 4.2.3.2 Extracts from official databases.................................................................35 4.2.3.3 Extracts from official bulletins of the relevant national trade mark offices
and WIPO..................................................................................................36 4.2.3.4 Duration of a trade mark registration .........................................................36 4.2.3.5 Verification of evidence .............................................................................38 4.2.3.6 Renewal certificates ..................................................................................39 4.2.3.7 Entitlement to file the opposition................................................................39
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4.2.4 Substantiation of well-known marks, claims of reputation, trade marks filed by an agent, earlier signs used in the course of trade.......................... 40 4.2.4.1 Well-known marks .....................................................................................40 4.2.4.2 Marks with a reputation .............................................................................41 4.2.4.3 Non-registered trade mark or another sign used in the course of trade ....41 4.2.4.4 Mark filed by an agent or representative ...................................................42
4.2.5 Sanction........................................................................................................ 42
4.3 Translation / changes of language during the opposition proceedings..............................................................................................42 4.3.1 Translations of evidence of trade mark registrations and of facts,
evidence and arguments filed by the opponent to complete its file.............. 43 4.3.1.1 Sanction ....................................................................................................44
4.3.2 Translation of further observations ............................................................... 44 4.3.3 Translation of documents other than observations ...................................... 45 4.3.4 Proof of use .................................................................................................. 46 4.3.5 Change of language during opposition proceedings.................................... 47
4.4 Documents not readable / reference to other files.................................47 4.4.1 Documents not readable .............................................................................. 47 4.4.2 No return of original documents ................................................................... 48 4.4.3 Confidential information................................................................................ 48 4.4.4 References made to documents or items of evidence in other
proceedings .................................................................................................. 49
4.5 Further exchanges ...................................................................................49 4.5.1 Additional evidence for proof of use ................................................................ 50
4.6 Observations by third parties..................................................................50
5 Termination of Proceedings ................................................................... 51 5.1 Friendly settlement...................................................................................51 5.2 Restrictions and withdrawals ..................................................................52
5.2.1 Restrictions and withdrawals of CTM applications ....................................... 52 5.2.1.1 Withdrawal or restriction before admissibility check is made.....................53 5.2.1.2 Restrictions and withdrawals of CTM applications before the end of the
cooling-off period.......................................................................................53 5.2.1.3 Restrictions and withdrawals of CTM applications after the end of the
cooling-off period.......................................................................................54 5.2.1.4 Restrictions and withdrawals of CTM applications after a decision has
been taken.................................................................................................54 5.2.1.5 Language ..................................................................................................55
5.2.2 Withdrawal of oppositions............................................................................. 55 5.2.2.1 Withdrawal of the opposition before the end of the cooling-off period .......55 5.2.2.2 Withdrawal of the opposition after the end of the cooling-off period ..........55 5.2.2.3 Withdrawal of the opposition after a decision has been taken...................56 5.2.2.4 Language ..................................................................................................56
5.2.3 Withdrawals of withdrawals / restrictions...................................................... 56
5.3 Decision on substance.............................................................................56 5.3.1 Earlier right not proven ................................................................................. 57 5.3.2 Ceasing of existence of the earlier right ....................................................... 57
5.4 Fee refund.................................................................................................57 5.4.1 Opposition deemed not entered ................................................................... 57
5.4.1.1 Opposition and withdrawal of the opposition filed the same date..............57 5.4.1.2 Refund after re-publication ........................................................................58
5.4.2 Refund in view of withdrawals / restrictions of CTM application .................. 58
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5.4.2.1 CTM application withdrawn / restricted before the end of the cooling-off period ........................................................................................................58
5.4.2.2 Opposition withdrawn due t o restriction of CTM application within the cooling-off period.......................................................................................58
5.4.3 Multiple oppositions and refund of 50% of the opposition fee...................... 59 5.4.4 Cases where the opposition fee is not refunded .......................................... 59
5.4.4.1 Opposition withdrawn before the end of the cooling-off period NOT due to a restriction............................................................................................59
5.4.4.2 Opponent’s withdrawal is earlier................................................................59 5.4.4.3 Settlement between the parties before commencement of proceedings ...59 5.4.4.4 Termination of proceedings for other reasons ...........................................60 5.4.4.5 Reaction on disclaimer ..............................................................................60
5.4.5 Mistaken refund of the opposition fee .......................................................... 60
5.5 Decision on the apportionment of costs ................................................60 5.5.1 Cases in which a decision on costs must be taken...................................... 60 5.5.2 Cases in which a decision on costs is not taken .......................................... 61
5.5.2.1 Agreement on costs ..................................................................................61 5.5.2.2 Information from potential ‘successful party’..............................................61
5.5.3 Standard cases of decisions on costs .......................................................... 61 5.5.4 Cases that did not proceed to judgment....................................................... 62
5.5.4.1 Multiple oppositions...................................................................................62 5.5.4.2 Rejection of an application on the basis of absolute grounds or
formalities ..................................................................................................63 5.5.4.3 Cases of joinder ........................................................................................63 5.5.4.4 The meaning of ‘bear one’s own costs’ .....................................................64
5.6 Fixing of costs ..........................................................................................64 5.6.1 Amounts to be reimbursed / fixed................................................................. 64 5.6.2 Procedure if the fixing of costs is contained in the main decision ................ 65 5.6.3 Procedure if a separate fixing of costs is needed......................................... 65
5.6.3.1 Admissibility...............................................................................................66 5.6.3.2 Evidence....................................................................................................66
5.6.4 Review of fixing of costs ............................................................................... 66
6 Procedural Issues.................................................................................... 67 6.1 Correction of mistakes.............................................................................67
6.1.1 Correction of mistakes in the Notice of Opposition ...................................... 67 6.1.2 Correction of mistakes and errors in publications ........................................ 67
6.2 Time limits ................................................................................................68 6.2.1 Extension of time limits in opposition proceedings....................................... 68
6.2.1.1 Non-extendable and extendable time limits...............................................68 6.2.1.2 Request made in time ...............................................................................68 6.2.1.3 Extension of a time limit by the Office on its own initiative.........................69 6.2.1.4 Signature...................................................................................................70
6.3 Suspension...............................................................................................70 6.3.1 Suspension requested by both parties ......................................................... 70 6.3.2 Suspensions by the Office ex officio or at the request of one of the parties 71
6.3.2.1 Explanation of the basic principle, timing of suspension ...........................71 6.3.2.2 Earlier CTM applications or registrations...................................................72 6.3.2.3 Earlier national/international marks (applications or registrations / rights).72 6.3.2.4 Examples...................................................................................................72
6.3.3 Multiple oppositions ...................................................................................... 73 6.3.3.1 After rejection of the CTM application .......................................................73
6.3.4 Procedural aspects....................................................................................... 73 6.3.4.1 Monitoring suspended files........................................................................74 6.3.4.2 Resuming the proceedings........................................................................74
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6.3.4.3 Calculation of time limits............................................................................74
6.4 Multiple oppositions.................................................................................75 6.4.1 Multiple oppositions and restrictions ............................................................ 75 6.4.2 Multiple oppositions and decisions ............................................................... 76 6.4.3 Joinder of proceedings ................................................................................. 77
6.5 Change of parties (transfer, change of name, change o f representative, interruption of proceedings)..........................................78 6.5.1 Transfer and opposition proceedings ........................................................... 78
6.5.1.1 Introduction and basic principle .................................................................78 6.5.1.2 Transfer of earlier CTM .............................................................................78 6.5.1.3 Transfer of earlier national registration......................................................79 6.5.1.4 Opposition based on a combination of CTM registrations and national
registrations...............................................................................................81 6.5.1.5 Transfer of the contested CTM application................................................81 6.5.1.6 Partial transfer of a contested CTM application.........................................81
6.5.2 Parties are the same after transfer ............................................................... 82 6.5.3 Change of names ......................................................................................... 82 6.5.4 Change of representatives ........................................................................... 82 6.5.5 Interruption of the proceedings due to death, legal incapacity of the
applicant or its representative....................................................................... 83 6.5.5.1 Death or legal incapacity of the applicant..................................................83 6.5.5.2 Applicant prevented from continuing the proceedings before the Office
owing to legal reasons (e.g. bankruptcy)...................................................83 6.5.5.3 Death or prevention for legal reasons of the representative of the
applicant before the Office to act...............................................................84
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1 Introduction: General Outline of the Opposition Proceedings
Opposition proceedings start with the reception of the Notice of Opposition. The applicant is immediately notified of the opposition notice filed and receives a copy of the documents on file.
When an oppos ition is filed against an International Registration designating the EU, any reference in the Guidelines to CTM applications must be read to include international registrations designating the EU. Part M of the Guidelines, on International Marks, which has been drafted specifically for international marks, also makes reference to oppositions.
Thereafter, once the payment of the opposition fee has been checked, the Notice of Opposition is checked for compliance with other formal requirements of the Regulation.
In general, two kinds of admissibility deficiencies can be distinguished:
1. Absolute deficiencies, i.e. deficiencies that cannot be remedied after the expiry of the opposition period. If the opponent does not remedy these deficiencies on its own initiative within the opposition period, the opposition is inadmissible.
2. Relative deficiencies, i.e. deficiencies that can be remedied after the expiry of the opposition period. The Office invites the opponent after the expiry of the opposition period to remedy the deficiency within a non-extendible time limit of two months, failing which the opposition will be rejected as inadmissible.
It is important to note that in order to safeguard the principle of impartiality, the Office will not send any communication concerning the payment of the opposition fee or admissibility deficiencies during the opposition period.
After examination of admissibility of the opposition, a notification is sent to both parties to set the time limits for the proceedings. This starts with a period during which parties can negotiate an a greement (with or without any financial consequences) – this is known as the ‘cooling-off’ period. The cooling-off period is set to expire two months from the notification of admissibility. It can be extended once by 22 months and last up to a total of 24 months. Once the cooling-off period has expired, the adversarial part of the proceedings begins.
The opponent is then allowed two more months to complete its file, i.e. to submit all evidence and observations it thinks necessary to make its case. After these two months have lapsed, or once the submitted evidence and obs ervations have been forwarded, the applicant has two months to reply to the opposition.
The Office may request the parties to restrict their observations to particular issues, permitting observations on other issues at a later point in time.
The applicant has basically two possible ways to defend its application. The applicant can question whether the earlier mark(s) have been used by filing a request for proof of use and it can file observations and evidence to convince the Office that the opposition should fail.
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If the applicant only files evidence and observations, the opponent is given two months to comment on the applicant’s submissions and after these exchanges the opposition is normally ready for decision.
If the applicant files a request for proof of use of the earlier mark(s), the subsequent stage of the proceedings may be limited to that issue only and the issue of conflict may be addressed later.
The evidence of use submitted by the opponent is forwarded to the applicant, who will be given two months to submit observations. If it does so, its observations are forwarded to the opponent, who will consequently be given an opportunity to file its final response.
In some other cases it may also be necessary or useful to have another exchange of observations. This may occur when the case deals with complex issues or when the opponent raises a new point that is admitted to the proceedings. In this case the applicant may be given a possibility of replying. It is then up to the examiner to decide if another round should be given to the opponent.
Once the parties have filed their observations, the proceedings are closed, the file is ready for taking a decision on substance and the parties are informed accordingly.
2 Admissibility Check
2.1 Notice of Opposition in writing
Article 41(1)(3) CTMR Rules 16a and 17(4) CTMIR Decision EX-11-3 of the President of the Office
The Notice of Opposition has to be r eceived by the Office in written form within the opposition period, namely within three months from the publication of the contested CTM application.
A Notice of Opposition received by fax or mail is keyed into the Office’s IT system, and the opponent is sent a receipt. It is also possible to file electronic oppositions. The electronic opposition form is automatically collected and introduced into the Office’s IT system.
The applicant immediately receives a copy of the Notice of Opposition (and of any document submitted by the opposing party) for information purposes. If the opposition is based on a Community trade mark, the applicant is also informed that it can access information about earlier Community trade marks via the online search tools, which are available on the Office’s website.
2.1.1 Early oppositions against an international registration
Opposition against an international registration (IR) may be filed between the sixth and the ninth month following the date of first re-publication (Article 156(2) CTMR). For example, if first re-publication is on 15/02/2013, then the opposition period starts on 16/08/2013 and ends on 15/11/2013.
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However, oppositions filed after the re-publication of the IR but prior to the start of the opposition period will be kept on hold and be deemed to have been filed on the first day of the opposition period. If the opposition is withdrawn before that date, the opposition fee will be refunded.
If the opposition is received before the beginning of the opposition period (Rule 114(3) CTMIR), a letter will be sent informing the opponent that the opposition will be deemed to have been received on the first day of the opposition period and that the opposition will be on hold until then.
2.1.2 Early opposition against a CTM application
Any Notice of Opposition against a C TM application received by fax and/or post before commencement of the opposition period in accordance with Article 41(1)-(3) CTMR will be kept on hold and be deemed to have been filed on the first day of the opposition period, namely the first day after the publication of the CTM application in part A.1. of the CTM Bulletin. If the opposition is withdrawn before that date or the CTM application is refused or withdrawn before publication (Article 39 CTMR), the opposition fee will be refunded.
The Office will inform the opponent that as the CTM application against which the opposition is directed has not yet been publ ished in the Community Trade Marks Bulletin, it will be k ept on hold and pr ocessed only after publication of the contested CTM application. The opponent is informed that the opposition will be deemed to be filed on the first day of the opposition period.
2.2 Payment
For general rules on payments, refer to The Guidelines, Part A, General rules, Section 3, Payment of fees, costs and charges.
2.2.1 Notice of Opposition late, payment within the opposition period
Rule 17(2) CTMIR
If the payment was received by the Office within the opposition period but the Notice of Opposition was received late, the opposition is inadmissible. In this case the Office will keep the opposition fee. The opponent must be not ified and has two months to comment on the finding of inadmissibility.
If the opponent submits convincing evidence, such as fax reports, confirmation of receipt by messenger and/or delivery slips for registered mails, that proves that the Notice of Opposition was not late and was in fact correctly received by the Office within the three month opposition period, the Office must reconsider its finding and accept the opposition as having been received within the opposition period. In this case the admissibility check can continue. If the evidence submitted by the opponent does not prove that the Notice of Opposition was received within the relevant time limit or if the opponent does not reply within the two months, a dec ision ruling the opposition inadmissible has to be taken. When notifying the opponent of the decision, the applicant must be sent a copy.
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2.2.2 Time of payment
Article 41(3) CTMR Article 8 CTMFR Rule 17(1) CTMIR
The Office has to receive the full amount of the opposition fee within the opposition period.
If the opposition fee was received after the expiry of the opposition period but payment instructions to the bank had ac tually been g iven within the last ten days of the opposition period, the opposition can be saved if two conditions are met: the opponent files evidence of having given payment instructions within the last ten days of the opposition period AND pays a surcharge of 10% of the opposition fee (double condition). This surcharge, however, shall not be payable if the opponent submits proof that the payment instructions to the bank were given more than ten days before expiry of the time limit for payment. If the opposition fee was not received within the opposition period, or if the provision mentioned above does not apply, the Notice of Opposition is deemed not to have been entered.
Articles 5(2) and 8(1) CTMFR Decision EX-06-1 of the President of the Office
If the opponent or its representative hold a current account, the payment is considered effective on the day the opposition is received.
Since the payment by current account is considered to have been made on the date of receipt of the opposition, if the Notice of Opposition arrived late, the payment is also late. Therefore, the opposition is deemed not to have been entered.
The system of current accounts is an automatic debiting system. This means that such accounts may be debited by the Office for all kinds of financial transactions without any instructions.
The absence of an indication or incorrect indication of the amount of the opposition fee does not have any negative effect on t he opposition, because it is clear that the opponent wanted to pay the amount of the opposition fee.
Even if there is no ex press request from the opponent, the existence of a c urrent account would in such a case be sufficient for the account to be debited. This is true regardless of whether the opposition form is used or not.
The only exception to this rule is made when the holder of a current account who wishes to exclude the use of the current account for a particular fee or charge informs the Office thereof in writing (e.g. indicating bank transfer).
Fee payment by debiting a current account held by a third party
Payment of the opposition fee by debiting a c urrent account held by a t hird party requires an explicit authorisation of the holder of the current account that its account can be debited for the benefit of the particular fee. In such cases the opponent must file an authorisation within the opposition period.
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Payment is considered to be made on the date the Office receives the authorisation.
2.2.3 Consequences in the event of non-payment
Rules 17(1), (4) and 54 CTMIR
An opposition for which the payment is not made within the opposition period shall be deemed not to have been entered and the opponent must be notified of this finding.
A copy of this letter must be sent to the applicant for information purposes at the same time.
If within the two-month time limit allowed the opponent submits evidence that the Office finding concerning the loss of rights was inaccurate, and it proves that the payment was made on t ime, a notification has to be sent with a copy to the applicant together with the evidence provided by the opponent.
An opponent has the right to request a decision within two months. If it does so, the decision must be sent to both parties.
2.2.4 Fee refund
Article 8(3), 9(1) CTMFR Rules 17(1) and 18(5) CTMIR
If an opposition is deemed as not entered and the opposition fee has not been paid in full or has been paid after the expiry of the opposition period, the amount paid must be refunded to the opponent.
The reimbursement of the opposition fee provided for in Rule 18(5) CTMIR will include any surcharge paid by the opponent on the basis of Article 8(3) CTMFR.
2.3 Languages and translation of the Notice of Opposition
Article 119(5), (6) CTMR Rules 16, 17(3), 83(3) and 95(b) CTMIR
According to Article 119(5) CTMR, the Notice of Opposition shall be filed in one of the languages of the Office. Several situations in relation to the choice of the language of proceedings can occur:
1. OHIM’s official opposition form has been used and the opponent has chosen a possible language of proceedings.
The opposition complies with the language regime of the Regulations.
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Examples
a) The languages of the CTM application are PT and EN. The Portuguese language version of the form has been sent, but none of the textual elements relevant for admissibility can be t ranslated, and the appropriate boxes are ticked. The opposition is admissible. As the language of proceedings can only be EN, it is not necessary to ask the opponent to indicate the language of the opposition proceedings. When the opposition is notified a blank official form in EN must be attached, and the language of the proceedings indicated.
b) The languages of the CTM application are DE and EN. The French language version of the form has been s ent, but either the opposition is filled in French or none of the textual elements can be translated, and the appropriate boxes are ticked. The opposition is admissible. As the language of proceedings can be ei ther DE or EN, the opponent must be asked to indicate the language of the opposition proceedings. When the opposition is notified a blank official form in the indicated language must be attached.
2. OHIM’s official opposition form has been used and the text in the form is in one of the languages of the Office but not in one of the possible languages of the proceedings.
If the textual elements important for admissibility cannot be t ranslated (e.g. numbers) and all the appropriate boxes are ticked, the opposition is admissible, even if it also contains textual parts that are in the wrong language such as an explanation of grounds. As an ex planation of grounds is not obligatory at the admissibility stage, the fact that it is not in the right language does not affect admissibility. It does not ‘exist’.
The Office will check if the opponent has indicated the language of the proceedings in the form.
○ If not, or if a wrong language has been indicated, and both the first and the second language of the CTM application are languages of the Office, a letter asking the opponent to indicate the language of the proceedings will be sent. If no reply is received in the two month time limit the opposition must be rejected as inadmissible. When the opposition is notified, a blank form in the language of proceedings must be annexed.
○ If not, or if a w rong language has been indicated and only one o f the languages of the CTM application is a language of the Office, there is no need to ask for the language of the proceedings, as this can only be a language of the Office. When the opposition is notified, a blank form in the language of the proceedings must be annex ed. The language of the proceedings is indicated in the letter.
○ If the language of the proceedings is correctly indicated, a blank form in the language of the proceedings must be annexed when the opposition is notified.
The same applies if OHIM’s official opposition form has been used and the text in the form is NOT in one of the languages of the Office.
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3. OHIM’s official opposition form has not been used, but the text of the opposition is written in a possible language of proceedings.
The opposition complies with the language regime of the Regulations.
4. OHIM’s official opposition form has not been used and the text of the opposition is written in one of the languages of the Office, but not in one of the possible languages of proceedings.
In accordance with Article 119(6) CTMR and Rule 16(1) CTMIR, the opponent shall of its own motion file a translation in the language of the proceedings within one month. If none is received the opposition is inadmissible.
5. OHIM’s official opposition form has not been used and the text of the opposition is written in one of the official languages but not in one of the languages of the Office.
The opposition is inadmissible. Article 119(5) CTMR applies. A notification is sent in the first language (if one of the Office) or the second language of the CTM application opposed.
The list of goods and services has a special regime (see paragraph 2.4.2.3 below).
Explanation of grounds: when one of the boxes concerning grounds is ticked and additionally an ex planation of facts or arguments is provided, this explanation or indications like ‘see annex’, ‘see attachment’, ‘will be provided later’ do not need to be translated at the admissibility stage. These must be submitted later after expiry of the cooling-off period before expiry of the time limit for substantiating the opposition.
2.4 Admissibility check
Rules 15 and 17 CTMIR
The admissibility check comprises both the absolute and the relative requirements:
• the indications and elements that must be present in the Notice of Opposition or submitted by the opponent on i ts own initiative within the opposition period are those laid down in Rule 15(1), (2)(a)-(c) CTMIR;
• the indications and elements which, if they are not provided within the opposition period, trigger a deficiency notice by the Office allowing the opponent to remedy this within a non -extendible time limit of two months are those laid down in Rule 15(2)(d)-(h) CTMIR;
• optional indications (that determine the scope of the opposition but do not lead to a finding of non-admissibility) are laid down in Rule 15(3) CTMIR.
2.4.1 Absolute admissibility requirements
If the opposition is inadmissible due t o absolute admissibility requirements, the opponent must be informed and invited to comment on the admissibility. If the
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inadmissibility is confirmed, a decision rejecting the opposition is sent and copied to the applicant.
Oppositions against CTMAs
The earlier marks/rights are examined to see if one is clearly identified. If the only earlier right on which the opposition is based is not duly identified, the opposition is inadmissible and the opponent is invited to comment on the inadmissibility before the decision on inadmissibility is taken. If the only earlier right on which the opposition is based is duly identified (absolute requirements), the Office will examine whether it also meets the relative admissibility requirements.
If the opposition is based on m ore than one earlier right and one o f them has been correctly identified, the examination of admissibility (relative requirements) can proceed based on that earlier right. The parties are informed thereof when the notification of the time limits of the opposition proceedings is sent to the parties.
Oppositions against IRs with EU designation
Concerning oppositions against IRs with EU designation a full admissibility check is carried out. This check must extend to all earlier rights. If none of the earlier rights is duly identified, the opposition is inadmissible and the opponent is invited to comment on the inadmissibility before the decision on inadmissibility is taken.
2.4.1.1 Identification of the contested CTM application
Rules 15(2)(a) and 17 CTMIR
The mandatory elements for identifying the contested CTM application are the application number and the name of the applicant.
If, for example, the application number indicated does not correspond to the name of the applicant indicated, the Office will decide if it can be established without any doubt which is the contested CTM application. If the applicant’s name is not indicated, it can be found in the Office’s IT system.
The date of publication is an opt ional indication, which helps to double-check the identification of the CTM application. Even if it is missing, the CTM application can be sufficiently identified through the other indications.
Only one CTM application can be contested in one Notice of Opposition.
If the CTM application cannot be identified, this deficiency can only be remedied on the opponent’s initiative during the three-month opposition period, otherwise the opposition is inadmissible and an invitation to comment on the inadmissibility has to be sent. If the inadmissibility is confirmed, a decision rejecting the opposition is sent and copied to the applicant.
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2.4.1.2 Identification of the earlier marks / rights
Article 8(2) CTMR Rules 15(2)(b) and 17(2) CTMIR
Identification elements are to be l ooked for not only in the Notice of Opposition, but also in annexes or other documents filed together with the opposition or any documents submitted within the opposition period.
An opposition can be based on five types of earlier rights: (1) earlier trade mark registrations or applications, (2) earlier trade mark registrations or applications with a reputation, (3) earlier well-known marks, (4) earlier unregistered trade marks and (5) earlier signs used in the course of trade.
Earlier rights that are not earlier
Articles 8(2) and 41(1) CTMR
For an ea rlier right to be earlier is must have, in the absence of any priority, an application date that is prior to the day on which the contested CTMA has been filed. In case of conflict between a national mark and a CTM application, the hour and the minute of filing of the national mark is not relevant for determining which mark is earlier (judgment of 22/03/2012, C-190/10, ‘Génesis’).
Sometimes an opposition is based on one or more marks or other rights that are not earlier than the CTM application, within the meaning of Article 8(2) CTMR. The establishment of whether a right is earlier is done at the admissibility stage.
When the only earlier mark is or all earlier marks are not earlier, the Office will inform the opponent of the inadmissibility and invite it to comment on t hat issue before a decision on inadmissibility is taken.
Where the opposition is based on more than one right, one being earlier and one or more are not earlier, the Office will notify the admissibility of the opposition as usual and no mention will be made of the fact that one or more marks/rights are not earlier. The issue will then be dealt with in the decision.
Earlier trade mark registrations or applications
Article 8(2)(a), (b) CTMR Rules 15(2)(b), 17(2) and 19(3) CTMIR
These rights are Community trade mark registrations or applications, international registrations designating the European Union, national or Benelux trade mark registrations or applications (including ‘ex Community trade marks’ for which a request for conversion has been filed) and international registrations under the Madrid Agreement or Protocol having effect in a Member State.
The seniority claimed in a C TM can be t aken into account within the meaning of Article 8(2)(a) CTMR provided that the proprietor of the CTM has surrendered the
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earlier mark or allowed it to lapse within the meaning of Article 34(2) CTMR and that this fact is proved by the opponent.
In such a case, the opponent must base its opposition on the Community trade mark explicitly claiming within the three month opposition period that the national mark continues to exist through the seniority claimed in the CTM. A clear link must be established between the CTM indicated and t he earlier mark for which the seniority was claimed in the CTM. Within the time limit set according to Rule 19(1) CTMIR, the opponent must provide sufficient proof, emanating from the OHIM, that the seniority claim has been accepted and proof, emanating from the administration by which the national trade mark was registered, that the national mark has been s urrendered or allowed to lapse according to Article 34(2) CTMR.
The absolute identification elements for earlier trade mark registrations and applications are:
• the registration/application number;
National applications deriving from the conversion of an earlier CTM(A) are considered to come into existence as soon as a valid conversion request is filed. Such rights will be pr operly identified for admissibility purposes if the opponent indicates the number of the CTM(A) under conversion and the countries for which it has requested the conversion.
• the indication whether the earlier mark is registered or applied for;
• the Member State including the Benelux where the earlier mark is registered/applied for or if applicable the indication that it is a CTM.
If the Member State is not indicated in the opposition notice but a certificate is attached, it is considered that the Member State is sufficiently identified, even if the certificate is not in the language of the proceedings. A translation of the certificate should not be asked for at this stage in the proceedings. If it concerns a certificate of an International Registration it is assumed that the opposition is based on this mark in all the Member States and/or the Benelux countries indicated in the certificate.
Trade marks filed by an agent
Article 8(3) CTMR, Rule 15(2)(b)(i) CTMIR
A trade mark filed by an agent is the contested CTM application for which the opponent claims that the applicant who has or had a business relationship with the opponent (its agent or its representative) applied for this mark without its consent.
The earlier marks or rights on w hich the opposition is based must be identified according to the same criteria as earlier trade mark registrations or applications. That is, the country and registration or application number must be g iven. The representation of the mark (in colour if applicable) must be given only if the earlier mark of the proprietor is an unregistered mark, because in this case no registration number can be provided to clearly identify the earlier mark. For unregistered word marks, the word that makes up the mark must be indicated. For unregistered figurative or other marks, the representation of the mark as it is used and claimed by the proprietor must be provided. See also the Guidelines, Part C, Opposition, Section 3, Trade mark filed by an agent.
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Earlier trade mark registrations or applications with reputation
Article 8(1), (5) CTMR Rule 15(2)(c), (g) CTMIR
Under Article 8(5) CTMR an opposition can be based on a mark with reputation, invoked against goods and services that are dissimilar and/or similar. The mark with a reputation can be an earlier Community, international, Benelux and national registration, and an earlier application subject to its registration.
The same identification requirements apply as for registered marks invoked under Article 8(1)(b) CTMR: number and Member State/region of protection, the indication where and f or which goods/services the mark is reputed is a r elative admissibility requirement.
Earlier well-known mark
Article 8(2)(c) CTMR Rules 15(2)(b)(i), (ii) and 17(2) CTMIR
Article 8(2)(c) CTMR protects well-known marks within the meaning of Article 6 bis of the Paris Convention. This can be a registered or an unregistered mark or a mark which in the territory where it is to be p rotected is not registered (irrespective of its registration in the territory of origin).
The absolute indications are:
• An indication of the Member State where the mark is well known: if this indication cannot be deduc ed from the documents on file, the mark is inadmissible as a basis for opposition.
• If the mark is a registered mark, the indications referred to in Rule 15(2)(b)(i) CTMIR, i.e. the registration number and the Member State where the mark is registered.
• If the mark is not registered, a representation of the mark. For word marks, this is the indication of the word that makes up the mark. For figurative or other marks, the representation of the mark (in colour if applicable) as it is used and claimed to be well-known must be provided. If the opposition is furthermore based on one registered trade mark, but no representation of the well-known mark is given, the Office assumes that both trade marks refer to the same sign and t hat the opponent claims the registered mark to be well-known (decision of 17/10/2007, R 0160/2007-1 ‘QUART/Quarto’).
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Earlier non-registered marks and earlier signs used in the course of trade
Article 8(4) CTMR Rules 15(2)(b)(iii) and 17(2) CTMIR
This category consists of signs that are unregistered and used as trade marks or of a great number of different earlier rights, among others rights to a company name, trade name, business sign, ensigns, titles of protected literary/artistic work and the right to a sign under passing off.
The absolute indications are:
• an indication of the kind or nature of the right. The nature of the right determines the scope of the opposition and t he applicant’s defence depends on i t. ‘Trade name’, ‘company name’, ‘business sign’, ‘passing-off’, ‘titles of protected literary/artistic work’ are acceptable indications of the nature of rights. On the contrary, general terms such as ‘common law’ and ‘unfair competition’ without an indication of the specific nature of the right are not accepted. This list is not exhaustive. If the opponent bases its opposition on a right that cannot be an earlier right under 8(4) CTMR, e.g. a c opyright or a des ign, the opposition is admissible. However, after the proceedings have commenced the opposition will be rejected on substance;
• an indication of the Member State where the right is claimed to exist;
• a representation of the earlier right (in colour if applicable).
In the absence of the previous indications, the relevant right will be inadmissible.
2.4.1.3 Identification of grounds
Article 41(3) and Article 75 CMTR Rule 15(2)(c) and Rule 17(2) CTMIR
An opposition without any indication of grounds in accordance with Rule 15(2)(c) CTMIR is inadmissible if this deficiency is not remedied before the expiry of the opposition period.
The specification of the grounds should consist of a statement to the effect that the respective requirements under Article 8(1), (3), (4) and (5) CTMR are fulfilled. Arguments and evidence are voluntary at this point in the proceedings.
In particular, the grounds are to be considered as properly indicated if:
• one of the relevant boxes in the opposition form is checked; • the relevant box is not checked, but the earlier mark is identified and the
opposition can be considered to be based on Article 8(1).
In both cases it is possible to identify the grounds from the Notice of Opposition without any doubt and the opposition is admissible.
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If not, before rejecting the opposition, a c areful assessment of the entire Notice of Opposition must be made: it does not matter whether the grounds are indicated in the opposition form, its annexes or its supporting documents. The grounds must be unequivocally clear.
In all other cases, the opponent will be invited to present comments on inadmissibility before taking the decision rejecting the opposition.
2.4.2 Relative admissibility requirements
Rule 15(2)(d) – (h) CTMIR
Relative deficiencies are those that can be remedied after the expiry of the opposition period. The Office invites the opponent to remedy the deficiency within two months from the receipt of the notification of the deficiencies. If the opponent remedies the deficiencies, the opposition is considered admissible; if not, it will be r ejected on the grounds of inadmissibility.
2.4.2.1 Dates
Rule 15(2)(d) and Rule 17(4) CTMIR
These include the filing date and, where available, the registration date and the priority date of the earlier mark.
This requirement applies to the following rights:
• earlier Community or national or international trade mark application or registration invoked under Article 8(1)(a) or (b) CTMR,
• earlier well-known mark invoked under Article 8(2)(c) CTMR, if it is registered in the Community,
• earlier mark under Article 8(3) CTMR if it is registered,
• earlier mark with a reputation invoked under Article 8(5) CTMR.
These indications can be important in order to be able to eliminate possible errors when identifying the earlier mark. It is sufficient that these elements can be f ound in enclosed documents. If these elements are lacking the opponent must be notified of the deficiency.
2.4.2.2 Representation of earlier mark / sign
Rule 15(2)(e) and Rule 17(4) CTMIR
For rights that are not subject to registration this is an absolute admissibility requirement as otherwise the earlier right cannot be determined at all (see above).
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The relative admissibility requirement to provide a representation of the mark under Rule 15(2)(e) CTMIR applies to the following rights:
• earlier national or international trade mark application or registration invoked under Article 8(1)(a) or (b) CTMR,
• earlier well-known mark invoked under Article 8(2)(c) CTMR, if it is registered in the Community,
• earlier mark with a reputation invoked under Article 8(5) CTMR,
• mark filed by an agent (Article 8(3) CTMR, if it is a registered mark).
If the mark is a word mark, indication of the word is sufficient.
If the mark is figurative, 3-D, other mark, etc. a representation of the mark as applied for or registered must be filed, in colour if applicable.
If the proper representation has not been en closed in the opposition notice, the opponent must be notified of the deficiency. If the opponent does not comply within the two-month time limit given, the earlier right will be rejected as inadmissible.
If the earlier mark is a CTM, a representation is not requested since it is available on the Office’s databases.
A colour representation of the mark is not compulsory if the national mark was not published (for technical reasons) in colour, as is the practice, for example, in Cyprus and Latvia. In these cases the Office neither asks for a colour representation nor requests the opponent to file a translation of the colour indications.
The following countries have either always published in colour or have done so since the date indicated:
• Austria • Belgium • Bulgaria • Croatia (2009) • Czech Republic (1999) • Denmark • Estonia (2003) • Finland (2005) • France (1992) • Germany • Greece (2007) • Ireland (2003) • Italy • Hungary • Lithuania (as of July 2009) • Luxembourg • Malta • Netherlands • Poland (2003) • Portugal (2006)
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• Romania • Slovakia (2008) • Slovenia (1992) • Spain (as of 31/07/2002) • Sweden • United Kingdom (2004)
International marks have been published in colour since 1989.
Rules 80(2) and 17(4) CTMIR
If the representation on f ile is not clear, the Office may ask for a c learer one. If the representation that is received is incomplete or illegible and the request to provide a clear one i s not complied with, the representation will be deem ed not to have been received and the right will be rejected as inadmissible.
2.4.2.3 Goods and services
Rule 15(2)(f) and Rule 17(4) CTMIR Communication No 5/07 of the President of the Office
Rule 15(2)(f) CTMIR stipulates that the Notice of Opposition shall contain an indication of the goods and services on which the opposition is based in the language of the proceedings. This applies to all types of earlier rights.
The opposition can be based on all the goods and services for which the earlier mark is registered or applied for, or only some of the goods and services.
According to Communication No 5/07 of the President of the Office of 12/09/2007 on changes of practice in opposition proceedings, an indication of the class number(s) is accepted as sufficient indication of the goods and services of the earlier rights on which the opposition is based. This is implemented as described below.
Part of the goods and services
If the opposition is based on par t of the goods and s ervices for which the earlier mark(s) is/are registered/applied for, these goods and services need to be listed in the language of the proceedings.
The Office will also accept an indication of the relevant class number(s) provided that a registration certificate or extract from an official source is attached (the registration certificate or extract must either be in the language of the proceedings or be translated into the language of the proceedings or make use of national or INID codes so as to clearly identify the relevant class number(s)).
If the goods and services on which the opposition is based are fewer than the goods and services for which the mark is registered, the goods and s ervices on which the opposition is not based need not be i ndicated, as they are irrelevant to the proceedings.
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All of the goods and services
If the opposition is based on all of the goods and services for which the earlier mark(s) is/are registered/applied for, these must be listed in the language of the proceedings. However, instead of listing them, the opponent may refer to ‘all goods and services for which the earlier mark is registered’, provided that a registration certificate or extract from an official source is attached (the registration certificate or extract must either be in the language of the proceedings or be t ranslated into the language of the proceedings or make use of national or INID codes).
The Office will also accept an indication of the relevant class number(s) provided that a registration certificate or extract from an official source is attached (the registration certificate or extract must either be in the language of the proceedings or be translated into the language of the proceedings or make use of national or INID codes so as to clearly identify the relevant class number(s)).
Additionally, where the opponent indicates in the opposition form that the opposition is based on ‘all goods and services for which the earlier right is registered’ but then lists only ‘part’ of these goods and services (when compared with the registration certificate or relevant official extract attached to the opposition form) the Office will, in order to overcome the contradictory information contained in the Notice of Opposition, assume that the opposition is based on ‘all goods and services for which the earlier right is registered’.
Even if the opponent has not indicated, or has not clearly indicated, on which goods and/or services it bases its opposition, it is sufficient that a registration certificate in the language of the proceedings is attached; it is then assumed that the opposition is based on those goods and services that appear in the certificate.
However, if the certificate is in a language other than the language of the proceedings or if no certificate is attached, the deficiency must be notified.
If an opposition is based on ‘all identical / similar goods and services’, clarification must be requested since this wording is not sufficiently clear to identify the basis of the opposition.
If an indication like ‘the opposition is based on all the goods in Class 9’ is used and no certificate in the language of the proceedings is attached, the Office will require a specification in the language of the proceedings.
An indication of this type is only acceptable when the opponent replies that it owns a registration with a description that mentions that the sign is registered for ‘all goods in Class 9’.
For oppositions based on earlier unregistered trade marks or rights, the opponent must indicate the commercial activities in the course of which they are used.
Specific aspects: Oppositions filed against international registrations designating the European Union
For admissibility purposes, with regard to oppositions filed against international registrations designating the European Union, an indication of the class number(s) only in the Notice of Opposition is not sufficient to identify the goods and services on which the opposition is based. If the opposition is based on al l or part of the goods and
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services for which the earlier mark(s) is/are registered/applied for, these goods and services need to be listed in the language of the opposition proceedings. This list must include all the goods or services covered by that mark or at least the relevant goods or services on which the opposition is based.
2.4.2.4 Earlier mark with a reputation: scope of reputation
Rule 15(2)(g) CTMIR
A specific requirement applies to marks with a r eputation within the meaning of Article 8(5) CTMR: an indication of the Member State in which, and the goods and services for which, the mark has a reputation must be provided.
2.4.2.5 Identification of the opponent
Article 41(1) CTMR Rules 1(1)(b) and 15(2)(h),(i) CTMIR
The opponent can either be a nat ural or a legal person. In order to be able to identify the opponent, there must be an indication of its name and address.
Until now there have been no oppos itions where the opponent was not identified. If only the name of the opponent and for example a fax number is indicated, the opponent must be asked to give the particulars of its address.
When examining if the opponent is clearly identified, attention should be given to the nature of the opponent, i.e. natural or legal person. If it is unclear whether the opponent is a natural or a legal person, or when the type of legal person (for example GmbH, KG, SA, Ltd) is not indicated the deficiency must be notified.
Entitlement
Rule 1(1)(b) and Rule 15(2)(h)(i), (iii) CTMIR
It is assumed that the opponent claims to be the owner of the earlier right, unless otherwise stated. Only if the opponent acts in the capacity of an authorised licensee or a person authorised under national law, does it have to make a statement to that effect, and it has to specify the basis on which it is so entitled or authorised. If those details are not given, a deficiency must be notified.
In accordance with Rule 15(2)(h)(i) CTMIR an opponent who acts as a licensee or authorised person has to indicate its name and add ress in accordance with Rule 1(1)(b).
• If the Notice of Opposition is based on the grounds of Article 8(1) or 8(5) CTMR and thus on trade mark registrations or applications, the Notice of Opposition may be filed by the owner and by the licensees of these registrations or applications, provided they are authorised by the owner.
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• If the Notice of Opposition is based on the grounds of Article 8(3) CTMR (an agent trade mark), it may be filed by the owner of that trade mark.
• If the Notice of Opposition is based on the grounds of Article 8(4) CTMR (earlier marks or signs), it may be filed by the owner of that earlier mark or sign and by persons authorised under the relevant national law to exercise the rights to the earlier mark or sign.
As long as the opponent claims to own a r ight or registration in one o f the Member States of the European Union, it is entitled to file an oppos ition, irrespective of its country of origin.
Change of owner (transfer of earlier mark) before the opposition is filed
Where the earlier mark has been transferred before the opposition is filed, a distinction has to be made between oppositions based on an ear lier CTM and oppositions based on national trade mark registrations (or applications).
Opposition based on an earlier CTM
An opposition based on Community registrations or applications may be entered by the successor in title of a CTM only if the conditions set out in Article 17(6) CTMR are met, namely, only if the opponent has filed a request for the registration of the transfer when the opposition is filed. According to Article 17(7) CTMR, where there are time limits to be observed vis-à-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office.
It is up to the opponent to provide this information, and it will not be checked by the Office when doing the admissibility check. However, if the opponent mentions in the explanation of its opposition that it is the new owner (or it uses similar terms), the Office must request the opponent to indicate the date the request for registration of the transfer was sent to or received by the Office.
Opposition based on a national registration or application
An opposition based on a nat ional registration or application may be ent ered by the ‘old’ owner or by the successor in title, as there are different practices in the different Member States regarding the need to register the transfer in the national trade mark register to be able to claim rights arising from the registration. In some cases the opposition is filed by opponent A whereas, after a t ransfer of the earlier mark on which the opposition is based, the mark is owned by B. As A may still appear in the relevant register as the owner, the Office will accept the opposition as valid with A as opponent, even though it is no longer the owner of the earlier mark.
If the opposition is filed with B as opponent and a copy of the registration certificate shows A as owner of the earlier mark, the opposition is accepted as admissible on the assumption that the earlier mark was transferred to B before the opposition was filed (or it is indicated in the Notice of Opposition that it opposes in its capacity as licensee). However, the entitlement to file the opposition has to be proved within the time limit for substantiation.
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Multiple opponents
Rules 15(1) and 75(1) CTMIR Decision of 11/10/2000, R 623/1999-1’ Emultech’
In some cases there is more than one opponent indicated in the Notice of Opposition. There are only two situations in which the Office accepts two or more separate persons (either natural or legal) as multiple opponents, namely:
• if they are co-owners of the earlier mark or right;
• if the opposition is filed by the owner or co-owner of an earlier mark or right together with one or more licensees of these earlier marks/rights.
If there is no indication that the multiple opponents fulfil one of the two requirements mentioned above, they will be asked to indicate their relationship (co-ownership or owner/licensee) or to indicate one of the multiple opponents as the only opponent.
If an earlier mark and/or an earlier right has more than one proprietor (co-ownership), the opposition may be filed by any or all of them.
However, if the opponents inform the Office that, for example, Company A B.V. owns five of the earlier rights and C ompany A PLC owns another five, they will have to indicate with whom the opposition will continue. As a consequence, five out of the ten earlier rights will not be taken into account. If the opponents do not respond appropriately within the two-month time limit set, the opposition will be rejected as inadmissible.
Acceptable
Earlier trade marks 1 2 3 4 5 Owner A/B A A A A
Earlier trade marks 1 2 3 4 5 Owners A/B A/C A A A
The second combination is acceptable only if at least A is one of the opponents.
Not acceptable
Earlier trade marks 1 2 3 4 5 Owners A A B B B
The opponents will have to be as ked to indicate if they want to continue the proceedings with A or B as an opponent.
Earlier trade marks 1 2 3 4 5 Owners A/B A A B B
The opponents will have to be as ked to continue the opposition either as multiple opponents based on the first three earlier trade marks or as multiple opponents based on the first, fourth and fifth earlier trade marks.
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Earlier trade marks 1 2 3 4 5 Owners A/B/C B/C A A A
The opponents will have to be as ked to continue the opposition either as multiple opponents A, B and C based on t he first and t he second earlier trade marks or as multiple opponents A and B based on the first, third, fourth and fifth earlier trade marks.
Indication of relationships other than co-ownership
Where two opponents are mentioned in the Notice of Opposition, one as owner of the earlier right, and another as licensee (authorised by the owner to file opposition), no objections will be raised if the owner of all earlier rights on which the opposition is based is the same legal or natural person, regardless of how many licensees join it in the case.
In the following example the opposition is acceptable with A, B and C as multiple opponents:
Earlier trade marks 1 2 3 Owner A A A Licensees B C None
By contrast, in the following case, although B is accepted as a multiple opponent as licensee for earlier mark 1, it cannot be accepted as a multiple opponent as owner of earlier mark 3. The Office will ask the opponents to indicate if they want to continue the opposition with A or with B as an opponent. If the opponents do not reply, the opposition is inadmissible.
Earlier trade marks 1 2 3 Owner A A B Licensees B C A
Evidence
In cases where the opposition is based on earlier registered marks the most common means to provide evidence of co-ownership is to submit a c opy of the registration certificate or an extract from an official database. If the opposition is based on several earlier marks/rights but the opponents have already filed evidence of co-ownership of one earlier registered mark, the opponents will still be r equired to confirm the ownership of the other earlier rights. As at this stage of the opposition proceedings the opponents are not obliged to file evidence of their earlier marks/rights, a statement confirming their capacity to file an opposition together will be considered sufficient for admissibility purposes.
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2.4.2.6 Professional representation
Representative
Articles 92 and 93 CTMR Rule 15(2)(h)(ii) CTMIR
Rule 15(2)(h)(ii) CTMIR provides that if the opponent has designated a representative, it must provide the name and bus iness address of the representative in accordance with Rule (1)(1)(e) CTMIR.
If the opponent is from the EU (not obliged to be represented under Article 92 CTMR), failure to appoint a representative, or failure to indicate the name or business address of the representative, merely has the consequence that the Office will communicate with the opponent directly.
If the opponent is obliged to be represented under Article 92 CTMR, failure to appoint a representative, or failure to indicate the name or business address of the representative, constitutes a relative admissibility deficiency. The Office will invite the opponent to appoint a representative and/or to indicate the name and address of the representative, failing which the opposition will be rejected as inadmissible.
Rule 77 CTMIR
Any Office notification sent to the duly authorised representative has the same effect as if it had been addressed to the represented person.
Any notification or letter of the duly authorised representative sent to the Office has the same effect as if it originated from the represented person.
In addition, if the represented person itself files documents with the Office while being represented by a duly authorised representative, these documents will be accepted by the Office as long as the represented person has its domicile or its principal place of business or a real and effective industrial or commercial establishment in the EU. If this is not the case, the documents submitted will be rejected.
For further information, see the Guidelines, Part A, General rules, Section 5, Professional representation.
Multiple representatives, common representative
Rule 75 CTMIR
It is possible for each party to have more than one representative who may act either jointly or separately. There is no fixed maximum number of representatives.
The Office, however, will communicate only with the first named representative. If there is more than one opponent and the Notice of Opposition does not name a c ommon representative, the representative first named in the opposition notice shall be considered to be the common representative.
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However, if one of the opponents is obliged to appoint a representative (because he is from outside the European Union), this representative shall be c onsidered to be the common representative, unless the opponent first named in the opposition notice has appointed a representative.
Rule 76(8) CTMIR
Where there is more than one opponent/applicant, the representative of the person named first shall be the common representative of all these persons. If the person first named has not appointed a r epresentative and one o f those persons is obliged to appoint a representative and has done so, that representative shall be considered to be the common representative for all these persons.
For further information, see the Guidelines Part A, General rules, Section 5, Professional representation.
Change of representative
Rule 76 CTMIR
During the oppositions proceedings the opponent’s and the applicant’s representative may change. For further information, see the Guidelines Part A, General rules, Section 5, Professional representation.
Authorisation
Article 92(2) CTMR Rule 76 CTMIR
Where there are several parties to the proceedings in which a r epresentative acts before the Office, representatives shall file a signed authorisation for entry into the file, either as an individual or as a general authorisation, only if the other party expressly asks for it. When it is required that a signed authorisation is filed, the Office will specify a time limit within which such an authorisation must be filed.
Details on representation and authorisations are set out in the Guidelines Part A, General rules, Section 5, Professional representation.
2.4.2.7 Signature
Rules 80(3) and 82(3) CTMIR
An opposition notice sent by fax or by mail must be signed by the opponent or, if it is submitted by a representative, by the representative.
An opposition notice sent by telecopier electronically or by electronic means need not be signed and it is sufficient that the name of the sender is indicated.
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2.4.2.8 Relative admissibility requirements: sanctions
Rule 17(4) CTMIR
If relative admissibility requirements are missing or not complied with, the opponent or its representative is given two months to remedy. This time limit cannot be extended.
If the deficiency is not remedied in time, the opposition must be rejected as inadmissible or if the deficiency concerns part of the earlier rights, the opponent will be notified that the opposition is admissible but that the earlier rights concerned cannot be taken into account.
2.4.3 Optional indications
2.4.3.1 Extent of the opposition
Rule 15(3)(a) CTMIR
The opposition may contain an indication of the goods and services against which the opposition is directed; in the absence of such an indication, the opposition shall be considered to be directed against all of the goods and services of the opposed mark.
If the opponent indicates that the opposition is only directed against part of the goods and services of the CTM application, it will have to clearly list these goods. If it does not do so, either in the Notice of Opposition or in the explanation, it must be notified of the deficiency. If the deficiency is not remedied by listing the goods and/or services against which the opposition is directed within the time limit given, the opposition will be rejected as inadmissible.
There are cases where, in reply to the Office’s letter asking the opponent to list exactly which part of the goods and services it opposes, the opponent indicates ‘all the goods and services which the contested mark is applied for’. The Office cannot accept this indication as valid and the opposition must be rejected as inadmissible. This is because by indicating that the opposition is directed only against part of the goods and services of the CTM application, the opponent has clearly limited its opposition in this respect and cannot extend its scope after the opposition period of three months.
The extent of the opposition is correctly indicated where the goods are specific goods encompassed by a br oader term used in the contested specification (e.g. opposition directed against trousers and the CTM application is filed for clothing – in this example, the only contested goods are considered to be trousers). However, when the opponent uses ambiguous wording like ‘the opposition is directed against all goods similar to …’, when the opponent’s goods are substituted for applicant’s goods, or any other indication that does not clearly identify the contested goods and services, a clarification must be requested. If the opponent does not respond appropriately to this request, the opposition will be rejected as inadmissible.
Additionally, where the opponent indicates in the opposition form that the opposition is directed against ‘part of the goods and services of the contested mark’ but then lists ‘all’ of these goods and services in the Notice of Opposition or in the annexes, the Office will, in order to overcome the contradictory information contained in the Notice of Opposition, assume that the opposition is directed against ‘all the goods and services’.
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2.4.3.2 Reasoned statement
Rule 15(3)(b) CTMIR
It is now clear from the wording of Rule 15 CTMIR that a distinction must be made between:
• the basis of the opposition, i.e. the earlier right invoked; it must be pr operly identified and cannot be changed after expiry of the opposition period,
• the indication of the grounds of the opposition, i.e. ‘likelihood of confusion’ (Rule 15(2)(c) CTMIR, using the term ‘namely’),
• and a reasoned statement, i.e. any indication of arguments, facts or evidence in support of the opposition.
‘Reasoned statement’ includes proof of the existence of the earlier right, which (unlike the identification of the earlier right) is a matter of substance rather than admissibility.
The reasoned statement is optional at the stage of filing of the opposition; it has nothing to do with the admissibility check. It is acceptable if it is included in the opposition, but otherwise it may be provided after expiry of the cooling-off period (Rule 19(1) CTMIR) and concerns the substance, not the admissibility, of the opposition.
2.5 Notification of the Notice of Opposition
Rules 16a and 18 CTMIR Decision EX-11-3 of the President of the Office
Any Notice of Opposition and any document submitted by the opposing party, as well as any communication addressed to one of the parties by the Office prior to the commencement of the cooling-off period, will be sent by the Office to the other party for the information purposes.
Once the opposition has been found admissible pursuant to Rule 17 CTMIR, the Office will send a not ification to the parties informing them that the proceedings shall be deemed to commence two months after receipt of the communication. The notification will also set the time limit for the opponent to present the facts, evidence and arguments in support of its opposition, as well as the time limit for the applicant to submit its observations in reply. It is important to note that due to different means of communication (fax, e-communication and pos t) the time limits mentioned in this notification are set according to the ‘slowest’ communication channel. For example, if one of the parties is notified by e-communication through the official webpage of the Office, notification shall be deem ed to have taken place on the fifth calendar day following the day on which the document was created by the Office’s systems. Therefore, if the notification to the other party is sent by fax, this latter party will also be granted the five additional days so that the time limits granted in the notifications coincide.
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Whenever the opposition is based on an earlier trade mark registered or applied for in colour, the Office will ensure that the colour representation is received by the applicant. In some cases this may require notification by post.
Notification is not carried out before the expiry of the opposition period.
3 Cooling-Off Period
3.1 Setting the cooling-off period in motion
Rules 17, 18(1), 19 and 20(2), (6), (7) CTMIR Communication 1/06 of the President of the Office
When the opposition is found admissible, the Office sends a notification to the parties informing them that the opposition is deemed admissible and that the proceedings shall be deemed to commence two months after receipt of the notification (a two-month ‘cooling-off’ period is granted before the proceedings officially start with legal consequences as regards the opposition fees in particular).
According to the judgment of the Court of Justice of 18/10/2012 in case C-402/11 P, ‘REDTUBE’, the notification sent to the parties informing them that the opposition is admissible in accordance with Rule 18(1) CTMIR constitutes a dec ision that may be appealed together with the final decision on the case as stated in Article 58(2) CTMR. Consequently, the Office is bound by this decision.
The cooling-off period will be set to expire two months from the notification. The exact day of the expiry is indicated in the Office’s notification. This day will always be t wo months from the notification date, even if this is a day on which the Office is not open, e.g. a Saturday or Sunday.
The cooling-off period may last up to a t otal of 24 m onths if both parties submit requests for an extension before the period expires. The Office will grant an extension of 22 months, irrespective of what length of extension is requested.
It is not possible to circumvent the limitation of the cooling-off period to 24 months by requesting a suspension. Requests can be accepted at this stage but will only have effect once the cooling-off period has expired. When the parties invoke on-going negotiations, the proceedings will not be suspended during the cooling-off period, but a request for such a suspension may be made after the expiry of the cooling-off period.
The opponent will be given a time limit of two months after the expiry of the cooling-off period to submit facts, evidence or arguments irrespective of whether it has already submitted such facts, evidence or arguments together with the Notice of Opposition. Within the same time limit, the opponent shall also substantiate its earlier right(s).
The request to the opponent is a general invitation to complete the file within the meaning of Rule 19 CTMIR. The Office will not indicate the nature and type of the material necessary for a completion of the file (see expressly Rule 20(6), 2nd sentence CTMIR). Rather, it will be for the opponent to decide what it wishes to submit. In order to facilitate the task of opponents, the Office has prepared a list that enumerates the type of evidence generally required, depending on the nature of each right. This list is forwarded to the opponents as an annex to the notification of the admissibility of the
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opposition and i t may be referred to by opponents as a c heck-list in preparing their oppositions.
In practice, the time limit for submitting such additional material will be set at four months from the date of notification. Therefore, opponents should be aware that the time limit for submitting such additional material is not a t ime limit of two months beginning after the cooling-off period has expired, but a time limit of four months from the notification.
The applicant will be g iven an addi tional time limit of two months for replying to the opposition. Rather than setting a separate time limit of two months (two months for the cooling-off period, two months for completing the opposition, two months for replying), the time limit for replying to the opposition will be set at six months from the notification of admissibility (day of the start of the cooling-off period).
When the opponent completes its opposition any time after the notification and before the expiry of the four months available to it, the additional material will be forwarded to the applicant without any change in the time limit available for responding to the opposition. However, if the additional material arrives at the Office without sufficient time to forward it to the applicant within the time limit set for the opponent, the additional material will then be forwarded to the applicant together with the setting of a new time limit of two months for replying to the opposition. This separately set two- month time limit will run from the date of the receipt of the notification of the additional material in order to ensure that the applicant always has a full time limit of two months to prepare its reply.
3.2 Extension of the cooling-off period
Article 119(5), (6) CTMR Rules 18(1) and 96(1) CTMIR Communication 1/06 of the President of the Office
The cooling-off period may be extended up to a total of 24 months.
To extend the cooling-off period the following is necessary.
• A signed request from both parties. This may either take the form of two separate requests or one joint request. It is not necessary to state a reason for the extension.
• The request must be in the language of the proceedings. Alternatively, the request can be filed in one of the Office languages. However, a translation must be filed within one month of filing on the parties’ own motion. The Office does not send any letter requesting a translation of the request for extension.
• The request must be filed before the expiry of the cooling-off period. Any request filed after the expiry of the cooling-off period will have to be rejected. If one party files the request within, but the other after expiry of the cooling-off period, the extension is also to be refused.
The extension of the cooling-off period must be distinguished from requests for extension of a time limit or a suspension. In the event that the request for extension is inadmissible because it has been f iled late or because the cooling-off period had
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already been extended, it will be treated as a request for suspension provided that the conditions of such a request are fulfilled.
The extension is granted for a period of 24 months to be counted from the date of the start of the cooling-off period. This procedure avoids multiple extensions and at the same time leaves the parties maximum freedom to decide when they want to continue with the adversarial stage of the proceedings.
Any party can then bring the extended cooling-off period to an end (opt out), by expressly indicating this in writing,.
It is immaterial whether the other party agrees with this or not.
When one of the parties opts out before expiry of the extended cooling-off period, the Office will confirm this to both parties and set the cooling-off period to expire two weeks after said notification. The adversarial part of the proceedings will commence the day after. In the same notification new time limits are notified for the substantiation of the opposition and the reply of the applicant, which shall be two and four months from the end of the cooling-off period.
Opting out is irrevocable. Opting out during the last month before commencement of the proceedings will not be accepted.
4 Adversarial Stage
4.1 Completion of the opposition
Within two months after expiry of the cooling-off period, the opponent may file additional facts, evidence and arguments in support of its opposition.
Within the same time limit, the opponent must prove the existence and validity of its invoked earlier rights.
4.2 Substantiation
Article 41 CTMR Rules 19, 20(1) and 79 CTMIR
Substantiation is defined by Rule 19(2) CTMIR and r efers to the proof of existence, validity and scope of protection of the earlier mark(s) or right(s) as well as the proof of the entitlement to file the opposition.
After the parties have been notified of the admissibility of the opposition, the opponent has two months counted from the end of the cooling-off period in which it may not only complete its file, that is, present all the evidence in support of its opposition, but within which it also has to prove the existence and validity of the earlier rights invoked and its entitlement to file the opposition. When it is relevant for the opposition, the opponent shall also submit evidence of reputation, enhanced distinctiveness or any other aspect affecting the scope of protection of its earlier right(s) etc.
The evidence must be in the language of the proceedings or accompanied by a translation for substantiation purposes. The translation must be provided within the
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time limit for submitting the original. The Office will not take into account documents or parts thereof that have not been submitted or that have not been t ranslated into the language of the proceedings within the time limit set by the Office.
Unless submitted by fax transmission or electronic communication, any supporting document or other evidence must be presented in two copies, one being for transmission to the other party. Items submitted by post or personal delivery that are not presented in two copies (so that one can be transmitted to the other party) cannot be taken into account. Any document or item of evidence, other than that consisting of loose sheets, that has been submitted to the Office by post or personal delivery must be accompanied by a copy. If no c opy is provided, these documents or items of evidence will not be taken into account.
If the opponent has not proven the existence of at least one earlier right, the opposition will be refused as unfounded.
If the earlier right that has been f ound admissible is not substantiated at the substantiation stage and t here is/are another/other earlier right(s) that is/are substantiated, the absolute admissibility requirements for that/those earlier right(s) must be checked.
The opponent has to show its entitlement to file the opposition for the purpose of substantiation (see paragraph 4.2.3.7 below).
4.2.1 CTMs and CTM applications
If the earlier mark or application is a CTM, the opponent does not have to submit any documents as far as the existence and validity of the CTM(A) is concerned. The examination of the substantiation will be done ex officio with respect to the data contained in the database of the Office.
4.2.2 Converted CTM(A)s
Article 112(1) CTMR
This section will only deal with specific aspects of conversion in opposition proceedings. For further information on c onversion, see the Guidelines, Part E, Register Operations, Section 2, Conversion.
4.2.2.1 Opposition based on (to be) converted CTM(A)
National applications deriving from the conversion of an ea rlier CTM or CTM application are considered to come into existence as soon as a valid conversion request is filed. Such rights will be properly identified for admissibility purposes under Rule 18(1) CTMIR if the opponent indicates the number of the CTM (or CTM application) under conversion and t he countries for which it has requested the conversion.
When during opposition proceedings the CTM application (or CTM) on which the opposition is based ceases to exist (or the list of goods and services is restricted), and a request for conversion is filed, the proceedings can continue. This is because
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national trade mark registrations resulting from a conversion of a CTM application can constitute the basis of the opposition procedure originally made on t he basis of that CTM application (decision of 15/07/2008, R 1313/2006-G, ‘CARDIVA/CARDIMA’).
In such a c ase the Office will request the opponent in writing to inform the Office whether it maintains the opposition in view of the withdrawal, surrender or rejection of the earlier CTM application(s) or registration(s) and whether it intends to rely on t he national applications which result from the conversion of the earlier CTM. If the opponent does not inform the Office within the established time limit that it wishes to rely on the national applications, the opposition will be rejected as unfounded.
Evidence of the existence of the earlier national applications must be filed by the opponent at its earliest convenience.
4.2.3 Trade mark registrations or applications that are not CTMs
Rule 19 (2)(a)(i)(ii) CTMIR
To substantiate an earlier trade mark registration or application the opponent must provide the Office with evidence of its filing or registration. The Office accepts the following documents:
• certificates issued by the appropriate official body • extracts from official databases • extracts from official bulletins of the relevant national trade mark offices and
WIPO.
4.2.3.1 Certificates issued by the appropriate official body
Any registration certificate or the most recent renewal certificate showing the validity of the earlier mark beyond the time limit that was given to the opponent to substantiate its opposition, issued by a national office or by WIPO if it concerns an international registration, are valid evidence. For further requirements relating to renewal certificates, see below.
If the opposition is based on an application, the opponent must file evidence that the application was filed at the national office or that an international application was filed with WIPO. Once the earlier application has proceeded to registration, the opponent must file evidence of registration. If, after the adversarial part of the proceedings, the opponent provides evidence that the national application in fact proceeded to registration before the time limit set in Rule 19(1) CTMIR, the earlier mark will be rejected as unfounded under Rule 20(1) CTMIR. An application certificate is not sufficient to prove that the trade mark has been registered. In other words, it cannot serve to prove the existence of a trade mark registration.
Some certificates present only few differences between an appl ication form and t he registration certificate and have to be checked carefully. Equivalent documents are also accepted if they are issued by the administration with which the mark is registered (such as a certificate of registration).
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4.2.3.2 Extracts from official databases
Extracts from databases are accepted only if their origin is an official database, i.e. the official database of one of the national offices or WIPO and if they are equivalent to a certificate of registration or last renewal. The unaltered electronic image of an onl ine database extract reproduced on a s eparate sheet is also acceptable as long as it contains an official identification of the authority or database from which it originates. Extracts from commercial database are not accepted, even if they reproduce exactly the same information as the official extracts.
Officially accepted databases include:
• TMview: for CTMs and trade marks applied for or registered with the participating offices (as long as it contains the relevant data). For further information see: http://www.tmview.europa.eu/tmview/welcome.html.
• BENELUX-MERKEN (for Benelux trade marks), • DPINFO (for German trade marks),
• SITADEX (for Spanish trade marks),
• OPTICS and extracts from UKPO web site (for UK trade marks),
• S.A.R.A, UIBM on-line from the UIBM web site and Telemaco from the Italian Chambers of Commerce (for Italian marks).
As regards international registrations, the following databases are accepted:1
• ROMARIN (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information),
• TMview (as far as it contains all the relevant data).
Extracts from other national offices are also accepted as long as they come from an official database.
Extracts from commercial databases are not acceptable even if they reproduce all the necessary information. Examples of extracts that are not accepted are DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK, SAEGIS or COMPUMARK.
When the extract from an o fficial database does not contain all the required information, the opponent must supplement it with other documents from an official source showing the missing information.
1 The practice of the Office has been to accept printouts of the CTM-Online database for international registrations with EU designation This practice will not continue since this approach contravenes Rule 19(2)(a) CTMIR. An exception to this rule is not provided in Title XIII of the CTMR. This new practice came into force on 01/07/2012 and applies to all oppositions filed as from this date (on or after). The information contained in the standard letters for the notification of admissible oppositions was updated as from 01/07/2012. The old practice continues to apply to all oppositions with a filing date before 01/07/2012.
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Examples
Extracts from SITADEX (Official database from the Spanish Office) sometimes do not contain the list of goods and/or services, in such cases, the opponent must file an additional document (e.g., a publication in the official bulletin) showing the list of goods and services.
SITADEX extracts sometimes do not show the image on the same page when the mark is figurative. The image sometimes appears on a separate page. Consequently, as regards figurative Spanish trade marks, when opponents file an extract from SITADEX as evidence they must ensure that the representation of the mark appears on the same page and if not an additional document/page showing the image must be filed. This can be from SITADEX itself (which reproduced the image on a separate page which when printed or saved to .pdf, for example, includes an identification of the source) or from another official source (such as its publication in the official bulletin). Copying the image from SITADEX and including it electronically or otherwise in the Notice of Opposition form is not sufficient.
When English is the language of the proceedings, and as far as Portuguese trade marks are concerned, it should be noted that INPI also provides an English version of the Portuguese trade mark extract so, in principle, no translation would be necessary. However, as regards the list of goods and/or services, the extract itself only gives the class headings along with a warning indicating that this reference to the class heading does not necessarily reflect the goods and/or services protected under the trade mark. In this regard, the opponent must always file the original list in Portuguese (from an official source) and, where the list does not consist of a class heading, an a ccurate translation into English. The same also applies to official extracts of other national offices which provide the English version of their extracts, such as in Slovenia.
4.2.3.3 Extracts from official bulletins of the relevant national trade mark offices and WIPO
In all Member States the trade mark application and/or registration is published in an official bulletin. Copies of the publication are accepted as long as the document (or the accompanying observations of the opponent) indicates the origin of the publication. If this indication is missing, the evidence is insufficient to prove the validity of the mark.
Furthermore, a copy of the publication of the application is not sufficient to prove that the trade mark has been registered. In other words, it cannot serve to prove the existence of a trade mark registration.
The Office accepts the first WIPO publication of the international registration as sufficient evidence of registration although once registered, it can still be r efused by national offices during the following 12 to 18 months. Only if the applicant contests the protection of the mark in question in a given territory or for certain goods and services will the opponent have to provide evidence that the mark was not refused.
4.2.3.4 Duration of a trade mark registration
In general, the registration of a mark lasts 10 years. After this period has elapsed, the registration of the mark can be renewed every 10 years. In most of the countries, the starting point of the 10 years is the filing date, but there are exceptions.
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Countries Term of protection Starting point
Austria 10 years Registration date
Benelux (Belgium, Luxembourg, The Netherlands)
10 years Filing date
Bulgaria 10 years Filing date
Croatia 10 years Filing date
Cyprus 7 years first term/14 years renewal Filing date = registration date
Czech Republic 10 years Filing date
Denmark 10 years Registration date
Estonia 10 years Registration date
France 10 years Filing date
Finland 10 years Registration date
Germany 10 years Filing date
Greece 10 years Filing date
Hungary 10 years Filing date
Italy 10 years Filing date
Ireland 10 years for TM registered since 01/07/1996(7/14 years renewal before that) Registration date = filing date
Latvia 10 years Filing date
Lithuania 10 years Filing date
Malta 10 years Registration date = filing date
Portugal 10 years Registration date
Poland 10 years Filing date = registration date
Romania 10 years Filing date
Sweden 10 years Registration date
Slovakia 10 years Filing date
Slovenia 10 years Filing date
Spain
10 years for trade marks applied for since 12/05/89 (20 years for trade marks applied for before that, counting from the date of registration, and with a renewal from the filing date)
Filing date
United Kingdom
10 years since 31/10/94 (trade marks applied for prior to that were, upon the completion of the registration formalities, in force for 7 years from the date of the application. Trade marks with renewal date prior to 31/10/1994 renewed for a period of 14 years)
Filing date = registration date
International registration
10 years (even if 20 years for Madrid Agreement registrations, fees must be paid in two instalments of 10 years equivalent to a renewal fee)
International registration date
According to Rule 19(2)(a)(ii) CTMIR, if the trade mark is registered, the opponent must provide evidence of registration. If the evidence submitted does not prove that an application is registered, and later, one of the parties proves that upon expiry of the time limit set under Rule 19(1) CTMIR the opponent failed to prove this, Rule 19(2)(a)(ii) CTMIR will apply, and the earlier mark will be rejected as unfounded.
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4.2.3.5 Verification of evidence
The number in square brackets is the international code number used to identify the information on many, but not all, registration certificates. The opponent is not obliged to submit an explanation of the codes, either for the INID or for the national codes.
The following things should be checked:
• the issuing authority; • the filing [210] and/or registration numbers [111] (in certain countries these are,
or were, different);
• the territorial extent for international registrations (i.e. in which countries the mark is protected and for what goods and services);
• the filing [220], priority [300] and registration dates [151] (in certain countries, e.g. France, the filing and registration dates found on the certificate are the same);
• a representation of the sign as filed or registered [531, 540, 541, 546, 554, 556, 557, 571, 591] and as claimed in the Notice of Opposition. It must be verified that the claim submitted by the opponent within the three-month opposition period is reflected in the evidence submitted. Therefore, if for example the earlier mark is in colour and t his was correctly identified during the three-month opposition period, there are two acceptable scenarios. The first is that an o fficial colour representation of the mark should be submitted (registration certificate, renewal certificate, official extract, etc.) that contains a reproduction of the mark in colour. The second is that an official document is presented with the representation of the mark in black and white, together with a colour claim and a colour description, both of which are translated into the language of the proceedings. However, this second scenario is only acceptable if the opponent has also submitted a colour representation of the mark from an unofficial origin (separate sheet of paper, within the observations, attached to the Notice of Opposition, etc.). Where the national trade mark office does not provide a detailed colour claim identifying the colours, and instead it says ‘Colours claimed’ (or similar wording), this is acceptable as long as this entry is translated into the language of the proceedings and as long as it is accompanied by a colour representation of the mark (as seen in scenario 2).
In other words, if for example the opponent has correctly claimed during the three-month opposition period that its figurative mark was in colour and has only sent a black and white representation to the Office with no further evidence of a colour claim, the opposition based on that earlier right will be rejected as not substantiated in accordance with Rule 20(1) CTMIR.
The above applies regardless of whether the opposition is based on one or more earlier marks. In addition, where the national office does not provide any indication of a colour claim on its certificate or official extract, further documents must be submitted to prove this claim (e.g. a copy of the publication of the mark in the bulletin). Furthermore, in case the national office (e.g. the Portuguese Trade Mark Office) publishes the trade mark representation in colour, but the information contained in the certificate does not show the colour claim in writing, the opponent must submit a colour version of the certificate or extract within the time limit specified in Rule 19(1) CTMIR.
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• the goods and services covered [511];
• the expiry date of the registration (if contained);
• the owner [731, 732]; • other inscriptions affecting the legal or procedural status or the scope of
protection of the mark (e.g. disclaimers [526], restrictions, renewals, transfers, pending actions, the fact that the mark was registered due to acquired distinctiveness through use etc.).
4.2.3.6 Renewal certificates
Rule 19(2)(a)(ii) CTMIR
If the opponent has submitted a certificate of registration but the registration is due to expire before the expiry of the time limit for substantiation, it must file a r enewal certificate in order to prove that the term of protection of the trade mark extends beyond the time limit or an extension thereof given to it to substantiate its opposition. What counts is the date on which the registration would expire, and not the possibility to renew the mark within the six months grace period under the Paris Convention.
Only if the renewal certificate contains all the necessary data that determines the scope of the protection of the earlier mark, will it suffice to file the renewal certificate without a copy of the registration certificate. For example, German renewals and sometimes Spanish renewals do not contain all the necessary data and therefore alone are not sufficient to substantiate the earlier mark.
However, if the opponent provides an equivalent document emanating from the administration by which the trade mark was registered, it does not need to provide a renewal certificate.
If there is no proper evidence of renewal, the earlier registration is not substantiated and will not be taken into account.
4.2.3.7 Entitlement to file the opposition
Article 41 CTMR Rules 19(2) and 15(2)(h)(iii) CTMIR
Depending on the ground invoked the following are entitled to file an opposition:
1. proprietors and authorised licensees for Article 8(1) and (5); 2. proprietors (only) for trade marks referred to in Article 8(3); 3. proprietors of earlier rights referred to in Article 8(4) and per sons authorised
under the relevant applicable national law.
Example
If the opponent is a c orporation, the name of the corporation must be c arefully compared with the name of the corporation that owns the prior trade mark. For instance
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with British companies, John Smith Ltd, John Smith PLC and John Smith (UK) Ltd are different legal entities.
If the opposition is filed with B as opponent and a copy of the registration certificate shows A as owner of the earlier mark, the opposition will be r ejected as not substantiated, unless the opponent has provided evidence of the transfer and, if already available, the registration of the transfer in the relevant register or the opponent has shown that A and B are the same legal entity which only has changed its denomination.
If the opponent is a licensee of the trade mark proprietor, the extract of the registration will normally show when a license has been registered. However, some Member States do not record licenses in their registers. In all cases, it is up t o the opponent to demonstrate that it is a licensee and also that it is authorised by the trade mark owner to file an opposition. There are no restrictions on what evidence can be filed to support such an aut horisation: for example, any express authorisation on behalf of the trade mark proprietor such as the license contract is deemed sufficient, so long as it contains indications concerning the authorisation or entitlement to file the opposition.
The same applies to persons authorised under the relevant applicable national law for the ground of Article 8(4) CTMR. The opponent has the burden to show its entitlement to file the opposition under the applicable national law.
According to Article 22 CTMR and Rules 33, 34 and 35 C TMIR, the Office registers and publishes license agreements in respect of Community trade marks. If the earlier mark basis of the opposition subject to the license agreement is a CTM, the opponent does not have to submit any evidence of the license contract as long as the licence has been registered and published at the Office according to Article 22 CTMR. On the other hand, the opponent will still have to submit evidence that proves that this license agreement entitles it to act in defence of the mark if the license is registered and published at the Office, if this evidence was not attached to the original request filed according to Article 22(5) CTMR. For more information of licenses, see the Guidelines, Part E, Register Operations, Section 3, Chapter 2, Licences. It is not sufficient to prove the registration of the license agreement – the opponent’s entitlement to defend the CTM must also be submitted in writing.
4.2.4 Substantiation of well-known marks, claims of reputation, trade marks filed by an agent, earlier signs used in the course of trade
4.2.4.1 Well-known marks
Article 8(2) CTMR Rule 19(2)(b) CTMIR
An earlier well known mark is a trade mark that is well known in a Member State, in the sense in which the words well-known are used in Article 6 bis of the Paris Convention. Such a mark may be unregistered, but it may also be registered.
If the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will in general be taken as a claim that its registered mark has acquired a high degree of distinctiveness by use.
Procedural Matters
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It is very common for opponents to confuse ‘well-known’ marks with ‘marks with a reputation’ under Article 8(5) CTMR. Depending on the ground of opposition that is indicated, the case will have to be c onsidered under Article 8(2) and/or Article 8(5) CTMR. See also the Guidelines, Part C, Opposition, Section 5, Trade marks with reputation.
The opponent needs to show that it is the owner of an earlier trade mark that has become well-known in the relevant territory, for the goods and services on which the opposition is based. In order to substantiate its mark it will have to submit evidence of the mark being well-known.
4.2.4.2 Marks with a reputation
Article 8(5) CTMR Rule 19(2)(c) CTMIR
An opposition under Article 8(5) CTMR is based on an ear lier trade mark that has a reputation. See also the Guidelines, Part C, Opposition, Section 5, Trade marks with reputation.
The earlier trade mark in these cases is a r egistered trade mark. The opponent therefore has to submit registration certificates, etc., as set out above.
In order to make its case under Article 8(5) CTMR, the opponent has to submit evidence of reputation. In addition, the opponent has to allege and dem onstrate that the use of the mark which is the subject-matter of the contested CTM application would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark or to indicate that this is probable in the ordinary course of events.
4.2.4.3 Non-registered trade mark or another sign used in the course of trade
Article 8(4) CTMR Rule 19(2)(d) CTMIR
For these rights the Office applies the protection provided by the relevant national law.
Not all Article 8(4) CTMR rights are unregistered, e.g. in some countries company and commercial names are registered. If it is a matter of a registered right, then a copy of the registration and r enewal certificates, etc., is required as set out above for trade mark registrations. In the case of unregistered marks or signs the opponent must provide evidence of the acquisition of the earlier right. It must further show that it may prohibit the use of a subsequent trade mark.
The opponent must file evidence that it has used its sign (earlier right, either registered or not) of more than local significance. Furthermore, it also needs to indicate the provisions of the national law on which it bases its case and make out its case under this law. See also the Guidelines, Part C, Opposition, Section 4, Rights under Article 8(4) CTMR.
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4.2.4.4 Mark filed by an agent or representative
Article 8(3) CTMR Rule 19(2)(e) CTMIR
This concerns the case where someone (an agent or representative) of the proprietor of a trade mark applies for its registration at the Office. The proprietor can oppose the application of the disloyal applicant. See also the Guidelines, Part C, Opposition, Section 3, Trade mark filed by an agent.
The opponent has to prove its ownership of the trade mark and the time of acquisition of that mark. As the trade mark can be ei ther a r egistered trade mark or an unregistered trade mark, the opponent will have to submit evidence of registration anywhere in the world or evidence of acquisition of rights through use. The opponent also has to submit evidence of an agent-representative relationship.
4.2.5 Sanction
Rule 20(1) CTMIR
To the extent that the invoked earlier rights have not been substantiated, the opposition will be refused as unfounded. When the evidence check reveals that none of the earlier rights on which the opposition is based has been substantiated, i.e. the opponent has not provided sufficient evidence to prove that it owns a valid earlier right, the whole opposition must be r ejected immediately after expiry of the two-month substantiation time limit, without waiting for the reply of the applicant.
In no case is the Office required to inform the parties which facts or evidence could be or have not been s ubmitted. This will be det ailed in the final decision which can be appealed. 4.3 Translation / c hanges of la nguage during the opposition
proceedings
Most submissions of the parties in opposition proceedings have to be in the language of the proceedings in order to be taken into account. For different submissions there are different rules to be applied.
The general rule is Rule 96 CTMIR. Rule 96(1) CTMIR applies to written statements/submissions filed within the opposition procedure. Rule 96(2) CTMIR applies to evidence attached to a written submission filed within the opposition procedure. However, Rule 96 CTMIR does not apply if there is a lex specialis. Rule 19(3) CTMIR for facts, evidence and ar guments filed by the opponent and Rule 22(6) CTMIR for evidence of use (always filed by the opponent) are examples of such a lex specialis.
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4.3.1 Translations of evidence of trade mark registrations and of facts, evidence and arguments filed by the opponent to complete its file
Rules 19(3)(4) and 20(1) CTMIR
The Office can only consider evidence that is submitted in the language of the opposition proceedings within the time limit specified for submitting the original document. Rule 19(3) CTMIR is a lex specialis to any other rule on the language regime.
Therefore, both the evidence submitted by the opponent for the first time at the end of the time limit for substantiation of the opposition, as well as any other previously submitted document or certificate, must be either in the language of the proceedings, or be accompanied by a translation. Only what is filed and translated within this time limit is taken into account. If no translation or an i nsufficient translation has been submitted, the opposition will be partially or entirely rejected as unfounded.
Rule 98(1) CTMIR
Rule 98(1) CTMIR requires that the translation reproduces the structure and contents of the original document.
Therefore, the principle is that the entire document must be translated and follow the structure of the original document.
The Office does not consider that information already given in the language of the proceedings in the Notice of Opposition, or in documents attached thereto or submitted later (e.g. explanation of grounds, lists of earlier marks etc.) amounts to a valid translation of a r egistration document, such as a registration certificate, even where such indications have been accepted for admissibility purposes. The translation has to be on a s tand-alone basis and cannot be assembled from fragments taken from other documents.
Extracts from commercial databases cannot be considered valid translations of an official document, unless they reproduce the structure and c ontents of the original document.
The Office accepts that no translation of the information headers in the extracts/certificates (such as, ‘filing date’ ‘colour claim’, etc.) is needed, provided that they are also identified using standard INID codes or national codes.
The list of INID codes and their explanations are attached as Appendix 1 to Standard ST.60- Recommendation Concerning Bibliographic Data Relating to Marks, available on WIPO’s website.
Irrelevant administrative indications with no bearing on the case may be omitted from the translation.
Where the opposition is based on only a part of the goods and services covered by the earlier right, it is sufficient to provide a translation of only the goods and services on which the opposition is based.
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The only exception to the above principle that the entire document must be translated and follow the structure of the original document can be made when the entire original document is in the language of the proceedings except for the list of goods and services. In this case, it is acceptable if only the goods and services on which the opposition is based have been translated separately in the Notice of Opposition, in documents attached thereto or submitted later within the time limit to substantiate the opposition. The same applies to extracts/certificates which make use of INID or national codes, where the only information which still needs to be t ranslated into the language of the proceedings is the list of goods and services.
When the national offices provide an English translation, all elements must be translated, for example entries concerning the type of mark, or the mark status (registered, opposed etc.) because these have a bearing on the case (see judgment of 29/09/2011, T-479/08, ‘adidas v. OHIM – Patrick Holding’).
Rule 98(1) CTMIR
The Office accepts simple translations, drawn up by anybody. The Office normally does not make use of its faculty to require the translation to be certified by a sworn or official translator. Where the representative adds a dec laration that the translation is true to the original, the Office will not question this. The Office even accepts hand-written text on the copies of the original certificates giving the meaning of the various entries in the language of the proceedings, provided of course that they are complete and legible.
The Office does not oblige the opponent to provide translations of the evidence dependant on t he reaction of the applicant because Rule 19(3) CTMIR does not provide for any exception to the principle that the evidence needs to be translated.
4.3.1.1 Sanction
Rules 19(3), 19(4) and 20(1) CTMIR
If the submissions are not in the language of the proceedings, they must be translated within the time limit specified for submitting the original document.
If this is not done, the legal consequence is that documents which have not been translated in this time limit are not taken into account. However, if documents proving the existence and validity of the earlier right have not been translated, the opposition must be refused as unfounded straight away.
4.3.2 Translation of further observations
Rules 20(2), (4) and 96(1) CTMIR
There is no s pecial rule for translations of the first reply of the applicant or other observations drawn up by the applicant or opponent at a later stage in the proceedings. Consequently for these submissions Rule 96(1) CTMIR applies. This means that the first reply of the applicant or the reply by the opponent to the applicant’s observations may be in any language of the Office.
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It is to be noted that if the first reply of the applicant or the counter reply of the opponent are not in the language of proceedings but in one o f the languages of the Office, the submission will not be t aken into account unless the applicant or the opponent submit a translation of these documents in the language of the proceedings within the time limit of one month from the date of receipt of the original by the Office. The Office will not request the parties to send a translation; the parties have to send the translation on their own initiative.
Example 1
The language of opposition is English and t he applicant has until 26/06/2002 to file observations in reply to the Notice of Opposition. If on 20/ 06/2002 it files its observations in reply to the opposition in German, it must file its translation by 20/07/2002. If it then files the translation on or before 20/07/2002, both the original submission and t he translation must be t aken into account, notwithstanding that the original time limit for filing observations expired on 26/06/2002.
Example 2
The language of opposition is English and t he applicant has until 26/06/2002 to file observations in reply to the Notice of Opposition. If on 18/ 05/2002 it files its observations in reply to the opposition in German, it must file its translation by 18/06/2002. However, as its time limit only finishes on 26/06/2002, if it has not filed a translation by 18/06/2002, it can still validly file documents until 26/06/2002. If it then files the translations before the end of the time limit the Office considers the translation as valid observations filed in the language of the proceedings within the set time limit.
Rule 98(2) CTMIR
If no translation has been submitted, the observations are deemed not to have been received by the Office and they will not be taken into account.
4.3.3 Translation of documents other than observations
Rule 96(2) CTMIR
All evidence, with the exception of the evidence that the opponent must provide within the time limit given to substantiate its opposition, can be filed in any official language of the Community, as Rule 96(2) CTMIR applies. This evidence concerns all documents other than observations, filed by the parties after the time limit for the opponent to complete its file.
Examples of this type of evidence are catalogues, magazine articles, decision of national courts or signed agreements that are submitted by the applicant together with its observations in reply to the opposition.
For this evidence, a translation is needed only if the Office requests it. Therefore, the parties are not under an automatic obligation to furnish a translation.
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Rule 98(2) CTMIR
The Office exercises its discretion as follows (this practice corresponds mutatis mutandis to that concerning evidence of use).
In principle the Office does not ex officio require a translation. However, it is vital that the party to whom the documents are addressed should be able to understand the meaning of their substantive content. If this is doubtful or contested by the party- addressee, the Office requires a translation within a specified time limit.
Rule 98(2) will operate only if the Office does so, with the effect that translations that are filed late as well as the original to be translated must be disregarded.
Together with the invitation to furnish a translation, the Office will draw the attention of the party concerned to the fact that it is up to the party to evaluate whether a complete translation of all the evidence submitted may be necessary. However, the documents in question will only be taken into account in so far as a translation is submitted or in so far as the documents are self-explanatory, regardless of their word components.
Example
In the case of a national court decision it may be sufficient to translate those parts only that are relevant for the opposition proceedings.
4.3.4 Proof of use
Rule 22(6) CTMIR
For proof of use, Rule 22(6) CTMIR is lex specialis as regards translations. If the evidence is submitted in a language of the EU which is not the language of the proceedings, the Office may require the opponent to submit a translation of the evidence into the language of the proceedings within a specified time limit.
Therefore, it is at the discretion of the Office whether or not to request a translation. In exercising this discretion, the Office balances the interests of both parties.
It is vital that the applicant should be able to understand the meaning of the substantive content of the evidence submitted. If this is doubtful or contested by the applicant, the Office may require a translation within a s pecified time limit. However, a rejection of such a request is feasible where it appears that the applicant’s request, in view of the self-explanatory character of the submitted evidence, is exaggerated or even unjust.
For further information on proof of use, see the Guidelines, Part C, Opposition, Section 6, Proof of use.
Rule 22(2) CTMIR
Rule 22(2) CTMIR has the effect that the opposition must be rejected if (1) no proof of use is filed within the time limit given, or (2) proof of use was filed within the time limit
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given but the Office requested it to be translated and no translation was submitted within the time limit set.
If the opponent provides evidence of use in a language other than the language of the proceedings within the time limit established and then on its own motion files a translation of this evidence into the language of the proceedings after the expiry of the time limit but before the time limit set to the applicant to file observations in reply has expired, this evidence will be taken into account. This applies even if the Office has not required the opponent to file a translation and even if the applicant has not contested the evidence yet.
4.3.5 Change of language during opposition proceedings
Article 119(7) CTMR Rule 16(2) CTMIR
According to Article 119(7) CTMR, the parties to opposition proceedings may agree to change the procedural language and choose any official language of the European Union for that purpose.
Rule 16(2) CTMIR sets forth the conditions under which such a c hange of language may occur. It requires that the opposition be filed in a l anguage of the Office at the outset. It states that the parties may agree to change the procedural language and are required to inform the Office accordingly prior to the expiry of the cooling-off period. A request to change the language after the expiry of the cooling-off period will not be accepted by the Office.
When the opponent and the applicant agree to change the language of the proceedings before the start of the adversarial part of the proceedings, Rule 16(2) CTMIR requires the opponent to ‘file a t ranslation of the Notice of Opposition in that language’. It has to do so within one month of the expiry of the cooling-off period.
Where the translation is not filed or filed late, the language of the proceedings shall remain unchanged.
4.4 Documents not readable / reference to other files
4.4.1 Documents not readable
Rule 80(2) CTMIR
Where a communication received by fax is incomplete or illegible, or where the Office has reasonable doubts as to the accuracy of the transmission, the Office will inform the sender accordingly and invite it, within a time limit to be specified by the Office, to retransmit the original by telecopy or to submit the original in accordance with Rule 79(a) CTMIR.
When this request is complied with within the time limit specified, the date of the receipt of the retransmission shall be deem ed to be t he date of the receipt of the original communication.
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4.4.2 No return of original documents
Original documents become part of the file and therefore cannot be returned to the person who submitted them.
However, the party always has the possibility of obtaining a certified or uncertified copy of the original documents, subject to the payment of a fee. For further details, see information displayed on the Office’s webpage under: Inspection of files and copies.
4.4.3 Confidential information
Rule 88(c) CTMIR
In some cases one of the parties requests the Office to keep certain documents confidential even from the other party in the proceedings. Although the Office can keep documents confidential vis-à-vis third parties (inspection of files), it can under no circumstances keep documents confidential with regard to the other party in inter partes proceedings.
Each party to the proceedings must always have a right to defend itself. That means that it should have full access to all material filed by the other party.
It follows that all material filed by a party should be disclosed to the other party of the proceedings. The Office has an obligation to communicate all material received to the other party. Therefore, if one of the parties requests certain documents be kept confidential without mentioning whether this should be vis-à-vis third parties, the Office will take it for granted that this is the case and will forward them to the other party and mark them as confidential in the electronic file.
If in the course of opposition proceedings the Office receives documents with a request that they be k ept confidential inter partes, the sender should be i nformed that the documents cannot be kept confidential with respect to the other party to the proceedings.
To this end, a letter has to be s ent clearly explaining that the sender may choose between disclosure of the documents or withdrawal of the documents. It is up to the party to decide which of these possibilities is appropriate for its case.
If it confirms confidentiality, the documents will not be sent to the other party and will not be taken into account. They will be marked as confidential in the electronic file.
If it wants the documents to be taken into account but not available for third parties, the documents can be forwarded to the other party, but must be marked confidential in the electronic file.
If it does not reply, the documents will not be sent to the other party and will not be taken into account. They will be marked as confidential in the electronic file.
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4.4.4 References made to documents or items of evidence in other proceedings
Rules 79(a), 91 CTMIR Decision EX-13-4 of the President of the Office
The Office may receive observations from the opponent or applicant in which they refer to documents or evidence filed in other proceedings, for instance to evidence of use that has already been filed in a different opposition.
Such requests are accepted at any stage of the proceedings when the opponent/applicant clearly identifies the documents that it refers to. The party must indicate the following: (1) the number of the opposition it refers to; (2) the title of the document it refers to; (3) the amount of pages of this document; and (4) the date this document was sent to the Office; e.g. ‘the statutory declaration that was submitted to the Office on dd/mm/yy in opposition proceedings B XXX XXX, together with exhibits 1 to 8, consisting of XX pages’.
Should the documents referred to by the opponent or the applicant consist originally of evidence other than loose sheets, in accordance with Rule 79a CTMIR the party concerned shall submit by mail a second copy for transmission to the other party within the original time limit. If no copy is provided, these items of evidence will not be taken into account.
In addition, it should be noted that the documents or evidence referred to might need translation into the language of the opposition proceedings. Rule 19(4), Rule 22(6) and Rule 96 CTMIR apply accordingly.
A general reference to documents or evidence submitted in other proceedings will not be accepted. In such a situation the party making general reference to other documents or evidence may be invited to be s ufficiently specific within a g iven time limit. The party should be informed that the time limit granted by the Office is only meant for the clear and precise indication of the documents or evidence referred to and that under no c ircumstances will an extension of the original time limit be granted. Moreover, the party should also be informed that if it does not specify which documents are being referred to within the time limit set, those other documents will not be considered.
The parties should be a ware that material submitted in other proceedings may have been destroyed five years after their receipt in accordance with Rule 91 CTMIR and Decision No EX-13-4 of the President of the Office of 26 November 2013 concerning the keeping of files. In this case, the reference to documents or evidence filed in other opposition proceedings has no effect.
4.5 Further exchanges
Rules 20(2), (4), (6), 22(5), 96(2) and 98(2) CTMIR
The Office invites the applicant to file observations in the time limit set by it in accordance with Rule 20(2) CTMIR.
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In appropriate cases, the Office may invite the parties to limit their observations to particular issues. In that case, the party is allowed to raise the other issues at a later stage of the proceedings. For example, the applicant can request proof of use of the earlier right with or without submitting observations at the same time on the grounds on which the opposition is based. In that case, the observations may be filed together with the observations in reply to the proof of use.
Once the applicant has submitted its observations in reply, the opponent is granted a final time limit to file its counter reply if the Office considers it necessary. After this the adversarial part of the proceedings is usually closed and t he opposition is ready for decision.
The Office may, however, grant the possibility of another exchange of observations. This can be when the case deals with complex issues or when the opponent raises a new point that is admitted to the proceedings. In this case the applicant must be given a possibility of replying. It is at the discretion of the Office to decide if another round for observations should be granted to the opponent.
Therefore, a further exchange of observations may only be g ranted where the opponent’s final observations are purely in reply to the applicant’s observations and are supported by evidence which is not meant to remedy flaws such as those related to substantiation, e.g. if the applicant raises new issues such as the coexistence of the marks, the invalidity of the earlier right or an agreement between parties. If the opponent files evidence to the contrary, the applicant may be granted a second chance to file further observations. Nevertheless, this is not automatic as it depends on t he circumstances of the case.
4.5.1 Additional evidence for proof of use
The Office may take into account additional evidence for proof of use that is submitted after the expiry of the corresponding time limit under certain circumstances, namely where the opponent submitted relevant evidence within the time limit and the additional evidence is only supplementary (judgment of 18/07/2013, C-621/11 P, ‘Fishbone’, paras 28 and 30). Additional evidence will be e xamined on a c ase-by-case basis. If necessary, a second round of observations will be granted. For further details, see the Guidelines, Part C, Opposition, Section 6, Proof of use.
4.6 Observations by third parties
Article 40 CTMR Communication 2/09 of the President of the Office
Third parties can make observations explaining why the CTM application should not be registered based on one of the absolute grounds of Article 7 CTMR. For further details, see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal and Community collective Marks and the Guidelines, Part B, Examination, Section 1, Proceedings.
Anybody can file third party observations; even the opponent is entitled to do s o. However, it should do so in a m anner that leaves no doub t that they are third party observations. According to the abovementioned Communication of the President of the Office, the observations must be submitted separately. However, in practice (see
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decision of 30/11/2004, R 735/2000-2, ‘SERIE A’), the ‘separate submission’ requirement is deemed to be satisfied when the observations are clearly separable from the grounds and arguments supporting the opposition, even if they are included in the same document. As long as the opponent expressly mentions that it wishes to make observations under Article 40 CTMR, these will be dealt with, even if they are not submitted separately. However, if in its submission the opponent argues that the CTM application should have been refused under Article 7 CTMR, without any reference to the contents of Article 40 CTMR, this submission will not be regarded as third party observations under Article 40 CTMR.
When an opponent makes third party observations, the Office will consider if the observations raise serious doubts as to the registrability of the CTM application, or if they will only be sent to the applicant for information purposes.
If the observations raise serious doubts, the Office must suspend the opposition proceedings until a de cision on t he observations is taken. In cases where the observations do not raise serious doubts (i.e. when the observations have only been sent to the applicant for information purposes), or do not affect the contested goods or services, the opposition proceedings will not be s uspended. If the opposition proceedings need to be suspended, the suspension will take effect from the date when the Office issues the objection under Article 7, and proceedings will remain suspended until a final decision has been taken. For cases where the third party observations are received within the three-month opposition period, the Office will deal with the admissibility of the opposition, and once the decision on admissibility has been notified, the opposition proceedings will be suspended.
For all oppositions closed due to third party observations, the opposition fee will never be refunded, as this refund is not foreseen in the regulations (see Rule 18(5) CTMIR).
5 Termination of Proceedings
5.1 Friendly settlement
Rule 18(2) CTMIR
The parties are free to decide on the measure that brings the opposition proceedings to conclusion. While they can decide on the withdrawal of the opposition, they can also simply ask the Office to close the case without giving specific reasons. It suffices to communicate the written signed agreement of the parties, which does not have to include a statement of grounds. The Office then takes the steps needed to close the proceedings on the basis of this agreement.
Regarding the refund of fees and decision on costs in case of friendly settlement, please see the relevant paragraph below.
Article 42(4) CTMR
The Office may, if it thinks fit, invite the parties to make a friendly settlement. The Office, as well as the parties, may therefore initiate a settlement procedure.
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To this end i t may issue proposals for friendly settlement. As, in principle, the Office cannot (and does not wish to) replace the parties, it will only take action in very rare cases where a settlement between the parties appears desirable and if there are good reasons for considering that the proceedings can be ended by a settlement.
If expressly requested by the parties, the Office can also offer assistance with their negotiations, for instance by acting as an intermediary or by providing them with any material resources that they need. Any costs incurred are borne by the parties. Friendly settlement may be preceded by a request for suspension.
5.2 Restrictions and withdrawals
Articles 58(1), 64(3) and Article 85 CTMR Rules 18(2), (3), (4), 95(a) and 96 (1) CTMIR
5.2.1 Restrictions and withdrawals of CTM applications
Article 43 CTMR
It is possible for the applicant to restrict the goods and services of its application or to withdraw the entire application at any stage of the opposition proceedings.
Withdrawals and restrictions must be explicit and unconditional. Silence on the part of the CTM applicant during the proceedings will never be c onsidered as a t acit withdrawal.
Conditional or ambiguous withdrawals or restrictions will not be accepted and shall be forwarded to the other party merely for information purposes, informing the parties that it will not be taken into account.
The Office does not accept restrictions that are conditional. For example, the applicant argues in its observations in reply to the opposition that the signs are dissimilar. However, the applicant adds that if the examiner find them similar, it will restrict the list of goods and s ervices of the CTM application. In this case the restriction is not acceptable, and t he applicant must be i nformed that the restriction must be express and unconditional.
For further information on restrictions of a CTM application, see the Guidelines, Part B, Examination, Section 3, Classification and Part B, Examination, Section 1, Proceedings, paragraph 5.2.
If the restriction is not acceptable the applicant must be notified.
If a r estriction is partly acceptable and partly unacceptable (e.g. it constitutes an extension), the Office accepts the restriction for the acceptable part. However, before proceeding with the restriction, the applicant is informed of the part that cannot be accepted and is given two months to react. The opponent must be sent a copy of the restriction and the reply of the Office to the applicant. If within the two months the applicant reacts with a c orrected version that is acceptable, the restriction can be processed taking into account the date of filing of the first request for restriction. On the
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other hand, if the applicant does not react, the restriction is only processed insofar as it is acceptable.
If the opponent withdraws its opposition after an unacceptable restriction has been filed, the withdrawal will not be taken into account if it clearly refers to the unacceptable restriction. Once the restriction has become acceptable, the opponent will be informed of the new list of goods and services and it will be granted a new time limit to confirm the withdrawal of the opposition.
If the restriction is acceptable, a confirmation is sent to the applicant.
Depending on the moment in the proceedings, the restriction or withdrawal has different consequences, described below.
5.2.1.1 Withdrawal or restriction before admissibility check is made
Restriction covers the whole extent of opposition/withdrawal
When the CTM application is withdrawn or restricted to non-contested goods and services before notification of admissibility of the opposition, the opposition proceedings are closed and the opposition fee is refunded. In other words dealing with the withdrawal or restriction in these cases has priority over the admissibility.
No decision on costs will be taken.
Restriction does not (seem to) cover the whole extent of the opposition
In the case of a restriction that may still include contested goods and services, an admissibility check is done.
The restriction is notified to the opponent together with the notification of the admissibility or with the communication informing the opponent there is an absolute or relative admissibility deficiency.
If the opposition is withdrawn, the opposition fee is refunded. This is the case even if irremediable deficiencies exist.
No decision on costs will be taken.
5.2.1.2 Restrictions and withdrawals of CTM applications before the end of the cooling-off period
Restriction covers the whole extent of the opposition/withdrawal
If it is absolutely clear that the restriction covers the whole extent of the opposition or when the CTM application is withdrawn, this is notified to the parties and t he proceedings are closed. The opponent is refunded the opposition fee.
No decision on costs will be taken.
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Restriction does not (seem to) cover the whole extent of opposition/withdrawal
If it is not completely clear that the restriction covers the whole extent of the opposition or the restriction does not cover the whole extent of the opposition, the opponent is invited to inform the Office whether it wishes to maintain or withdraw its opposition. The parties are notified of its reply. If the opposition is withdrawn, the opposition fee is refunded to the opponent.
No decision on costs will be taken.
The relevant time to assess whether the opposition proceeding is closed during the cooling-off period is the date a request for restriction was filed before the Office.
5.2.1.3 Restrictions and withdrawals of CTM applications after the end of the cooling- off period
Restriction covers the whole extent of the opposition/withdrawal
If it is absolutely clear that the restriction covers the whole extent of the opposition, the case is closed by the Office and t he parties will be not ified. At the same time the restriction is forwarded to the opponent.
Unless the parties submit an ag reement on c osts, the Office will take a decision on costs. For information on the apportionment of costs, see paragraph 5.5.3 of these Guidelines. Restriction does not (seem to) cover the whole extent of opposition/withdrawal
If it is not completely clear that the restriction covers the whole extent of the opposition or the restriction does not cover the whole extent of the opposition, the opponent is invited to inform the Office whether it wishes to maintain or withdraw its opposition. The parties are notified of its reply. If the opposition is withdrawn, the opposition proceedings are closed.
Unless the parties submit an ag reement on c osts, the Office will take a decision on costs. For information on the apportionment of costs, see paragraph 5.5.3 of these Guidelines.
5.2.1.4 Restrictions and withdrawals of CTM applications after a decision has been taken
Following decision of the Grand Board of Appeal of 27/09/2006 in case R 0331/2006-G, ‘Optima’, the Office accepts withdrawals and r estrictions received during the appeal period after a decision on the opposition has been rendered, even if no appeal has been filed. However, the withdrawal or restriction will not have any effect on the decision which remains valid.
This means that the Office will take note of the withdrawal and c lose the case. Confirmation of the withdrawal is sent to the parties (however, no decision on costs is included in this communication). The part on cost of the initial decision remains valid and can be enforced by the winning party. The Office’s database is updated accordingly to reflect the withdrawal of the CTM application.
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For further information, see the Guidelines, Part B, Examination, Section 1, Proceedings and the Guidelines, Part E, Register Operations, Section 2, Conversion.
Once a decision rejecting the CTM application in full has become final, i.e. after the two month period for appeal, it is too late to withdraw the CTM application as there is nothing left to withdraw.
If the decision rejected the opposition, the application can at any time be withdrawn or restricted.
5.2.1.5 Language
During opposition proceedings a restriction may be submitted either in the first or the second language of the CTM application (Rule 95(a) CTMIR).
When the restriction is submitted in the first language of the CTM application, which is not the language of proceedings, and when the restriction does not cover the whole extent of the opposition, the restriction is forwarded to the opponent requesting it to inform the Office whether or not it maintains its opposition. The opponent can object to the language of the restriction and as k for a t ranslation into the language of proceedings. The Office will then provide for the translation.
If an acceptable restriction is submitted in the first and the second language, the examiner must reflect this restriction in the two languages in the Office’s database and confirm the new list of goods and services in the two languages to the applicant.
5.2.2 Withdrawal of oppositions
The opponent can withdraw its opposition at any time during the proceedings.
A withdrawal of the opposition must be ex plicit and unc onditional. Conditional or ambiguous withdrawal will not be accepted and shall be forwarded to the applicant merely for information purposes, informing the parties that it will not be taken into account.
If the opponent withdraws its opposition independent of any restriction of the CTM application, three situations can arise depending on the status of the opposition (when the opponent withdraws its opposition because of a restriction of the CTM application, see above.)
5.2.2.1 Withdrawal of the opposition before the end of the cooling-off period
If the opposition is withdrawn before the end of the cooling-off period the parties are notified. If the opponent withdraws its opposition during the cooling-off period and there has been no r estriction of the CTM application, the Office neither refunds the opposition fee nor takes a decision on costs.
5.2.2.2 Withdrawal of the opposition after the end of the cooling-off period
If the opposition is withdrawn after the end of the cooling-off period the parties are notified. The opposition fee is not refunded. Unless the parties submit an agreement on
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costs, the Office will take a decision on costs. For information on the apportionment of costs, see paragraph 5.5.3 of these Guidelines.
5.2.2.3 Withdrawal of the opposition after a decision has been taken
Following decision of the Grand Board of Appeal of 27/09/2006 in case R 0331/2006-G, ‘Optima‘, the Office accepts withdrawals of the opposition received during the appeal period after a decision on the opposition has been taken, even if no appeal has been filed. However, the withdrawal will not have any effect on the decision, which remains valid.
This means that the Office will take note of the withdrawal and c lose the case. Confirmation of the withdrawal is sent to the parties (however, there is no decision on costs included in this communication). The part on cost of the initial decision remains valid and can be enforced by the winning party. The database of the Office is updated accordingly to reflect the withdrawal of the opposition and t he application is sent to registration.
For further information, see the Guidelines, Part B, Examination, Section 1, Proceedings and the Guidelines, Part E, Register Operations, Section 2, Conversion.
5.2.2.4 Language
A withdrawal of the opposition must be in the language of the procedure. Rule 96(1) CTMIR applies. Should the withdrawal be s ubmitted in a l anguage that is not the language of proceedings a translation must be filed within one month from the date of submission of the original document in accordance with Rule 96(1) CTMIR. Otherwise the withdrawal will be refused.
5.2.3 Withdrawals of withdrawals / restrictions
A party is only permitted to withdraw a previously submitted withdrawal/restriction if the Office receives its letter withdrawing the earlier withdrawal/restriction on the same day as the first submission.
5.3 Decision on substance
The decision on s ubstance is taken once all the required submissions of the parties have been filed. It should deal only with those issues or earlier rights that are relevant for the outcome.
There are two exceptions:
• earlier right not proven • ceasing of existence of the earlier right.
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5.3.1 Earlier right not proven
Rule 20(1) CTMIR
If for none of the earlier rights invoked proof of existence and validity has been f iled properly, the opposition is rejected as soon as the time limit given to the opponent to complete its file has expired.
However, if only some earlier rights are not proven but one i s, the proceedings will continue normally, and the non-substantiated rights shall not be taken into account in the final decision on substance. 5.3.2 Ceasing of existence of the earlier right
If, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid, or it has not been renewed), the final decision cannot be based on it. The opposition may only be upheld with respect to an earlier right which is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the CTMA and the earlier right which has ceased to have effect cannot coexist anymore the opposition cannot be upheld to this extent. Such a dec ision would be unl awful (see judgment of 13/09/2006, T-191/04, ‘METRO/METRO’, paras 33 and 36).
An invalidation of the earlier right other than of a C TM cannot be detected by the Office. However, if one of the parties informs the Office that this is the case, the other party must be heard, and eventually, the opposition will have to be rejected.
Before the decision is taken, the Office will check whether the earlier right invoked has become due for renewal in the meantime. If so, the Office will invite the opponent to prove the renewal of the mark. If the opponent does not submit the proof, the opposition must be rejected.
5.4 Fee refund
5.4.1 Opposition deemed not entered
Article 41(3) CTMR Article 9(1) CTMFR Rule 17(1) CTMIR
If an opposition is deemed as not entered because of late or insufficient payment (see paragraph 2.2.2, Time of payment, above), the opposition fee, including any surcharge, must be refunded to the opponent. If a surcharge has been charged, then it must also be refunded.
5.4.1.1 Opposition and withdrawal of the opposition filed the same date
In cases where the opposition is withdrawn the same day it was filed, the Office refunds the opposition fee.
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5.4.1.2 Refund after re-publication
If after re-publication of the CTM application in part A.2. of the Bulletin further to a mistake of the Office, a ‘first publication opponent’ wishes to withdraw its opposition as a consequence of the re-publication, the proceedings should be closed. As the Office made a mistake with the first publication, the opposition fee should be reimbursed.
5.4.2 Refund in view of withdrawals / restrictions of CTM application
5.4.2.1 CTM application withdrawn / restricted before the end of the cooling-off period
Rule 18(2), (4), (5) CTMIR
If the applicant withdraws its CTM application or withdraws all those goods and services against which the opposition is directed before or during the cooling-off period, the opposition proceedings are closed, there is no decision on costs and the opposition fee must be refunded.
5.4.2.2 Opposition withdrawn due to restriction of CTM application within the cooling- off period
Rule 18(3), (4), (5) CTMIR
If the applicant withdraws some of the goods and services against which the opposition is directed during the cooling-off period, the Office invites the opponent to state whether it maintains the opposition (and if yes, against which of the remaining goods and services) or if it withdraws it in view of the restriction.
If the opposition is then withdrawn, the opposition proceedings are closed, there is no decision on costs and the opposition fee must be refunded.
If the withdrawal of the opposition is received by the Office before the official notification of the restriction is copied to the opponent, the withdrawal is considered to be as a consequence of the restriction and the opposition fee is also refunded.
The opponent’s letter does not have to make an express reference to the restriction, as long as it is later in time than the applicant’s restriction.
The initial reaction of the opponent to the notification does not matter, as long as the withdrawal is declared later.
Examples
• The opponent does not reply within the time limit given to it but subsequently withdraws its opposition within the cooling-off period (that has been extended).
• The opponent responds by maintaining its opposition, but nevertheless withdraws the opposition still within the extended cooling-off period.
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5.4.3 Multiple oppositions and refund of 50% of the opposition fee
Rule 21(4) CTMIR
In certain special cases concerning multiple oppositions, it is possible to refund 50% of the opposition fee to an opponent. Two conditions must be met:
• one of the opposition proceedings was terminated by the rejection of the contested CTM application in parallel opposition proceedings. For example, if there are four oppositions A, B, C and D (opponents A, B, C, D) against CTM application X, and CTM application X is rejected due to opposition A, and
• the other oppositions (B, C and D) had been suspended at an early stage of the proceedings (i.e. before the expiry of the cooling-off period) because a preliminary examination revealed that CTM application X would probably be rejected in its entirety because of opposition A.
In this case, opponents B, C and D are refunded 50% of the opposition fee.
5.4.4 Cases where the opposition fee is not refunded
5.4.4.1 Opposition withdrawn before the end of the cooling-off period NOT due to a restriction
Rule 18(3), (4), (5) CTMIR
If the opponent withdraws its opposition before the end of the cooling-off period and there has been no r estriction of the CTM application, the Office neither refunds the opposition fee nor takes a decision on costs.
5.4.4.2 Opponent’s withdrawal is earlier
Rule 18(3), (5) CTMIR
When the opposition is withdrawn earlier than the applicant restricts its application, the fee is not refunded. For example, if the applicant withdraws its application following (as a reaction to) the withdrawal of the opposition, the fee is not refunded, as this is the opposite situation.
The same applies when the applicant restricts the application following a pa rtial withdrawal of the opposition.
5.4.4.3 Settlement between the parties before commencement of proceedings
Rule 18(2), (4), (5) CTMIR
As regards the refund of the opposition fee, Rule 18(5) CTMIR only mentions this possibility if there is either a w ithdrawal or a restriction of the CTM application. Therefore, if the proceedings end by an agreement which contains a mention of a
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withdrawal or restriction of the CTM application, the opposition fee is refunded. In the other cases, the opposition fee is not refunded.
5.4.4.4 Termination of proceedings for other reasons
Articles 7, 40 and Article 92(2) CTMR Rules 17, 18 and 76(1), (4) CTMIR
In cases where the application is rejected in accordance with:
• Article 7 CTMR (rejection of an application on absolute grounds; on the Office’s own motion or because of third party observations)
• Article 92(2) CTMR (representation for non-EU applicants) and • Rule 76(4) CTMIR (authorisations when expressly asked for by one of the
parties),
the opposition fee is not refunded as none of these situations is contemplated in the CTMIR as a reason for refunding the opposition fee. 5.4.4.5 Reaction on disclaimer
Article 37(2) CTMR
If the applicant makes a di sclaimer (disclaims an el ement of the opposed CTM application as being non-distinctive), and if thereafter the opponent withdraws the opposition, the opposition fee shall not be refunded as this situation is not contemplated in the CTMIR as a r eason for refunding the opposition fee. The disclaimer does not constitute a restriction of the list of goods and services of the CTM application.
5.4.5 Mistaken refund of the opposition fee
Where the opposition fee has been mistakenly refunded due to a technical error of the Office and if the opponent has a current account, the Office automatically re-debits this account.
For further information please refer to the Guidelines, Part A, General rules, Section 3, Fees, costs and charges.
5.5 Decision on the apportionment of costs
5.5.1 Cases in which a decision on costs must be taken
Article 85 CTMR Rule 18(4) CTMIR
A decision on costs is taken in opposition proceedings that have passed the cooling-off period, i.e. where the adversarial part of the proceedings has started and come to an end. No decision on costs is taken for oppositions that are closed before or during the cooling-off period.
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If a decision on substance is taken, the decision on apportionment of costs is given at the end o f the decision. In all other cases where the Opposition Division closes the case, a decision on costs is issued together with the closure letters unless the parties have informed that Office about an agreement on costs.
5.5.2 Cases in which a decision on costs is not taken
5.5.2.1 Agreement on costs
Article 85(5) CTMR
Whenever the parties have settled the opposition proceedings with an agreement that includes the costs, the Office will not issue a decision on costs. The same is true if the Office receives information signed by both parties stating that the parties have agreed on costs. Such a request can also be sent in two separate letters to the Office. This information must be r eceived before the Office has confirmed the closure of the proceedings.
If the parties settle the opposition by mutual agreement, they are free not to include the cost issue. If no indication is given as to whether the parties have agreed on the costs, the Office will take a decision on costs immediately, together with the confirmation of the withdrawal/restriction. If the parties inform the Office that they had reached an agreement on costs after the withdrawal/restriction, the already issued decision on costs will not be revised by the Office. It is left to the parties to respect the agreement and not to ‘execute’ the Office’s decision on costs.
5.5.2.2 Information from potential ‘successful party’
When the party who would be ent itled to be awarded costs according to the general rules described in paragraph 5.5.3 below informs the Office that it accepts each party bearing their own costs, no decision on costs is necessary. The Office will refrain from taking a decision on costs whenever the potential ‘successful party’ informs the Office that it agrees to share the costs even if the ‘losing party’ does not confirm its agreement. The latest letters from both parties have therefore to be checked carefully before issuing a decision.
If however the losing party sends such a r equest to the Office, it will simply be forwarded to the other party, but the decision on costs will be taken ex officio under normal rules.
5.5.3 Standard cases of decisions on costs
Article 85(1), (2), (3) CTMR Rule 94 CTMIR
The general rule is that the party who terminates the proceedings, by withdrawing the CTM application (wholly or partially) or by withdrawing the opposition, shall bear the fees incurred by the other party as well as all costs incurred by it that are essential to the proceedings.
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If both parties lose in part, a ‘different apportionment’ has to be decided. As a general rule, it is equitable that each party bears its own costs.
A party which terminates the proceedings is deemed to have given in. The hypothetical outcome of the case if a decision on substance had become necessary is absolutely irrelevant.
In standard cases the result is the following.
• The applicant withdraws or restricts its application to the goods and services the opposition is not directed at (partial withdrawal). In these cases the applicant has to pay the costs.
• The opponent withdraws its opposition without any restriction of the CTM application as regards the contested goods and services after the cooling-off period. The opponent has to pay the costs.
• Restriction of the application followed by withdrawal of the opposition (see judgment of 28/04/2004, T-124/02, ‘VITATASTE’, para. 56). In principle each party bears its own costs.
A different apportionment of costs can however be justified for reasons of equity (for example if the application was only restricted to a very small extent).
The Office will not take into account parties’ arguments as to who should pay.
5.5.4 Cases that did not proceed to judgment
5.5.4.1 Multiple oppositions
Complete rejection of the CTM application
In cases where there are multiple oppositions against the same CTM application and these have not been suspended by the Office in accordance with Rule 21(2) CTMIR, and one opposition leads to the rejection of the CTM application, the Office does not take any action in the other oppositions until the appeal period has elapsed.
If the appeal period elapses without an appeal being filed, the Office closes the other opposition proceedings and the cases do not proceed to judgment.
In this case the determination of costs is at the discretion of the Opposition Division (Article 85(4) CTMR). The Office is not able to determine who the ‘winning or losing party’ is, and t he applicant should not be required to pay the costs of several other opponents if it loses in one decision on substance. Therefore, applying a principle of equity, each party will be ordered to bear its own costs.
Partial rejection of the CTM application
In cases of multiple oppositions which are partially directed against the same goods and services of the contested trade mark, the decision in relation to the opposition which is taken first may affect the other oppositions.
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Example
Opposition A is directed against Class 1 and opposition B against Classes 1 and 2 of the contested CTM application. A decision is taken first in opposition A rejecting the contested application for Class 1. When the decision is notified to the parties of opposition A, opposition B must be suspended until the decision in opposition A is final and binding. Once the decision is final, the opponent of opposition B will be invited to inform the Office whether it wishes to maintain or withdraw its opposition in view of the amendment of the list of goods. If the opponent withdraws the opposition, the case is closed.
In this situation, and if the case is closed after commencement of the adversarial part of the proceedings the Office will issue a decision on costs in accordance with Article 85(2) CTMR. The opponent withdrew its opposition following the partial rejection of the contested trade mark. To this extent the opponent was successful in the proceedings. However, the partial rejection of the trade mark was more restricted than the scope of the opposition. To this extent the applicant/holder was also successful in the proceedings. Consequently, it is equitable that each party should bear its own costs.
If the opponent maintains its opposition after the partial rejection, the proceedings continue and i n the final decision on t he substance the decision on costs is taken according to normal rules.
5.5.4.2 Rejection of an application on the basis of absolute grounds or formalities
A CTM application can be rejected during an opposition procedure on absolute grounds for refusal (either on the basis of third party observations, Article 40 CTMR, or even ex officio if the case is re-opened) or on formalities (e.g. if an applicant from outside the EU is no longer represented under Article 92(2) CTMR).
Once the rejection becomes final, the opposition proceedings are closed by issuing a notification.
In these situations the practice on costs is as follows:
If the refusal becomes final after the expiry of the cooling-off period, a decision on costs is taken pursuant to Article 85(4) CTMR. This article provides that in cases that do not proceed to judgment the costs are determined at the discretion of the Office. Then each party should bear their own costs
• If the same situation arises before commencement of the adversarial part, no decision on costs is to be taken.
5.5.4.3 Cases of joinder
Rule 21 CTMIR
For further information on joinder, see paragraph 6.4.3, Joinder of proceedings, below.
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In cases where the joint opposition succeeds in its entirety the applicant should pay the opposition fees paid by each of the opponents but representation costs only once. If the applicant wins, its representation costs will be awarded once but each of the joint opponents will be liable for them. A different apportionment of costs might be equitable. In cases of partial success or if equitable for other reasons, each party should bear its own costs.
5.5.4.4 The meaning of ‘bear one’s own costs’
The notion of costs comprises the opposition fee and t he costs essential to the proceedings, as referred to in Article 85(1) CTMR and Rule 94(6) and (7) CTMIR. In most cases the costs cover the remuneration of an agent within the limits of the scales set by the Regulation.
‘Each party shall bear their own costs’ means that no par ty has a c laim to the other party.
5.6 Fixing of costs
Article 85(6) CTMR Rule 94 CTMIR
Where the costs are limited to representation costs and the opposition fee, the decision fixing the amount of costs shall be included in the decision on the apportionment of the costs (i.e. as a rule, in the decision on substance).
This means that in the vast majority of cases, it will not be necessary to fix the amount of costs separately.
The only exceptions are:
• when an oral hearing took place, • when the fixing of costs was inadvertently omitted (‘forgotten’) in the main
decision.
5.6.1 Amounts to be reimbursed / fixed
The amount to be reimbursed is always fixed in EUR, regardless of the currency in which the party had to pay its representative.
Rule 94(6) CTMIR
If the opponent wins, the opposition fee of EUR 350 will be reimbursed.
Rule 94(3) CTMIR
As regards representation costs, the amount is limited to EUR 300. This applies both to the opponent and the applicant, under the condition that they were represented in the
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opposition procedure by a pr ofessional representative within the meaning of Article 93(1) CTMR, irrespective of whether these costs have been actually incurred. If the winning party was represented at some stage of the proceedings by a professional representative, but is no l onger represented at the time of taking the decision on c osts, it is also entitled to an award of costs regardless of when in the proceedings professional representation ceased.
Representation costs for employees, even from another company with economic connections, are not reimbursable and will not be fixed. They will not be addressed in the decision on costs.
For further information on representation, see the Guidelines, Part A, General rules, Section 5, Professional representation.
In the case of a joinder under Rule 21(1) CTMIR, where the oppositions are successful, the Office will fix both (or all) opposition fees (one for each opposition) but only one representation fee, in which case the costs to be paid by the applicant to the opponents would be EUR 1 000.
As regards the costs of the opposition procedure, one single decision on t he apportionment and on the fixing of costs must be taken for the opposition procedure as a whole.
When a decision is annulled by the Boards of Appeal and remitted to the Opposition Division, the Opposition Division has to decide on t he case again and will take a decision on and fix the costs in the usual way.
If this decision is appealed again (and not remitted for a second time) the Board will decide on and fix the costs in the usual way.
5.6.2 Procedure if the fixing of costs is contained in the main decision
Rule 94(3) CTMIR
Where the decision fixing the amount of costs is included in the decision on the apportionment of the costs, no bi ll or proof whatsoever is needed. The Office knows that the opposition fee was paid, and i f there is a representative EUR 300 must be awarded irrespective of any evidence. It is assumed that the costs of representation have been of at least EUR 300.
Therefore, no correspondence with the parties about the amount to be fixed is necessary. The fixing of the amount is automatic.
5.6.3 Procedure if a separate fixing of costs is needed
The following procedural requirements apply in the rare cases where a separate fixing of costs must be made (including when it was inadvertently omitted, also in that case the party concerned must comply with the applicable requirements):
• admissibility • evidence.
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5.6.3.1 Admissibility
Article 85(6) CTMR
The request for fixation of costs is only admissible once the decision in respect of which the fixing of costs is required has become final and until two months after that date.
5.6.3.2 Evidence
Rule 94(3) CTMIR
For awarding the opposition fee, no evidence is needed.
For awarding the representation costs at the standard rate, an assurance by the representative that the costs have been i ncurred is sufficient. A fortiori, if a bi ll is presented, it suffices that it shows at least the reimbursable amount, and it does not matter whether it is addressed to the party to the proceedings, as submitting a bill equals an assurance.
For all other costs (which will apply in extremely rare cases), a bill and supporting evidence are needed, but it suffices that they establish a plausibility (rather than full- fledged proof) that the costs have been incurred.
5.6.4 Review of fixing of costs
Article 85(6) CTMR Rule 94(4) CTMIR
If one of the parties disagrees with the amounts fixed, it can ask for a review of the decision. The request must state the reasons and be filed within one month after the date of notification of the fixation. The request is only deemed to be filed when the fee for review of EUR 100 has been paid.
There are no reimbursable costs in the review procedure (see decision of 16/12/2004, R 0503/2001-4, ‘BIOLACT/BIO’).
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6 Procedural Issues
6.1 Correction of mistakes
Article 43(2) CTMR
6.1.1 Correction of mistakes in the Notice of Opposition
There are no special provisions in the Regulations on correction of mistakes in the Notice of Opposition. Applying Article 44(2) CTMR which refers to the CTM application, by analogy, obvious mistakes in the Notice of Opposition may be corrected.
The Office defines ‘obvious error’ in relation to Article 44(2) CTMR and Rule 53 CTMIR as in No B.16 of the Joint Statements by the Council and the Commission entered in the minutes of the Council meeting at which the CTMR was adopted: ‘… 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’.
For example, if the opponent’s details appear where the representative’s should appear, this can be considered an obvious mistake.
6.1.2 Correction of mistakes and errors in publications
Rule 14 CTMIR
Where the publication of the application contains a mistake or error attributable to the Office, the Office shall correct the mistake or error acting on its own initiative or at the request of the applicant.
The corrections effected under this rule have to be published. If the correction concerns mistakes that do no t affect the opposition, it will be publ ished when the CTM is registered. Where the correction leads to an extension of the list of goods or services or concerns the representation of the mark, a new opposition period is opened, but only in respect of the corrected parts.
If oppositions were filed after the ‘first’ publication of the CTM application, the opponents will have to be informed of the re-publication. The opponents that opposed the ‘first’ publication do not have to file a new opposition. The proceedings must be suspended until the opposition period following the ‘second’ publication has expired.
If a ‘first publication opponent’ wishes to withdraw its opposition as a consequence of the re-publication the proceedings should be closed and the opposition fee should be refunded (see paragraph 5.4.1.2 above).
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6.2 Time limits
Rules 71(1), 79, 80(3), 82(3) and 96(1) CTMIR
Time limits are an es sential tool for conducting orderly and r easonably swift proceedings. They are a matter of public policy and rigorous compliance with them is necessary for ensuring clarity and legal certainty.
For general information on time limits and continuation of proceedings, see the Guidelines, Part A, General rules, Section 1, Means of communication, time limits. 6.2.1 Extension of time limits in opposition proceedings
6.2.1.1 Non-extendable and extendable time limits
Rule 71(1) CTMIR
A time limit cannot be extended if its length is set by the Regulation. Non-extendable time limits include:
Article 41(1) CTMR
• the three-month opposition period to file an opposition;
Article 41(3) CTMR
• the three-month time limit to pay the opposition fee;
Article 8(3)(b) CTMFR
• the one-month time limit to pay the surcharge where payment arrives late and no proof is made that it was initiated at least 10 days before expiry of the time limit for payment;
Rule 17(4) CTMIR
• the two-month time limit to remedy deficiencies according to Rule 17(4) CTMIR.
Rule 71(1) CTMIR
Extendable time limits have a length which is specified by the Office. For example, the time limit to submit observations in reply to the Notice of Opposition is an extendable time limit.
6.2.1.2 Request made in time
Note: Extensions of the cooling-off period have a special regime. For further details, see above under paragraph 3.2 Extension of the cooling-off period.
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For an extension to be granted the request has to fulfil the following conditions:
• the time limit must be extendable; • the extension has to be requested by the party concerned or jointly by both
parties; • the request has to be signed; • the original time limit must not have expired already; • the language regime must be respected, i.e. if the request is not in the language
of the proceedings a translation must be submitted within one month of filing, otherwise the request will not be taken into account.
An extension will only be possible if the relevant request is filed and received before the expiry of the original term (see order of 30/01/2014, C-324/13 P, ‘Patricia Rocha’) before the expiry of the original term. If a request for extension is received by the Office after the expiry of the time limit, it must be rejected.
Any first request for an extension which is received in time will always be granted for a period of two months (or less if so requested), independently of the explanation given by the party requesting it. However, any subsequent request for an ex tension of the same time limit will be refused, unless the party requesting it duly explains and justifies the exceptional circumstances that prevented it from meeting the original time limit and the first extension and w hy a further extension is necessary. General or vague explanations will not justify a second extension. The request must always be accompanied by evidence and/or supporting documentation.
On the other hand, circumstances that are under the control of the party concerned are not ‘exceptional circumstances’. For example, last minute discussions with the other party are not ‘exceptional circumstances’. They are under the control of the parties.
The request has to be filed by the party concerned by the time limit. For example, if the applicant has to file observations in reply to the Notice of Opposition, it can only be the applicant that asks for an extension.
For more information on extensions of time limits the Guidelines, Part A, General rules, Section 1, Means of communication, time limits, paragraph 3.1.3 Extension of time limits should be consulted.
6.2.1.3 Extension of a time limit by the Office on its own initiative
The Office can extend a time limit on its own initiative, if and when particular reasons make it necessary. For example, a request to extend a time limit without any justification is received by the Office 20 day s before the end o f the time limit to file observations, but it was not dealt with until after expiry of the time limit. Because the refusal of the request after expiry of the time limit will disproportionately harm the interests of the party who requested the extension, the Office extends the time limit by the number of days that were left when the party sent in its request, in this case 20 days. This practice is based on the rules of fair administration.
Where a request for extension of an extendable time limit has been filed and received before the expiry of this time limit (see order of 30/01/2014, C-324/13 P, ‘Patricia Rocha’), the party concerned shall be granted at least one day, even if the request for extension arrived on the last day of this time limit.
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6.2.1.4 Signature
If one of the requests is not signed, it has to be checked if a second, signed, request was received at a later time but still within the time limit. This is because parties sometimes forget to sign, but realise their error after having sent the request, so they sign it and send it again.
A joint request has to be signed by both parties and has to be received within the time limit for which an extension is requested. A request signed by one of the representatives who assures the Office that the other party agrees to the extension is not acceptable.
6.3 Suspension
Rules 20(7) and 21(2) CTMIR
The Office can suspend opposition proceedings ex officio, at the request of either both parties or one party.
According to Rule 20(7), the Office ‘may’ suspend opposition proceedings. Therefore, the decision to suspend is always taken at the discretion of the Office.
6.3.1 Suspension requested by both parties
If both parties request suspension after expiry of the cooling-off period, they do no t have to give any specific justification and the suspension is always granted. In this case, and regardless of the period requested by the parties, the first suspension will be granted for a period of one year, with the parties being given the possibility of opting out. The process for opting out is the same as for the extension of the cooling-off period: if one pa rty opts out, the suspension will end 14 day s after the parties have been informed thereof. The proceedings will resume the day after and the party whose time limit was pending at the moment of suspension will be granted two months to file observations. It is not possible to opt out during the last month of the suspended period and any requests to do so will be rejected.
A joint request for suspension because of ongoing negotiations will not be granted if it is received within the cooling-off period because the purpose of the cooling-off period to precisely to set a time frame for negotiations before the adversarial stage begins.
In principle, the parties may jointly request extensions of the suspension for negotiations. Such requests will be granted automatically for further one-year periods. However, after three years of suspension the parties are expected to provide an explanation as to why the negotiations have still not come to an end. In order to avoid any possible abuse, the Office may apply its discretion and decide not to further suspend the proceedings.
Requests submitted by only one of the parties will in principle be rejected. It is common for parties to negotiate during opposition proceedings. However, it may be t he case that one party wishes to negotiate only provided that such negotiations do not delay the proceedings. This is why negotiations do not give either of the parties the right to ignore a pending time limit, to obtain an extension thereof or to obtain a suspension of the proceedings. Such requests are therefore rejected.
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6.3.2 Suspensions by the Office ex officio or at the request of one of the parties
The Office may suspend the opposition proceedings ex officio or at the request of one party under a variety of circumstances.
The CTMIR contemplates two specific cases where proceedings may be suspended:
• The opposition is based on an application for registration of a trade mark. • The opposition is based on an appl ication for registration for a geographical
indication or designation of origin.
In addition, according to the CTMIR, the proceedings may be s uspended where appropriate under the circumstances, for example in the following situations:
• The earlier right is at risk (under opposition or cancellation). • There are third party observations that raise serious doubts as to the registrability
of the CTM application (see page 51). • There are errors in the publication of the contested application which require the
mark to be re-published. • A transfer is pending on earlier CTMs/CTM applications or contested CTM
applications. • The representative withdraws.
It should be noted that there is no obl igation in any of the abovementioned cases to suspend the proceedings. The decision is at the Office’s discretion.
6.3.2.1 Explanation of the basic principle, timing of suspension
Rule 20(7) CTMIR
In principle, oppositions based on applications or on earlier rights that are at risk are not to be suspended ex officio at the very beginning of the proceedings. The assumption is that in most cases applications mature into registrations, and oppositions or cancellation actions against earlier rights might be solved during the proceedings.
In these cases the opposition proceeds until a dec ision is ready to be t aken. Consideration must then be given as to whether the earlier right in question could make a difference, in a prima facie opinion, to the outcome of the opposition. If the opposition is deemed to be s uccessful or rejected anyway, regardless of the fate of the earlier right at risk, the proceedings should not be suspended. If, in contrast, the earlier right at risk must necessarily be t aken into account in the decision on t he opposition, the proceedings will be suspended. Before closing the proceedings, the status of the earlier mark must be c hecked or, in the case of a na tional application or an ear lier national mark at risk, the opponent must be r equested to provide information on t he status of the application or registration.
However, the Office may suspend the proceedings if this is requested by one of the parties and the earlier right is an application or is at risk. If the earlier right is a national one the parties must provide evidence that the application is facing problems. In this case the outcome of the proceedings against the earlier mark must have some impact
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on the opposition. Therefore, the probable outcome of the opposition will be considered in order to decide on suspension. This is the case in particular where the final decision on the opposition cannot be issued without taking into account the earlier application or earlier registration. In such a situation, the circumstances of the case do not allow the Office to say that in any case the opposition will be rejected (e.g. because there is no likelihood of confusion) or upheld (because there are other earlier rights that are sufficient to reject the contested mark for all the contested goods and services). When an opposition is based on an application for registration, it may be appropriate to suspend the opposition proceedings under Rule 20(7) CTMIR to await registration of the opponent’s earlier mark. However, if an o pposition is to be r ejected, either for formal or for substantive reasons, a s uspension would be meaningless and would simply prolong the proceedings unnecessarily.
When there are no other earlier rights to take into account (because there are no other earlier rights or they were not substantiated) or when the application or registration must nevertheless be taken into account (because the other earlier rights are not ‘winners’), an assessment must be made of whether the opposition will be successful on the basis of the application, in order to decide on the suspension. Proceedings will only be suspended if it is found that the earlier application, if registered, will lead to the total or partial rejection of the contested CTM application.
6.3.2.2 Earlier CTM applications or registrations
The opposition is based on a n application but it is not suspended because there is another earlier right (a registered trade mark) on t he basis of which the contested application may be rejected. If the opponent fails to substantiate this other earlier right, the earlier application, becomes crucial for the decision. If according to the records the only earlier application or registration is facing problems, the opposition should be suspended.
6.3.2.3 Earlier national/international marks (applications or registrations / rights)
The issue of suspension will have to be raised by the parties (normally the applicant). In this case the party has to submit evidence that the earlier mark (application or registration / right) is facing problems. This evidence must be o fficial, it must clearly identify the proceedings leading to the suspension and i t must indicate the relief sought. In particular, the evidence must be clear as to the possible consequences for the earlier right on w hich the opposition is based. If necessary, the party may be requested to submit a translation of the evidence.
Upon such a request the Office will consider whether under the circumstances of the case it is advisable to suspend the proceedings.
If no one raises the question, then the general principle applies and the Office only has to decide on the suspension if the proceedings reach the end of the adversarial part and there is no i nformation that the application has matured to registration or that national proceedings against the earlier mark have come to an end. In this case the opponent should be required to inform the Office on the status of its earlier application or registration.
6.3.2.4 Examples
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Here are some examples where according to the general practice indicated above the situation apparently does not require a s uspension of the proceedings, but the suspension can nevertheless be decided if the Office finds it appropriate.
• The opposition is based on a French mark and on a CTM application, neither of which faces problems. Both cover the same sign and the same goods, which are confusingly similar to the contested trade mark. Therefore, the opposition may be dealt with on t he basis of the French mark only. If likelihood of confusion can occur only in Member States other than France, the decision will be more solid if based on t he CTM application and t herefore it is appropriate to suspend the proceedings to await the outcome of the CTM application.
• The earlier application does not make any difference to the outcome, but the applicant requests a suspension. If the earlier right is a CTM application and the Office concludes that it is facing problems or, in the case of a national application, if the applicant files evidence that the opponent’s application is facing problems, the proceedings may be suspended.
The following examples fall into the category of earlier national marks at risk:
• the applicant (or a third party) has filed an action or a counterclaim seeking the invalidation or revocation of the earlier registration;
• the applicant (or a third party) has filed an action or a counterclaim seeking the transfer of the earlier right to its own name.
6.3.3 Multiple oppositions
Rule 21(2) CTMIR
Save exceptional circumstances where one earlier mark clearly leads to the rejection of the contested mark including all goods and s ervices the Office will not suspend the other proceedings until a final decision is reached.
6.3.3.1 After rejection of the CTM application
When the CTM application is subsequently rejected because of an ‘active’ opposition, the suspended oppositions will be deemed to have been disposed of after the decision becomes final. If the decision has become final, the parties to the other proceedings must be informed, the oppositions which were suspended at an early stage (before the cooling-off period) will be closed and 50% of the opposition fee will be refunded to each opponent, in accordance with Rule 21(4) CTMIR.
If an appeal has been filed against the decision, the oppositions remain suspended. If the BoA reverses the decision the other proceedings will be r esumed immediately, without having to wait for that decision to become final.
6.3.4 Procedural aspects
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Letters suspending the proceedings should always indicate the date the suspension takes effect, generally the date when a valid request was submitted. 6.3.4.1 Monitoring suspended files
In cases where the proceedings are suspended for an indefinite period, the Office will monitor the opposition every six months.
In cases where the earlier right is an appl ication for a nat ional registration or a national/international registration that faces problems, the resumption of proceedings will always depend on the reaction of the parties, who are expected to inform the Office about any changes in the status of the application or registration and submit evidence to this effect. Nevertheless, the Office issues reminders every six months in which the parties may also be requested to furnish the evidence.
6.3.4.2 Resuming the proceedings
In all the cases the parties will be informed of the resumption of the proceedings and of any pending time limit if applicable. Any time limit that was pending at the moment of the suspension will be set again with a full two-month time limit with the exception of the cooling off period which can never exceed 24 m onths according to Rule 18(1) CTMIR.
Proceedings must be resumed as soon as a final decision has been rendered in the course of the national proceedings or an ea rlier application has been registered or refused. If the decision taken in the national proceedings invalidates, revokes, results in some other way in the extinguishment of the right or transfers the opponent’s earlier right, the opposition will be deem ed unfounded insofar as it is based on that earlier right. If all the earlier rights on which an opposition is based cease to exist, the opponent will be granted the opportunity to withdraw its opposition. If it does not do so, the Office will take a decision rejecting the opposition.
6.3.4.3 Calculation of time limits
If the suspension is decided for a definite period of time, the letters must also indicate the date when the proceedings are to be resumed, and what happens after that. When the suspension is requested by both parties because there are on-going negotiations, the period will always be one year regardless of the period requested by the parties.
If on 30/01/2015 a request for a two month suspension signed by both parties and submitted on 15/01/2015 (five days before the expiry of the time limit of the opponent for completing the opposition – 20/01/2015) is dealt with, the result will be:
• the Office has suspended the opposition proceedings at the request of both parties;
• this suspension takes effect as from 15/01/2015 (the date when the suspension request was received at the Office) and will expire on 15/01/2016;
• the proceedings will be resumed on 16/01/2016 (one year, irrespective of the period requested by the parties), with no further notification from the Office;
• the time limit for the opponent is now 15/03/2016 (two full months for the opponent to complete the file);
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• the time limit for the applicant is now 15/05/2016 (two full months after the opponent’s time limit).
6.4 Multiple oppositions
Rule 21 CTMIR
Multiple oppositions are when different oppositions are filed against the same CTM application.
In case of multiple oppositions, some extra factors have to be taken into account.
First of all, unless there is a major delay during the admissibility stage concerning one of the oppositions, it is practice to notify the applicant of the admissibility of all the oppositions at the same time. Secondly, multiple oppositions may lead to suspension of some of them for reasons of economy of proceedings. Thirdly, a restriction made by the applicant in the course of one of the proceedings may have an impact on the other oppositions. Furthermore, it may be practical to take the decisions in a certain order.
Finally, under certain circumstances multiple oppositions may be joined and dealt with in one set of proceedings.
6.4.1 Multiple oppositions and restrictions
When there are multiple oppositions and the applicant restricts the goods and services in one of the opposition proceedings, all the other opponents will have to be informed by sending the appropriate letter, insofar as the restriction concerns contested goods or services of the other oppositions.
However, if there is no relation between the goods or services in the restriction and the contested goods and services, the opponent should not be informed.
For example, there are four oppositions against the same CTM application, applied for goods in Classes 3, 14, 18 and 25. The oppositions are directed against the following classes:
Opposition Extent
No 1 Class 3
No 2 Class 25
No 3 Classes 18 and 25
No 4 Classes 14 and 25
The applicant sends a restriction in opposition 2, deleting clothing and headgear. Apart from the relevant letters in opposition 2, the relevant letters should also be sent in oppositions 3 and 4. As the restriction does not affect the contested goods of opposition 1, no action is necessary in this opposition.
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6.4.2 Multiple oppositions and decisions
Once an opposition reaches the decision stage, it is important to take account of the possible multiple oppositions that are pending against the same CTM application. Before a ruling can be given on the opposition, the stage of proceedings of the multiple oppositions must be an alysed, and depending on the situations a dec ision may be taken or the opposition must be suspended. The general principle to be applied is that contested goods and services should not be rejected more than once at different points in time. The three situations that may occur are described in the following.
1. All oppositions against the same CTM application are ready for decision at the same time
The order in which the decisions are taken is at the discretion of the examiner. However, the following has to be taken into account.
If all oppositions will fail, the decisions can be taken in any order, as the rejection of the opposition does not affect the CTM application. Even if one of the decisions were to be appealed before the others are taken, it would seem preferable not to suspend as the procedure before the Board of Appeal can take some time.
If all the oppositions will be successful, first the decision on the opposition eliminating most goods and services of the CTM application (the widest extent of the opposition) should be t aken, and onc e final it will be f ollowed by decisions on the opposition contesting goods or services different from the goods and services contested by the first. In the example mentioned above under paragraph 6.4.1, the first decision should either be taken in opposition 3 or in opposition 4 and afterwards opposition 1.
Suppose the first decision is taken in opposition 4, and the CTM application is rejected for Classes 14 and 25. In this case, opposition 2 needs to be suspended.
If the appeal period has expired and no appeal is filed, opposition 2 is disposed of, as it no longer has an object. The parties should be informed and the opposition must be closed. The case is considered to be a case that has not proceeded to judgement within the meaning of Article 85(4) CTMR. Consequently, the costs are at the discretion of the Office. If the parties inform the Office that they agree on the costs, a decision on costs will not be t aken. Generally, the decision will be t hat each party bears its own costs.
2. Only one opposition is ready for decision and the other oppositions are still in the adversarial phase of the proceedings
If the opposition is to be rejected a decision can be taken without further impact on the pending multiple oppositions because the rejection does not have any effect on the CTM application.
If the opposition is successful and the decision rejects the contested CTM application in its entirety, the pending multiple oppositions must be suspended until the decision is final. If the appeal period has expired and no appeal is filed, the multiple oppositions are disposed of, as they no longer have an object. The parties should be informed and the opposition must be closed. The case is considered to be a c ase that has not proceeded to judgment within the meaning of Article 85(4) CTMR. Consequently, the costs are at the discretion of the Office. If the parties inform the Office that they agree
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on the costs, a decision on costs will not be taken. Generally, the decision will be that each party bears its own costs.
The same applies if the decision on the opposition rejects part of the goods and services of the contested CTM application but all of the goods and services against which the multiple oppositions are directed.
However, multiple oppositions must be suspended if the decision on the opposition rejects part of the goods and services of the contested CTM application but only part of the goods and services against which the multiple oppositions are directed. The suspension will last until the decision has become final. If this is the case, the opponents of the multiple oppositions will be invited to inform the Office whether they wish to maintain or withdraw the opposition. In the case of a w ithdrawal of the opposition, the proceedings are closed and both parties are informed. If the proceedings are closed after the expiry of the cooling-off period, the Office will decide on the costs in accordance with Article 85(2) CTMR that each party bears its own costs. If the parties inform the Office before the closure of proceedings that they agree on the costs, a decision on costs will not be taken.
3. Two or more oppositions are ready for decision and ot hers are still in the adversarial phase of the proceedings
It may happen that some of the oppositions against a CTM application are ready for a ruling and some are still at different stages of the adversarial phase. In this situation the principles described under 1. and 2. apply in combination. Depending on the outcome of the decisions and on t he scope of the pending cases whether a dec ision may be taken in both opposition and whether the multiple oppositions must be suspended.
6.4.3 Joinder of proceedings
Rule 21(1) CTMIR
Rule 21(1) CTMIR allows the Office to deal with multiple oppositions in one s et of proceedings. If it is decided to join the oppositions, the parties must be notified.
Oppositions may be joined upon the request of one of the parties if they are directed against the same CTM application. It is more likely that the Office would join them if in addition they were filed by the same opponent or if there is an economic link between the opponents, e.g. a parent and subsidiary company.
When it is decided to join the oppositions it should be verified whether the opponents have the same representative. If not, they must be as ked to appoint one s ingle representative. In addition, the earlier rights must be identical or very similar. If the representatives do not reply or do not want to appoint a s ingle representative, the oppositions must be disjoined and dealt with separately.
If at any stage these conditions are no longer fulfilled, for example the one and only earlier right of one of the joined oppositions is transferred to a third party, the joinder may be undone.
Unless the joinder is dissolved before the decision is taken, only one decision is taken.
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6.5 Change of pa rties (transfer, change of name , change of representative, interruption of proceedings)
6.5.1 Transfer and opposition proceedings
6.5.1.1 Introduction and basic principle
Article 17 CTMR
A transfer or assignment of an earlier right is a change of ownership of this right. For further information see the Guidelines, Part E, Register Operations, Section 3, CTMs as objects of property, Chapter 1, Transfer.
The basic principle is that the new owner substitutes the old owner in the proceedings. The practice of the Office when dealing with transfers is described in paragraphs 6.5.1.2 (the earlier registration is a CTM registration), 6.5.1.3 (the earlier registration is a na tional registration), 6.5.1.4 (the earlier registrations are a combination of CTM registrations and national registrations) and 6.5.1.5 (transfer of a contested CTM application during opposition proceedings).
A transfer can be made in several ways, including a simple sale of an earlier mark from A to B, a company C that gets bought (trade marks included) by company D, a merger of companies E and F into company G (universal succession), or legal succession (after the owner has died, the heirs become the new owners). This is not an exhaustive list.
When a transfer is made during opposition proceedings, several situations can arise. Whereas for earlier CTM registrations or applications on which the opposition is based the new owner can only become party to the proceedings (or file observations) once the request for registration of the transfer has reached the Office, for earlier national registrations or applications it suffices that the new owner files evidence of the transfer.
6.5.1.2 Transfer of earlier CTM
Article 17(6), (7) CTMR
Concerning earlier CTM(A)s, according to Article 17(6) CTMR, as long as a t ransfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the CTM(A). However, in the period between the date of reception of the request for registration of the transfer and the date of registration of the transfer, the new owner may already make statements to the Office with a view to observing time limits.
Opposition based on one CTM only
When an oppos ition is based on one ea rlier CTM only and t his CTM is/has been transferred during the opposition proceedings the new owner becomes the new opponent. The new owner will substitute the old owner.
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To this end, either the old or the new owner will have to inform the Office that the CTM on which the opposition is based has been t ransferred and it must file a request for registration of the transfer. As mentioned above, as soon as the request is received by the Office, the new owner may already make statements. However, it only becomes party to the proceedings once the transfer is registered.
In practice, once the Office is informed that a request for registration is received, the proceedings can continue with the new owner. Nevertheless, the transfer has to be registered before a decision on t he opposition is taken. If the opposition is ready for decision but the transfer has not been registered, the opposition must be suspended.
If the new owner informs the Office that it does not want to continue the proceedings, the opposition is considered withdrawn.
Partial transfer of the only CTM on which the opposition is based
In cases of a partial transfer one part of the earlier CTM remains with the original owner and another part is transferred to a new owner. The same principles apply to partial transfers as for transfer of only one of more CTM registrations on which the opposition is based. These principles are described in the paragraph immediately below.
Opposition based on more than one earlier CTM
When an opposition is based on more than one earlier CTM and these marks are/have been transferred to the same new owner during the opposition proceedings, the foregoing applies. The situation is, however, different when only one of the earlier CTMs is/has been transferred. In this case the new owner may also become an opponent, so that there are two opponents. However, the opposition will be k ept as one. In general both opponents have the same representative.
If one o f the opponents wants to withdraw, this will be accepted independently of whether the other wants to continue. Should the proceedings be continued, they will only be based on the rights of the opponent that did not withdraw. No separate decision on costs will be taken.
The new opponents will be t reated as ‘joint opponents’, meaning that the Office will continue dealing with the case in exactly the same way as before, i.e. as one opposition, albeit with more than one opponent. Moreover, the Office will consider the original representative as the ‘common’ representative for all the opponents and will not invite the new opponents to appoint a new one. However, the new opponents always have the option of appointing a representative of their choice.
Common representation does not mean that opponents may not act independently, to the extent that their earlier rights remain independent: if for instance one of the opponents enters into a f riendly settlement with the applicant, the opposition will be treated as partially withdrawn in respect of the earlier rights owned by this opponent. 6.5.1.3 Transfer of earlier national registration
Opposition based on one national registration only
When an oppos ition is based on one ear lier national registration only and t his registration is/has been transferred during the opposition proceedings, the new owner also becomes the new opponent. The new owner will substitute the old owner.
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To this end, either the old or the new owner will have to inform the Office that the earlier national registration on which the opposition is based has been transferred and must file evidence thereof, i.e. the deed o f transfer. As there are different national practices, it is not obligatory to submit a copy of the request to register the transfer with the national office.
The Office does not require the new owner to confirm that it wishes to continue the proceedings. As long as the evidence of the transfer is in order, the new owner is accepted as new opponent. If it informs the Office of the transfer, but does not submit (sufficient) evidence thereof, the opposition proceedings have to be suspended while the new owner is given two months to provide evidence of the transfer.
Nevertheless, in those Member States where this is a requirement for a transfer to have effect against third parties, the transfer must have been r egistered before a decision on t he opposition is taken. If the opposition is ready for decision but the transfer has not been registered, the opposition must be suspended and the opponent is to be required to provide evidence of registration of the transfer. As it is not in the interest of the applicant if the proceedings are delayed, the new owner must be set a time limit of two months to provide this evidence.
If the new owner does not provide the required evidence, the proceedings must be continued with the old owner. If the old owner maintains that it is not the owner anymore, the opposition has become unfounded, as the opponent is no l onger the owner of the earlier right. The owner must be informed that the opposition will be rejected as such unless it withdraws the opposition.
If the new owner provides the required evidence and informs the Office that it does not want to continue the proceedings, the opposition is considered withdrawn.
Any evidence showing the agreement of the parties to the transfer/change of ownership is acceptable.
Partial transfer of the only national registration on which the opposition is based
In cases of a partial transfer one part of the earlier national registration remains with the original owner and another part with a new owner. The same principles apply to partial transfers as for transfer of only one of more national registrations on which the opposition is based. These principles are described in the paragraph immediately below.
Opposition based on more than one earlier national registration
When an opposition is based on more than one earlier national registration and these are/have been transferred to the same new owner during the opposition proceedings, the foregoing apply.
The situation is, however, different when only one of the earlier national rights is/has been transferred. In this case the new owner may also become opponent, so that there are two opponents. However, the opposition will be kept as one. In general both opponents have the same representative.
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If one of the opponents wants to withdraw, this is to be accepted independently of whether the other wants to continue. Of course, if the proceedings are continued it will be based only on the rights of the opponent that did not withdraw. No separate decision on costs will be taken.
In practice, the new opponents will be t reated as ‘joint opponents’, meaning that the Office will continue dealing with the case in exactly the same way as before, i.e. as one opposition, albeit with more than one opponent. Moreover, the Office will consider the original representative as the ‘common’ representative for all the opponents and will not invite the new opponents to appoint a new one. However, the new opponents always have the option of appointing a representative of their choice.
6.5.1.4 Opposition based on a combination of CTM registrations and nat ional registrations
When an oppos ition is based on one or more CTM registrations and one or more national registrations at the same time and one of these marks are/have been transferred to the same new owner during the opposition proceedings, the foregoing applies. In this case the new owner may also become opponent, so that there are two opponents. However, the opposition will be k ept as one. In general both opponents have the same representative.
In all of these situations, once the Office becomes aware of the transfer of ownership, it will update the official database to include the new opponent/both opponents, and it will inform the parties for information purposes only. However, the mere fact that the earlier registrations have been transferred will never justify the granting of a new time limit for submitting observations or any other documents.
6.5.1.5 Transfer of the contested CTM application
When during opposition proceedings the contested CTM application is/has been transferred, the opposition follows the application, i.e. the opponent is informed of the transfer and the proceedings continue between the new owner of the CTM application and the opponent.
6.5.1.6 Partial transfer of a contested CTM application
Rule 32(4) CTMIR
When there has been a partial transfer of a (contested) CTM application, the Office must create a separate file for the new registration (application) with a new registration (application) number.
In this case, when the transfer is recorded in the Register and a new CTM application is created, the opposition examiner also has to create a new opposition(s) file against the new CTM application, since it is not possible to deal with one oppos ition against two separate CTM applications.
Please note however that this is only the case when some of the originally contested goods and services are maintained in the ‘old’ CTM application and some in the newly created CTM application. For example: Opponent X opposes all the goods of CTM
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application Y, applied for in Class 12 for apparatus for locomotion by land and air, and for clothing and footwear in Class 25. CTM application Y is partially transferred, and split into CTM application Y' for apparatus for locomotion by land and clothing, and CTM application Y'' for apparatus for locomotion by air, and footwear.
Articles 17 and 23 CTMR
Since there was only one opposition fee to be paid when the opponent filed its opposition, it is not requested to pay a second fee for the new opposition created after the split of the CTM application.
The transfer, even if it was requested before the opposition was filed, has effect vis-à- vis third parties only after entry in the Office’s database. Therefore, the payment of only one opposition fee was properly effected because at the time of filing the opposition was only directed against one CTM application (the only one). Therefore, the new opposition will be created without the payment of a new opposition fee.
Regarding the apportionment of costs, the opposition examiner will take into account the fact that only one opposition fee was paid.
Moreover, depending on the circumstances of the case, it could be possible to join the proceedings (e.g. when the representative of the ‘old’ and ‘new’ applications is the same).
6.5.2 Parties are the same after transfer
In the event that as a result of a transfer the opponent and the applicant become the same persons or entities, the opposition becomes devoid of any purpose and w ill accordingly be closed ex-officio by the Office.
6.5.3 Change of names
As mentioned above, a change of name does not imply a change of ownership.
6.5.4 Change of representatives
Article 92 CTMR
When there is a c hange of representative during opposition proceedings, the other party will have to be informed by sending the other party a copy of the letter and of the authorisation (if submitted).
For detailed information please refer to the Guidelines, Part A, General rules, Section 5, Professional representation.
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6.5.5 Interruption of the proceedings due to death, legal incapacity of the applicant or its representative
Rule 73 CTMIR
Rule 73 CTMIR deals with interruption of proceedings. Paragraph 1 distinguishes three situations:
Opposition proceedings before the Office shall be interrupted:
1. when the CTM applicant has died or is under legal guardianship;
2. when the CTM applicant is subject to bankruptcy or any similar proceedings;
3. when the representative of an applicant has died or is otherwise prevented from representing the applicant. For further information see the Guidelines, Part A, General rules, Section 5, Professional representation.
Rule 73 CTMIR only refers to the applicant and its representative and does not mention anything about other parties, such as opponents. In the absence of relevant provisions, the Office will apply this provision only to cases where the applicant (or its representative) is not able to continue the proceedings. Therefore, if for example the opponent is declared bankrupt, the proceedings will not be interrupted (even in the cases where the opponent is the applicant/proprietor of an ear lier CTM application/CTM). The uncertainty of the legal status of an op ponent or its representative shall not be to the detriment of the applicant. In such a case, when the notification is returned to the Office as undeliverable, the normal rules for public notification apply.
6.5.5.1 Death or legal incapacity of the applicant
In cases of the death of the applicant or of the person authorised by national law to act on their behalf, because of the legal incapacity of the applicant, the proceedings are only interrupted when this is requested by the representative of the applicant/authorised person or when the representative resigns.
6.5.5.2 Applicant prevented from continuing the proceedings before the Office owing to legal reasons (e.g. bankruptcy)
Rule 73(1)(b) CTMIR applies as from the point in time on which the party to the proceedings is no longer entitled to dispose of the procedure, i.e. to dispose of its assets, and until the point in time a liquidator or trustee is appointed who will then continue to represent the party as of law.
When the applicant is represented by a pr ofessional representative who does not resign, there is no need to interrupt the proceedings. The Office considers the applicant’s representative to be ent itled to represent the applicant until the Office is informed otherwise by the representative itself, by the designated trustee or the court dealing with the legal action in question.
If the representative informs the Office that it resigns, it depends whether the representative further indicates who acts as the trustee or liquidator in the bankruptcy.
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• If the representative does so, the Office will continue to correspond with the trustee or liquidator. If there were time limits affecting the applicant which had not yet expired when it went bankrupt, the Office will re-start these time limits. Therefore, in this case the proceedings are interrupted and immediately resumed. For example, if the applicant still had ten days to file observations when it went bankrupt, the new letter of the Office to the trustee will give a fresh time limit of two months to file those observations.
• If there is no information as to a liquidator or trustee, the Office has no choice but to declare an interruption of the proceedings. A communication to that effect will be sent to the bankrupt applicant directly and to the opponent. Although it is not up to the Office to investigate who the liquidator is, the Office will keep on trying to communicate with the bankrupt applicant with an ai m to resume the proceedings. This is because although the bankrupt applicant is not allowed to undertake binding legal acts, generally it still receives post, or, if not, the post is delivered automatically to the trustee as long as there is one. The Office might also consider information on the identity of the trustee provided by the opponent.
When the notification is returned to the Office as undeliverable, the normal rules for public notification apply.
If evidence about the appointment of the liquidator or trustee is filed, this need not be translated into the language of the proceedings.
Once the Office is informed of who the liquidator or trustee is, the proceedings are resumed from a date to be fixed by the Office. The other party must be informed.
Rule 73(4) CTMIR
Time limits that had not yet expired when the proceedings were interrupted start running again when the proceedings are resumed. For example, when the proceedings were interrupted ten days before the applicant had to file observations, a new time limit of two months starts again, not the ten days it had l eft at the moment of the interruption. For clarification, the letter sent by the Office informing the parties about the resumption shall fix a new time limit.
6.5.5.3 Death or prevention for legal reasons of the representative of the applicant before the Office to act
In the case referred to in Rule 73(1)(c) CTMIR, the proceedings must be interrupted and will be resumed when the Office is informed of the appointment of a new representative of the CTM applicant.
This interruption will last a maximum of three months and, if no r epresentative is appointed before the end of this period, the proceedings will resumed by the Office. When resuming the proceedings, the Office will proceed as follows:
1. If the appointment of a representative is compulsory under Article 92(2) CTMR because the applicant has neither its domicile nor its seat in the EU, the Office will contact the applicant and inform it that the CTM application will be deemed withdrawn if it does not appoint a representative within a time limit of two months. If the applicant does not appoint a representative on or before the end of the time limit, the CTM application will be then deemed withdrawn.
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2. If appointment of a representative is not compulsory under Article 92(2) CTMR, the Office will resume the proceedings and will send all the communications to the applicant directly.
In both cases resuming the proceedings will mean that any time limits pending for the applicant when the proceedings were interrupted start running again when the proceedings are resumed.
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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 2
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION
CHAPTER 1
GENERAL PRINCIPLES AND METHODOLOGY
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Table of Contents
1 Introduction................................................................................................ 3
2 Article 8(1) CTMR....................................................................................... 4 2.1 Article 8(1)(a) CTMR – Identity...................................................................4
2.1.1 Identity as a ground ........................................................................................ 4
2.2 Article 8(1)(b) CTMR – Likelihood of confusion .......................................5
3 The Notion of Likelihood of Confusion.................................................... 5 3.1 Introduction ................................................................................................5 3.2 Likelihood of confusion and likelihood of association............................6 3.3 Likelihood of confusion and enhanced distinctiveness..........................7 3.4 Likelihood of confusion: questions of fact and questions of law...........7
3.4.1 Fact and law – similarity of goods / services and of signs ............................. 8 3.4.2 Fact and law – evidence................................................................................. 8
4 Evaluation of the Factors Taken into Account for Establishing Likelihood of Confusion............................................................................ 9 4.1 The relevant point in time ..........................................................................9 4.2 Methodological approach of the Office.....................................................9 4.3 Comparison of goods and services ........................................................10 4.4 Comparison of signs................................................................................10 4.5 Distinctive and dominant elements of the trade marks ......................... 11 4.6 Distinctiveness of the earlier trade mark................................................11 4.7 Relevant public – level of attention.........................................................11 4.8 Other arguments, global assessment and conclusion ..........................11
Annex I ............................................................................................................ 13
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1 Introduction
This chapter provides an introduction to and overview of the concepts of (i) identity and (ii) likelihood of confusion which are applied in situations of conflict between trade marks in opposition proceedings under Article 8(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (the ‘CTMR’).
The paragraphs below set out the nature of these concepts and their legal underpinning as determined by the relevant laws and as interpreted by the Court of Justice of the European Union (the ‘Court’)1.
The legal concepts of identity and likelihood of confusion are used to protect trade marks and, at the same time, to define their scope. It is thus important to bear in mind what aspects or functions of trade marks merit protection. Trade marks have various functions. The most fundamental one is to act as ‘indicators of origin’ of the commercial provenance of goods/services. This is their ‘essential function’. In ‘Canon’ the Court held that:
… according to the settled case-law of the Court, the essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer or end u ser by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.
(See judgment of 29/09/1998, C-39/97 ‘Canon’, para. 28.)
The essential function of trade marks as indicating origin has been emphasised repeatedly and has become a precept of EU trade mark law (judgment of 18/06/2002, C-299/99, ‘Philips’ para. 30 and judgment of 6/10/2005, C-120/04, ‘Medion’, para. 23).
Whilst indicating origin is the essential function of trade marks, it is not the only one. Indeed, the term, ‘essential function’ implies other functions. The Court alluded to the other functions of trade marks several times (e.g. judgment of 16/11/2004, C-245/02, ‘Anheuser-Busch’, para. 59 and j udgment of 25/01/2007, C-48/05 ‘Adam Opel’, para. 21) but addressed them directly in ‘L'Oréal’ (judgment of 18/06/2009, C-487/07, ‘L'Oréal’, paras 58-59 and judgment of 23/03/2010, C-236/08 to C-238/08, ‘Google France and Google’, paras 75-79), where it stated that the functions of trade marks include:
… not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising (emphasis added).
In examining the concepts of identity and likelihood of confusion, this chapter touches upon several themes that are explained comprehensively in the chapters of the Guidelines that follow. The Annex contains a summary of the key cases dealing with the core principles and concepts of likelihood of confusion.
1The Court was in fact often interpreting Articles 4 and 5 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 (the “Directive”) which for the purposes of interpretation are broadly comparable to Articles 8 and 9 CTMR.
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2 Article 8(1) CTMR
Article 8 CTMR enables the proprietor of an earlier right to oppose the registration of later CTM applications in a range of situations. The present chapter will concentrate on the interpretation of identity and likelihood of confusion within the meaning of Article 8(1) CTMR.
An opposition pursuant to Article 8(1) CTMR can be based on earlier trade mark registrations or applications (Article 8(2)(a) and (b) CTMR) and ear lier well-known marks (Article 8(2)(c) CTMR)2.
2.1 Article 8(1)(a) CTMR – Identity
Article 8(1)(a) CTMR provides for oppositions based on identity. It provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, a CTM application shall not be registered:
if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.
The wording of Article 8(1)(a) CTMR clearly requires identity between both the signs concerned and the goods/services in question. This situation is referred to as ‘double identity’. Whether there is double identity is a legal finding to be es tablished from a direct comparison of the two conflicting signs and the goods/services in question3. Where double identity is established, the opponent is not required to demonstrate likelihood of confusion in order to prevail; the protection conferred by Article 8(1)(a) CTMR is absolute. Consequently, where there is double identity, there is no need t o carry out an evaluation of likelihood of confusion, and the opposition will automatically be upheld.
2.1.1 Identity as a ground
Although the specific conditions under Article 8(1)(a) and Article 8(1)(b) CTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) CTMR, if 8(1)(a) is the only ground claimed but identity between the signs and/or the goods/services cannot be es tablished, the Office will still examine the case under Article 8(1)(b) CTMR which requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and t he goods/services are similar or vice versa.
Likewise, an oppos ition based only on A rticle 8(1)(b) CTMR which meets the requirements of Article 8(1)(a) CTMR shall be dealt with under the latter provision without any examination under Article 8(1)(b) CTMR.
2 Further guidance on earlier well-known trade marks is found in The Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation (Article 8(5) CTMR). 3 Comprehensive guidance on the criteria to find identity between goods and services and between signs can be found in the respective paragraphs of The Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, Chapter 2, Comparison of Goods and Services and Chapter 3, Comparison of Signs.
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2.2 Article 8(1)(b) CTMR – Likelihood of confusion
Article 8(1)(b) CTMR states that, upon opposition, a CTM application shall not be registered:
…if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).
Hence, in contrast to situations of double identity as seen above, in cases of mere similarity between the signs and the goods/services, or identity of only one of these two factors, an ea rlier trade mark may successfully oppose a C TM application under Article 8(1)(b) only if there is a likelihood of confusion.
3 The Notion of Likelihood of Confusion
3.1 Introduction
The assessment of likelihood of confusion is a calculus applied in situations of conflict between trade marks in opposition proceedings under the CTMR as well as in infringement proceedings in the courts of the EU. However, neither the CTMR nor the Directive contains a def inition of likelihood of confusion or a statement as to precisely what ‘confusion’ refers to. Unsurprisingly then, the precise meaning of the term ‘likelihood of confusion’ has been the subject of much debate and litigation.
As shown below, it has been settled case-law for some time now that fundamentally the concept of likelihood of confusion refers to situations where:
(1) the public directly confuses the conflicting trade marks;
(2) the public makes a connection between the conflicting trade marks and assumes that the goods/services in question are from the same or economically-linked undertakings (likelihood of association).
These two situations are further discussed below (paragraph 3.2). The mere fact that the perception of a later trade mark brings to mind an earlier trade mark does not constitute likelihood of confusion.
The Court has also established the principle that ‘marks with a hi ghly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a l ess distinctive character’ (see paragraph 3.3 below).
Finally, the concept of likelihood of confusion as developed by the Court must be regarded as a l egal concept rather than a purely realistic reflection of consumer cognitive behaviour and purchasing habits (see paragraph 3.4 below).
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3.2 Likelihood of confusion and likelihood of association
The Court considered likelihood of confusion comprehensively in ‘Sabèl’ (judgment of 11/11/1997, C-251/95, ‘Sabèl’). The Directive’s equivalents of Article 8(1)(b) CTMR and the 8th recital of the CTMR clearly indicated that likelihood of confusion relates to confusion about the origin of goods/services, but the Court was required to consider what precisely this meant because there were opposing views on the meaning of, and the relationship between, ‘likelihood of confusion’ and ‘likelihood of association’ both of which are referred to in Article 8(1)(b) CTMR.
This issue needed to be resolved because it was argued that likelihood of association was broader than likelihood of confusion as it could cover instances where a later trade mark brought an earlier trade mark to mind but the consumer did not consider that the goods/services had the same commercial origin4. Ultimately, the issue in ‘Sabèl’ was whether the wording ‘the likelihood of confusion includes the likelihood of association’ meant that ‘likelihood of confusion’ could cover a situation of association between trade marks which did not give rise to confusion as to origin.
In ‘Sabèl’, the Court found that likelihood of association is not an alternative to likelihood of confusion, but that it merely serves to define its scope. Therefore, a finding of likelihood of confusion requires that there be confusion as to origin.
In ‘Canon’ (paras 29-30), the Court clarified the scope of confusion as to origin when it held:
... the risk that the public might believe that the goods and s ervices in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion … there can be no s uch likelihood where it does not appear that the public could believe that the goods or services come from the same undertaking or, as the case may be, from economically-linked undertakings (emphasis added).
As seen above, likelihood of confusion relates to confusion as to commercial origin including economically-linked undertakings. What matters is that the public believes that the control of the goods or services in question is in the hands of a single undertaking. The Court has not interpreted economically-linked undertakings in the context of likelihood of confusion, but it has done so with respect to the free movement of goods/services. In ‘Ideal Standard’ the Court held:
… A number of situations are covered: products put into circulation by the same undertaking, by a licensee, by a parent company, by a subsidiary of the same group, or by an exclusive distributor.
… In all the cases mentioned, control [is] in the hands of a single body: the group of companies in the case of products put into circulation by a subsidiary; the manufacturer in the case of products marketed by the distributor; the licensor in the case of products marketed by a l icensee. In the case of a licence, the licensor can control the quality of the licensee’s products by including in the contract clauses requiring the licensee to comply with his instructions and giving him the possibility of verifying such compliance. The origin which the trade mark is intended to guarantee is the
4The concept came from Benelux case-law and applied inter alia to non-reputed marks.
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same: it is not defined by reference to the manufacturer but by reference to the point of control of manufacture.
(See judgment of 22/06/1994, C-9/93, ‘Ideal Standard’, paras 34 and 37.)
Consequently, economic links will be presumed where the consumer assumes that the respective goods or services are marketed under the control of the trade mark proprietor. Such control can be assumed to exist in the case of enterprises belonging to the same group of companies and i n the case of licensing, merchandising or distribution arrangements as well as in any other situation where the consumer assumes that the use of the trade mark is normally possible only with the agreement of the trade mark proprietor.
From the premises above, therefore, the Court held that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically-linked undertakings.
Hence, if the perception of a later trade mark merely brings to mind an earlier trade mark, but the consumer does not assume the same commercial origin, this does not constitute likelihood of confusion5.
3.3 Likelihood of confusion and enhanced distinctiveness
The distinctiveness of the earlier trade mark has been held to be an i mportant consideration for assessing likelihood of confusion. The main findings of the Court are:
• the more distinctive the earlier trade mark, the greater will be t he likelihood of confusion (see ‘Sabèl’ para. 24);
• trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than trade marks with a less distinctive character (see ‘Canon’ para. 18).
One consequence of these findings is that likelihood of confusion can be established between marks in conflict when highly distinctive earlier trade marks are invoked even if the degree of similarity between the goods/services concerned is low (see Opinion of Advocate General of 21/03/2002, C-292/00, ‘Davidoff’ para. 48)6.
3.4 Likelihood of confusion: questions of fact and questions of law
The concept of likelihood of confusion is a l egal concept rather than a mere factual evaluation of the rational judgments and e motional preferences that inform the consumer’s cognitive behaviour and pur chasing habits. Therefore, assessment of likelihood of confusion depends on both legal questions and facts.
5Although such a situation could take unfair advantage of, or be detrimental to, the distinctive character or the reputation of an earlier mark under Article 8(5), see The Guidelines Part C, Opposition, Section 5, Article 8(5) CTMR. 6 See The Guidelines, Part C, Opposition, Section 2, Identity and Li kelihood of Confusion, Chapter 8, Global Assessment.
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3.4.1 Fact and law – similarity of goods / services and of signs
Determining the relevant factors for establishing likelihood of confusion and whether they exist is a question of law, i.e. these factors are established by the relevant legislation, namely, the CTMR and case-law.
For instance, Article 8(1) CTMR establishes that the identity/similarity of goods/services is a condition for likelihood of confusion. The question of the relevant factors for evaluating whether this condition is met is also a q uestion of law. The C ourt has identified the following factors for determining whether goods/services are similar:
• their nature • their intended purpose • their method of use • whether they are complementary or not • whether they are in competition or interchangeable • their distribution channels / points of sale • their relevant public • their usual origin.
(See C-39/97 ‘Canon’.)
All these factors are legal concepts and det ermining the criteria to evaluate them is also a question of law. However, it is a question of fact whether, and to what degree, the legal criteria for determining ‘nature’ are fulfilled in a particular case.
By way of example, cooking fat does not have the same nature as petroleum lubricating oils and greases even though both contain a fat base. Cooking fat is used in preparing food for human consumption, whereas oils and greases are used for lubricating machines. Considering ‘nature’ to be a r elevant factor in the analysis of similarity of goods/services is a matter of law. On the other hand, it is a matter of fact to state that cooking fat is used in preparing food for human consumption and that oils and greases are used for machines.
Similarly, when it comes to the comparison of signs, Article 8(1) CTMR establishes that the identity/similarity of signs is a condition for likelihood of confusion. It is a question of law that a conceptual coincidence between signs may render them similar for the purposes of the CTMR, but it is a question of fact, for instance, that the word ‘fghryz’ does not have any meaning for the Spanish public.
3.4.2 Fact and law – evidence
In opposition proceedings, the parties must allege and, where necessary, prove the facts in support of their arguments, such as the similarity of goods/services. This follows from Article 76(1) CTMR according to which, in opposition proceedings, the Office shall be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.
Therefore, in the above example, it is up to the opponent to state the facts on which the claim of similarity is based and to submit supporting evidence. For instance, where wear-resistant cast iron is to be c ompared with medical implants, it is not up t o the Office to answer the question of whether wear-resistant cast iron is actually used for
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medical implants. This must be demonstrated by the opponent as it seems improbable (decision of 14/05/2002, R 0684/2000-4 ‘Tinox’).
An admission by the applicant of legal concepts, such as likelihood of confusion or similarity of goods/services is irrelevant. It does not relieve the Office from analysing and deciding on t hese concepts. This is not contrary to Article 76(1) CTMR which is binding on the Office only as regards the facts, evidence and arguments and does not extend to the legal evaluation of the same. Therefore, the parties may agree as to which facts have been proven or not, but they may not determine whether or not these facts are sufficient to establish the respective legal concepts, such as similarity of goods/services, similarity of the signs, and likelihood of confusion.
Article 76(1) CTMR does not prevent the Office from taking into consideration, on i ts own initiative, facts that are already notorious or well known or which may be learned from generally accessible sources, for example, that PICASSO will be recognised by EU consumers as a famous Spanish painter (judgment of 22/06/2004, T-185/02, ‘Picaro’, C-361/04P dismissed). However, the Office cannot quote ex officio new facts or arguments (e.g. reputation or degree of knowledge of the earlier mark, etc.).
Moreover, even though certain trade marks are sometimes used in daily life as generic terms for the goods and services that they cover, this should never be taken as a fact by the Office. In other words, trade marks should never be referred to (or interpreted) as if they were a generic term or a category of goods or services. For instance, the fact that in daily life part of the public refers to ‘X’ when talking about yoghurts (‘X’ being a trade mark for yoghurts) should not lead to using ‘X’ as a generic term for yoghurts.
4 Evaluation of the Factors Taken into Account for Establishing Likelihood of Confusion
Having established what is meant by likelihood of confusion, this paragraph explains the various factors that are examined in order to evaluate whether or not there is likelihood of confusion and the interplay between these factors.
4.1 The relevant point in time
The relevant moment for assessing likelihood of confusion is when the opposition decision is taken.
Where the opponent relies on enhanced distinctiveness of an earlier trade mark, the conditions for this must have been m et on or before the filing date of the CTM application (or any priority date) and t hey must still be fulfilled at the time of the decision. Office practice is to assume that this is the case, unless there are indications to the contrary.
Where the CTM applicant relies on a reduced scope of protection (weakness) of the earlier trade mark, only the date of the decision is relevant.
4.2 Methodological approach of the Office
In ‘Sabèl’ the Court set out in paragraph 23 that:
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… [the] global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dom inant components. The wording of Article 4(1)(b) of the Directive ‘... there exists a likelihood of confusion on t he part of the public ...’ shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
In other words, whether or not there is a likelihood of confusion depends on a global assessment of several interdependent factors including: (i) the similarity of the goods and services, (ii) the similarity of the signs, (iii) the distinctive and dominant elements of the conflicting signs, (iv) the distinctiveness of the earlier mark, and (v) the relevant public.
The first step in assessing whether there is a likelihood of confusion is to examine these factors (see paragraph 4.3 and following below).
The second step is to determine their relevance in a separate ‘Global Assessment’ in which a conclusion on likelihood of confusion is reached after balancing these different factors which may complement or offset each other and which have various degrees of relative importance depending on the specific circumstances.
The methodology of the Office in this regard differs from approaches that meld the assessment of factors into a s ingle evaluation of whether the trade marks are ‘confusingly similar’. This difference should not in principle affect the final ‘global appreciation’, which can be reached in a variety of ways.
4.3 Comparison of goods and services
Similarity and/or identity of goods/services is a conditio sine qua non in order to find likelihood of confusion. Comprehensive guidance on the comparison of goods/services can be found in The Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 2, Comparison of Goods and Services.
If there is no degree of similarity between the goods/services, the examination will be terminated at this point in so far as likelihood of confusion is concerned.
Otherwise, if there is at least some degree of similarity, the examination of other factors continues.
4.4 Comparison of signs
At least some degree of similarity between the signs is also a necessary condition for a finding of likelihood of confusion. The comparison of signs involves an ov erall appreciation of their visual, aural and/or conceptual characteristics. If there is only similarity in one o f the three aspects, then the signs are considered to be s imilar. Whether the signs are sufficiently similar to lead to a l ikelihood of confusion is dealt with in the global assessment of likelihood of confusion. Comprehensive guidance on the comparison of signs can be found in The Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 3, Comparison of Signs.
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The signs are considered dissimilar only if no s imilarity can be f ound in any of the three aspects.
If there is no degree of similarity between the signs, the examination will be terminated at this point in so far as likelihood of confusion is concerned.
Otherwise, if there is at least some degree of similarity, the examination of other factors continues.
4.5 Distinctive and dominant elements of the trade marks
The global appreciation of the conflicting trade marks must be bas ed on the overall impression given by the trade marks, bearing in mind, in particular, their distinctive and dominant components. Comprehensive guidance on the analysis of the distinctive and dominant components can be found in The Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 4, Distinctiveness and Chapter 5, Dominant Character.
4.6 Distinctiveness of the earlier trade mark
Where an opponent explicitly claims that an earlier trade mark is particularly distinctive by virtue of intensive use or reputation, this claim will be examined and evaluated. Comprehensive guidance on the distinctiveness of the earlier trade mark can be found in The Guidelines, Part C, Opposition, Section 2, Double Identity and Li kelihood of Confusion, Chapter 4, Distinctiveness.
4.7 Relevant public – level of attention
The relevant public plays an i mportant role when assessing other elements of a likelihood of confusion (e.g. comparison of the goods and services, comparison of the signs, assessment of distinctiveness). Moreover, one of the factors which can weigh for or against a finding of a likelihood of confusion is the level of attention of the public. Comprehensive guidance on the relevant public and level of attention can be found in The Guidelines, Part C, Opposition, Section 2, Double Identity and L ikelihood of Confusion. Chapter 6, Relevant Public and Degree of Attention.
4.8 Other arguments, global assessment and conclusion
The global assessment both:
• sets out and evaluates other factors and principles relevant to the evaluation of likelihood of confusion (such as a family of marks, coexistence, or the mode of purchase of the goods/services);
• assesses the relative importance of all of the interdependent factors, which may complement or offset each other, in order to reach a dec ision on l ikelihood of confusion. For example, the marks may be distinctive for some of the goods or services but not for others and thus likelihood of confusion may only exist for the goods and services for which the earlier mark is considered distinctive.
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Comprehensive guidance on other factors and on the global assessment can be found in The Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 7, Other factors, and 8, Global Assessment.
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Annex I
General principles coming from case-law7
Judgment of 11/11/1997, C-251/95 ‘Sabèl’
- The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (para. 22).
- The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the public might make between the two marks and on the degree of similarity between the signs and the goods (para. 22).
- The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components (para. 23).
- The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (para. 23).
- The more distinctive the earlier mark, the greater will be the likelihood of confusion (para. 24). - It is not impossible that the conceptual similarity resulting from the fact that two marks use images
with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (para. 24).
- However, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion (para. 25).
- The concept of likelihood of association is not an alternative to likelihood of confusion, but serves to define its scope (para. 18).
- The mere association that the public might make between two marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion (para. 26).
Judgment of 29/09/1998, C-39/97 ‘Canon’
- The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (para. 29).
- By contrast, there can be no such likelihood where the public does not think that the goods come from the same undertaking (or from economically-linked undertakings) (para. 30).
- In assessing the similarity of the goods and services, all the relevant factors relating to those goods or services themselves should be taken into account (para. 23).
- Those factors include, inter alia, their nature, the purpose for which they are used (the translation ‘end users’ in the official English language version is not correct) and their method of use, and whether they are in competition with each other or are complementary (para. 23).
- A global assessment of the likelihood of confusion implies some interdependence between the relevant factors and in particular a similarity between the marks and between these goods or services. A lesser degree of similarity between the goods may be offset by a greater degree of similarities between the marks and vice versa (para. 17).
- Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (para. 18).
- Registration of a trade mark may have to be refused, despite a lesser degree of similarity between the goods or services covered, where the marks are very similar and the earlier mark, in particular its reputation, is highly distinctive (para. 19).
- The distinctive character of the earlier mark and in particular its reputation must be taken into account when determining whether the similarity between the goods and services is enough to give rise to the likelihood of confusion (para. 24).
- There may be a likelihood of confusion, even if the public thinks that these goods have different places of production (para. 30).
7 These are not direct citations.
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Judgment of 22/06/1999, C-342/97 ‘Lloyd Schuhfabrik Meyer’
- The level of attention of the average consumer, who is deemed to be reasonably well-informed and reasonably observant and circumspect, varies according to the category of the goods and services in question (para. 26).
- However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (para. 26).
- When assessing the degree of visual, phonetic and conceptual similarity it can be appropriate to evaluate the importance attached to each by reference to the category of goods and the way they are marketed (para. 27).
- It is possible that mere aural similarity could lead to likelihood of confusion (para. 28). - In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly
distinctive, an overall assessment needs to be made of the greater or lesser capacity of the mark to identify the goods and services for which it has been registered as coming from a particular undertaking (para. 22).
- In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods and services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (para. 23).
- It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character (para. 24).
Judgment of 22/06/2000 C-425/98 ‘Marca Mode’
- The reputation of a mark does not give grounds for presuming the existence of a likelihood of confusion simply because of the existence of a likelihood of association in the strict sense (para. 41).
- Article 5(1)(b) of the Directive cannot be interpreted as meaning that where • a trade mark has a particularly distinctive character, either per se or because of the reputation it
enjoys with the public, and • a third party, without the consent of the proprietor of the mark, uses, in the course of trade in
goods or services which are identical with, or similar to, those for which the trade mark is registered, a sign which so closely corresponds to the mark as to give the possibility of its being associated with that mark, the exclusive right enjoyed by the proprietor entitles him to prevent the use of the sign by that third party if the distinctive character of the mark is such that the possibility of such association giving rise to confusion cannot be ruled out (emphasis added) (para. 42).
Judgment of 06/10/2005, C-120/04 ‘Medion’
- Where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (para. 37).
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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 2
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION
CHAPTER 2
COMPARISON OF GOODS AND SERVICES
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Table of Contents
1 Introduction................................................................................................ 5 1.1 Relevance ...................................................................................................5 1.2 Nice Classification: a starting point..........................................................5
1.2.1 Its nature as a classification tool..................................................................... 6 1.2.2 Its structure and methodology ........................................................................ 6 1.2.3 Conclusions to be drawn from the structure of the Nice Classification .......... 7 1.2.4 Changes in the classification of goods / services........................................... 7
1.3 OHIM database for the comparison of goods / services..........................7 1.4 Definition of goods and services (Terminology) ......................................8
1.4.1 Goods ............................................................................................................. 8 1.4.2 Services .......................................................................................................... 8 1.4.3 Products.......................................................................................................... 9
1.5 Determining the goods / services .............................................................9 1.5.1 The correct wording........................................................................................ 9 1.5.2 The relevant scope ....................................................................................... 10 1.5.3 The meaning of goods / services ................................................................. 11
1.6 Objective approach ..................................................................................12 1.7 Statement of reasons ...............................................................................12
2 Identity...................................................................................................... 13 2.1 General principles ....................................................................................13 2.2 Full identity: identical terms or synonyms .............................................13 2.3 Partial identity...........................................................................................14
2.3.1 The earlier mark includes the goods / services of the contested mark ........ 14 2.3.2 The contested mark includes the goods / services of the earlier mark ........ 15 2.3.3 Overlap ......................................................................................................... 16
2.4 Practice on the use of general indications of the class headings ........ 17
3 Similarity of Goods and Services........................................................... 18 3.1 General principles ....................................................................................18
3.1.1 Similarity factors ........................................................................................... 18 3.1.2 Defining relevant factors............................................................................... 19
3.2 The specific similarity factors .................................................................20 3.2.1 Nature ........................................................................................................... 20 3.2.2 Intended purpose.......................................................................................... 23 3.2.3 Method of use............................................................................................... 23 3.2.4 Complementarity .......................................................................................... 24 3.2.5 In competition ............................................................................................... 27 3.2.6 Distribution channel ...................................................................................... 27 3.2.7 Relevant public ............................................................................................. 28 3.2.8 Usual origin (producer / provider) ................................................................. 29
3.3 Relation between different factors ..........................................................31
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3.3.1 Interrelation of factors................................................................................... 32 3.3.2 Importance of each factor............................................................................. 32 3.3.3 Different types of comparisons: goods versus goods, services versus
services and goods versus services............................................................. 33 3.3.4 Degree of similarity....................................................................................... 33
Annex I ............................................................................................................ 35
1 Parts, components and fittings .............................................................. 35
2 Raw material and semi-processed goods ............................................. 35
3 Accessories ............................................................................................. 36
4 Installation, maintenance and repair services ...................................... 37
5 Advisory services.................................................................................... 37
6 Rental and leasing................................................................................... 38 6.1 Rental / leasing versus related services .................................................39 6.2 Rental / leasing versus goods: in principle, always dissimilar ............. 39
Annex II ........................................................................................................... 40
1 Chemicals, pharmaceuticals and cosmetics......................................... 40 1.1 Chemicals (Class 1) versus chemical products (Classes 3 and 5) ....... 40 1.2 Pharmaceuticals versus pharmaceuticals..............................................40 1.3 Pharmaceuticals versus dietetic substances adapted for medical
use.............................................................................................................42 1.4 Pharmaceuticals versus cosmetics ........................................................42 1.5 Pharmaceuticals versus services ...........................................................42
2 Automobile industry................................................................................ 42
3 Electric apparatus / instruments ............................................................ 43
4 Fashion and textile industries ................................................................ 43 4.1 Raw or semi-processed materials versus finished goods .................... 43 4.2 Textile goods (Class 24) versus clothing (Class 25)..............................44 4.3 Clothing, footwear and headgear (Class 25) ..........................................44 4.4 Fashion accessories ................................................................................44 4.5 Sports clothing, footwear and headgear (Class 25) versus sporting
and gymnastic articles (Class 28) ...........................................................45 4.6 Fashion design (Class 42), tailoring services (Class 40) versus
clothing (Class 25)....................................................................................46
5 Food, beverages and restaurant services ............................................. 46
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5.1 Ingredients of prepared food...................................................................46 5.2 Main ingredient.........................................................................................46 5.3 Non-alcoholic beverages (Class 32) versus alcoholic beverages
(except beers) (Class 33) .........................................................................47 5.4 Beers (Class 32), alcoholic beverages (except beers) (Class 33) ......... 47 5.5 Provision of food and drinks versus food and drinks ...........................47
6 Services to support other businesses................................................... 47
7 Retail services ......................................................................................... 49 7.1 Retail services versus any good: dissimilar...........................................49 7.2 Retail services of specific goods v ersus same specific goods:
similar to a low degree.............................................................................50 7.3 Retail services of specific goods versus different or similar specific
goods: dissimilar......................................................................................50 7.4 Retail services versus retail services or retails services of specific
goods: identical........................................................................................50 7.5 Retail services of specific goods versus retail services of other
specific goods: similar.............................................................................50 7.6 Services to which the same principles apply .........................................51 7.7 Services to which the same principles do not apply .............................51
8 Financial services.................................................................................... 51 8.1 Banking services (Class 36) versus insurance services (Class 36)...... 52 8.2 Real estate affairs (Class 36) versus financial affairs (Class 36) .......... 52 8.3 Credit cards (Class 9) versus financial services (Class 36) .................. 53
9 Transport, packaging and storage......................................................... 53 9.1 Transport of goods (Class 39) versus any good....................................53 9.2 Packaging and storage of goods (Class 39) versus any good.............. 53
10 Information Technology.......................................................................... 54 10.1 Computers versus software ....................................................................54 10.2 Software versus apparatus that use software........................................54 10.3 Software, downloadable ‘apps’ and do wnloadable electronic
publications ..............................................................................................54 10.4 Specific software versus specific software ............................................55 10.5 Computers and sof tware (Class 9) versus computer programming
(Class 42) ..................................................................................................55 10.6 Apparatus for recording, transmission, reproduction of sound or
images, computers and sof tware (Class 9) versus telecommunication services (Class 38) ..................................................56
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1 Introduction
1.1 Relevance
The comparison of goods and services is primarily of relevance for the assessment of identity according to Article 8(1)(a) CTMR and likelihood of confusion according to Article 8(1)(b) CTMR. One of the main conditions for Article 8(1)(a) CTMR is the identity of goods / services, while Article 8(1)(b) CTMR requires the identity or similarity of goods / services. Consequently, if all goods / services are found to be dissimilar, one of the conditions contained in Article 8(1) CTMR is not fulfilled and the opposition must be rejected without addressing the remaining sections of the decision1.
The criteria for the assessment of identity or similarity might also play a role when proof of use has been requested and the evidence has to be assessed in order to conclude whether the opponent showed use for the same goods / services as registered. In particular, it is important to determine whether goods and services for which the mark has been used belong to the category of the goods and services for which the mark was registered or are only similar or even dissimilar to them (see The Guidelines Concerning Opposition. Part 6: Proof of Use).
Likewise, evidence of use of goods / services might also be relevant when examining a claim to enhanced distinctiveness. In such cases it is often necessary for the examiner to answer the question of whether the enhanced distinctiveness covers goods / services for which the earlier mark enjoys protection and w hich are relevant for the specific case, i.e. which have been considered to be identical or similar to the goods / services of the contested CTM (see The Guidelines Concerning Opposition. Part 2: Identity and Likelihood of Confusion. Chapter 4: Distinctiveness).
Furthermore, the outcome of the comparison of goods / services plays an i mportant role for defining the part of the public against which a likelihood of confusion exists. The relevant public is also considered for the goods / services found to be identical or similar (see The Guidelines Concerning Opposition. Part 2: Identity and Likelihood of Confusion. Chapter 6: Relevant public and degree of attention).
The comparison of goods / services may also be relevant under Article 8(3) CTMR which requires the identity or ‘close relation or equivalence in commercial terms’ of goods / services (see The Guidelines Concerning Opposition. Part 3: Trade mark filed by and agent – Article 8(3) CTMR) and under the applicable provisions of national law under Article 8(4) CTMR, since identity or similarity of the goods / services is often a condition under which the use of a subsequent trade mark may be prohibited (see The Guidelines Concerning Opposition. Part 4: Rights under Article 8(4) CTMR).
1.2 Nice Classification: a starting point
The goods / services to be compared are categorised according to the Nice Classification. Currently the Nice Classification consists of 34 classes (1-34) to categorise goods and 11 classes (35-45) to categorise services.
1 Equally, the comparison of goods and services is of relevance in invalidity proceedings, since pursuant to Article 53(1)(a) CTMR a registered Community trade mark is declared invalid where the conditions set out in Article 8(1) CTMR are fulfilled.
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1.2.1 Its nature as a classification tool
The Nice Classification was set up with the aim of harmonising national classification practices. Its first edition entered into force in 1961. Although it has undergone several revisions, it sometimes lags behind the rapid changes in product developments in the markets. Furthermore, the wording of the headings is sometimes unclear and imprecise.
The Implementing Regulation, Rule 2(4) CTMIR, explicitly states that the Nice Classification serves purely administrative purposes and as such does not provide in itself a basis for drawing conclusions as to the similarity of goods and services.
The fact that the respective goods or services are listed in the same class of the Nice Classification is not, in itself, an indication of similarity.
Examples
• Live animals are dissimilar to flowers (Class 31). • Advertising is dissimilar to office functions (Class 35).
Not even the fact that two specific goods / services fall under the same general indication of a class heading makes them similar per se: cars and bicycles – although both fall under vehicles in Class 12 – are not considered similar.
Furthermore, goods and / or services listed in different classes are not necessarily considered dissimilar (see judgment of 16/12/2008, T-259/06, ‘Manso de Velasco’, para. 30-31).
Examples
• Meat extracts (Class 29) are similar to spices (Class 30). • Travel arrangement (Class 39) is similar to providing temporary accommodation
(Class 43).
1.2.2 Its structure and methodology
Notwithstanding Rule 2(4) CTMIR, the classification may serve as a tool to identify the common characteristics of certain goods / services.
Many classes of the Nice Classification are structured according to factors such as function, composition and / or purpose of use which may be relevant in the comparison of goods / services. For example:
• Class 1 comprises chemical goods primarily based on their chemical properties (nature), rather than on their specific application. In contrast, Class 3 covers all items either being cleaning preparations or for personal hygiene or beautification. Although they can by their nature also be c lassified as chemical products, it is their specific purpose that allows a distinction and thus a different classification.
• Equally, it is due to their nature that most items made of leather are classified in Class 18, whereas clothing made of leather fall under Class 25 since they serve a very specific purpose, namely that they are intended for wear by people and serve as protection from the elements.
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1.2.3 Conclusions to be drawn from the structure of the Nice Classification
The structure of the class headings is not uniform and does not follow the same logic. Some classes only consist of one g eneral indication which by its definition already covers nearly all the goods / services included in this class (Class 15 musical instruments; Class 38 telecommunications). Some others include many general indications, some being very broad and others very specific. For example, the heading of Class 9 includes more than 30 terms, ranging from scientific apparatus and instruments to fire-extinguishing apparatus.
Exceptionally, there are class headings containing general indications which comprise another general indication and t hus they are identical, e.g. materials for dressing in Class 5 include plasters in Class 5. This is especially the case when a specific indication in a class heading is only mentioned to clarify that it does not belong to another class, although it is already included in another broader indication of the class heading. Example: Adhesives for industrial use are included in chemicals used in industry in Class 1. Its reference is mainly thought to distinguish them from adhesives classified in Class 16 and which are for stationery or household purposes.
To draw a conclusion: the Nice Classification gives indications that can be used in the assessment of identity or similarity of goods / services. However, its structure and content is not coherent. Therefore, each heading or specific term has to be analysed according to the specific class under which it is classified. As stated before, the Nice Classification mainly serves to categorise the goods / services for administrative purposes and is not decisive for the comparison of them.
1.2.4 Changes in the classification of goods / services
Normally, with each revision of the Nice Classification there are changes in the classification of goods / services (in particular transfer of goods / services between various classes) or the wording of headings changes. In such cases the list of goods and / or services of the earlier but also the contested mark must be interpreted according to the edition of the Nice Classification at its moment of filing.
Example
• Legal services were transferred from Class 42 to Class 45 with the 8th edition of the Nice Classification. The nature of these services has not changed.
1.3 OHIM database for the comparison of goods / services
The database on the comparison of goods and services is a search tool to provide help and support to examiners for the assessment of the similarity of goods and services. The database serves the purpose of harmonising the practice on t he assessment of similarity of goods and services and t o guarantee coherence of the opposition decisions. The database must be consulted.
The database is based on the comparison of specific pairs of goods and services. A ‘pair’ compares two ‘expressions’. An ‘expression’ consists of a class number from the Nice Classification (1-45) and a textual element, i.e. a specific good or service (including categories of goods and s ervices, such as ‘clothing’ or ‘education’). There are five possible results of the search: identity, high degree of similarity, similarity, low
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degree of similarity and dissimilarity. In the case of the various degrees of similarity the database indicates the criteria which have led to its finding.
The database is constantly updated and i f necessary revised in order to create a comprehensive and reliable source of reference.
Since the database gives or will give answers to specific comparisons, the Guidelines concentrate on defining the general principles and their application in practice.
1.4 Definition of goods and services (Terminology)
1.4.1 Goods
The Regulation does not give a definition as to goods and services. Although the Nice Classification gives some general explanations to this effect in its introductory remarks, it refrains from clearly setting criteria for the distinction between goods and services.
In principle, a good is any kind of item which may be traded. Goods comprise raw materials (unprocessed plastics in Class 1), semi-finished products (plastics in extruded form for use in manufacture in Class 17) and finished products (plastic household container in Class 21). They include natural and manufactured goods, such as agricultural products in Class 31 and machines and machine tools in Class 7.
However, sometimes it is not clear whether goods only comprise tangible physical products contrary to services which are intangible. The definition and thus the scope of protection are particularly relevant when it comes to ‘goods’ such as ‘electricity’ which are intangible. This question is already answered during the examination on classification and will usually not cause any problem in the comparison of goods and services.
1.4.2 Services
A service is any activity or benefit that one party can offer to another that is intangible and does not result in the transfer of ownership of any physical object.
Example
• Car repair is a service.
In contrast to goods, a service is always an intangible asset. Services comprise economic activities provided to third parties which do not fall under the initial production, manufacture or sale of goods.
• Advertising one’s own goods is not a s ervice but running an adv ertisement agency (designing advertisement campaigns for third parties) is. Terms appearing in the list, such as advertisement, must therefore be meant to cover only the above definition of services.
• Selling or distributing one’s own goods is not a service. Retail services are meant to cover the services around the actual sale of goods, such as providing the customer with an opportunity to conveniently see, compare or test the goods.
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One indication for an ac tivity to be c onsidered a s ervice under trade mark law is its independent economic value, i.e. that it is usually provided subject to some form of (monetary) compensation. Otherwise, it could just be a mere ancillary activity provided together with or after the purchase of a specific good.
Example
• Delivery, including the transport of furniture which has previously been purchased, is not an i ndependent service falling under transport services in Class 39.
However, the intention to make profit is not necessarily a criterion for defining whether an activity can qualify as a ‘service’ (see judgment of 09/12/2008, C-442/07, ‘Radetzky’, para. 16-18). It is more a question of whether the service has an independent market area and customers rather than the way or form the compensation is finally made.
1.4.3 Products
In common parlance the term ‘products’ is used for both goods and services, e.g. ‘financial products’ instead of financial services. Whether a term in common parlance is described as a ‘product’ is immaterial for it being classified as a good or as a service.
1.5 Determining the goods / services
1.5.1 The correct wording
As a preliminary matter, the correct wording of the lists of goods and / or services under consideration must be identified.
1.5.1.1 Community trade marks
An application for a Community trade mark shall be publ ished in all the official languages of the Community (Article 120(1) CTMR). Likewise, all entries in the Register of Community trade marks shall be made in all these languages (Article 120(2) CTMR). Publications of both applications and ent ries made in the Register are made in the Community Trade Marks Bulletin (Rule 85(1) and (2) CTMIR).
In practice occasional discrepancies may be found between:
• the translation of the wording of the list of goods and / or services of a CTM (application or registration) published in the Community Trade Marks Bulletin, and
• the original wording as filed.
In cases of such a discrepancy, the definitive version of the list of goods and services is:
• if the first language is a language of the Office, the text in the first language.
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• if the first language of the application is not one of the five languages of the Office, the text in the second language indicated by the applicant (see Article 120(3) CTMR).
This applies regardless of whether the CTM (or CTM application) is the earlier right or the contested application.
1.5.1.2 Earlier national marks and international registrations
The list of goods and services of the earlier marks on which the opposition is based must be submitted in the language of the opposition proceedings (Rule 19(3) CTMIR). The Office does not require any certified translation and accepts simple translations, drawn up by the opponent or its representative. The Office normally does not make use of its faculty under Rule 98(1) CTMIR, 2nd sentence, to require the translation to be certified by a sworn or official translator. Where the representative adds a declaration that the translation is true to the original, the Office will not question this. The ot her party may however question the correctness of the translation during the adversarial part of the proceedings. Furthermore, since the translation must reproduce the structure of the original document (Rule 98(1) CTMIR), obvious discrepancies may also be noticed by the examiner (e.g. the list in the original language consists of three expressions whilst the translation has two pages, etc.). In such cases, the issue will have to be clarified by the examiner in the final decision.
For international registrations under the Madrid Agreement or Protocol, the language in which the international registration was registered is definitive (French, English or Spanish). However, where the language of the opposition procedure is not the language of the international registration, a translation must be supplied.
1.5.2 The relevant scope
The comparison of the goods and services must be based on the wording indicated in the respective lists of goods and / or services. The actual or intended use of the goods and services not stipulated in the list of goods and / or services is not relevant for the examination (see judgment of 16/06/2010, T-487/08, ‘Kremezin’, para. 71).
However, if proof of use of the earlier mark is validly requested and the submitted evidence is sufficient only for part of the goods / services in the list of goods and / or services, the earlier mark is deemed to be registered for only those goods / services (Article 42(2) CTMR), and consequently the examination is restricted to those goods / services (see further Part 6 – Proof of Use).
Moreover, in the case of the earlier mark, only the goods and services on which the opposition is validly based are pertinent. Hence, no account will be taken of the goods / services:
• that cannot be taken into account for reasons of admissibility,
• that have not been properly substantiated (e.g. only a partial translation of the list of goods and / or services was filed), or
• on which the opposition is not, or no longer, based.
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Similarly, only those goods and services of the contested application against which the opposition is directed are taken into consideration. Consequently, restrictions during the proceedings of either the list of goods and / or services of the application, or the scope of the opposition, or of both, will limit the goods and services to be compared.
Furthermore, an analysis of the wording of the list of goods and / or services might be required to determine the scope of protection of those goods and s ervices. This is especially true where terms such as in particular, namely, or equivalents are used in order to show the relationship of an individual product with a broader category.
The term in particular (or for example, such as, including or other equivalent) indicates that the specific goods / services are only examples of items included in the category, and that protection is not restricted to them. In other words, it introduces a non- exhaustive list of examples (on the use of in particular see a reference in judgment of 09/04/2003, T-224/01, ‘Nu-tride’).
On the other hand, the term namely (or exclusively or other equivalent) is exclusive and restricts the scope of the registration only to the specifically listed goods.
For example, in the case of chemicals used in industry, namely raw materials for plastics only the raw materials for plastics need to be compared with the goods of the other mark.
It should be recalled that the use of commas in the list of goods / services serves to separate items within the same or a similar category. The use of a semi-colon means a separation between terms. The separation of terms by different punctuation can lead to changes in their meaning and may lead to a different assessment when comparing the goods / services.
For example, in ‘computer software for use with industrial machines; fire extinguishers’ in Class 9, the inclusion of a semi-colon, means that the term ‘fire extinguishers’ must be considered as an independent category of goods, regardless of whether the intention was to protect computer software to be used in the field of industrial machines and fire extinguishers.
1.5.3 The meaning of goods / services
Once the wording of the goods and services to be considered has been identified, their meaning must be determined.
In some cases the exact meaning is immediately obvious from the list of goods and / or services of the marks where a m ore or less detailed description of the goods and services will often be given. For example, the wording belts, being articles of clothing excludes by definition safety or industrial belts.
In cases of doubt about the exact meaning of the terms used in the list of goods and / or services, these terms have to be i nterpreted both in the light of the Nice Classification and from a commercial perspective. Therefore, belts in Class 25 are due to their classification articles of clothing.
Where the meaning of terms in a semantic context, a commercial context and / or under the Nice Classification are ambiguous or leave some doubts, the meaning it has under the Nice Classification prevails.
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Clothing, for instance, refers to ‘clothes collectively’ (see e.g. Oxford English Dictionary) and thus to items worn to cover the body, such as shirts, dresses, pants, etc. Although the definition found in standard dictionaries does not explicitly exclude footwear the fact that it appears in the Nice Classification as a s eparate item in the same Class 25 leads to the conclusion that clothing and footwear are not identical but similar (confirmed by judgment of 13/07/2004, T-0115/02, ‘a (fig)’, para. 26).
However, that does not mean that two general indications of one c lass heading can never be considered identical. As mentioned above, the structure of the class headings is not uniform. Some general indications included in the class headings may encompass others.
Example
• Meat and poultry are identical (Class 29).
1.6 Objective approach
The comparison of the goods / services in question must be made without taking into account the degree of similarity of the conflicting signs or the distinctiveness of the earlier mark. It is only in the overall assessment of a decision that the examiners will take into account all the relevant factors.
The classification of the goods or services is not conclusive, because similar goods / services may be classified in different classes, whereas dissimilar goods / services may fall within the same class.
Identity or similarity of the goods / services in question must be de termined on a n objective basis.
It is necessary to base the findings on the realities of the marketplace, i.e. established customs in the relevant field of industry or commerce. These customs, especially trade practices, are dynamic and c onstantly changing. For instance, mobile phones nowadays combine many functions such as being a communication tool as well as a photographic apparatus.
In some cases the examiner may only base their decision on the facts and evidence submitted by the parties. What does not follow from the evidence submitted or is not commonly known should not be speculated on or extensively investigated ex-officio (see judgment of 09/02/2011, T-222/09, ‘Alpharen’, para. 31-32).
1.7 Statement of reasons
The examiner is required to reason in their decision the outcome of the comparison (identity, similarity or dissimilarity) for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same finding is given for a category or group of goods or services, the examiner may use only general reasoning for all of the goods or services concerned as long as these present analogous characteristics (see by analogy order of 18/03/2010, C-282/09, ‘PAYWEB CARD’, paras. 37-38, judgment
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of 12/04/2011, T-28/10, ‘EURO AUTOMATIC PAYMENT, para. 54 and judgment of 17/10/2013, C-597/12P, ‘ZEBEXIR’, paras 26-27).
2 Identity
2.1 General principles
Identity is generally defined as ‘the quality or condition of being the same in substance, composition, nature, properties, or in particular qualities under consideration’ (Oxford English Dictionary).
Identity does not only exist when the goods and services completely coincide (the same terms or synonyms are used), but also when and in so far as the contested mark’s goods / services fall within the broader category of the earlier mark, or, when and insofar as – conversely – a broader term of the contested mark includes the more specific goods / services of the earlier mark. There might also be identity when two broad categories under comparison coincide partially (‘overlap’). Hence a distinction can be made between cases of ‘full identity’ and ‘partial identity’.
Identity should not be established on the basis of similarity factors (see Section 3.1.1 below).
2.2 Full identity: identical terms or synonyms
Identity between the goods / services in dispute must be established on the basis of the wording of the relevant parts of the lists of goods and / or services of the two marks that have been identified in accordance with the principles set out above. Identity is obvious where the goods / services to be compared are listed in exactly the same terms.
Example
• Vehicles are identical to vehicles.
Where this is not the case, the terms of the respective lists of goods and / or services must be i nterpreted in order to show that they are in fact synonyms, i.e. that their meaning is the same. The interpretation can be made based on dictionary definitions, expressions from the Nice Classification and in particular taking into account the commercial perspective.
Examples
• Bicycle is a synonym for bike. The goods are identical.
• The meaning of the words smokers’ articles in Class 34 makes reference to individual objects which are used in close connection with tobacco or tobacco products. In former editions of the Nice Classification these products were called smokers’ requisites. Therefore, despite a different term used in the current heading, these goods are identical.
• From a commercial perspective health spa services and wellness services are the same and are therefore identical.
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However, if an identical wording is used but the goods are classified in different classes, this generally means that these goods are not identical:
Examples
• Drills (machine tools) in Class 7 are not identical to drills (hand tools) in Class 8. • Lasers (not for medical treatment) in Class 9 are not identical to lasers (for
curative purposes) in Class 10.
Even though they might be similar, the classification in different classes indicates that they have a different nature, purpose or method of use etc.
The same reasoning does not apply if the different classification is only due t o a revision of the Nice Classification or the goods / services are obviously wrongly ‘classified’ due to an obvious mistake, e.g. a transcription error.
Examples
• Playing cards (Class 16 – 7th edition) are identical to playing cards (Class 28 – 10th edition).
• Pharmaceutical preparations (Class 15 – obvious typing error) are identical to pharmaceutical preparations (Class 5).
2.3 Partial identity
2.3.1 The earlier mark includes the goods / services of the contested mark
Where the list of goods and / or services of the earlier right includes a g eneral indication or a broad category that covers the goods / services of the contested mark in their entirety, the goods and s ervices will be i dentical (see judgment of 17/01/2012, T-522/10 ‘Hell’, para. 36).
Examples
• Temporary accommodation (earlier right, Class 43) includes youth hostel services (contested mark, Class 43). Therefore, the services are identical.
• Pasta (earlier right, Class 30) includes spaghetti (contested mark, Class 30). The conflicting goods are considered identical.
Earlier mark
Contested mark
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2.3.2 The contested mark includes the goods / services of the earlier mark
If the goods / services designated in the earlier mark are covered by a g eneral indication or broad category used in the contested mark, these goods / services must be considered identical since the Office cannot dissect ex officio the broad category of the applicant’s / holder’s goods / services (see judgment of 07/09/2006, T-133/05, ‘Pam-Pim’s Baby-Prop’, para. 29).
Examples
• The earlier mark’s jeans (Class 25) are included in articles of clothing (contested mark, Class 25). The goods are considered identical.
• The earlier mark’s bicycles (Class 12) are included in vehicles (contested mark, Class 12). The goods are considered identical.
The applicant / holder may however restrict the list of goods / services in a way that excludes identity, but could still lead to similarity (see judgment of 24/05/2011, T-161/10, ‘E-Plex’, para. 22).
• The earlier mark’s jeans (Class 25) are included in articles of clothing (Class 25). The applicant / holder restricts the specification to articles of clothing, excluding jeans. The goods are no longer identical but remain similar.
• The earlier mark’s bicycles (Class 12) are included in vehicles (contested mark, Class 12). The applicant / holder restricts the specification to vehicles, namely automobiles. The goods are no longer identical or similar.
If the applicant / holder does not restrict the list of goods / services, or does so in an insufficient way, the Office will treat the contested mark’s general indication or broad term / category as a single unit and find identity.
If the contested mark covers a general indication or a broad term / category as well as specific items included therein, all of these will need to be compared with the specific earlier goods / services. The result of identity found with the general indication or broad term / category does not automatically extend to the specific items.
Example
• The contested mark covers vehicles (general indication) as well as bicycles, aircraft, trains (included in vehicles). Where the earlier mark is protected for
Earlier mark
Contested mark
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bicycles, identity will be found with respect to vehicles and to bicycles but not for aircraft or trains.
However, if the contested mark covers a general indication or broad term / category and specific terms which are not listed independently but only as examples, the comparison differs in so far as only the general indication or broad term / category has to be compared.
Example
• The contested mark covers vehicles, in particular bicycles, aircraft, trains. The earlier mark is protected for bicycles. The goods in conflict are considered identical.
The applicant / holder can avoid this result by deleting the general indication vehicles, the expression in particular, and the specific category bicycles.
Where the list of goods and / or services of the contested mark reads: vehicles, namely bicycles, aircraft, trains, the comparison differs in so far as only the specific items have to be c ompared. In this case only the contested bicycles are identical to the earlier goods.
2.3.3 Overlap
If two categories of goods / services coincide partially (‘overlap’) there might be identity if:
a. they are classified in the same class, b. they fall under the same general indication of the class heading, and c. it is impossible to clearly separate the two goods / services.
Examples
Earlier goods Contested goods Coinciding part
Outdoor clothing for women. Clothing made of leather Outdoor clothing for women made of leather
Components and spare parts for land vehicles Vehicle seats
2 Seats for land vehicles
Bread Long-life bakery products. Long-life bread
Electric kitchen utensils Thermometers3 Electric kitchen thermometers
2 Judgment of 09/09/2008, T-363/06, ‘Magic seat’, para. 22. 3 Judgment of 19/01/2011, T-336/09, ‘Topcom’, para. 34.
Earlier mark Contested mark
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The same applies when one general indication in a class heading is partially included in another general indication of the same class heading.
Examples
Earlier goods Contested goods Coinciding part
Soap Cleaning preparations Soaps for cleaning purposes
Scientific instruments Optical instruments Scientific optical instruments, e.g. microscopes
Fungicides Pharmaceutical preparations Fungicidal pharmaceutical preparations
In such cases, it is impossible for the Office to filter these goods from the abovementioned categories. Since the Office cannot dissect ex officio the broad category of the applicant’s / holder’s goods, they are considered to be identical.
In the first example given above, the outcome changes of course if soap is limited to soaps for personal use. In this case the goods are no longer included in the heading cleaning preparations in Class 3 since the latter is only for household use.
2.4 Practice on the u se of genera l indications of th e class headings
Following the President’s Communication No 2/12 of 20/06/2012 the Office does not object to the use of any of the general indications of the class headings provided that this identification is sufficiently clear and precise.4.
According to the aforesaid Communication the Office interprets the use of all the general indications in the class heading as follows:
• CTMs applied for on or before 20/06/2012: As regards Community trade marks registered and applications filed before the entry into force of the above Communication5 which use all the general indications listed in the class heading of a particular class, the Office considers that the intention of the applicant was to cover not only the literal meaning of the general indications but also the goods or services included in the alphabetical list of that class in the edition of the Nice Classification in force at the time of filing.
In judgment T-66/11 ‘Babilu’ of 31/01/2013, paras. 49-50, the GC confirmed this interpretation of the scope of protection of earlier CTMs.
• CTMs applied on or after 21/06/2012: An applicant for a trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the applicant does not indicate such an intention the general indications (provided that these respect
4 See in this respect: ‘Common Communication on the Common practice on the General Indications of the Nice Class headings’) 5 This Communication entered into force on 21/06/2012
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the requirements of clarity and pr ecision) will be interpreted following a l iteral approach.
OHIM and al l national Trade Mark Offices of the European Union issued a Common Communication on the implementation of the judgment ‘IP Translator’ (in the ‘Common Communication on the implementation of IP Translator‘). According to that Communication, OHIM interprets the scope of protection of national marks containing class headings as follows:
• Earlier national trade marks filed before the judgment ‘IP Translator’: In principle, OHIM accepts the filing practice of all national Trade Mark Offices in the European Union. National trade marks filed before the judgment ‘IP Translator’ have the scope of protection awarded by the national Office. The majority of the national Offices interpret the class headings of their marks literally. For those marks, OHIM also interprets the class headings on the basis of the natural and usual meaning of each general indication.
• Only eight national Trade Mark Offices do not interpret the class headings of their own marks filed before the ‘IP Translator’ judgment on the basis of their natural and usual meaning: Bulgaria, Finland, Greece, Hungary, Italy, Lithuania, Malta and Romania (See Table 1 of the Common Communication). OHIM interprets those national marks as covering the class headings plus the alphabetical list of the Nice edition at the time of filing (even if the national Office interprets the class heading to cover all goods and services in the class).
• Earlier national marks filed after the ‘IP Translator’ judgment: OHIM interprets all goods and services covered by the national marks on the basis of their natural and usual meaning (See Table 5 of the Common Communication).
In order to determine the scope of protection the above mentioned principles have to be applied. Only those goods or services deemed to be covered following these principles will be c onsidered when making the comparison between the goods / services.
3 Similarity of Goods and Services
3.1 General principles
3.1.1 Similarity factors
Generally speaking two items are defined as being similar when they have some characteristics in common.
The similarity of goods and services has been addressed in the case-law of the Court of Justice in Canon (judgment of 29/09/1998, C-39/97, ‘Canon’). The Court of Justice held that in assessing the similarity of goods all the relevant factors relating to those goods themselves should be taken into account. Those factors include, inter alia, their nature, their end users [should read ‘intended purpose’] and their method of use and whether they are in competition with each other or are complementary (para. 23).
The term ‘inter alia’ shows that the enumeration of the above factors by the Court is only indicative. The similarity of goods and services cannot depend on any number of fixed and limited criteria that could be generally determined in advance, with a uniform
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effect in all cases. There may be other factors in addition to or instead of those mentioned by the Court that may be pertinent for the particular case.
This leads to the conclusion that the following factors should be taken into account.
Canon factors
• nature, • intended purpose, • method of use, • complementarity, • in competition.
Additional factors
• distribution channels, • relevant public, • the usual origin of the goods / services.
These factors will be further explained below (see ‘The specific similarity factors’); they are also used in the Office’s database on the comparison of goods and services. It should be noted, however, that even though the database is restricted to these eight factors, there might be specific cases where other criteria are relevant.
3.1.2 Defining relevant factors
The comparison should focus on identifying the relevant factors that specifically characterize the goods and / or services that are to be c ompared. Therefore, the relevance of a particular factor depends on the respective goods and / or services to be compared.
Example
• When comparing skis and ski-boots it is evident that they do not coincide in their nature, method of use and they are not in competition. Therefore, the comparison should focus on their purpose, their complementary character, their distribution channels, their usual origin and / or the relevant public.
Therefore, the relevant factors and features characterizing a good or a service may be different depending on the goods and services they have to be compared with.
It is not necessary to list all possible factors. What does matter, however, is whether the connections between the relevant factors are sufficiently close to find similarity.
The following questions could be asked:
• How will the goods / services be used? • What is their purpose? • How likely is it that they coincide in producer? • Are they usually found in the same outlet, department store or in the same
section of a supermarket?
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If the factors cannot already be de fined from the wording of the goods / services, information may be derived from dictionary entries. However, dictionary entries have to be analysed against commercial realities and in particular taking into account the Nice Classification.
Example
• According to the dictionary ice is the singular of ices and means inter alia ‘(an) ice cream’ or ‘water ice’ (The Oxford English Dictionary, online edition). If the comparison of ices and ice in Class 30 was done on t he basis of the definition from the dictionary alone, it would lead to an er roneous conclusion that ice is identical to ices. However, since both ices and ice are mentioned in the list of goods in Class 30, ices are to be understood as ‘edible ices’, whereas ice is to be understood as ‘cooling ice’. Although they coincide in the composition to the extent that both consist (partly) of frozen water, their commercial nature is different: while one is a foodstuff the other is an auxiliary good for preserving and / or cooling foodstuffs. It shows that the Nice Classification together with the commercial perspective prevail over the dictionary definition.
Once the relevant factors have been identified, the examiner must determine the relation between and the weight attributed to the relevant factors (see below ‘Relation between different factors’).
3.2 The specific similarity factors
The following sections define and i llustrate the various factors for similarity of goods and services.
3.2.1 Nature
Nature of a good / service can be defined as the essential qualities or characteristics by which this good / service is recognized. Nature often corresponds to a particular type or sort of good / service or a specific category to which this good / service belongs and which is usually used to define it. In other words, it is the answer to the question ‘What is it?’
Examples
• Yoghurt is a milk product. • Car is a vehicle. • Body lotion is a cosmetic.
3.2.1.1 Indicative value of class headings and categories
The fact that the goods / services to be compared fall under the same general indication of a class heading or broad category does not automatically mean that they have the same nature. An example of such a broad category is foodstuffs for human consumption.
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Examples
• Fresh fruit (Class 31) on the one hand and coffee, flour, and bread (Class 30) on the other hand have a different nature despite being foodstuffs.
• Meat, fish, poultry and game (Class 29) are foodstuffs of animal origin. Fruits and vegetables (Class 31) are foodstuffs of plant origin. This slight connection, namely all being foodstuffs does not preclude that their nature is different.
The fact that the goods / services to be c ompared fall under a s ufficiently narrow general indication of a class heading weighs in favour of an identical or similar nature.
Example
• Condensed milk and cheese (both in Class 29) share the same nature because they belong to the same product family, namely milk products which are a sub- category of foodstuffs (see judgment of 4/11/2003, T-85/02, ‘Castillo’, para. 33).
3.2.1.2 Features of the goods defining their nature
A variety of features of the goods in question may be useful for defining their nature. These include the following.
Composition: e.g. ingredients, materials of which the goods are made.
Example
• Yoghurt (Class 29) is a milk product (the nature of yoghurt may be defined by its basic ingredient).
Composition may be the most relevant criterion to define nature. However, an identical or similar composition of the goods is not per se an indicator of the same nature.
Example
• A chair (Class 20) and a doll (Class 28) can both be made of plastic, but they do not have the same nature since one is a piece of furniture and the other is a toy. They belong to different categories.
Functioning principle: e.g. mechanical functioning, with or without engine / motor, optical, electrical, biological, or chemical functioning.
Example
• Telescope (Class 9) is an optical device (the nature of a telescope may be defined by its functioning principle which is optical).
Although the functioning principle may help to define the nature of some goods, it is not always conclusive. There are cases where goods, in particular technology related, with the same functioning principle have a different nature.
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Example
• A blender and an electric toothbrush have the same functioning principle of rotation, but they do not have the same nature.
By contrast there are goods with different functioning principles but the same nature.
Example
• The functioning principle of washing machines using washing powder is chemical, which is not the same as the functioning principle of washing machines using magnetic waves. However, these goods have the same nature as they are both washing machines.
Physical condition: e.g. liquid / solid, hard / soft, flexible / rigid
The physical condition is another feature of the goods that may be us ed to define nature, but like the functioning principle it is not conclusive.
Examples
• All drinks are liquid. Their nature is different from the nature of solid foodstuffs. However, when comparing two different drinks, their physical condition should not be conclusive: milk (Class 29) does not have the same nature as an alcoholic beverage (Class 33).
• Yoghurt is marketed both in solid and l iquid form. However, the nature of this good is not defined by its physical condition, but - as mentioned above - by its basic ingredient (milk). In both cases, the nature of a solid yogurt and of a liquid yogurt is the same (a milk product).
3.2.1.3 Nature of services
When defining the nature of services the features (composition, functioning principle, physical condition) cannot be used since services are intangible.
The nature of services can be defined, in particular, by the kind of activity provided to third parties. In most cases, it is the category under which the service falls which defines its nature.
Example
• Taxi services (Class 39) have the same nature as bus services (Class 39) as they are both transport services.
3.2.1.4 Nature of goods versus nature of services
By their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on t he other hand, consist of the provision of intangible activities.
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3.2.2 Intended purpose
Purpose is generally defined as the reason for which something is done or created or for which something exists (Oxford Dictionary Online).
As a Canon factor, purpose means the intended use of the goods or services and not any other possible use.
Example
• A plastic bag can be used as protection against the rain. However, its intended purpose is to carry items.
The purpose is defined by the function of the goods / services. In other words, it answers the questions: What need do these goods / services satisfy? What problem do they solve?
It is sometimes difficult to determine the proper level of abstraction for determining the purpose. As in the case of defining the nature, the purpose must be defined in a sufficiently narrow way.
Example
• In the case of vinegar, the intended purpose should not be def ined as ‘human consumption’ which is the general purpose that all foodstuffs share, but as ‘everyday seasoning’.
3.2.3 Method of use
The method of use determines the way in which the goods / services are used to achieve their purpose.
The question to be asked is: How are these goods / services used?
Method of use often follows directly from the nature and / or intended purpose of the goods / services and therefore has no or little significance of its own in the similarity analysis.
Example
• The method of use of newspapers and books is the same in the sense that they are both being read. However, similarity can already be concluded from the facts that they are both printed matter (same nature) and t hat they both serve to entertain or to inform (same purpose).
Notwithstanding the explanation above, the method of use may be i mportant, independent of nature and purpose, where it characterises the goods:
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Example
• Pharmaceutical preparations for treating skin diseases in Class 5 can take the form of creams. They have the same method of use as cosmetic creams in Class 3.
However, even where the method of use characterises the goods under comparison and where it is identical for both goods, this fact alone will not be sufficient to establish similarity.
Example
• Chewing gum (Class 30) and chewing tobacco (Class 34) have an i dentical method of use. However, this fact alone does not render them similar.
3.2.4 Complementarity
Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgment of 11/05/2011, T-74/10, ‘Flaco’, para. 40, judgment of 21/11/2012, T-558/11, ‘Artis’, para. 25, and j udgment of 04/02/2013, T-504/11, ‘Dignitude’, para. 44).
The complementary relation between the goods / services can be, for example, functional.
Example
• Internet site hosting services in Class 42 cannot exist without computer programming services in Class 42. There is a f unctional complementarity between those services, which, by their nature, belong to the field of information technology. Moreover, these services are aimed at the same public and use the same distribution channels. They are therefore similar (see judgment of 29/09/2011, T-150/10, ‘Loopia’, para. 36 and 43).
By definition, goods intended for different publics cannot be c omplementary (see judgment of 22/06/2011, T-76/09, ‘Farma Mundi Farmaceuticos Mundi’, para. 30 and judgment of 12/07/2012, T-361/11, ‘Dolphin’, para. 48). See also Section 3.3.1. Interrelation between factors.
Example
• Textile products in Class 24 (aimed at the public at large) and treatment services relating to textile products in Class 40 (aimed at professionals) cannot be complementary (see judgment of 16/05/2013, T-80/11, ‘Ridge Wood’, para. 28- 32). These goods and services are not similar.
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Complementarity is not conclusive on i ts own for finding a similarity between goods and / or services. Although a degree of complementarity may exist, goods and / or services may be dissimilar.
Example
• There is a degree of complementarity between wine (Class 33) and wineglasses (Class 21) in so far as wineglasses are intended to be used for drinking wine. However, that complementarity is not sufficiently pronounced to conclude that these goods are similar. Furthermore, these goods do not have the same nature, usual origin nor do t hey usually share distribution channels (see judgment of 12/07/2007, T-105/05, ‘Waterford Stellenbosch’, para. 34, confirmed by the judgment of 07/05/2009, C-398/07 P, ‘Waterford Stellenbosch’, para. 45).
However, when the complementarity between goods / services has been identified in combination with other factors, such as ‘usual origin’ and / or ‘distribution channel’, similarity may be found:
Examples
• Skis (Class 28) and ski boots (Class 25) are complementary because the use of one is indispensable for the use of the other. The relevant public may think that the production of these goods lies with the same undertaking. In addition, they share the same public and distribution channels. These goods are consequently considered similar.
• Teaching material in Class 16 (such as, printed matter, pre-recorded data carriers and audio / video cassettes) is essential and thus complementary to educational courses in Class 41. Generally the material is issued by the same undertaking; they share the same public and distribution channels. These goods are similar to the services in question (see for example judgment of 23/10/2002, T-388/00, ‘ELS’).
• Services of an architect (designing of buildings) (Class 42) are indispensable for building construction (Class 37). These services are often offered together through the same distribution channels, by the same providers and to the same public. Consequently, these services are complementary and s imilar (see judgment of 09/04/2014, T-144/12 ‘Comsa’, para. 65-67).
3.2.4.1 Use in combination: not complementary
Complementarity has to be clearly distinguished from use in combination where goods / services are merely used together whether by choice or convenience (e.g. bread and butter). This means that they are not essential for each other (see decision of 16/12/2013, R634/2013-4, ‘ST LAB’, para. 20). In such cases similarity can only be found on the basis of other factors, but not on complementarity.
Example
• Even if the functioning of transmission belts in Class 12 can be measured with the help of a device for motor-vehicle testing in Class 9, this does not mean that the goods are complementary. It can be convenient in certain cases to measure
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the performance of one or the other parameter but a simple convenience is not sufficient to conclude that one good is indispensable for the other (see decision of 03/10/2013, R1011/2012-4, ‘SUN’, para. 39).
Certain goods, which are often coordinated with each other but do not fall within the scope of other similarity factors, were determined by the Court to have ‘aesthetic complementarity’ (see judgment of 01/03/2005, T-169/03, ‘Sissi Rossi’, para. 62, judgments of 11/07/2007, T-150/04, ‘Tosca Blu’, para. 35-39 and T-443/05, ‘Pirañam’, para. 49-50, judgment of 20/10/2011, T-214/09, ‘Cor’, para. 32-37). This relation between the goods falls outside the existing definition of complementarity.
Example
• Handbags (Class 18) and clothing (Class 25) are closely connected, but not complementary since one i s not essential for the use of the other. They are merely often used in combination. They are, however, similar because of the fact that they may well be distributed by the same or linked manufacturers, bought by the same public and these goods can be found in the same sales outlets.
3.2.4.2 Ancillary goods / services: not complementary
When certain goods and / or services only support or supplement another good or service, they are not considered to be complementary within the meaning of the case law. Ancillary goods are typically those used for packaging (e.g. bottles, boxes, cans, etc.) or for promotion (e.g. leaflets, posters, price lists, etc.). Equally, goods / services offered for free in the course of a merchandising campaign are usually not similar to the primary good or service.
Examples
• Organisation and conducting of exhibitions is not similar to printed matter, including event notes (Class 16), since these goods merely serve to promote and announce the specific event. These goods and services are not complementary.
• Herbal nutritional supplements in Class 5 are not indispensable or important for the use of beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages in Class 32. Any combined consumption of those products is merely ancillary. Therefore, these goods are not complementary. Furthermore, since their purpose, distribution channels, usual producers are different, and they are not in competition, these goods are not similar (see judgment of 23/01/2014, T-221/12, ‘Sun Fresh’, para. 84).
3.2.4.3 Raw material: not complementary
Lastly, where the goods concern raw materials the criterion complementarity is not applicable in the analysis of similarity.
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Raw materials as a significantly important basic component of a final good may be found similar to that good, but not on the basis of complementarity (see also Annex I, Sections 1 and 2, and Annex II, Sections 5.1 and 5.2).
Example
• Milk (Class 29) and cheese (Class 29) are not similar on the basis of complementarity although milk is the raw material for making cheese. The similarity should be found, however, on the basis of the fact that they share the same nature, distribution channels, relevant public and producer.
3.2.5 In competition
Goods / services are in competition with each other when one can substitute the other. That means that they serve the same or similar purpose and are offered to the same actual and potential customers. In such a case, the goods / services are also defined as ‘interchangeable’ (see judgment of 04/02/2013, T-504/11, ‘DIGNITUDE’, para. 42)
Examples
• Wallpaper (Class 27) and paints (Class 2) are in competition, because both cover or decorate walls.
• Rental of movies (Class 41) and services of a cinema (Class 41) are in competition because they both allow you to watch a movie.
Goods and / or services that are in competition with each other frequently are in the same price range or their global price does not differ substantially if properly calculated.
Example
• Electric shavers and razor blades (both in Class 8) are in competition as they serve the same purpose. Taking into account the life span of an electric shaver, it might be cheaper overall than the number of razor blades that are needed to substitute it. The initial difference in price is paid off by its longer durability.
However, in some cases the price of goods / services in competition may differ significantly.
Example
• Jewellery made of gold and fashion jewellery (both in Class 14) are in competition even though their price (and value) may greatly differ.
3.2.6 Distribution channel
Although ‘distribution channel’ is not explicitly mentioned in the Canon judgment, it is widely used internationally and nationally in the assessment of whether two goods / services are similar. As an additional factor it has been taken into account in several judgments of the European Courts (see amongst others judgment of 21/04/2005, T-164/03, ‘monBeBé’, para. 53). The reasoning for this is as follows.
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If the goods / services are made available through the same distribution channels, the consumer may be more likely to assume that the goods or services are in the same market sector and are possibly manufactured by the same entity and vice versa.
The term ‘distribution channel’ does not refer so much to the way of selling or promoting a company’s product but rather to the place of distribution. For the analysis of the similarity of goods / services the distribution system – whether direct or indirect – is not decisive. The question to be asked is rather:
Do the goods / services have the same points of sale or are they usually provided or offered at the same or similar places?
However, not too much emphasis should be placed on t his factor as modern supermarkets, drugstores and department stores sell goods of all kinds. The relevant public is aware that the goods sold in these places come from a multitude of independent undertakings. Therefore, the point of sale is less decisive when deciding whether the relevant public considers that goods share a c ommon origin merely because they are sold at the same outlet.
Only where the goods in question are offered in the same section of such shops where homogeneous goods are sold together will this weigh in favour of similarity. In such cases it must be pos sible to identify the section by its territorial and functional separation from other sections (e.g. dairy section of a supermarket, the cosmetic section of a department store).
Similarly, the factor may be valid in cases in which goods are sold exclusively or commonly in specialised shops. In that event, consumers may tend to believe the origin of the goods to be the same if they are both sold in the same specialised shops and may tend to deny that mutual origin if they are not usually sold in the same shops.
Conversely, different sales outlets may weigh against the similarity of goods.
Example
• Wheelchairs versus bicycles:
Although both fall under vehicles in Class 12 they will not be found at the same sales points. Bicycles are usually sold either in specialist bicycle stores or in a r etail store where sporting equipment is available. In contrast, the distribution channels of wheelchairs are specialised distributors of medical equipment and dev ices supplying hospitals and specialised shops where devices for disabled or physically handicapped people are sold.
3.2.7 Relevant public
The relevant public, i.e. the actual and potential customers of the goods and services in dispute, constitutes another factor to be dealt with in the analysis of their similarity (see guidelines, Part C, section 2, Chapter 6: Relevant public and degree of attention)
The relevant public can be composed of:
• the general public (public at large) or
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• professional public (business customers or specialised public).
The relevant public does not necessarily mean the end user, e.g. the end users of food for animals in Class 31 are animals but not the relevant public. The relevant public in this case would be the general consumer.
The mere fact that the potential customers coincide does not automatically constitute an indication of similarity. The same group of customers may be in need of goods or services of the most divergent origin and nature. The fact that, for example, television sets, cars and books are bought by the same relevant public, namely the public at large, has no impact on the similarity analysis. In many cases either one or both lists of goods / services under comparison are targeted at the public at large, but the purpose (customers’ needs covered) in each case is different. Such circumstances weigh against similarity.
While a coincidence in the relevant public is not necessarily an indication of similarity, largely diverging publics weigh heavily against similarity.
Diverging customers can be found in the following cases where:
(a) the goods / services of both lists are directed at the public at large which can however be clearly categorised by their different (personal) needs, ages, etc.
• Example: wheelchairs versus bicycles (Class 12).
(b) the goods / services of both lists are directed at business customers, however acting in a very different market sector.
• Example: chemicals used in forestry versus solvents for the lacquer industry (Class 1).
(c) one relevant public consists of the general consumer and the other of business customers.
• Example: containers for contact lenses (in Class 9) versus surgical apparatus and instruments (in Class 10).
3.2.8 Usual origin (producer / provider)
Although the Court of Justice did not mention explicitly this factor in its Canon judgment it follows from the general concept of likelihood of confusion that the usual origin of the goods and s ervices is of particular importance for the analysis of similarity. As the Court has stated, ‘it is the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically- linked undertakings, that constitutes a likelihood of confusion’ (Canon, para. 29). Hence, there is a strong indication of similarity when, in the mind of the relevant public, the goods / services have the same usual origin.
However, this should not be misinterpreted as turning the examination of likelihood of confusion and similarity of goods / services upside down: the finding of a likelihood of confusion depends on many other factors (such as the similarity of signs, the distinctiveness of the earlier mark) and is not exclusively determined by the usual origin which as such is only one factor in the analysis of the similarity of goods / services.
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A finding that consumers will not be confused about the origin of the goods / services is not an argument appropriate to the comparison of goods / services. This finding should be mentioned in the overall assessment of likelihood of confusion. Origin, in this context, relates mainly to the manufacturing sector (industry) or kind of undertaking producing the goods or offering the services in question rather than to the identity of the producer.
The ‘origin’ is not merely defined by the actual place of production / provision (e.g. factory, workshop, institute and l aboratory) but primarily by taking into consideration who manages and / or controls the production / provision of the goods / services. In other words, the question to be asked is: who is responsible for manufacturing the good or providing the service?
The geographical origin (e.g. China) is not relevant for the finding of similarity of goods / services.
In the ELS judgment the Court held that even goods and services can have the same origin if it is common that the same type of company is responsible for the production / provision of both. Educational textbooks (Class 16) were considered of having the same origin as provision of correspondence courses (Class 41) since ‘undertakings offering any kind of course often hand out those products to pupils as support learning materials’ (judgment of 23/10/2002, T-388/00, ‘ELS’, para. 55).
The criterion ‘usual origin’ has to be applied in a restrictive way in order not to dilute it. If all kinds of goods / services deriving from one big (multinational) company or holding were found to have the same origin, this factor would lose its significance.
Example
• Cosmetics (Class 3) and foodstuffs (Classes 29 to 31) might be produced under the umbrella of one company but this does not reflect common trade custom according to which these types of goods have different producers, each belonging to a specific industry.
3.2.8.1 Features defining a common origin
When determining the usual origin of a good / service the following features might be relevant.
Manufacturing sites
Example
• Varnishes, lacquers colorants and mordants (Class 2) are typically produced in the same production enterprises, normally by specialised chemical companies.
The place of production can be a strong indicator that the goods / services in question come from the same source. However, while the same manufacturing sites suggest a common usual origin, different manufacturing sites do not exclude that the goods come from the same or economically-linked undertakings. For instance, books (Class 16) and electronic media (Class 9) (goods in competition, e-media substituting books) are both goods of a publishing house.
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Methods of manufacture
Example
• Leather belts (Class 25) and leather handbags (Class 18) are not only manufactured in the same sites, e.g. leather workshops, but also using the same tools and machines for the treatment of leather.
(Technical) know-how
Example
• Computer virus protection services (Class 42) and software design (Class 42) involve similar technical know-how in the field of information technology.
Established trade custom known to the public
An established trade custom, such as when manufacturers expand their businesses to adjacent markets, is of particular importance for concluding that goods / services of different nature have the same origin. In such situations it is necessary to determine whether such expansion is common in the industry or, conversely, whether it may occur in exceptional cases only.
Example where extension has become customary
• Shoes (Class 25) and handbags (Class 18): It is customary on t he market that the producers of shoes are usually also involved in the manufacture of handbags.
Example where extension is not (yet) common
• Clothing (Class 25) and perfumes (Class 3): Even though some couturiers that make fashion clothes nowadays also sell perfumes under their marks, this is not the rule in the clothing industry, and rather applies to (economically) successful designers.
3.3 Relation between different factors
The Canon criteria were enumerated in the relative judgment without any hierarchy (weight) between them and without indicating any relation between them. They were considered one by one. However, they cannot be considered independently since some criteria are interrelated and s ome criteria are more important than others, regardless whether goods with goods, services with services or goods with services are being compared. As a result of weighing all these factors in accordance with their respective importance in relation to the goods / services at issue, any similarity may differ in degree (see paragraph 3.3.4 below).
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3.3.1 Interrelation of factors
It must be noted that in many cases there will be relations between the factors in the sense that where one is shared another one might coincide as well.
Examples
• Based on the purpose, it is also possible to determine who the actual and potential customers (i.e. the relevant public) are.
• The purpose together with the relevant public may also reveal whether goods / services are in competition.
• The same distribution channel goes hand in hand with the same public. In other words, where the distribution channels are different, the public may be different as well.
• Goods / services intended for different publics cannot be complementary (see judgment of 11/05/2011, T-74/10, ‘Flaco’, para. 40 and judgment of 22/06/2011, T-76/09, ‘Farma Mundi Farmaceuticos Mundi’, para. 30).
• The method of use usually depends on the nature and purpose of the goods.
There are cases in which a distinction between various factors will be difficult to draw. This is particularly true as far as ‘nature’, ‘purpose’ and ‘method of use’ are concerned. Where the examiner encounters such difficulties, it is sufficient to treat these factors jointly.
Example
• An engine is a machine for converting any of various forms of energy into mechanical force and motion. In such a c ase, it is difficult to distinguish the nature from the purpose of this good. Therefore, a distinction between what - in this case - is nature and what is purpose is not necessary.
3.3.2 Importance of each factor
In assessing the similarity of goods and services all relevant factors characterising the relationship between them should be taken into account. However, depending on the kind of goods and services a particular criterion may be more or less important. In other words, the various criteria do not have a standard value, but rather their specific importance should be determined in the context of each individual case.
In general, the weight of each factor will depend on t he impact it has on a pos sible confusion of the origin. Criteria clearly suggesting that the goods / services come or do not come from the same undertaking or economically linked undertakings should take precedence over criteria that seem to have only a secondary bearing.
Generally strong factors
• Usual origin (because it has a strong impact on likelihood of confusion)
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• Purpose (because it is decisive for the choice of the customer to buy or select goods / services).
• Nature (because it defines the essential qualities and characteristics of the goods / services)
• Complementarity (because the close connection between the use of the goods / services makes the public believe that they share the same source)
• In competition (usually goods / services that are in competition have the same purpose and are targeted at the same public)
Less important factors
• Method of use (even dissimilar goods can be used in the same manner, e.g. baby carriages and shopping trolleys)
• Distribution channels (even dissimilar goods can be sold in the same section of stores depending on different display practices, e.g. chewing gum (Class 30) and cigarettes (Class 34)
• Relevant public (especially when goods / services are directed at the general public)
3.3.3 Different types of comparisons: goods versus goods, services versus services and goods versus services
In principle, the same factors for comparing goods with goods are relevant for the comparison of services with services. However, in applying these factors, the basic difference between goods and services (tangible vs. intangible) must be considered.
Furthermore, the same principles that apply for the comparison between goods and goods and between services and services apply in cases where goods are compared with services.
By their nature goods are generally dissimilar to services. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found.
3.3.4 Degree of similarity
Goods and / or services can be found similar to different degrees (low, average, high) depending on how many factors they share and the weight given to each of them. The degree of similarity found between the goods and services is of relevance when finally deciding on the likelihood of confusion.
Generally, one f actor on its own is not sufficient to find a l ow degree of similarity between the goods / services, even if it is a strong factor.
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Examples for dissimilarity
• Cars and bicycles (both in Class 12) share the same purpose (taking oneself from A to B), but this does not render them similar.
• Although window glass (Class 19) and glasses for spectacles (Class 9) have the same nature, they are not similar, since they do not coincide in other relevant factors, such as purpose, producer, distribution channel and relevant public.
It is the combination of various factors and their weight which allows the final conclusion on s imilarity. The combination of two strong factors, such as nature and producer, or the combination of one strong and two weak factors will often lead to a similarity. In contrast, the combination of two weak factors, such as distribution channel and relevant public are, in principle, not conclusive for a finding of similarity between the goods and services.
Examples for similarity
• Milk and cheese (both in Class 29) have a different purpose and method of use; they are not in competition or complementary. However, the fact that they share the same nature (dairy goods) and usual origin (dairy company) is decisive for a finding of similarity.
• Although pharmaceuticals and plasters (both in Class 5) have a different nature, they share a similar purpose, i.e. the cure of diseases, disabilities or injuries. Furthermore, they have the same distribution channels and r elevant public. Therefore, they are similar.
The amount of coinciding factors found together with their importance / weight establishes the degree of similarity. Generally speaking, the higher the number of common factors the higher the degree of similarity. A similarity found on the basis of two factors only would normally not be hi gh, contrary to cases where the goods / services coincide in four or more relevant factors.
However, there is no mathematical analysis possible since it always depends on the specific circumstances of each case.
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Annex I
Specific Questions as to the Similarity of Goods and Services
This part does not establish new criteria for finding a similarity between goods and services. It merely helps to clarify how to compare specific groups of goods and services where apart from the Canon criteria some general rules and exceptions apply.
1 Parts, components and fittings
The mere fact that a certain good can be composed of several components does not establish an aut omatic similarity between the finished product and i ts parts (see judgment of 27/10/2005, T-336/03, ‘Mobilix’, para. 61).
Examples for dissimilarity
• Fan blades (Class 7) and hair dryer (Class 11) • Electric cable (Class 9) and lamp (Class 11) • Buttons (Class 26) and clothing (Class 25)
Similarity will only be found in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and / or complementarity are fulfilled.
Such an ex ception is based on t he fact that parts and fittings are often produced and / or sold by the same undertaking that manufactures the final good and target the same purchasing public, as in the case of spare or replacement parts. Depending on the good concerned, the public may also expect the component to be produced by, or under the control of, the ‘original’ manufacturer, which is a factor that suggests that the goods are similar.
In general, a variety of factors may be significant in each particular case. For instance, if the component is also sold independently, or if it is particularly important for the functioning of the machine, this will weigh in favour of similarity.
Examples for similarity
• Electric toothbrush (Class 21) and replacement brush heads (Class 21) • Printer (Class 9) and ink jet cartridges (Class 2) • Sewing machines (Class 7) and walking feet for sewing machines (Class 7)
2 Raw material and semi-processed goods
A similar approach is also followed in relation to raw materials and s emi-processed goods on the one hand and finished goods on the other.
In most cases, the mere fact that one good is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (see judgment of 13/04/2011, T-98/09, ‘T Tumesa Tubos del Mediterráneo S.A.’, para. 49-51). Raw
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material is in general intended for use in industry rather than for direct purchase by the final consumer.
Examples for dissimilarity
• Leather, animal skins (Class 18) and clothing (Class 25) • Precious metals (Class 14) and jewellery (Class 14)
However, the final conclusion may depend on the specific circumstances of the case, such as the degree of transformation of the raw material or whether it is the basic component of the final good. The greater the significance of the raw material for the final good, the more likely the goods will be similar. Consequently, similarity might be established when the raw material or the semi-finished good can be dec isive for the form, character, quality or value of the finished good. In these cases, the raw material can often be obtained separately from the finished good through the same distribution channels.
Example for similarity
• Precious stones (Class 14) and jewellery (Class 14). Contrary to precious metals, precious stones can be obtained in jewellery shops independently of the final good
A sub-category of raw materials are ingredients used for the preparation of foodstuffs (see below ‘Ingredients’).
3 Accessories
An accessory is something extra which improves or completes the main product it is added to. Unlike parts, components and fittings an accessory does not constitute an integral part of the main product, although it is usually used in close connection. An accessory usually fulfils a useful technical or decorative purpose.
The rules in respect of parts, components and fittings are to a certain extent also valid in the case of accessories. The mere fact that a certain good is used in combination with another good is not necessarily conclusive for a finding of similarity.
Examples for dissimilarity
• Clothing (Class 25) and hair ornaments (Class 26) • Car sun blinds (Class 12) and vehicles (Class 12)
However, it is common that some accessories are also produced by the manufacturer of the main product. Consequently the consumer may expect that the main product and the accessories are produced under the control of the same entity, especially when they are distributed through the same channels of trade. In such cases there is a strong indication for similarity.
Examples for similarity
• Bicycles (Class 12) and panniers for bicycles (Class 12) • Glasses (Class 9) and cases for glasses (Class 9)
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4 Installation, maintenance and repair services
These services belong to the category of goods related services.
Since by nature goods and services are dissimilar, a similarity between goods and their installation, maintenance and repair can only be established when:
• it is common in the relevant market sector for the manufacturer of the goods to also provide such services, and
• the relevant public coincides, and • installation, maintenance and repair of these goods are provided independently
of the purchase of the goods (not after sales services).
The installation of virtually all goods is classified in Class 37, such as installation of air conditioning apparatus, electric appliances, elevators or lifts, fire alarms, freezing equipment, kitchen equipment, and machinery. The installation and repair of computer hardware is also in Class 37 as it is a physical repair and installation activity. However, installation and repair of computer software is classified in Class 42 because it involves computer programming without any physical installation or repair.
Examples for similarity
• Data processing equipment and computers (Class 9) and installation and repair of electronic apparatus (Class 37)
• Air conditioning apparatus (Class 11) and installation, maintenance and repair services (Class 37)
• Vending machines (Class 7) and maintenance services (Class 37)
Examples for dissimilarity
• Building materials (Class 19) and installation services (Class 37) • Shoes (Class 25) and repair of shoes (Class 37) • Vehicles (Class 12) and dent removal for motor vehicles (Class 37) (see
judgment of 15/12/2010, T-451/09, ‘Wind’, para. 28-30)
5 Advisory services
With the 8th edition of the Nice Classification, ‘professional consultation services’ in Class 42 were eliminated and since then consultation services – as much as advisory and information services – are classified in the class of the service that corresponds to the subject matter of the consultation. For instance, transportation consultancy belongs to Class 39, business management consultancy falls under Class 35, financial consultancy is classified in Class 36 and beauty consultancy in Class 44. The rendering of the advice, information or consultancy by electronic means (e.g. telephone, computer) does not affect the classification of these services.
Advisory services, consultancy and the like are in principle always similar to the related services.
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Examples
• Computer software advisory (Class 42) is similar to the installation and maintenance of software (Class 42)
• Financial information services (Class 36) are included in financial affairs (Class 36) and thus identical (see judgment of 27/02/2008, T-325/04, ‘Worldlink’, para. 58)
When it comes to the comparison of advisory services, consultancy and the like with goods, similarity can be found under conditions akin to those concerning maintenance, installation and repair (see paragraph 4 above).
Examples for similarity
• Advisory services in computer technologies (hard-and software) (Class 42) and computer software (Class 9)
• Beauty consultancy (Class 44) and cosmetics (Class 3)
Examples of dissimilarity
• Information services concerning the purchase of fashion articles (shoppers guide information) (Class 35) and clothing, footwear and headgear (Class 25) as it is not common in the market that the manufacturer of articles in Class 25 provide such information services
• Providing information in the field of entertainment (Class 41) and toys (Class 28) as it is not common in the market that the manufacturer of toys in Class 28 provide such information services
6 Rental and leasing
Rental services are classified in the same classes as the service provided by means of the rented objects:
• rental of telephones is Class 38 because telecommunication services are in Class 38;
• rental of cars is in Class 39 because transport services are in this class.
Leasing services are analogous to rental services and t herefore are classified in the same way. However, hire- or lease-purchase financing is classified in Class 36 as a financial service.
Based on the understanding that leasing in English means rental, these services must be clearly distinguished from any financial services. The comparison of rental and leasing services leads to the following outcome.
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6.1 Rental / leasing versus related services
Even though rental services are classified in the same classes as the service provided by means on the rented objects, they are not automatically identical to this service. The comparison between these services has to be done applying normal criteria for identity and similarity.
Examples
• There is identity between rental of flats (Class 36) and real estate affairs (Class 36), because rental of flats is included in real estate affairs.
• The same reasoning cannot apply to rental of bulldozers (Class 37) and t he related services of building construction (Class 37). Rental of bulldozers is not included in building construction and therefore these services are not considered to be identical.
6.2 Rental / leasing versus goods: in principle, always dissimilar
• Vehicle rental (Class 39) and vehicles (Class 12) • Rental of films (Class 41) and DVDs (Class 9)
Exceptions exist where it is common for the manufacturer of the goods to also provide rental services.
• Rental and leasing of computer software (Class 42) and computer software (Class 9). These are considered to be similar to a low degree.
• Rental of automatic vending machines (Class 35) and automatic vending machines (Class 7). These are considered to be similar to a low degree.
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Annex II
Specific Industries
1 Chemicals, pharmaceuticals and cosmetics
1.1 Chemicals (Class 1) versus chemical products (Classes 3 and 5)
Although major chemical companies are usually involved in the production of all kind of basic chemicals, speciality chemicals, life science products, including pharmaceuticals and pesticides, as well as consumer products, such as cleaning preparations and cosmetics, when comparing these goods the mere fact that their nature coincides as all of them can widely be classified as chemical products is not sufficient to find them similar. Special attention must be dr awn to their specific purpose as well as to their public and t heir distribution channel. What has been s aid above as to the relation between raw materials, semi-processed and finished products particularly applies to these products. Consequently, although goods in Class 3 and Class 5 are usually combinations of various chemicals, they are in principle not considered similar to goods included in Class 1. Their purpose as a finished product usually differs from goods in Class 1 which are mainly in their raw, unfinished state and no t yet mixed with other chemicals and inert carriers into a final product. The finished products in Class 3 and Class 5 are usually also directed at a di fferent public and do not share the same distribution channels.
On the other hand, it cannot be excluded that goods such as chemicals used in agriculture, horticulture and forestry require few processing steps to be considered a finished product such as fungicides. Such chemicals may be considered to already share the inherent purpose with fungicides; to kill or inhibit fungi or fungal spores, in particular when they consist of the fungicide’s active ingredient. Furthermore, the same (agro-) chemical companies may produce the semi-processed goods as well as the final product. There is therefore a low degree of similarity between chemicals used in agriculture, horticulture and forestry and fungicides (see decision of 08/10/2012, R 1631/2012-1, ‘QUALY / QUALIDATE’, paras. 27, 28).
Furthermore, there are also goods in Class 1 which are not mere chemicals but are semi-finished or even finished products with a specific purpose of use which is an important factor that must be taken into account when comparing goods in Class 1 to goods in other classes.
For example manures in Class 1 on t he one hand and pesticides, fungicides and herbicides in Class 5 on the other are not only chemical products, they are also finished products with a specific use in the agricultural industry. They are similar in their purpose since the specific goods in Class 5 can be considered growth enhancing since they prevent conditions that could inhibit plant growth.
1.2 Pharmaceuticals versus pharmaceuticals
A pharmaceutical preparation refers to any kind of medicine, i.e. a s ubstance or combination of substances for treating or preventing diseases in human beings or animals. From its definition it can already be concluded that veterinary preparations –
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though separately mentioned in the class heading – is included in the broader term of pharmaceutical preparations. Therefore they are identical.
The same applies to herbal and homoeopathic medicines since they are comprised in the broad term of pharmaceutical preparations.
Equally, testing preparations, i.e. chemical reagents for medical including veterinary purposes, also fall under the general indication of pharmaceutical preparations.
Specific pharmaceuticals are considered to be similar to other specific pharmaceuticals. This is because several, if not all criteria for similarity are usually met: they share the same nature because they are specific chemical products; their purpose is, broadly speaking, healing and / or curing; they are sold in the same places, namely, pharmacies; and t hey come from the same source, which is the pharmaceutical industry. This industry manufactures a wide variety of drugs with various therapeutic indications, something the general public is aware of. Furthermore, their method of use might be the same and they might be in competition with one another (see judgment of 17/11/2005, T-154/03, ‘Artex’, para. 48).
However, the degree of similarity found between specific pharmaceuticals may vary depending on their specific therapeutic indications.
Example 1
• Pharmaceutical preparations against allergies versus antihistamine cream. These pharmaceuticals are highly similar.
Example 2
• Anti-epileptics versus pharmaceutical preparations, except medicines to combat diseases in connection with the central nervous system. These pharmaceutical preparations are considered to be similar (see judgment of 24/05/2011, T-161/10, ‘E-plex’, para. 26).
Example 3
• Contraceptives versus eye-washes. These pharmaceutical preparations are only similar to a low degree. In this regard, it should be not ed that a low degree of similarity should only be established in exceptional cases, e.g. when it can be clearly established that they have different indications and di fferent methods of use.
Whether a specific pharmaceutical is sold under prescription is not of particular relevance for the comparison of the goods. It rather plays a r ole for the overall assessment of likelihood of confusion, in particular the degree of attention of the relevant public. Furthermore, it should be no ted that the need for a prescription depends to a great extent on t he different national legislation regimes. Therefore, a prescription medicine is generally to be considered similar to an over-the-counter drug for the reasons stated above.
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1.3 Pharmaceuticals versus dietetic substances adapted for medical use
Dietetic substances and food supplements adapted for medical use are substances prepared for special dietary requirements with the purpose of treating or preventing a disease. Bearing this in mind, their purpose is similar to those of pharmaceutical products (substances used in the treatment of diseases) insofar as they are used to improve the medical condition of patients. The relevant public coincides and these goods generally share the same distribution channel. For the above reasons, these goods are considered to be similar.
1.4 Pharmaceuticals versus cosmetics
The general categories pharmaceuticals and cosmetics are considered to be s imilar. Cosmetics include a list of preparations used to enhance or protect the appearance or odour of the human body. Pharmaceuticals on the other hand comprise products, such as skin or hair care preparations with medical properties. They may coincide in purpose with cosmetics. Moreover, they share the same distribution channels since they can be found in pharmacies or other specialized shops. They are directed at the same public and are often manufactured by the same companies.
However, when comparing specific pharmaceuticals with cosmetics they may only show a low degree of similarity or they may even be entirely dissimilar. In such cases this will depend on t he specific drug and its specific purpose (medical indication / effect) or its method of use.
Example
• A painkiller is dissimilar to nail polish.
1.5 Pharmaceuticals versus services
Although pharmaceutical companies are heavily involved in research and development activities, they usually do not provide such services to third parties. Consequently, Class 5 goods are generally dissimilar to all services covered by Class 42.
Dissimilarity should also be f ound when comparing pharmaceutical preparations and medical (including veterinary) services in Class 44. Even though a certain link cannot be denied due to the common goal of treating diseases, the differences in nature and especially in the usual origin clearly overweigh any similarities. The relevant public does not expect a doctor to develop and market a drug.
2 Automobile industry
The automotive industry is a c omplex industry involving various kinds of companies, including car manufacturing companies as well as suppliers which might provide the car manufacturer with their raw materials (metal, aluminium, plastics, paints), parts, modules or complete systems. Several areas of production can be distinguished: drive engineering, chassis, electronic, interior and exterior.
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This makes it extremely difficult for the examination of a similarity between the finished good (e.g. a car) and its various parts or materials used for its production. Furthermore, when purchasing a car the general public is aware of this fact and knows that there are many items from many sources and that the car manufacturer might assemble components which have been manufactured by third companies. However, the goods are normally offered under only one sign, which makes it almost impossible for the general public to identify other manufacturers or to differentiate their source of production. One exception is car batteries, where other signs are usually visible.
As with other specific industries, the Canon criteria apply accordingly and in particular the general principles set out for the comparison of parts, components, and fittings have to be taken into consideration.
In particular, it should be k ept in mind that there are goods which will only be purchased by the automobile industry without any possibility that they ever reach or are purchased by the general public (end consumer) (e.g. the common metal (Class 6) used to form the chassis). They are clearly dissimilar to the final product as well as to probably all other parts, components and fittings. As regards spare parts which might also be purchased by the general public for repair or maintenance purposes, the assessment of the similarity of the goods will mainly depend on t he fact whether the specific spare part is commonly produced by the car manufacturer.
3 Electric apparatus / instruments
The expression electric apparatus and instruments, in Class 9, cannot be interpreted as covering all apparatus powered by electricity. Indeed, there are apparatus powered by electricity in various classes. The term electric apparatus included in the list of goods in Class 9 is to be under stood as covering apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (see judgment of 01/02/2012, T-353/09, ‘mtronix’, para. 33).
4 Fashion and textile industries
Goods classified in Classes 22, 23, 24 and 25 ar e textile-related. There is a c ertain progression through these classes: raw fibrous textile materials, i.e. fibres (Class 22) are further made into yarns and threads (Class 23), then into textiles, i.e. fabrics (Class 24) and end up as finished goods made of textile (Class 24) or clothing (Class 25).
Moreover, Class 18 goods such as goods made of leather and imitations of leather are also related to fashion and textile industries.
4.1 Raw or semi-processed materials versus finished goods
Since the relation between the abovementioned classes is often based on the fact that one good is used for the manufacture of another (e.g. textiles in Class 24 are used for the manufacture of clothing in Class 25), in comparisons of this kind, general rules concerning raw materials apply (see above paragraph 2, Annex I on ‘Raw materials and semi-processed goods’).
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For example, raw materials such as leather and imitations of leather, animal skins and hides (Class 18) are dissimilar to clothing, footwear and headgear (Class 25). The mere fact that leather is used for the manufacture of footwear (shoes made of leather) is not sufficient in itself to conclude that the goods are similar, as their nature, purpose and relevant public are quite distinct: raw materials are intended for use in industry rather than for direct purchase by the final consumer.
However, a low degree of similarity is found between textiles and textile goods such as bed sheets, table covers, in Class 24. In such cases, the degree of transformation required from material to end product is often insignificant: the fabric are merely cut into shape and / or sewn to obtain the finished product. Furthermore, many establishments allow customers to purchase the base material or ready-made cushions, etc. made from such material. Therefore, the relevant public may expect these goods to come from the same undertakings.
4.2 Textile goods (Class 24) versus clothing (Class 25)
The main point of contact between textile goods in Class 24 and clothing in Class 25 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, or serves as a fashion article, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, the distribution channels and s ales outlets of textile goods and clothing are different and the relevant public will not think that they originate from the same undertaking. Therefore, textile goods are considered to be dissimilar to clothing see decisions of 31/05/2012, R 1699/2011-4 ‘GO/GO GLORIA ORTIZ’, para. 16; 26/07/2012, R 1367/2011-1 ‘PROMO TEXTILE/Promodoro’, para. 17 and 01/08/2012, R 2353/2010-2, ‘REGRIGUE FOR COLD/REFRIGIWEAR et al.’, para. 26).
4.3 Clothing, footwear and headgear (Class 25)
Class 25 goods, namely clothing, footwear and headgear are of an i dentical or very similar nature. They serve the same purpose since they are used to cover and protect various parts of the human body against the elements. They are also articles of fashion and are often found in the same retail outlets. Consumers, when seeking to purchase clothes, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items. Therefore, these goods are similar to each other.
4.4 Fashion accessories
As explained in the section on ‘Accessories’ (see above paragraph 3, Annex I), the mere fact that a certain good is used in combination with another good is not necessarily conclusive for a finding of similarity. However, it is common that some accessories are also produced by the manufacturer of the main product. Consequently, the consumer may expect that the main product and the accessories are produced under the control of the same entity, especially when they are distributed through the same trade channels. In such cases, there is a s trong indication for similarity. Therefore, not all goods which are considered as fashion accessories will be found to be similar to clothing, footwear and headgear (Class 25).
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The broad category of goods made of leather and imitations of leather in Class 18 includes goods such as (hand)bags, sport bags, briefcases, wallets, purses, key cases, etc. These goods are related to articles of clothing, headgear and footwear in Class 25, in the sense that they are likely to be c onsidered by the consumers as aesthetic complementary accessories to articles of outer clothing, headgear and even to footwear because they are closely co-ordinated with these articles and they may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore these goods are considered to be similar to clothing, headgear and footwear.
In contrast, hair accessories such as hair pins and ribbons are dissimilar to clothing. Even though these goods might have some distant link to the fashion market, the mere fact that someone might want to match hair pins and clothing is not sufficient to conclude that these goods are complementary and therefore similar. The goods can be only considered to be complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other and i s not merely ancillary. In the present case, these conditions are not fulfilled. Furthermore, the nature and method of use of these goods is different. They are not in competition with each other. The production of these goods involves different know-how, they do not belong to the same category of goods and they are not regarded as components of a general array of goods that potentially have the same commercial origin (see decision of 03/10/2011, R 1501/2010-4, ‘Wild Nature/WILD NATURE’, para. 18).
Likewise, luxury goods such as glasses (Class 9) and j ewellery (Class 14) are considered to be dissimilar to clothing, footwear and headgear. The nature and the main purpose of these goods are different. The main function of clothing is to dress the human body whilst the main purpose of glasses is to improve eyesight, and jewels are worn for personal adornment. They do no t have the same distribution channels and they are neither in competition, nor complementary (see decisions of 30/05/2011, R 0106/2007-4, ‘OPSEVEN2 / SEVEN’, para. 14; 12/09/2008, R 0274/2008-1, ‘Penalty / PENALTY’, para. 20; 05/10/2011, R 0227/2011-2, ‘OCTOPUSSY / OCTOPUSSY ET AL’, paras. 23-26).
The same reasoning applies to luxury goods such as perfumes (Class 3) – the main purpose of which is to impart a l ong-lasting scent to the body, stationery etc. – and goods such as travelling bags (Class 18) which are intended to carry things when travelling. Even though couturiers nowadays also sell perfumes, fashion accessories (such as glasses and jewellery) and travel accessories under their marks, this is not the rule, and rather applies to (economically) successful designers.
4.5 Sports clothing, footwear and hea dgear (Class 25) versus sporting and gymnastic articles (Class 28)
The general category of clothing, footwear and headgear includes sports clothing, footwear and headgear which are garments or items of apparel designed specifically to be used when performing an activity or sport. Although the nature of these goods is different from those of sporting and gymnastic articles which are articles and apparatus for all types of sports and gymnastics, such as weights, halters, tennis rackets, balls and fitness apparatus, there are undertakings that manufacture both sporting and gymnastic articles as well as sports clothing / sports footwear. Therefore, the distribution channels can be the same. There is a low degree of similarity when sports clothing / sports footwear is compared to sporting and gymnastic articles.
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4.6 Fashion design (Class 42), tailoring services (Class 40) versus clothing (Class 25)
There is a low degree of similarity between clothing and fashion design and tailoring services since they share the same relevant public and m ight coincide in the same usual origin (producer / provider). Producers of ready-made clothing (especially suits and wedding dresses) frequently provide tailoring services which are closely related to fashion design which is the previous step in the clothing production process.
5 Food, beverages and restaurant services
5.1 Ingredients of prepared food
Ingredients used for the preparation of foodstuffs are a sub-category of raw materials and treated in the same way as raw material in general. Consequently, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (see judgment of 26/10/2011, T-72/10, ‘Naty’s’, para. 35- 36).
Examples for dissimilarity
• Eggs (Class 29) and ice cream (Class 30) • Yeast (Class 30) and bread (Class 30)
5.2 Main ingredient
When the ingredient can be considered as being the main ingredient of the prepared dish, a s imilarity will exist only if the goods share some other relevant criterion or criteria, in particular the usual origin, nature, purpose or method of use.
Examples for similarity (main ingredient + other criteria)
• Milk (Class 29) and yoghurt (Class 29) • Fish (Class 29) and fish sticks (Class 29) • Dough (Class 30) and pizzas (Class 30)
See also judgment of the General Court of 04/05/2011, T-129/09, ‘Apetito’, where the Court confirms the finding of similarity between a par ticular foodstuff and prepared meals mainly consisting of the same particular foodstuff.
It should be recalled that there is no complementarity in these cases simply because one ingredient is needed for the production / preparation of another foodstuff. Complementarity applies only to the use of goods and not to their production process (see chapter ‘Complementarity’ and judgment of 11/05/2011, T-74/10, ‘Flaco’, para. 40 and decision of 11/12/2012, R 2571/2011-2, ‘FRUITINI’, para. 18).
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5.3 Non-alcoholic beverages (Class 32) versus alcoholic beverages (except beers) (Class 33)
Non-alcoholic beverages on the one hand, and alcoholic beverages (except beers), are sold side by side both in shops, bars and on drinks menus etc. These goods are directed at the same public and they may be in competition. It must be concluded that these goods are similar to a low degree (see judgment of 05/10/2011, T-421/10, ‘Rosalia de Castro’, para. 31).
5.4 Beers (Class 32), alcoholic beverages (except beers) (Class 33)
There is a s imilarity between different alcoholic beverages in Class 33, as well as between the broad category of alcoholic beverages and beer in Class 32. Although their production processes are different, these goods all belong to the same category of alcoholic drinks (nature) intended for the general public. They can be served in restaurants and i n bars and ar e on s ale in supermarkets and grocery stores. These drinks can be found in the same area of supermarkets, even if among them some distinction according to their respective subcategory, for example, can also be made. Furthermore, some of alcoholic beverages may originate from the same undertakings.
Examples
• Beers are similar to alcoholic beverages (except beers). • Wines are similar to alcoholic beverages (except wines).
5.5 Provision of food and drinks versus food and drinks
The provision of food and drinks in Class 43 mainly covers services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended to serve food and drinks directly for consumption.
The mere fact that food and drinks are consumed in a restaurant is not enough reason to find similarity between them (see judgment of 09/03/2005, T-33/03, ‘Hai’, para. 45 and decision of 20/10/2011, R 1976/2010-4, ‘THAI SPA/SPA et al.’, paras. 24-26).
The market reality shows that some producers of foodstuffs and / or drinks also provide restaurant services under their brand (e.g. coffee and their coffee shops, ice cream and their ice cream parlours, beer and their pubs); however this is not an established trade custom and r ather applies to (economically) successful undertakings. These circumstances must be examined on a case-by-case basis.
6 Services to support other businesses
All services listed in the class heading of Class 35 are aimed at supporting or helping other businesses do or improve their business. They are therefore in principle directed at the professional public.
When comparing specific services falling within Class 35 it is very useful to focus on the question: Who is providing this kind of service? Is it an adv ertising agency, a
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management consultant, a human resources consultant, an accountant, an auditor, a sales agent or a tax advisor? Once the usual origin has been established it is easier to find the general indication to which the specific service belongs.
Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and / or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. It is worth mentioning that the nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. Therefore, advertising is generally dissimilar to the goods or services being advertised. The same applies to the comparison of advertising services versus goods that can be used as a medium for disseminating advertising, such as DVDs, software, printed matter, flyers and catalogues.
Business management services are services usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and ex pand market share. They involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘ assistance’ activity that may be us eful in the ‘management of a bus iness, such as how to efficiently allocate financial and hum an resources; improve productivity; increase market share; deal with competitors; reduce tax bills; develop new products; communicate with the public; do marketing; research consumer trends; launch new products and how to create a corporate identity; etc.
When comparing business management to advertising it should be noted that advertising is an es sential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is ‘to reinforce the [business] position in the market’ and the purpose of business management services is to help a b usiness in ‘acquiring, developing and expanding market share’. There is not a clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice regarding how to efficiently run a bus iness may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a par t of their services and t herefore the relevant public may believe that these two services have the same professional origin. Consequently, considering the above these services are similar to a low degree (see decision R 2163/2010-1 ‘INNOGAME / INNOGAMES’, para. 13-17).
Business administration services consist of organising people and r esources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up ac count statements and t ax preparation. The line between both headings, business management and business administration, is blurred and it is sometimes very difficult (if not impossible) to clearly distinguish between them. They both fall under the broader category of business services. As a g eneral rule it can be s aid that business
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administration services are performed in order to organise and run a business, whereas business management follows a hi gher approach aimed at setting the common goals and the strategic plan for a commercial enterprise.
Office function covers services which are aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical to secretarial services, such as shorthand and t yping, as well as support services, such as the rental of office machines and equipment.
7 Retail services
Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (opposed to wholesale which is the sale of commodities in quantity usually for resale).
However, it should be noted that the sale of goods is not a service within the meaning of the Nice Classification. Therefore, the activity of retail in goods as a service for which protection of a Community trade mark can be obtained does not consist of the mere act of selling the goods, but in the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification by the terms ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’.
Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (judgment of 07/07/2005, C-418/02, ‘Praktiker Bau- und Heimwerkermärkte’, para. 34).
Retail services allow consumers to satisfy different shopping needs at one stop and are usually directed at the general consumer. They can take place in a fixed location, such as a depar tment store, supermarket, boutique or kiosk, or in the form of non-shop retailing, i.e. through the internet, by catalogue or mail order.
The following principles apply as regards the similarity of the goods or services at issue.
7.1 Retail services versus any good: dissimilar
Retail services in general6 (i.e. the specification is not limited to the sale of particular goods) are not similar to any goods that are capable of being sold at retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.
6 ‘Retail services’ as such are not acceptable for classification purposes by OHIM, unless further specified (see Guidelines Part B, section 3, examination of classification).
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The specification of the retail services to the sale of goods using 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 which follow. Consequently, formulations such as ‘retail services, in particular of footwear’ shall be treated in the same way as ‘retail services in general’, without any specification.
7.2 Retail services of specific goods versus same specific goods: similar to a low degree
Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (see judgment of 05/10/2011, T-421/10, ‘Rosalia de C astro’, para. 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be not ed that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.
The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category (e.g. ‘retail of sunglasses’ vs. ‘sunglasses’ and ‘retail of optical apparatus’ vs. ‘sunglasses’).
7.3 Retail services of specific goods versus different or s imilar specific goods: dissimilar
Retail services related to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity is found where the goods sold at retail are only highly similar or similar to the goods covered by the other mark.
7.4 Retail services versus retail services or retails services of specific goods: identical
Retail services in general, i.e. not limited in the list to the sale of particular goods, are identical to retail services in general or related to the sale of specific goods.
7.5 Retail services of specific goods versus retail se rvices of other specific goods: similar
Retail services related to specific goods are considered to be similar to retail services related to other specific goods independently of whether or not there is a similarity between the goods in question. The services under comparison share the same nature both being retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, depending on t he goods which are retailed, they may coincide in the relevant public and distribution channels.
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7.6 Services to which the same principles apply
The principles set out above apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc. (to the extent that these fall into Class 35).
7.7 Services to which the same principles do not apply
In contrast, the principles set out above do not apply to other services which are not limited to services around the sales of goods, or which do not fall into Class 35, such as import and export services (Class 35), distribution services (Class 39), transport or repair services (Class 37), etc.
Example
• Import and export services
Import and export services are not considered to be a sales service and thus cannot be argued in the same way as the comparison of goods against retail services.
Import and ex port services relate to the movement of goods and nor mally require involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35 they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import / export services and the goods at stake are the same is not a relevant factor for finding a similarity.
Example
• Import and export of tobacco products (Class 35) is dissimilar to tobacco products (Class 34).
Judgment of 09/06/2010, T-138/09, ‘Riojavina’ where a l ow degree of similarity was found between import / export of vinegar and wine is not followed.
8 Financial services
Financial services refer to services provided by the finance industry. The finance industry encompasses a broad range of organisations that deal with the management, investment, transfer, and l ending of money. Among these organisations are for example banks, credit card companies, insurance companies, consumer finance companies, stock brokerages and investment funds.
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8.1 Banking services (Class 36) versus insurance services (Class 36)
Providing banking services consists of the provision of all those services carried out for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business.
Providing insurance services consists of accepting liability for certain risks and respective losses. Insurers usually provide monetary compensation and / or assistance in the event a specified contingence occurs, such as death, accident, sickness, contract failure and, in general, any event capable of causing damages.
Insurance services have different purposes from the services usually provided by banks such as providing credit or asset management, credit card services, financial evaluation or stocks and bonds brokerage. Nevertheless, there are also some significant points of contact.
Insurance services have a financial nature and insurance companies are subject to similar rules of licensing, supervision and s olvency as banks and other institutions providing financial services. Most banks also offer insurance services, including health insurance, or they act as agents for insurance companies with which they are often economically linked. Additionally, it is not unusual to see financial institutions and an insurance company in the same economic group.
Therefore, although insurance services and banking services have different purposes, they have a similar nature; may be provided by the same undertaking or related undertakings and t hey share the same distribution channels. These circumstances show that insurance services are similar to banking services.
8.2 Real estate affairs (Class 36) versus financial affairs (Class 36)
Real estate affairs comprise the managing of real estate properties, real estate agency and the evaluation of real estate properties, as well as the consultancy and provision of information related thereto. This mainly implies the finding of property, making it available for potential buyers and acting as an intermediary. Consumers clearly distinguish the real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or expect that the real estate agent manages their finances.
The mere fact that real estate may have to be financed in order to be purchased is not enough to find similarity between real estate affairs and financial services. Even if financial services can be important for the acquisition of real estate, the consumers usually turn first to a real estate agent to search for a property and secondly, to a financial institution to finance the property.
Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. It must therefore be concluded that these services are dissimilar even if financial services are essential or important for the use of real estate. The consumers would not attribute responsibility for both services to
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the same company. (see judgment of 11/07/2013, T-197/12, ‘GRUPOMETROPOLIS’, paras. 47-51).
8.3 Credit cards (Class 9) versus financial services (Class 36)
A credit card is a small plastic card issued to users as a system of payment. It allows its holder to buy goods and services based on the holder’s promise to pay for these goods and services. The issuer of the card creates a revolving account and grants a line of credit to the consumer (or the user) from which the user can borrow money for payment to a merchant or as a cash advance to the user.
Financial services are offered by institutions like banks for the facilitation of various financial transactions and other related activities in the world of finance.
Even though credit cards are somewhat related to financial services, for example they can serve to withdraw money from the cash dispenser of a bank; this link is too remote to render the goods and services similar. The customers are aware of the fact that financial institutions are not responsible for the technological aspects of issuing magnetic or chip cards (see decision of 07/05/2012, R 1662/2011-5, ‘CITIBANK’, para. 29).
9 Transport, packaging and storage
9.1 Transport of goods (Class 39) versus any good
Services of transport are not considered to be s imilar to goods. These services are provided by specialist transport companies whose business is not the manufacture and sale of those goods. As regards the nature of the goods and services, transport services refer to a fleet of trucks or ships used to move goods from A to B.
Example
● Pastry and confectionery are dissimilar to transport services. They are different in terms of their nature, intended purpose and method of use; they are not complementary, nor in competition. All these differences explain why the service of transport and the goods of pastry and c onfectionery target different consumers. Transport is predominantly aimed at professionals (those who need to move goods) whereas pastry and confectionery target non-professional customers (ordinary people who require food).(see decision of 07/01/2014, R 1006/2012-G, ‘PIONONO’, paras. 28-36).
9.2 Packaging and storage of goods (Class 39) versus any good
Equally, packaging and storage services merely refers to the service whereby a company’s or any other person’s goods are packed and kept in a particular place for a fee. Those services are not similar to any kind of goods, including any of the goods that may be pac kaged and stored (see judgment of 07/02/2006, T-202/03, ‘Comp USA’judgment of 22/06/2011, T-76/09, ‘Farma Mundi Farmaceuticos Mundi’, para. 32 and decision of 07/01/2013, R 1006/2012-G, ‘PIONONO’, para 38).
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10 Information Technology
10.1 Computers versus software
What we call a computer is actually a ‘system’, a combination of components that work together. The hardware devices are the physical components of that system. The hardware is designed to work hand-in-hand with computer programs, referred to as software. Computer hardware companies also manufacture software, they share the same distribution channels and can be targeted to the professional public (e.g. for use in banking and finance, education, medicine, business and entertainment / recreation), or the general public. Moreover, they are complementary (see paragraph 10.2 below). These goods are considered to be similar.
10.2 Software versus apparatus that use software
In today’s high-tech society almost all electronic or digital apparatus function on its integrated software. This does not, however, lead to an aut omatic conclusion that software is similar to the goods which use software to successfully functioning (see also Annex I, paragraph 1. Parts, components and fittings).
Example for dissimilarity
● A digital scale functions on i ts integrated software; this does not lead to the conclusion that software and s cales are similar. One could argue that the software is important for the use of the scale; however, they are not complementary because they are not aimed at the same public. The digital scale is for the general public, whereas the software would be ai med at the actual manufacturer of these scales. The producers are not the same, nor are the distribution channels and they do not have the same purpose.
However, when the software is not an i ntegrated part of an ap paratus and c an be purchased independently from it and serves, e.g. to give more or different functionalities, similarity can be established.
Example for similarity
● A digital camera and software to increase its functionalities are both aimed at the same public and produced by the same or related undertakings. They are distributed through the same channels and the use of the one is indispensable for the use of the other. Consequently digital cameras and software (which includes software to e.g. increase functionalities of a digital camera) are considered to be similar.
10.3 Software, downloadable ‘apps’ and downloadable electronic publications
Application software, also known as ‘an app’, is computer software that is designed to help the user perform various tasks on the computer. Application software differs from
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system software in that it can be accessed by the user and allows the user to run it on the computer. Application software is usually designed with the user in mind. The new definition of application is used to refer to the small ‘apps’ that are designed for mobile phones; however the definition covers all applications on s mart phones, tablets and computers. Consequently, software, application software and downloadable applications are considered to be identical.
Downloadable electronic publications are electronic versions of traditional media, like e-books, electronic journals, online magazines, online newspapers etc. It is becoming common to distribute books, magazines and newspapers to consumers through tablet reading devices by means of so-called ‘apps’ in the form of electronic publications. Consequently, there exists a complementary relation between software / ’apps’ and downloadable electronic publications. Their producers can be the same; they follow the same distribution channels and the public is generally also the same. These goods are considered to be similar.
10.4 Specific software versus specific software
There are many types of software and although software in its nature (a set of instructions that enables a computer to perform a task) is the same, this does not mean that their specific purpose is the same. This implies that very specific software could even be dissimilar to another type of software.
Example
The field of application of computer games software is not the same as software for apparatus that diagnose diseases. Due to these significantly different fields of application, the expertise needed to develop these types of software is not the same, nor are their end users or distribution channels. These goods are therefore dissimilar.
10.5 Computers and software (Class 9) versus computer programming (Class 42)
Computer programming consists, inter alia, of the process of writing source code (see judgment of 29/03/2012, T-417/09 , ‘Mercator Studios’, para. 26) and a c omputer program is a set of coded instructions that enables a machine, especially a computer, to perform a desired sequence of operations.
Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate, or otherwise process information. Computers need programs to operate.
Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation.
Therefore, computer programming services are closely linked to computers and software. This is because in the field of computer science producers of computers and / or software will also commonly render computer and / or software-related services (as a means of keeping the system updated, for example).
Consequently and in spite of the fact that the nature of the goods and services is not the same, both the end users and the producers / providers of the goods and services
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coincide. Furthermore, they are goods and services that are complementary. For these reasons these goods and services are considered similar.
10.6 Apparatus for recording, transmission, reproduction of sound or images, computers and software (Class 9) versus telecommunication services (Class 38)
Apparatus for recording, transmission or reproduction of sound or images are apparatus and devices used to communicate audio or video information over a distance via radio waves, optical signals, etc., or along a transmission line.
Telecommunication services are those that allow people to communicate with one another by remote means.
Since the 1990s the boundary between telecoms equipment and IT hardware / software has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecoms data. Equipment used for purposes of telecommunication, like modems, mobile phones, landline telephones, answering machines, fax machines, pagers, routers etc. is also considered to cover the telecommunications control software that must be in place to successfully support telecommunications activities. Any software that provides the ability to perform telecommunication activities operations can be considered telecommunications control software.
Clearly a l ink exists between the above goods in Class 9 and telecommunication services in Class 38. These goods and services are similar given their complementary character, and although their nature is different their purpose and distribution channels are the same (see judgment of 12/11/2008, T-242/07, ‘Q2web’, paras. 24-26).
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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 2
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION
CHAPTER 3
COMPARISON OF SIGNS
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Table of Contents
1 Introduction................................................................................................ 4 1.1 Overview .....................................................................................................4 1.2 General principles ......................................................................................4
1.2.1 Objective comparison ..................................................................................... 4 1.2.2 Three aspects: visual, aural and conceptual .................................................. 5 1.2.3 Signs to be compared..................................................................................... 5 1.2.4 Possible outcome of the comparison ............................................................. 5 1.2.5 Relevant territory and relevant public ............................................................. 6
2 Identity of Signs......................................................................................... 6 2.1 The concept of identity ..............................................................................6 2.2 Threshold for a finding of identity.............................................................7 2.3 Identity of word marks ...............................................................................8 2.4 Word marks and figurative marks .............................................................9 2.5 Identity of figurative marks......................................................................10 2.6 Identity of an earlier black & white (B&W) or greyscale mark with a
colour mark application ...........................................................................11
3 Similarity of Signs ................................................................................... 12 3.1 The concept of similarity .........................................................................12 3.2 Threshold for a finding of similarity........................................................12 3.3 Negligible elements..................................................................................13 3.4 Visual comparison....................................................................................14
3.4.1 Visual comparison involving word marks ..................................................... 14 3.4.1.1 Word mark vs word mark...........................................................................15 3.4.1.2 Comparison between a w ord mark and a f igurative mark with word
elements....................................................................................................15 3.4.2 Visual comparison not involving word marks ............................................... 17
3.4.2.1 Purely figurative v purely figurative signs ..................................................17 3.4.2.2 Visual comparison between two word/figurative marks .............................18 3.4.2.3 Visual comparison between a word/figurative sign and a figurative sign...20 3.4.2.4 Particular scenarios when comparing figurative signs...............................21 3.4.2.5 Visual comparison of ‘colour per se’ marks ...............................................21 3.4.2.6 Visual comparison of 3D marks.................................................................21
3.5 Phonetic comparison ...............................................................................22 3.5.1 Practical criteria ............................................................................................ 22 3.5.2 Signs and elements in the signs that must be assessed ............................. 24 3.5.3 Identical/similar sounds in different order ..................................................... 27 3.5.4 Signs consisting of or including foreign or invented words .......................... 28
3.6 Conceptual comparison: practical criteria .............................................29 3.6.1 Definition of semantic content ...................................................................... 29
3.6.1.1 The semantic content of words..................................................................30 3.6.1.2 The semantic content of parts of words.....................................................33 3.6.1.3 The semantic content of misspelled words................................................34 3.6.1.4 The semantic content of names and surnames.........................................35 3.6.1.5 The semantic content of figurative signs, symbols, shapes and colours ...37
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3.6.1.6 The semantic content of numbers and letters............................................38 3.6.1.7 The semantic content of geographical names...........................................39 3.6.1.8 The semantic content of onomatopoeias...................................................39
3.6.2 How to make a conceptual comparison ....................................................... 40 3.6.2.1 Both marks share a word and/or expression .............................................41 3.6.2.2 Two words or terms have the same meaning but in different languages...42 3.6.2.3 Two words refer to the same semantic term or variations thereof .............43 3.6.2.4 Two figurative signs, symbols and / or shapes represent the same
object or idea.............................................................................................43 3.6.2.5 When there is a word vs a figurative sign, symbol, shape and/or colour
representing the concept behind the word.................................................44
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1 Introduction
1.1 Overview
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings.
Whether a likelihood of confusion exists depends on an overall assessment of several interdependent factors including: (i) the similarity of the goods and services, (ii) the similarity of the signs, (iii) the distinctive and dominant elements of the conflicting signs, (iv) the distinctiveness of the earlier mark, and (v) the relevant public.
The first step in assessing if a likelihood of confusion exists is to establish these five factors. The second step is to determine their relevance.
This chapter deals with the comparison of signs. The purpose of comparing signs is to determine if the signs are identical (Section 2 of this chapter), similar (Section 3 of this chapter), or dissimilar.
Similarity of the signs is a necessary condition for it to be found that there is a likelihood of confusion for the purposes of Article 8(1)(b) CTMR (judgment of 23/01/2014, C-558/12 P, ‘Western Gold’, para. 44). If the signs are clearly dissimilar, the examination of likelihood of confusion will stop at this point.
1.2 General principles
1.2.1 Objective comparison
The comparison of signs is a so-called objective comparison, objective meaning that all elements of the signs are taken into account, irrespective of their distinctiveness or dominance. Therefore, the step-by-step methodology employed by the Office initially keeps the objective assessment of the similarity of the signs separate from the assessments of the distinctiveness of their component parts1.
The finding of similarity between the signs, however, should not be considered conclusive for finding a likelihood of confusion. The Office’s objective comparison establishes that there is at least some degree of similarity between the signs, which is necessary to trigger (and be weighed in) the Global Assessment, where all factors are considered when making a global appreciation of the likelihood of confusion2.
This contrasts with other approaches that weigh up the distinctiveness of the various elements of the marks at the same time as assessing the similarity of the signs. Although the difference is one of method only and does not affect the ultimate finding of
1 The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 4: Distinctiveness and Chapter 5: Dominant elements. 2 The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 8: Global assessment.
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likelihood of confusion the Office follows the method first described for reasons of consistency of format.
The same method applies to the assessment of whether the signs are identical, which finding requires an objective coincidence in all elements irrespective of whether they are distinctive and/or dominant.
1.2.2 Three aspects: visual, aural and conceptual
Signs are always compared on t hree levels, namely visually (Section 3.4 of this chapter), aurally (Section 3.5. of this chapter) and conceptually (Section 3.6 of this chapter). This is because one can perceive signs visually and aurally (comparison by taste, smell or touch is, for several reasons, less relevant or not possible at all), and because signs can evoke a s imilar image/concept. Only when it is not possible to compare on one level (e.g. the aural comparison when the mark is purely figurative) will this aspect be left out.
1.2.3 Signs to be compared
When assessing identity or similarity, the signs have to be c ompared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (see judgment of 09/04/2014, T-623/11 ‘Sobieraj (MILANÓWEK CREAM FUDGE)’ at para. 38)3.
The comparison must cover the signs in their entirety. Consequently, it is wrong to skip comparing elements of the signs just because they are, for example, smaller than other elements in the signs (unless they are negligible as explained below) or because they are non-distinctive (judgment of 12/06/07, C-334/05 P ‘Limoncello’, paras. 41, 42, judgment of 13/12/2011, T-61/09, ‘Schinken King’, para. 46).
1.2.4 Possible outcome of the comparison
Comparison of the signs leads to the finding of one of the following three outcomes: identity, similarity or dissimilarity. The result is decisive for further examination of the opposition as it has the following implications:
• a finding of identity between the signs leads to absolute protection according to Article 8(1)(a) CTMR if the goods and/or services are also identical.
• a finding of similarity leads to the opening of the examination on likelihood of confusion in accordance with Article 8(1)(b) CTMR.
• the finding of dissimilarity excludes the likelihood of confusion. There is no need to examine further prerequisites of Article 8(1)(b) CTMR.
3 For the effect of disclaimers, see The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 4: Distinctiveness.4 The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 6: Relevant Public and Degree of Attention.
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1.2.5 Relevant territory and relevant public
Similarity must be assessed for the territory in which the earlier mark is protected. The relevant territory must be indicated. Moreover, the relevant public plays an important role when comparing the signs4.
Where the earlier mark is a nat ional mark, the relevant criteria must be anal ysed in relation to the relevant public in that particular EU Member State (or Member States in the case of Benelux trade marks). The perception of similarity may differ from one Member State to another because of differences in pronunciation and/or meaning/understanding.
When the earlier mark is a CTM registration, the analysis must in principle extend to the whole EU. However, in situations where there is a likelihood of confusion in at least one Member State and when justifiable for reasons of economy of procedure (such as to avoid examining specific pronunciations or meanings of marks in several languages), the Office’s analysis need not extend to the whole EU but may instead focus on only one part or parts where there is likelihood of confusion.
The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on i n opposition proceedings against any application for registration of a Community trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 08/09/2008, C-514/06 ‘Armacell’, paras 56-57 and subsequent case-law, inter alia judgment of 18/09/2011, T-460/11 BÜRGER’, para. 52 and the case-law quoted therein).
2 Identity of Signs
2.1 The concept of identity
As indicated above, a finding of identity between the signs will lead to the success of the opposition pursuant to Article 8(1)(a) CTMR if the goods and s ervices are also identical.
The differences between Article 8(1)(a) CTMR and protection in the event of likelihood of confusion pursuant to Article 8(1)(b) CTMR must be borne in mind in order to understand the concept of identity and the requirements attached thereto.
Protection pursuant to Article 8(1)(a) CTMR is absolute because registration of a later identical sign for identical goods or services would compromise the function of the earlier mark as a means of identifying commercial origin. Where absolutely identical signs or marks are registered for identical goods or services, it is impossible to conceive of circumstances in which all likelihood of confusion could be ruled out. There is no need to consider any other factors, such as the level of attention of the public or the distinctiveness of the earlier trade mark.
On the other hand, pursuant to Article 8(1)(b) CTMR, the earlier trade mark is protected against the likelihood of confusion: even if the trade marks differ in some elements,
4 The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 6: Relevant Public and Degree of Attention.
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their similarity – in combination with further elements that have to be assessed globally – may lead to the assumption that the relevant products originate from the same or an economically linked undertaking.
Due to the absolute protection conferred by Article 8(1)(a) CTMR, the concept of identity between the trade marks must be interpreted strictly. The absolute protection in the case of a CTM application ‘which is identical with the [earlier] trade mark in relation to goods or services which are identical with those for which the trade mark is registered [pursuant to Article 8(1)(a) CTMR] cannot be extended beyond the situations for which it was envisaged, in particular, to those situations which are more specifically protected by [Article 8(1)(b) CTMR]’ (judgment of 20/03/2003, C-291/00, ‘LTJ Diffusion’ (Arthur et Félicie), paras 50-54 in relation to the corresponding provisions of the TM Directive).
2.2 Threshold for a finding of identity
The very definition of identity implies that the two signs should be the same in all respects. There is, therefore, identity between the trade marks where the CTM application reproduces, without any modification or addition, all the elements constituting the earlier trade mark.
However, since the perception of identity between the sign and the trade mark is not always the result of a di rect comparison of all the characteristics of the elements compared, insignificant differences between the trade marks may go unnoticed by an average consumer.
Therefore, the CTM application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer (judgment of 20/03/2003, C-291/00, ‘LTJ Diffusion’ (Arthur et Félicie), paras 50-54).
An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon examining the marks side by side. ‘Insignificant’ is not an objective term and its interpretation depends on the level of complexity of the trade marks being compared. Insignificant differences are those which, because they concern elements that are very small or are lost within a complex mark, cannot be readily detected by the human eye upon observing the trade mark concerned, bearing in mind that the average consumer does not normally indulge in an analytical examination of a trade mark but perceives it in its entirety.
The finding that an el ement is ‘insignificant’ should be ac companied by sufficient reasoning for its lack of impact on the global perception of the trade mark.
It follows from the definition of identity above that the following conditions have to be met in order for trade marks to be c onsidered identical in accordance with Article 8(1)(a) CTMR:
• complete identity of the signs taken as a whole. Partial identity is not sufficient under Article 8(1)(a) CTMR; however, a coincidence in any part of the mark may lead to similarity between the signs and should be addressed when carrying out the examination in respect of Article 8(1)(b) CTMR.
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Any additional element is sufficient for concluding that the marks are not identical; it is immaterial whether the added el ement is a word, a f igurative device or a combination of the two.
Consequently, two word marks will not be considered identical if one is contained within the other but is accompanied by further characters (see part 2.4) or by words – irrespective of distinctiveness or possible descriptive character.
Earlier sign Contested sign and comments Case No
millenium
MILLENIUM INSURANCE COMPANY LIMITED
It was found that ‘the signs at stake were obviously not identical’, even if ‘Insurance company limited’ was descriptive in English for the related services.
R 0696/2011-1
INDIVIDUAL R 0807/2008-4
• identity on all levels of comparison. There must be identity between the signs at all relevant levels of trade mark comparison, that is, visual, phonetic and conceptual. If the trade marks are identical in some aspects (visual, phonetic or conceptual) but not in others, they are not identical overall. In the latter case, they may be similar and, therefore, likelihood of confusion must be examined.
2.3 Identity of word marks
Word marks are identical if both are purely word marks and c oincide exactly in the string of letters or numbers. Word marks are marks consisting of letters, numbers and other signs (e.g. ‘+’, ‘@’, ‘!’) reproduced in the standard typeface used by the respective office. This means that they do not claim any particular figurative element or appearance. Where both marks are registered as word marks, the typeface actually used by the respective office in the official publication (e.g. the Bulletin) is immaterial. Differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.
The following word marks are identical:
Earlier sign Contested sign Case No
MOMO MoMo B 1 802 233
BLUE MOON Blue Moon R 0835/2010-1
GLOBAL CAMPUS Global Campus R 0719/2008-2
ZEUS Zeus R 0760/2007-1
JUMBO Jumbo R 0353/2007-2
DOMINO Domino R 0523/2008-2
apetito APETITO T-129/09
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In general, it should be checked whether the sign has been registered as a word mark. For example, examining only the graphic representation of the trade mark (for instance, in the Madrid System) can be misleading because, depending on the graphic representation of the signs used in the certificates, bulletins, etc., a mark claimed as a word mark may include figurative or stylised elements or fonts. In these cases, the claim will prevail over the exact reproduction in the certificate, bulletins, etc.
Marks in non-Latin characters must be considered as word marks in the designated jurisdictions where those characters are officially used (e.g. Cyrillic in the case of a CTM or an IR designating Bulgaria or the EU, in accordance with the indication of category No 28.05 ‘inscriptions in Cyrillic characters’ of the Vienna Classification of figurative elements).
Earlier sign Contested sign Case No
B 1 827 537
A difference in just one letter is enough for a finding of non-identity. The same applies to a space or a punctuation mark (e.g. hyphen, full stop), since the presence of either may change how the sign is perceived (see first example below). The following word marks are not identical:
Earlier sign Contested sign Case No
She , SHE S-HE T-391/06
TELIA teeli B 13 948
NOVALLOY NOVALOY B 29 290
HERBO-FARMA HERBOFARM R 1752/2010-1
2.4 Word marks and figurative marks
A word mark and a figurative mark, even when both consist of the same word, will not be identical unless the differences may go unnoticed by the relevant public.
In the following examples the signs are clearly not identical:
Earlier sign Contested sign Case No
IHotel T-277/11
ELCO R 0803/2008-1
eClear R 1807/2010-1
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BIG BROTHER R 0932/2010-4
However, the finding that trade marks are not identical can be m ore difficult if the figurative trade mark is written in a normal typeface. Nevertheless, in the following examples the trade marks were found to be not identical:
Earlier sign Contested sign Case No
THOMSON R 0252/2008-1
Klepper R 0964/2009-1
2.5 Identity of figurative marks
There is identity between two figurative marks when both signs match in all their figurative elements (shape, colours, contrast, shadowing, etc.).
It goes without saying that use of the same word when the figurative element is not the same will not suffice for a finding of identity. The following marks are not identical:
Earlier sign Contested sign Case No
R 0558/2011 1
R 1440/2010-1
7078 C
However, since in the following case the difference in the presentation of the letters ‘TEP’ in italics would go unnoticed by the public, the marks were considered identical:
Earlier sign Contested sign Case No
B 2 031 741
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2.6 Identity of an earlier black & white (B&W) or gre yscale mark with a colour mark application
In the framework of the European Trade Mark and Design Network, the Office and a number of Trade Mark Offices in the European Union have agreed on a c ommon practice with regard to the scope of identity of earlier B&W or greyscale marks with coloured versions of the same sign.
According to this converged practice the differences between an earlier B&W or greyscale mark and a coloured version of the same sign will normally be noticed by the average consumer with the consequence that the marks are not considered identical. It is only under exceptional circumstances that the signs will be considered identical, namely where the differences in the colours or in the contrast of shades are so insignificant that a reasonably observant consumer will perceive them only upon side by side examination of the marks. In other words, for the finding of identity the differences in colour of the signs in question must be hardly noticeable by an average consumer.
Invented examples of significant differences with the consequence of no identity:
Earlier sign Contested sign
Invented examples of insignificant differences with the consequence of identity:
Earlier sign Contested sign
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In relation to the above findings, the issue whether a t rade mark registered in B&W should be considered to cover all colours has also been addressed by the Court in a subsequent judgment (judgment of 09/04/2014, T-623/11 ‘Sobieraj (MILANÓWEK CREAM FUDGE)’:
Earlier sign Contested sign Case No
et al.
T-623/11
The Court considered that fact that “the proprietor of a mark may use it in a colour or a combination of colours and obtain for it, as the case may be, protection under the relevant applicable provisions (…) does not mean (…) that the registration of a mark which does not designate any specific colour covers “all colour combinations which are enclosed with the graphic representation” (para. 39)
In the particular case, the Court considered that the Board was right in finding “that one di fference between the mark applied for and the first and second earlier marks lay in the fact that the mark applied for consisted, in part, of a yellow background with white vertical stripes” (para. 40)
3 Similarity of Signs
3.1 The concept of similarity
According to the case-law, two marks are similar when inter alia, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 23/10/2002, T-6/01, ‘Matratzen’, para. 30 (C-03/03 P); judgment of 12/11/2008, T-281/07, ‘BLUE’ para. 26).
The global assessment of the likelihood of confusion must be based, in so far as the visual, phonetic or conceptual similarity of the marks at issue is concerned, on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (judgment of 11/11/1997, C-251/95, ‘SABEL’ para. 23).
3.2 Threshold for a finding of similarity
If there is similarity on one or more of the three levels, then the signs are similar (judgment of 02/12/2009, T-434/07, ‘Volvo’, para. 50-53). Whether the signs are sufficiently similar to lead to a l ikelihood of confusion must be deal t with in another section of the decision (‘The Global Assessment’) and not in the section dealing with the comparison of the signs.
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A logical consequence of a low threshold is that a finding of similarity will not automatically lead to a f inding of a l ikelihood of confusion, including the likelihood of association, even when the goods and services are similar or identical. As mentioned above, likelihood of confusion, including the likelihood of association, depends on many factors, which first have to be assessed separately5.
As the line between similar and dissimilar is not always easy to define, these concepts are dealt with together in each of the comparisons: the visual comparison, the aural comparison and the conceptual comparison.
3.3 Negligible elements
As mentioned in Section 1.2.1 above, the comparison must cover the signs in their entirety. However, in the event of negligible elements, the Office may skip comparing such elements from the outset, after having duly reasoned why they are considered to be negligible (see judgment of 12/06/2007, C-334/05 P, ‘Limoncello’, para. 42). This is especially important where the negligible element is the common element in the signs. The notion of negligible elements should be strictly interpreted and, in the event of any doubt, the decision should cover the signs in their entirety.
The Office considers that a negligible element refers to an element which, due to its size and/or position, is not noticeable at first sight or is part of a c omplex sign with numerous other elements (e.g. beverage labels, packaging, etc.) and, therefore, very likely to be disregarded by the relevant public.
Examples:
Earlier sign Contested sign Case No
(GREEN BY MISSAKO)
T-162/08
The words ‘by missako’ are almost illegible: the size and script make them difficult to decipher.
LUNA
R 02347/2010-2
The element ‘Rótulos Luna S.A.’ was considered negligible.
5 The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 8: Global assessment.
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MATHEUS MÜLLER
R 0396/2010-1
The Board did not assess the elements ‘30 cl’ ‘30% vol.’ ‘ANNO’ or ‘1857’ phonetically or conceptually.
MAGNA
R 1328/2005-2
The Board described the contested sign in full, but negligible elements such as ‘70%’ were not included in the three-level comparison.
T-472/08
The elements other than ‘cachaça’/‘pirassununga’ and ‘51’, the latter written in white within a circle that is itself partially within a broad band running from one side of the sign to the other, are negligible in the overall impression created by those marks (para. 65)
3.4 Visual comparison
3.4.1 Visual comparison involving word marks
When at least one word mark is involved, the word as such is protected, not its written form. According to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (judgment of 20/04/2005, T-211/03 ‘Faber’, para. 33, and judgment of 13/02/2007, T-353/04, ‘Curon’, para. 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, ‘RadioCom’, para. 43).
Therefore, it is irrelevant whether the word mark is represented in lower or upper case letters:
Earlier sign Contested sign Case No
BABIDU babilu T-66/11 (para 57)
BALLYMANOR BallyM R 0391/2010-1
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3.4.1.1 Word mark vs word mark
For word marks, the visual comparison is based on an anal ysis of the number and sequence of the letters/characters, the position of the coinciding letters/characters, the number of words and the structure of the signs (e.g. whether word elements are separated or hyphenated).
However, the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details. Therefore, small differences in the (number of) letters are often not sufficient to exclude a finding of visual similarity, particularly when the signs have a common structure.
In the following cases the marks were held to be visually similar:
Earlier sign Contested sign Case No
CIRCULON CIRCON T-542/10
MEDINETTE MESILETTE T-342/10
FORTIS FORIS R 0049/2002-4
ARTEX ALREX T-154/03
BALLYMANOR BallyM R 0391/2010-1
MARILA MARILAN R 0799/2010-1
EPILEX E-PLEX T-161/10
CHALOU CHABOU T-323/10
The following word marks are visually dissimilar:
Earlier sign Contested sign Case No
CAPOL ARCOL C-193/09 P and T-402/07
The Board held that although those marks shared the letter ‘a’ and the ending ‘ol’, they ‘clearly differ[ed]’ visually. The General Court agreed. It held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters. (paras. 81 and 82). The Court held that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same o rder (para. 83). The ending ‘ol’ of the marks at issue constituted a common element of the marks but comes at the end and is preceded by completely different groups of letters (respectively, ‘arc’ and ‘cap’), so the Board of Appeal correctly concluded that that this commonality does not render the marks visually similar (para. 83). The Court of Justice upheld this assessment from a visual perspective (para. 74).
3.4.1.2 Comparison between a word mark and a figurative mark with word elements
When figurative marks with word elements and word marks are compared visually, what matters is whether the signs share a s ignificant number of letters in the same position and whether the word element in the figurative sign is highly stylised. Similarity may be found despite the fact that the letters are graphically represented in different typefaces, in italics or bold, in upper or lower case or in colour.
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In principle, when the same letters are depicted in the same sequence, any variation in stylisation has to be high in order to find visual dissimilarity.
The following marks were considered visually similar because there was no hi gh variation in the stylisation of the word elements in the figurative marks and the word element was easily recognisable and legible:
Earlier sign Contested sign Case No
VITAFIT T-552/10
Hella T-522/10
vitafresh R 0399/2009-1
COTO DE IMAZ R 0409/2009-1
vendus sales & communication group R 0994/2009-4
OPENDOOR R1309/2008-4
VITESSE R 0636/2008-4
EMERGEA T-172/04
However, in cases where the word in the figurative mark is highly stylised, the marks should be found visually dissimilar, as in the following examples:
Earlier sign Contested sign Case No
NEFF R 1242/2009-2
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NODUS R 1108/2006-4
3.4.2 Visual comparison not involving word marks
When neither of the signs to be compared is a word mark, a di fferentiation must be made between the purely figurative elements of the marks and the word elements:
• When comparing the signs in conflict in terms of their purely figurative elements, the Office considers the latter as images: if they match in one, separately recognisable, element or have the same or a similar contour, it is likely that some visual similarity will be found.
• When comparing the signs in terms of their word elements, the Office considers the signs similar insofar as they share a significant number of letters in the same position and when they are not highly stylised or when they are stylised in the same or a similar manner. Similarity may be found despite the fact that the letters are graphically represented in different typefaces, in italics or bold, in upper or lower case or in colour (judgment of 18/06/2009, T-418/07 ‘LiBRO’ and judgment of 15/11/2011, T-434/10 ‘ALPINE PRO SPORTSWEAR AND EQUIPMENT’, appeal C-42/12 P dismissed).
Generally speaking, three types of visual comparison exist:
• Purely figurative v purely figurative signs: the signs are visually similar if any of their elements match;
• Figurative sign with word elements v figurative sign with word elements: the signs are visually similar if their figurative elements match and/or if they share words and/or letters written in the same/similar typeface or one t hat is not highly stylised;
• Figurative signs with word elements v purely figurative sign (or vice-versa): the signs are visually similar if any of their figurative elements match.
These three scenarios are dealt with in detail below, with some special situations being described at the end.
3.4.2.1 Purely figurative v purely figurative signs
As explained above, the signs may be v isually similar when they match or have a similar contour.
The following purely figurative signs were found to be visually similar.
Earlier sign Contested sign Case No
T-379/08
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B 1 157 769
T-523/08
The following purely figurative signs were deemed to be visually dissimilar:
Earlier sign Contested sign Case No
B 1 572 059
T-502/11
3.4.2.2 Visual comparison between two word/figurative marks
As already mentioned, in the event that both signs contain word elements, similarity will be found if these elements coincide in a sequence of letters that are not highly stylised. This is true even if the letters are graphically represented in different, but still not highly stylised, typefaces, whether in italics or bold, in upper or lower case, or in colour (judgment of 18/06/2009, T-418/07 ‘LiBRO’ and j udgment of 15/11/2011, T-434/10 ‘ALPINE PRO SPORTSWEAR & EQUIPMENT’, appeal C-42/12 P dismissed).
In the following examples, the marks were considered visually similar because they share some words or sequences of letters and the typeface was deemed not to be highly stylised:
Earlier sign Contested sign Case No
T-418/07
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T-434/10 (appeal dismissed)
R 1148/2008
T-460/09
T-204/09
T-383/12
In the following examples, however, the marks were considered visually dissimilar in spite of the fact that they shared some words and/or letters and/or figurative devices because the shared letters are highly stylised, placed differently and/or there are additional figurative devices:
Earlier sign Contested sign Case No
T-390/03
T-106/06
R 1109/2008-1
R 0576/2010-2 (confirmed by T-593/10)
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R 0111/2010-4
3.4.2.3 Visual comparison between a word/figurative sign and a figurative sign
A coincidence in a figurative element that is visually perceived in an identical or similar way may lead to a visual similarity.
The following examples are cases where there are visual similarities because of matching figurative elements:
Earlier sign Contested sign Case No
T-81/03, T-82/03 and T-103/03
(i)
(ii) R 0144/2010-2
R 1022/2009-2
In the following example the figurative elements were different and the signs were considered visually dissimilar:
Earlier sign Contested sign Case No
B 134 900
The marks were considered to be visually dissimilar
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3.4.2.4 Particular scenarios when comparing figurative signs
When comparing figurative signs visually, it is still possible to find visual similarity when the figurative elements are different (i.e. they do not match or have the same or similar contour) and the word elements are different. Similarity will be found when the overall stylisation, structure and colour combination render the signs visually similar overall.
The following example illustrates how similar structure, stylisation and c olour combination render signs visually similar:
Earlier sign Contested sign Case No
B 1 220 724
The signs were held to be visually similar.
3.4.2.5 Visual comparison of ‘colour per se’ marks
When comparing pure colour marks, there will be visual similarity insofar as they contain the same colours/colour combinations or similar shades.
Example:
Earlier sign Contested sign Case No
Indication of colour: Curry (ochre) yellow
RAL 6003-HR/olive green RAL 1027-HR.
Indication of colour: Yellow, Pantone PMS 142, green
RAL 6001
B 1 229 790
The signs were considered to be visually similar insofar as both contain similar shades of green and yellow.
3.4.2.6 Visual comparison of 3D marks
When comparing three-dimensional and two-dimensional signs, the same basic principles as for 2D marks are to be applied. Although the comparative rarity of the three-dimensional sign will usually particularly affect the visual impact of the sign, this must be considered in relation to the overall impression.
In contrast, there is a low degree of visual similarity between the following marks:
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Earlier sign Contested sign Case No
R 0806/2009-4
T-24/08
The following marks are visually dissimilar:
Earlier sign Contested sign Case No
R 0806/2009-4, para. 34
3.5 Phonetic comparison
3.5.1 Practical criteria
When the opposition is based on ea rlier signs that enjoy protection in different EU Member States, in principle, account must be taken of all the different pronunciations of the signs by the relevant public in all official languages of those Member States. Local accents are not taken into account. Nevertheless, as already mentioned, when the earlier mark is a CTM registration, the analysis must in principle extend to the whole EU. However, where there is a likelihood of confusion for at least one Member State and it is justifiable for reasons of economy of procedure (such as to avoid examining specific pronunciations or meanings of marks in several languages), the Office’s analysis need not extend to the whole EU but may instead focus on only a part or parts where there is a likelihood of confusion.
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The overall phonetic impression produced by a s ign is particularly influenced by the number and sequence of its syllables. The common rhythm and intonation of signs plays an i mportant role in how signs are perceived phonetically. The Collins English Dictionary defines ‘rhythm’ as ‘the arrangement of words into a m ore or less regular sequence of stressed and unstressed or long and s hort syllables’. ‘Intonation’ is defined as ‘the sound pattern of phrases and sentences produced by pitch variation in the voice’.
Therefore, the key elements for determining the overall phonetic impression of a trade mark are the syllables and their particular sequence and s tress. The assessment of common syllables is particularly important when comparing marks phonetically, as a similar overall phonetic impression will be determined mostly by those common syllables and their identical or similar combination.
The following are examples of phonetically dissimilar marks:
Earlier sign Contested sign Relevant territory Case No
CAPOL ARCOL EU C-193/09
CLENOSAN ALEOSAN ES R 1669/2010-2
GULAS MARGULIÑAS ES R 1462/2010-2
The following are examples of phonetically similar/identical marks:
Earlier sign Contested sign Relevant territory Case No
FEMARA EU
R 0722/2008-4
BX R 0166/2010-1
DE R 1071/2009-1 similar to a low
degree
PT: ‘A significant part of the general public in
Portugal has at the very least a basic knowledge of that language which
enables it to understand and to pronounce English words as basic and
everyday as “forever” or to pronounce
numbers below 10 in English.’ (68) Due to widespread use of
‘SMS language’, the number 4 combined with an English word will generally be read in English. (para. 69)
T-528/11
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Marks consisting of a single letter can be compared phonetically. The following marks are phonetically identical insofar as they both reproduce the letter ‘A’:
Earlier mark Contested sign Case No
T-115/02
3.5.2 Signs and elements in the signs that must be assessed
A figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be des cribed orally (judgment of 07/02/2012, T-424/10, ‘Device of a rectangle with elephants’, para. 46).
In other words, purely figurative marks (i.e. those not containing any word element) are not subject to a phonetic assessment. The ‘meaning’ that the image evokes has to be assessed only visually and conceptually.
The following are examples where no phonetic comparison could be made because the marks are purely figurative:
Earlier sign Contested sign Case No
R 0131/2010-4
R 0403/2009-2
T-424/10
Furthermore, when one of the signs has elements that can be read and the other has only figurative elements not subject to a phonetic assessment, the outcome should be that no phonetic comparison can be made. For example:
Earlier sign Contested sign Case No
R 0144/2010-2
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(KUNGFU)
With regard to the pronunciation of figurative elements reminiscent of a letter, it should be noted that the relevant public will tend to read such figurative elements only when they are linked to or part of a w ord known to the relevant public, such as in the following examples:
Earlier sign Contested sign Case No
OLI SONE B 1 269 549
ROCK T-146/08
Finally, while words, letters and numbers must always be assessed phonetically, some symbols and abbreviations give rise to uncertainty.
For example, the logogram ‘&’ (ampersand) will generally be r ead and pronounced and, therefore, should be i ncluded in the phonetic comparison. However, the pronunciation of a given symbol may differ where different languages are concerned.
Earlier sign Contested sign Case No
DNG
R 0160/2010-2 The ampersand ‘&’ will be pronounced in most European Union languages and is recognised as the corresponding translation of the conjunction ‘and’.
The same goes for the typographic character @, which in principle will be pronounced. Obviously, the pronunciation of a g iven symbol may differ where different languages are concerned.
Earlier sign Contested sign Case No
R 1421/2010-4 @ will be pronounced as ‘at’ or ‘arrobas’ in Benelux (para. 21).
In the above case it cannot be denied that a significant part of the relevant public – in particular English speakers – would read the ‘at’ symbol and thus say the trade mark as ‘at home’. This possibility must therefore be taken into consideration, together with other possibilities such as ‘a home’ or simply ‘home’. Naturally, in other languages the symbol may be readable in a different way (for example ‘arroba’ in Spanish and Portuguese).
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However, compare this with:
Earlier sign Contested sign Case No
R 0719/2010-1 (T-220/11 dismissed, C-524/12 P dismissed) The @ will be perceived as the letter ‘a’ by (at least) the EN public (para. 25).
The plus (+) and minus/hyphen (-) symbols may, depending on the circumstances, also be pronounced by the relevant public. The minus symbol may be pr onounced when used in combination with a num ber, e.g.‘-1’, but will not be pr onounced if used as a hyphen (as in ‘G-Star’).
In the following examples, the symbol ‘+’ in the contested CTMA would be pronounced as ‘plus’:
Earlier sign Contested sign Case No
AirPlus International T-321/07
(C-216/10 P dismissed)
T-400/06
Currency symbols (€, $, ₤, etc) too may be pronounced when the relevant mark is spoken. As a (fictional) example, in the United Kingdom the sign ‘₤20’ would be pronounced as ‘20 pounds’. Therefore, the signs ‘₤20’, ‘20 pounds’ and ‘twenty pounds’ are phonetically identical.
However, sometimes the way in which symbols – or letters – are used makes it unrealistic to assume that they will be read and pronounced, for example, when in a figurative mark a symbol is repeated in order to create a pattern or is highly distorted or otherwise not clearly legible. This is illustrated by the following examples:
Mark Explanation
T-593/10
In this figurative mark, the letter ‘B’ can be read. The mark must therefore be assessed phonetically.
T-593/10
In this figurative mark the letter ‘B’ is so highly distorted that the Court found that for part of the public it is difficult to clearly identify if it is indeed the letter ‘b’ or the figure ‘8’.
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R 1779/2010-4
It is very difficult to determine the pronunciation of the sign. An aural comparison may therefore lead to very different results, ranging from identity to dissimilarity.
B 1 127 416
In this figurative mark the letter ‘H’ can be read and therefore must be assessed phonetically.
B 1 127 416
In this sign, the pattern makes it unlikely that consumers will read an ‘H’ (or rather several ‘H’s). This mark cannot be assessed phonetically.
T-282/12 The Court held that, although hardly legible at first sight, the words FREE and STYLE in both of the signs are pronounced identically regardless of the language of the public.
In summary, whether or not a given symbol / letter is pronounceable depends on the type of character in question, how it is depicted, and how it is combined with other elements of the sign.
3.5.3 Identical/similar sounds in different order
Where the opposing trade marks are formed of syllables or words that are identical or highly similar but in a different order, so that if just one of the syllables or words were rearranged the signs would be identical or highly similar phonetically, the conclusion should be that the signs are phonetically similar.
For example:
Earlier sign Contested sign Case No
SAT-COM COM S.A.T B 361 461
VITS4KIDS Kids Vits T-484/08 (C-84/10 Pdismissed)
T-67/08
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3.5.4 Signs consisting of or including foreign or invented words
When a sign contains foreign words, it should be assumed, in principle, that the relevant public is unfamiliar with how foreign native speakers pronounce their own language. Accordingly, the public will tend to pronounce a foreign word in accordance with the phonetic rules of their own language.
Earlier sign Contested sign Case No
LIDL LIFEL
R 0410/2010-1 The first two letters and the last one are the same in both marks. Aurally, the similarity is even stronger because LIDL will often be pronounced as if spelt LIDEL. For phonological reasons, D and L are nearly impossible to pronounce in most languages without inserting a vowel between them. Therefore, the marks would be pronounced LIFEL and LIDEL in languages like Spanish, Italian, German and French.
KAN-OPHTAL PAN-OPHTAL BAÑOFTAL
T-346/09 The relevant territory is Germany. The Court found a phonetic similarity. The German consumer will probably pronounce the letters N and Ñ in the same way. Moreover, the letters P and B are pronounced with both lips and their sound can be confused if they are accompanied by the same vowel; the signs PAN-OPHTAL and BAÑOFTAL are aurally very similar.
GLANZ GLÄNSA T-88/10 The GC concluded that the umlaut would not alter the overall phonetic impression for EN, FR and ES speakers, since the languages in question do not have the letter ‘ä’ (para. 40)
However, this will not be the case when the relevant public is familiar with a word, for example in the following scenarios:
• When it is an established fact that a foreign language is known by the relevant public. For example, the Court has already confirmed that there is at least a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland (judgment of 26/11/2008, T-435/07 ‘NEW LOOK’, para. 23).
• When certain terminology is clearly known by the relevant public for certain classes of goods and/or services. For example, IT professionals and s cientists are generally considered to be more familiar with the use of technical and basic English vocabulary than the average consumer, irrespective of territory (judgment of 27/11/2007, T-434/05, ‘ACTIVY Media Gateway’, paras 38 and 48 for the IT field (C-57/08 P dismissed) and judgment of 09/03/2012, T-207/11, ‘EyeSense’, paras 21 and 22 for German professionals in the medical field).
• When very basic words will be understood in all Member States, such as the English words ‘baby’, ‘love’, ‘one’, ‘surf’, ‘pizza’ etc.
Earlier mark Contested sign Case No
Babylove Baby Love R 0883/2010-2
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• Finally, when any one o f the parties provides compelling evidence that such a word is known by a significant portion of the relevant public.
Where a significant part of the relevant public pronounces the foreign word correctly, but another significant part applies the rules of their mother tongue, any assessment of phonetic similarity should mention both pronunciations and provide reasoning. For example:
Earlier sign Contested sign Case No
WRITE RIGHT
(example only) English: highly similar aurally.
Spanish: dissimilar aurally.
ZIRH
T-355/02 (appeal C-206/04 P dismissed.) Similar in English speaking-countries and Spain.
As regards invented or fanciful words (words which do not correspond to any existing word in the EU), the relevant consumer might pronounce them not only as they would sound according to the rules of pronunciation of their mother tongue but also as they are written.
Earlier sign Contested sign Case No
BAMIX KMIX
T-444/10 The GC noted that the word element ‘kmix’ does not correspond to any existing word in the European Union and that it may be pronounced by part of the relevant public as it is written, as a single syllable. However, it also considered it possible that the mark applied for would be pronounced as a two-syllable word, namely ‘ka’ and ‘mix’. In certain languages of the European Union (in particular French and German), the letter ‘k’ is pronounced as ‘ka’ and the pronunciation ‘km’ is not usual (para. 32).
3.6 Conceptual comparison: practical criteria
3.6.1 Definition of semantic content
Two signs are identical or similar conceptually when they are perceived as having the same or analogous semantic content (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para. 24). The ‘semantic content’ of a mark is what it means, what it evokes or, when it is an image or shape, what it represents. In this text the expressions ‘semantic content’ and ‘concept’ will be used indiscriminately.
If a mark consists of various elements (for example, a word and a figurative element) the concept of each of the elements must be defined. However, if the mark consists of a meaningful expression (made up of two or more words) what matters is the meaning of the expression as a whole and not of each of the words in isolation.
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Not every concept has to be def ined: only those concepts likely to be k nown by the relevant public, as defined by the relevant territory, matter. For example, if the relevant territory is Spain, the fact that the word has a meaning in Polish is normally irrelevant.
As a r ule, the conceptual comparison is not influenced by the relevant goods and services. However, if a term has many meanings, one o f which is of particular significance to the relevant goods and services, the conceptual comparison may focus on this meaning. In any event, what matters is how the term is perceived by the relevant public. A link between the goods and services and w hat the sign means, evokes or represents must not be forced or artificially constructed. For example, if the relevant goods relate to lighting and the sign is or contains the element ‘LED’, ‘light- emitting diode’ is one of the various possible meanings of ‘LED’ Therefore, the conceptual comparison may focus on this meaning.
3.6.1.1 The semantic content of words
When the mark consists of or contains a word, the first step for an examiner is to look up the explanation of that word in dictionaries and/or encyclopaedias in the language(s) of the relevant territory. If the word is in the dictionary/encyclopaedia, the described meaning will be its semantic content.
As a starting point, it should be noted that the relevant public in the various Member States of the EU is deemed to mainly speak the languages predominant in their respective territories (judgment of 23/10/2002, T-6/01, ‘MATRATZEN’, para. 27). These languages are normally the official languages of the relevant territory.
Earlier mark Contested sign Case No
HALLOUMI HELLIM T-534/10
‘Hellim’ is the Turkish translation of ‘Halloumi’ (Greek) (a type of cheese). The relevant territory was Cyprus. The Court held that while Turkish is not an official language of the EU, it is one of the official languages of the Republic of Cyprus. Therefore, Turkish is understood and spoken by part of the population of Cyprus (para. 38). Therefore, the Court found that the average consumer in Cyprus, where both Greek and Turkish are official languages, will understand that the words HALLOUMI or HELLIM both refer to the same specialty cheese from Cyprus. Consequently, there is some conceptual similarity between these words (para. 41).
However, the Court has made equally clear that this rule only concerns the primary linguistic understanding of the public in those territories. This is not an inflexible rule. The relevant public should not automatically be considered as having as its mother tongue the language that is predominant in the Member State concerned, or to have no particular knowledge of other languages (order of 03/062009, C-394/08 P, ‘ZIPCAR’, para. 51).
For instance, in the following scenarios, languages other than the predominant one are to be taken into account:
• When the word in another language is very close to the equivalent word in the official language of the relevant territory. For example, the English word ‘bicycle’ will be under stood in Spain because it is very close to the Spanish equivalent word, ‘bicicleta’;
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• When the word in a foreign language is commonly used in the relevant territory. For example, the Spanish word ‘bravo’ is commonly used as a term denoting praise, in the sense of ‘well done’ in Germany.
• When it is known that the relevant public is familiar with a foreign language. For example, the Court has already confirmed that the general public, in the Scandinavian countries, the Netherlands and Finland, has at least a basic understanding of the English language (judgment of 26/11/2008, T-435/07 ‘NEW LOOK’, para. 23).
• When it is known that the relevant public is familiar with a certain language for certain classes of goods and / or services. For example, English IT terms are normally understood by the relevant public for IT goods, irrespective of territory.
• Very basic words, which will be understood in all Member States because they have become internationally used, such as ‘love’, ‘one’, ‘surf’, ‘pizza’, ‘baby’, etc.
• Finally, when any one of the parties provides evidence that such a word is known by a relevant portion of the relevant public.
The following are examples of concepts behind words:
Mark Territory Concept Case No
Mirto ES [in EN: myrtle] in Spanish describes a shrub of the family Myrtaceae, two to three meters high.
T-427/07
Peer EN Lord T-30/09
Storm EN Bad weather T-30/09
--- STAR
SNACKS
EU
The terms ‘star snacks’ and ‘star foods’ will be understood as referring to quality food not only by English speakers, but also by most of the relevant public.
T-492/08 (Star foods I) T-333/11 (Star Foods II)
-
EU
There is some degree of conceptual similarity, based on “Mc” and the words “baby” and “kids” which both refer to children (para. 42)
T-466/09
As shown in some of the examples above, it is not always necessary to give a complete dictionary definition of what a word means. It is sufficient to use a synonym, such as Peer=Lord or Storm=bad weather.
Additionally, when part of the public will perceive the concept while another part either will not or will perceive a different meaning, a distinction should be made accordingly.
When the mark consists of a meaningful expression, the meaning of the expression as a whole, as long as it is understood as such by the relevant public, and not that of
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the individual words, is the one which is relevant for the conceptual comparison (but note the exception below concerning expressions in foreign languages). Fictional example: ‘KING’S DOMAIN’ vs. ‘KING SIZE’.
Wrong assessment: KING means ‘a male sovereign’, ‘DOMAIN’ means ‘a territory over which rule or control is exercised’ and ‘ SIZE’ means ‘the physical dimensions, proportions, magnitude, or extent of an ob ject’. The marks are conceptually similar insofar as they share the notion of ‘king’.
Correct assessment: ‘KING’S DOMAIN’ means ‘a territory under the control of a king’; ‘KING SIZE’ means ‘larger or longer than the usual or standard size’. The marks are conceptually dissimilar even though they share the word ‘KING’.
This is illustrated by the following examples where the marks were found to be conceptually dissimilar:
Earlier sign Contested sign Case No
MOUNTAIN BIKER MOUNTAIN B 1 950
Goldband GoldGips R 0975/2009-4
ALTA FIDELIDAD ALTA B 112 369
The above-mentioned rule on m eaningful expression has the following exception: when signs are in a foreign language, a significant part of the relevant public may have only a limited command of the relevant foreign language and t herefore might not be able to distinguish the difference in meaning between two expressions. In such instances it may be that the meaning of an expression as such is not perceived; only the meanings of the individual elements are. This may, therefore, lead to a finding of similarity insofar as the public understands only the common part. In the example above, if it is found that (part of the) public will understand only KING, the finding should be that the signs are conceptually similar.
Earlier mark Contested sign Case No
ICEBERG ICEBREAKER T-112/09
The GC considered that ‘icebreaker’ would be understood only by that part of the Italian public with command of the English language. However, ‘iceberg’ is a common word with an immediately obvious meaning to the relevant public. Therefore, earlier mark ICEBERG will have a clear meaning for the Italian public, whereas the mark applied for ICEBREAKER would be devoid of any clear meaning for that public.
The GC further indicated that the marks at issue have the prefix ‘ice’ in common. The GC considered that this is a basic English word, understandable for most of the relevant public. It concluded that since the prefix ‘ice’ had a certain evocative force, it must be regarded as limiting the conceptual difference between the marks at issue, acting as a ‘semantic bridge’ (para. 41-42)
Similar considerations apply to expressions that include a c ombination of technical words understood by only part of the relevant public (e.g. Latin words, words belonging to highly specialised language) and commonly used words. In such cases, it may be that only the meaning of the commonly used words is perceived, and not the meaning of the expression as such.
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3.6.1.2 The semantic content of parts of words
In this regard, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he w ill break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, ‘RESPICUR’, para. 57).
Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts. Since this is an exception, it has to be applied restrictively.
It will be applied in the following cases:
• when the sign itself is broken down visually into various parts (e.g. through the use of capital letters, as in AirPlus);
• when all the parts suggest a concrete meaning known to the relevant public (e.g. Ecoblue); or
• when only one part has a clear meaning (e.g. Dermaclin).
Examples of signs visually broken down:
Sign Territory Concept Case No
VITS4KIDS EU The mark contains VITS (allusive of ‘vitamins’) andKIDS. T-484/08
AirPlus EU There are two meanings, Air and Plus, which can be perceived visually because the word Plus is written with a capital letter.
T-321/07 (C-216/10P dismissed)
EU AGRO: reference to agriculture HUN: reference to Hungary UNI: reference to universal or union
T-423/08
RNAiFect EU The relevant public, particularly the specialist public, will perceive the first three letters as a reference to the English abbreviation for ribonucleic acid.
T-80/08
nfon EU The relevant public will isolate the syllable ‘fon’ in the sign ‘nfon’, and perceive this term as relating equally to the words ‘telephone’ or ‘phone.’ (60)
T-283/11 (C-193/13 P dismissed)
Examples of cases which are not broken down visually but where all the parts suggest a concrete meaning known to the relevant public:
Sign Territory Concept Case
Ecoblue EU
The word element ‘eco’ is a c ommon prefix or abbreviation in many languages spoken in the European Union, while the word ‘blue’ is English for the colour blue and part of the basic English vocabulary known to the relevant public.
T-281/07 (C-23/09P dismissed)
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Solfrutta / FRUTISOL EU
The elements ‘sol’ and ‘frut’ are generally recognisable and can be understood as alluding to ‘sun’ and ‘fruit’ respectively.
T-331/08
RIOJAVINA EU The term ‘riojavina’ in the mark applied for refers directly, so far as the relevant public is concerned, to grapevine products and, more particularly, Rioja wine.
T-138/09 (C-388/10P rejected)
Finally, cases where only one part has a clear meaning are usually ones where there is a common prefix or suffix, for example:
Sign Territory Concept Case
DE ‘DERMA’ may be perceived as referring to products ofa dermatological nature. B 1 249 467
As explained above, all three exceptions have to be c onstrued narrowly; therefore, where it is not obvious that a part or parts suggest(s) a concrete meaning known to the relevant public, examiners should refrain from looking for such meanings ex officio. In the examples below, no concept was found in the signs:
Sign Territory Concept Case
ATOZ DE, ES, FR,IT, AT
The TM will not be perceived as ‘from A to Z’. The letters ‘to’ (corresponding to an English preposition) do not stand out in any way from the letters ‘a’ and ‘z’.
T-100/06 (C-559/08P dismissed)
SpagO BX
The word ‘SpagO’ is an invented word, which has no meaning in any of the official languages of the Benelux countries. It should not be perceived as a combination formed by SPA + GO.
T-438/07
CITRACAL ---
CICATRAL ES
The word elements ‘cica’ and ‘citra’ do not have any concrete meaning, any more than the endings ‘tral’ and ‘cal’. The signs at issue are therefore not likely to be broken down by the public into word elements that have a concrete meaning or resemble words known to it and that, together, would form a coherent whole giving a meaning to each of the signs at issue or to any one of them.
T-277/08
3.6.1.3 The semantic content of misspelled words
It is not necessary for a word to be written properly for its semantic content to be perceived by the relevant public. For example, while the written word ‘XTRA’ is visually not the same as the ‘correct’ word ‘EXTRA’, because it is aurally identical to it, the concept of the ‘correct’ word (extra) will normally be transferred to the misspelled word (xtra).
The following examples illustrate this point:
Sign Territory Concept Case
EU Part of the relevant public will regard it as a reference to the English word ‘store,’ meaning ‘shop, storage’.
T-309/08
Double Identity and Likelihood of Confusion – Comparison of Signs
Guidelines for Examination in the Office, Part C, Opposition Page 35
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CMORE EN
CMORE will, in view of the common practice of sending text messages, probably be as sociated by a s ignificant part of the general public in Denmark and Finland with an abbreviation or misspelling of the verb ‘to see’ in English, with the concept being perceived as ‘see more’.
T-501/08 ‘SEE MORE / CMORE’
EN The word ‘ugli’ in the earlier mark is likely to be associated with the English word ‘ugly’ by the relevant public.
T-488/07
EU
The term contained in the mark will bring to consumers’ minds the idea of ‘yogurt’, i.e. ‘a semi- solid, slightly sour, food prepared from milk fermented by added bacteria’.
B 1 142 688
ES
The words ‘KARISMA’ and ‘C@RISMA’ refer to ‘charisma’ or ‘charism’, i.e. a s pecial personal quality or power of an i ndividual, making him capable of influencing or inspiring large numbers of people.
B 1 012 857
In any case, examiners should take care when attaching meaning to a m isspelled word: the meaning is not likely to be transferable when the words are not (aurally) identical and/or when the misspelled element cannot be perceived independently:
Mark Territory Concept Case
Bebimil EU The mark applied for does not contain the word ‘baby’ but a fanciful word, which is further removed and without any clear and specific meaning, i.e. ‘bebi’.
T-221/06
3.6.1.4 The semantic content of names and surnames
The General Court has accepted that names have a concept. Therefore, a conceptual comparison must be made when conflicting signs are composed of names (see examples below).
Nevertheless, there are few situations where the fact that a t rade mark contains a family name has conceptual significance. In particular, conceptual similarity cannot result from the mere fact that both trade marks contain a name, even the same kind of name (Celtic family name, Dutch name, etc.).
Mark Territory Concept Case No
MCKENZIE / McKINLEY EU
The relevant public recognises the prefix ‘Mc’, signifying ‘son of’, as a pr efix to many Scottish or Irish family names. That public will therefore regard the word elements of the marks at issue as Celtic family names of no c onceptual significance, unless the name is particularly well known as that of a famous person.
T-502/07
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Guidelines for Examination in the Office, Part C, Opposition Page 36
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VANGRACK / VAN GRAF DE
The fact that both marks may be perceived as lower German or Dutch surnames is on its own neutral for comparison purposes.
R 1429/2010-4
The mere fact that two names can be gr ouped under a c ommon generic term of ‘names’ does not constitute conceptual similarity. For example, if FRANK and MIKE are compared: the fact that both are names would not lead to a finding of conceptual similarity; this is because the public is not likely to make the conceptual link between the two words. By contrast, the fact that FRANK and FRANKIE are the same name but the latter is the diminutive of the former is relevant and should lead to a finding of conceptual similarity.
Marks Territory Concept Case No
SILVIAN HEACH (FIG.)/ H. EICH
Italy and other territories
Whereas ‘HEACH’ would be perceived as a surname of Anglo-Saxon origin, the element ‘EICH’ would be perceived as a s urname of German origin (para. 66). In view of this, the consumers would realise that these surnames distinguish different persons. The signs are conceptually different (para. 69).
T-557/10
The fact that a trade mark contains a name may have an impact on conceptual comparison in the following situations:
(a) When it is the name / surname of a well-known person (CERVANTES, MARCO POLO, PICASSO):
Mark Territory Concept Case No
PICASSO EU
The word sign PICASSO has a clear and specific semantic content for the relevant public. The reputation of the painter Pablo Picasso is such that it is not plausible to consider, in the absence of specific evidence to the contrary, that the sign PICASSO as a mark for motor vehicles would, in the perception of the average consumer, override the name of the painter.
T-185/02 (C-361/04 P dismissed)
‘
(b) Where the two marks represent the same name but in different versions (FRANK, with FRANKIE as a diminutive) or languages, such as in the following examples:
Marks Territory Concept Case No
--- ELISE
EU
The relevant public is certain to regard these as highly similar female names derived from the same root. In certain Member States, notably the United Kingdom, Ireland, Germany and A ustria, they will certainly be perceived by the relevant public as diminutives of the full forename Elizabeth.
T-130/09
PEPEQUILLO / PEPE ES
The Spanish public will understand ‘Pepequillo’ as a diminutive of ‘Pepe’, leading to conceptual identity. T-580/08
JAMES JONES / JACK JONES EU
Both trade marks may be understood as referring to the same person. T-11/09
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(c) When both trade marks can be under stood as referring to the same person, especially when the earlier trade mark is composed solely of a family name. This could be the case when one name is more important than the other:
Mark Territory Concept Case No
CTMA: Julián Murúa
Entrena
Earlier mark: MURUA,
ES
The CTMA contains a Spanish name (a forename and two surnames). The first surname, which for the Spanish public is the more important one, coincides with the earlier TM.
T-40/03
CTMA: MANSO DE VELASCO
Earlier mark: VELASCO
ES Velasco is a Spanish surname. The CTMA can beunderstood as being composed of two surnames. T-259/06
CMTA: Antonio Basile
Earlier mark: BASILE
IT The signs are conceptually similar in that theyshare the same surname (para. 60). T-133/09 and T-134/09
(d) If the name contained in the trade marks is meaningful in some language, the coincidence in this meaning may lead to conceptual similarity:
Mark Territory Concept Case No
peerstorm / PETER STORM EU, UK
English-speaking consumers will associate the surname Storm with bad weather (para. 67). T-30/09
3.6.1.5 The semantic content of figurative signs, symbols, shapes and colours
The concepts of marks consisting of or containing figurative elements and marks consisting of shapes (3D marks) will be what those figurative elements or shapes represent, such as in the following examples:
Mark Territory Concept Case No
BX, DE, ES, FR, IT, AT,
PT
The representation of a r ed mug on a b ed of coffee beans.
T-5/08 to T-7/08
DE Part of the relevant public may recognise a peacock. T-361/08
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BX The contested trade mark will be d escribed as abusiness man playing football. R 0403/2009-2
Consequently, when a mark has both words and i mages, all concepts have to be assessed.
Mark Territory Concepts Case No
EN
The word ‘ugli’ in the earlier mark is likely to be as sociated with the English word ‘ugly’ by the relevant public. A bulldog with a citrus fruit in front of it.
T-488/07
EU
The term ‘Rioja’ in the earlier mark, which is itself conceptually strengthened by the representation of a bunch of grapes and a vine leaf, refers directly to grapevine products and, more particularly, to Rioja wine.
T-138/09 (C-388/10 P rejected)
BL, BX, CY, DE, ES, FR, HU, RO, SK, IT
The mark depicts a type of fish (a shark). The majority of the relevant language speakers will understand the term SPAIN in the contested mark as referring to that country. The word ‘Tiburón’ means ‘shark’ in Spanish but will not be understood by the rest of the relevant public. The remaining term, SHARK, will probably be understood by English-speaking consumers in the relevant territories
B 1 220 724
Finally, the semantic content (concept) of colour marks per se is that of the colour they reproduce.
3.6.1.6 The semantic content of numbers and letters
The concept of a word representing a number is the figure it identifies, such as in the example below:
Mark Territory Meaning Case No
DE The word zero evokes the cardinal number 0. T-400/06
TV2000 (fig.)/TV1000 LT
The signs are conceptually similar to the extent that they both share the idea of ‘television’ combined with a round four-digit number, which furthermore, correlate in the order of thousands (para. 47)
R 2407/2011-2
7 (fig.)/7 (fig.) EU The BoA found that ‘7’ had a meaning (para.25) R 0782/2011-2
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The concept of a figure is the number it identifies, unless it suggests another concept such as a specific year.
The Office follows the approach that single letters can have an independent conceptual meaning. The Court has confirmed this approach (judgment of 08/05/2012, T-101/11, ‘G/G+’, para. 56, appealed as C-341/12 P), finding conceptual identity where both trade marks can be seen as the same letter:
Mark Territory Meaning Case No
/ DE
For the part of the relevant public that interprets the signs as the letter ‘e’ and the part of the relevant public that interprets them as the letter ‘c’, the signs are conceptually identical (para. 99)
T-22/10
/
et al
EU The signs were considered conceptually identical(paras 60-61) T-187/10
3.6.1.7 The semantic content of geographical names
The names of cities, villages, regions and other geographic areas evoke a concept that may be r elevant for conceptual comparison if it is likely that the relevant public will recognise them as such. Usually, the general public in Europe is familiar with the names of capitals and bigger cities as well as holiday or travel destinations. If the perception of the public in a particular member state is relevant, knowledge of the names of small cities and towns in that country can also be assumed.
A lack of evidence or indication that the relevant public recognises the geographical name does not influence the conceptual comparison. See the following example.
Mark Territory Concept Case No
vs DE
The result of conceptual comparison is neutral. It is not possible to infer from the appellant’s argument that the name Chtaura designates an agricultural area in Lebanon renowned for its agricultural products that this meaning will also be familiar to trade circles in Germany.
R 1213/2008-4
3.6.1.8 The semantic content of onomatopoeias
The analysis of the semantic content of onomatopoeias follows the general rules for conceptual comparison: their concept will be that represented by the onomatopoeia in
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question, provided it can be es tablished that it will be r ecognised as such by the relevant public. For instance, ‘WOOF WOOF’ represents the bark of a dog for English speakers; ‘MUUU’ represents the mooing of a cow for Spanish speakers.
In some cases, the context in which the onomatopoeia will be used can be decisive for establishing whether the relevant public will recognise its meaning. For instance, in the following case, the Board considered that the relevant public would not interpret the sign ‘PSS’ as onomatopoeia in the context of information technology services:
Mark Territory Concept Case No
PSS ES
The applicant’s argument that the earlier mark could also be pr onounced as an onomatopoeia [prompting another to be quiet] is far-fetched in view of the relevant information technology services at issue and the relevant public, who is accustomed, as noted by the applicant itself, to acronyms in this field (para. 42).
R 1433/2007-2
3.6.2 How to make a conceptual comparison
In essence, when making a conceptual comparison, the examiner has first to determine if the signs have a concept in accordance with the principles described in the previous section.
If none of the signs has any concept, the outcome will be that a conceptual comparison is not possible.
If only one of the signs evokes a concept, the outcome will be that the signs are not conceptually similar.
When both signs have a concept, the concept(s) will be compared to establish whether the signs are conceptually identical or similar (i.e. they refer to the same or similar concepts) or dissimilar (i.e. the signs refer to different concepts). The signs will be conceptually dissimilar where there are two words for which a generic term covering both of them exists and / or when the two signs fall under the same general category of signs. If the semantic meanings are too different, the signs may share a g eneral concept, but one s o broad that the conceptual relationship is not relevant. In these cases no conceptual similarity will be found. For example:
• The mere fact that the two words or symbols can be grouped under a common generic term by no m eans constitutes a c ase of conceptual similarity. For example, in the case of ‘Jaguar’ vs ‘Elephant’, the fact that both are animals would not lead to a finding of conceptual similarity because the public is not likely to make a conceptual link between the two words. In fact, because the words refer to different animals, they should be considered conceptually dissimilar.
Mark Territory Concept Case No
CLICK DE
Conceptually, the contested mark ‘CLICK’ is an English onomatopoeia which expresses a short, sharp sound. This word will be readily understood in Germany given its close equivalent in German, ‘Klick’ (para. 45).
R 1394/2006-2
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• The same happens when two signs belong to the same type of mark or word: the fact that ‘TDI’ and ‘LNF’ are three-letter abbreviations is conceptually irrelevant. The signs should be considered conceptually dissimilar.
• Another example of signs ‘belonging to the same category’ concerns names (and this ties in with what is stated in Section 3.6.1.4 above). If FRANK and MIKE are compared, the fact that they are both names is conceptually irrelevant (since they are on c ompletely different levels); by contrast, the fact that FRANK and FRANKIE are the same name but the latter is the diminutive of the former is relevant and should lead to a finding of conceptual similarity in that case.
In particular, the marks will be conceptually identical or similar when:
3.6.2.1 Both marks share a word and/or expression
When the two marks share the same word or expression, the marks will be conceptually similar, such as in the following examples:
Earlier sign Contested sign Opposition No
B 1 209 618 (ES)
Similar: The marks share the concept of SOL (=sun: ‘the star that is the source of light and heat for the planets in the solar system’).
Earlier sign Contested sign Case No
BLUE ECOBLUE
T-281/07 (C-23/09P dismissed)
(EU)
The marks at issue are conceptually similar because they both refer to the colour blue.
Earlier sign Contested sign Opposition No
T-MUSIC B 1 081 167(EU)
The marks above are conceptually similar because both refer to the concept of MUSIC (= ‘the art of arranging sounds in time so as to produce a continuous, unified, and evocative composition, as through melody, harmony, rhythm, and timbre’).
Earlier sign Contested sign Opposition No
B 1 220 724 (BL, BX, CY, CZ, DE, ES, FR, HU, RO, SK and IT)
The marks above are conceptually similar because both signs have an image of the same fish (a shark) and a reference to the word SHARK (=‘any of numerous chiefly marine carnivorous fishes of the class Chondrichthyes (subclass Elasmobranchii)…’).
Earlier sign Contested sign Case No
EL CASTILLO CASTILLO T-85/02(ES)
The Court found that the signs were almost identical conceptually.
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Guidelines for Examination in the Office, Part C, Opposition Page 42
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Earlier sign Contested sign Case No
Servus et al. SERVO SUO T-525/10(EU, IT in particular)
The signs are conceptually similar from the point of view of the average Italian consumer insofar as both signs share a reference to ‘servant’. The Court confirmed the BoA finding that the Italian public was likely to perceive the meaning of the Latin word ‘SERVUS’, given its proximity to the Italian word ‘SERVO’.
As already mentioned, misspellings may also have a semantic content and in such cases can be compared, as in the following examples:
Earlier mark Contested sign Case No
T-485/07 (ES)
For the relevant Spanish public both signs invoke the concept of an olive. There is no evidence that the relevant Spanish consumer will understand the English word ‘live’.
Earlier sign Contested sign Opposition No
B 1 142 688 (EU)
Both marks refer to the word yogurt and consequently share the concept of ‘a dairy product produced by bacterial fermentation of milk’.
Earlier sign Contested sign Opposition No
B 1 012 857 (ES)
The above marks are conceptually similar because they both refer to the concept of ‘charisma’ (= ‘the ability to develop or inspire in others an ideological commitment to a particular point of view’).
3.6.2.2 Two words or terms have the same meaning but in different languages
It is possible for the relevant public to assign a conceptual similarity or even identity in cases of marks with elements in different languages, as long as the meaning of the words in those languages are known to that public.
In the following example it was found that the marks were conceptually identical because a substantial part of the Portuguese public would understand the words constituting the marks at issue given (i) the close proximity of the English word ‘vitamin’ to the Portuguese equivalent term ‘vitamina’, (ii) ‘water’ is a basic English word likely to be understood by that part of the Portuguese public which has sufficient knowledge of
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the English language (iii) that ‘aqua’ is a widespread Latin expression and resembles the Portuguese equivalent term ‘água’ (paras. 56-60):
Earlier mark Contested sign Case No
VITAMINWATER
(relevant territory Portugal) T-410/12
As it is the actual understanding of the relevant public that matters, the mere fact that one term is objectively the foreign language equivalent of the other may not be relevant at all in the conceptual comparison.
Earlier mark Contested sign Case No
LE LANCIER T-265/09
The relevant territory is Spain. ‘El lancero’ (in Spanish) means ‘le lancier’ in French. Conceptually, the GC concluded that the average Spaniard only had a limited knowledge of French and that the expression ‘le lancier’ did not belong to the basic vocabulary of that language. Conceptually, the signs are not similar.
3.6.2.3 Two words refer to the same semantic term or variations thereof
There is conceptual identity where synonyms are involved, i.e. where two words exist for the same semantic meaning (invented examples where English is the reference language: baggage / luggage; bicycle / bike; male horse / stallion).
Conceptual similarity was found in the following cases:
Earlier mark Contested mark Case No
SECRET PLEASURES PRIVATE PLEASURES R 0616/1999-1
ORPHAN INTERNATIONAL R 1142/2009-2
3.6.2.4 Two figurative signs, symbols and / or shapes represent the same object or idea
When two marks consist of or contain figurative elements and / or shapes and t hey represent the same or similar objects or ideas, the signs will be conceptually identical or similar.
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The following are cases where conceptual identity or similarity was found:
Earlier mark Contested mark Case No
T-168/04 (confirmed C-488/06)
(similar)
R 0703/2011-2 (identity)
R 1107/2010-2 (identity)
However, the fact that both signs contain the same object does not lead to a finding of conceptual similarity if the way in which the object is depicted in the conflicting trade marks is different:
Earlier mark Contested mark Case No
T-593/10
The GC considered that the Board was right in finding that the signs are conceptually different given that the earlier mark, due to its figurative element and the way in which the letter ‘b’ is represented, could evoke a boomerang whereas this is not the case for the mark applied for (para. 36).
3.6.2.5 When there is a word vs a f igurative sign, symbol, shape and/or colour representing the concept behind the word
Conceptual identity also exists between a word and an image showing what the word represents (fictional examples: word mark ‘TIGER’ compared with a figurative mark depicting a tiger; or word mark ‘orange’ and a mark for the colour orange per se).
Earlier mark Contested mark Case No
T-389/03 (EU, identity for part
of the public)
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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 2
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION
CHAPTER 4
DISTINCTIVENESS
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Table of Contents
1 General Remarks ....................................................................................... 3
2 Assessment of Distinctiveness................................................................ 5 2.1 Examination of distinctiveness: general issues.......................................6
2.1.1 What constitutes a ‘component’ or ‘element’ of a sign? ................................. 6 2.1.2 What is distinctiveness? ................................................................................. 6 2.1.3 Aspects of distinctiveness to be examined..................................................... 8 2.1.4 Relevant point in time ..................................................................................... 9 2.1.5 Relevant goods and services ......................................................................... 9
2.2 Examination of inherent distinctiveness ................................................10 2.2.1 General principles......................................................................................... 10
2.2.1.1 Examples of descriptive components ........................................................12 2.2.1.2 Examples of laudatory components ..........................................................13 2.2.1.3 Examples of allusive components .............................................................14 2.2.1.4 Examples of inherently weak earlier marks (as a whole)...........................14
2.2.2 Specific themes ............................................................................................ 15 2.2.2.1 One-letter signs, numerals and short signs ...............................................15 2.2.2.2 Commonplace and banal elements ...........................................................16 2.2.2.3 Disclaimers................................................................................................16 2.2.2.4 Collective marks ........................................................................................17
2.3 Examination of enhanced distinctiveness..............................................17
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1 General Remarks
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings.
Whether a likelihood of confusion exists depends on an overall assessment of several interdependent factors including: (i) the similarity of the goods and services, (ii) the similarity of the signs, (iii) the distinctive and dominant elements of the conflicting signs, (iv) the distinctiveness of the earlier mark, and (v) the relevant public and its degree of attention.
The first step in assessing if a likelihood of confusion exists is to establish these five factors. The second step is to determine their relevance.
The European Court of Justice (the ‘Court’) has held in its judgment of 29/09/1998, C-39/97, ‘Canon’, paras 18 and 24:
… marks with a highly distinctive character, either per se or because of the reputation they possess on t he market, enjoy broader protection than marks with a less distinctive character.
… the distinctive character of the earlier trade mark, and i n particular its reputation, must be t aken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion.
In its judgment of 11/11/1997, C-251/95, ‘Sabèl’, para. 23, the Court also held:
… (the) global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dom inant components.
Therefore, both the degree of distinctiveness of the earlier mark and, separately, the distinctive character of the various components of composite marks are important criteria that must be es tablished before an overall appreciation of likelihood of confusion can take place.
At the outset it is important to distinguish between (i) the analysis of the distinctive character of the earlier mark as a whole, which determines the scope of protection afforded to that mark, and (ii) the analysis of the distinctive character that a component of a mark possesses, which determines whether the signs in conflict coincide in a component that is distinctive (and whether, therefore, the similarity relates to an important component) or a c omponent that is weak (and whether, therefore, the similarity relates to a component of less importance). For example:
Components / Elements of a mark
Mark as a whole (assuming no acquired distinctiveness)
Virgin Cola (non-alcoholic beverages)
‘Cola’ is a weak element in relation to cola drinks or mixtures
Normal distinctiveness because – due to the ‘Virgin’ component –
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thereof because it is descriptive or allusive in relation to these products.
The element ‘Virgin’ is of normal distinctiveness for such products.
the mark as a w hole is not descriptive or allusive or otherwise weak.
(electronic goods)
‘Products’, albeit slightly stylised, is a w eak element as it is descriptive for a w ide range of goods.
‘Billy’s’ as depicted is of normal distinctiveness for such products.
Normal distinctiveness because – due to ‘Billy’s’ as depicted and the specific layout of the mark – the mark as a whole is not descriptive or allusive or otherwise weak.
(preparations made from cereals)
‘Premium’ is a weak element due to its laudatory meaning, relating to something that is excellent.
The dark grey square with an extension to the left in the middle gives the overall impression of a tag with a simple design.
For preparations made from cereals, the image of an e ar of wheat is descriptive or allusive.
Less than normal distinctiveness because all of the components are weak and the overall representation is banal.
Whereas distinctive character must be assessed for the components of both the earlier mark and the contested marks, distinctiveness of the mark as a whole is assessed only in respect of the earlier mark1. The distinctiveness of the contested mark as a whole is not relevant, as such, to the assessment of likelihood of confusion, as explained in more detail in paragraph 2.1.3 below. Therefore, any reference below to the distinctiveness of the mark as a whole refers exclusively to the earlier mark.
The step-by-step methodology employed by the Office initially keeps the objective assessment of similarity between the signs separate from assessments of distinctiveness of their component parts2. However, later, in the Global Assessment, all factors are considered when reaching an ov erall appreciation of the likelihood of confusion3. This contrasts with other approaches that weigh up the distinctiveness of the various elements of the marks at the same time as assessing similarity between the signs. Although the difference is one of method only and should not, in principle, affect the ultimate finding of likelihood of confusion, the Office follows the method first described.
As far as the impact of the distinctiveness of the earlier mark as a whole is concerned, it is not until the Global Assessment that it comes into play because the Court has held that it is not appropriate to take account of what may be a l ow or high degree of distinctiveness of the earlier mark at the stage of assessing the similarity of the signs (judgments of 23/01/2014, C–558/12, ‘Western Gold’ paras 42 to 45, of 25/03/2010,
1 See also Objective 1 of the Common Practice on the impact of non-distinctive/weak components on likelihood of confusion agreed in the framework of the European Trade Mark and Design Network. 2 See The Guidelines, Part C, Opposition, Section 2, Double Identity and Li kelihood of Confusion, Chapter 3, Comparison of Signs. 3 See The Guidelines, Part C, Opposition, Section 2: Double Identity and Li kelihood of Confusion. Chapter 8, Global Assessment.
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T-5/08 to T-7/08, ‘Golden Eagle’, para. 65 and of 19/05/2010, T-243/08, ‘EDUCA Memory game’, para. 27).
2 Assessment of Distinctiveness
It is useful to highlight again that the assessment of distinctiveness is broken down into two distinct parts: (i) the distinctiveness of components of a sign and (ii) the distinctiveness of the earlier mark as a w hole. As explained below, the purpose of these separate assessments is different.
Distinctiveness of components
When assessing likelihood of confusion, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out in order to calculate the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. This recognises that the consumer is more likely to consider that a descriptive, allusive or otherwise weak element of a mark is not being used to identify a particular undertaking, and thus to distinguish goods or services from those of other undertakings.
Consequently, although trade mark proprietors commonly use descriptive, allusive or otherwise weak elements as part of a t rade mark to inform consumers about certain characteristics of the relevant goods or services, it may be more difficult to establish that the public may be confused as to origin due to similarities that solely pertain to weak elements.
The distinctiveness of the components of the earlier and of the contested mark must be examined.
Distinctiveness of the earlier mark as a whole
The Canon judgment makes clear that (i) the more distinctive the earlier mark, the greater will be the likelihood of confusion and (ii) earlier marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. Consequently, the distinctive character of the earlier mark as a whole determines the strength and breadth of its protection and m ust be t aken into consideration for the purposes of assessing likelihood of confusion (but not for assessing similarity between the marks – see ‘Western Gold’ et al above).
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2.1 Examination of distinctiveness: general issues
2.1.1 What constitutes a ‘component’ or ‘element’ of a sign?
The Court has not defined what is to be regarded as a ‘component’ or ‘element’ of a sign. It is easy to identify components when a sign is visually divided into different parts (e.g. separate figurative and verbal components). However, the term ‘component’ encompasses more than such visual distinctions. Ultimately, the perception of the sign by the relevant public is decisive and a component exists wherever the relevant public perceives one. For example, the relevant public will often regard one-word signs as being composed of different components, in particular, where one part has a clear and evident meaning while the rest is meaningless or has a different meaning (e.g. in the mark EUROFIRT, ‘Euro’ will be widely understood as referring to Europe whereas ‘Firt’ is meaningless, giving this word mark two components: ‘Euro’ and ‘Firt’). In such cases, the elements of one-word signs could be regarded as ‘components’ in the terminology of the Court.
However, word marks should not be ar tificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements. A case-by-case assessment is required as to whether the division of a sign into components is artificial (e.g. whether splitting the word ‘LIMEON’ for fruit into the components ‘LIME’ and ‘ON’ would be artificial or not)4.
2.1.2 What is distinctiveness?
The Court has defined distinctiveness in the following manner:
In determining the distinctive character of a m ark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been r egistered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (emphasis added).
(See judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, para. 22).
Importantly, distinctive character is a matter of degree and, when analysing distinctiveness, a sliding scale applies whereby a sign or an element of a sign can lack distinctiveness entirely, be highly distinctive or be at any point in-between.
4 This is explained in greater detail in The Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 3, Comparison of Signs.
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A sign or an element of a sign is not distinctive if it is exclusively descriptive of the goods and services themselves or of the characteristics of those goods and services (such as their quality, value, purpose, provenance, etc.) and/or if its use in trade is common for those goods and services. Similarly, a sign or an element of a sign that is generic (such as a common shape of a container or a common colour) will also lack distinctiveness.
A sign or an element of a sign may be distinctive to a low degree if it alludes to (but it is not exclusively descriptive of) characteristics of the goods and s ervices. If the allusion to the goods and services is sufficiently imaginative or clever the mere fact that there is an allusion to characteristics of the goods might not materially affect distinctiveness. For example:
• ‘Billionaire’ for gaming services is allusive in a m anner that would affect distinctiveness, because it implies for instance that you may become a billionaire.
• ‘Billy O’Naire’, which sounds identical to ‘billionaire’ in English, would be allusive for gaming services as a clever word-play on Irish names, in a manner that would not affect distinctiveness in a material way; it would be considered to have a ‘normal’ degree of distinctiveness.
A sign or an el ement of a s ign that is neither descriptive nor allusive is deemed to possess a ‘normal’ degree of inherent distinctiveness. This means that the sign or the element of a sign in question is fully distinctive, in the sense that its capacity to identify the goods and services for which it has been r egistered as coming from a particular undertaking is not in any way diminished or impaired.
Any higher degree of distinctiveness of the earlier mark acquired either through use or because it is highly original, unusual or unique, has to be proven by its proprietor by adducing appropriate evidence (see also paragraph 2.3 below). A mark will not necessarily have a h igher degree of distinctive character just because there is no conceptual link to the relevant goods and s ervices (order of 16/05/2013, C-379/12, ‘H.Eich’, para. 71).
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Likewise, a CTM applicant may argue that the earlier sign or an element of a sign is distinctive to a low degree. One of the most frequent arguments brought by applicants is that the earlier trade mark or one of its components has a low distinctive character given that there are many trade marks which consist of, or include, the element in question. Where this argument is supported only by the applicant referring to trade mark registrations, the Office takes the view that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all the trade marks have been effectively used.
It follows that the evidence filed must demonstrate that consumers have been exposed to widespread use of, and become accustomed to, trade marks that include the element in question in order to prove that the element in question has a low degree of distinctive character.
When dealing with the distinctiveness of the earlier mark as a whole, the latter should always be c onsidered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether CTMs or national marks, enjoy a ‘presumption of validity’. The Court has made it clear in its judgment of 24/05/2012, C-196/11, ‘F1- LIVE’, paras 40-41, that ‘in proceedings opposing the registration of a Community trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be not ed that the characterisation of a s ign as descriptive or generic is equivalent to denying its distinctive character’. 5
2.1.3 Aspects of distinctiveness to be examined
Distinctive character should be assessed in respect of all the relevant characteristics of marks and their components. Therefore, the assessment should look at the ability of words, figurative elements, colours and/or 3D aspects of signs to identify the goods or services as coming from a particular undertaking.
The Office examines the main aspects of distinctiveness in the following manner:
1. The first aspect is to examine whether and to what extent the components are descriptive, laudatory or otherwise non-distinctive. The purpose is to determine whether the common parts in the signs are the (most) distinctive elements or not (see paragraph 2.2 below).
2. The second aspect is to check the distinctiveness of the earlier mark, as a whole. At this stage, the Office must consider as a first step the overall inherent distinctiveness of the earlier mark (see paragraph 2.2 below) and as a second step, if claimed and relevant for the outcome, whether the earlier mark has acquired enhanced distinctiveness as a c onsequence of the use the opponent has made of it (see paragraph 2.3 below).
The degree of distinctiveness per se of the earlier sign is one of the factors to be taken into account in the overall assessment (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para. 23). It is a matter of law, which must be examined by the Office even if the parties
5 See also Objective 1 of the Common Practice on the impact of non-distinctive/weak components on likelihood of confusion agreed in the framework of the European Trade Mark and Design Network.
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do not comment on i t. In contrast, the degree of enhanced distinctiveness acquired through use of the earlier sign is a matter of law and fact, which the Office cannot examine unless the opponent claims and substantiates it.
The inherent distinctiveness of the contested trade mark as a whole is not examined in the framework of the opposition proceedings, as it is the scope of protection of the earlier mark that is relevant for the purposes of likelihood of confusion. Likewise, also the enhanced distinctiveness of the contested sign is irrelevant because likelihood of confusion requires a consideration of the scope of protection of the earlier mark rather than that of the mark applied for. If an earlier mark is recognised as having a broader scope of protection by reason of its enhanced distinctiveness, the reputation acquired by the mark applied for is, as a matter of principle, irrelevant for the purpose of assessing likelihood of confusion (judgment of 03/09/2009, C-498/07P, ‘La Española’, para. 84).
2.1.4 Relevant point in time
The inherent distinctiveness of the signs (or their components) should be assessed at the time of the decision. The enhanced distinctiveness of the earlier trade mark/s (if claimed) should exist (i) at the time of filing of the contested CTM application (or any priority date) and (ii) at the time of the decision.
Establishing the precise point in time for evaluating distinctiveness is important because the degree of distinctiveness of the marks is not constant, but varies depending on the perception of the public. This perception may change not only due to the nature of the use of the specific mark, but also due t o other factors (all these elements can only be c onsidered from the evidence submitted by the parties). For instance, the public’s perception may change where a m ark or some component thereof has been used in the meantime in a similar way by various businesses/traders in the relevant market sector. Such common use of a sign can erode the uniqueness of a sign and, consequently, its ability to indicate the origin of the goods and services. In this context, it is important to assess carefully whether the situation described exists in all the relevant geographical areas and w ith regard to all the relevant goods and services.
As an example, due to technological changes in the field of IT, there has been an increased number of instances where components such as ‘I’ (internet), ‘E’ (electronic) and ‘M’ (mobile) are used adjoined to a meaningful word. In the context of electronic communications, they are currently found to be descriptive (decision of 19/04/2004, R 0758/2002-2 – ‘ITUNES’, para. 11) whereas previously they were considered distinctive.
2.1.5 Relevant goods and services
The assessment of the inherent distinctiveness of the signs (or their components) is carried out only for the goods or services that have been found to be identical or similar, that is:
• The earlier mark is assessed with respect to the registered goods and services which have been f ound to be i dentical or similar to the contested goods and services;
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• The contested trade mark is assessed with respect to the contested goods or services which have been found to be identical or similar to those of the earlier mark.
Where the degree of distinctiveness of the earlier sign (or component) differs depending on the goods or services it covers, this may have to be taken into account when determining the scope of the comparison of the goods and services at issue. For instance, even if there is identity between the contested goods or services and some of the goods or services of the earlier mark for which the degree of distinctiveness of the earlier mark (or a common element to both signs in conflict) is considered to be less than normal, the Office must take into account other goods or services of the earlier mark which are similar (not identical) to those of the contested mark but for which the degree of distinctiveness of the earlier mark (or component in question) is normal (or enhanced).
For example, an earlier mark includes the element ‘$tilettos’ which covers women’s footwear and headgear and the contested goods are footwear. The element ‘$tilettos’ is weak for women’s footwear, which is identical to the contested goods. However, the element ‘$tilettos’ is of normal distinctiveness for the earlier mark’s headgear, which is similar to the contested goods. The Office must weigh up these interrelated factors in the Global Assessment.
Assessment of the enhanced distinctiveness of the earlier mark is carried out only in respect of the goods or services protected by the sign for which enhanced distinctiveness is claimed.
Furthermore, it is the perception of the relevant public for these goods and services that is of relevance (e.g. whether a specialist public is involved or not).
2.2 Examination of inherent distinctiveness
2.2.1 General principles
The first step in examining the distinctiveness of the earlier mark as a whole and of a component of the signs to be compared is to examine their inherent distinctiveness.
The examination of inherent distinctiveness is, in turn, carried out in two phases: first, it should be determined whether the relevant public recognises semantic content in the mark at issue and, second, whether or not the semantic content perceived is related to and/or commonly used in trade in relation to the identical or similar goods and services.
As regards the first phase, i.e. whether the relevant public recognises a s emantic content, this is assessed in the conceptual comparison of signs, which is described in detail in another chapter of these Guidelines6.
The inherent distinctiveness of the marks or their components has to be evaluated by taking into account (each of) the relevant geographical area(s) and their different linguistic and cultural backgrounds. As such, the public in some parts of the relevant territory might not understand the descriptive content that a m ark may have in other
6 See The Guidelines, Part C, Opposition, Section 2, Double Identity and Li kelihood of Confusion, Chapter 3, Comparison of Signs: Conceptual Comparison.
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parts. In such cases, the distinctiveness of the mark in one area is not affected by the fact that it may be perceived differently in other areas.
Below is an example of a case where linguistic considerations were vital to the issue of distinctiveness:
Earlier sign Contested sign Case No
FRUTISOL Solfrutta T-331/08
G&S: Classes 29, 30 and 32 Territory: EU Assessment of the components ‘frut’ and ‘sol’: ‘… it is necessary to distinguish between the perception by the public in those Member States, such as Italy and Spain, where the elements ‘sol’ and ‘frut’ are generally recognisable and can be understood as alluding to ‘sun’ and ‘fruit’ respectively, and the perception by the public in those Member States, such as Hungary, Finland and Lithuania, where those elements have no such close equivalent in their national languages’. In the first category of Member States, consumers are liable to associate both marks with the notions of ‘fruit’ and ‘sunshine’. There will consequently be a certain level of conceptual similarity between them…. In Member States of the second category, consumers will not perceive any conceptual similarity between the signs since they will not attach any particular meaning to the constituent parts of either sign. (paragraphs 21 to 24).
The second phase consists of correlating any meaning that the public perceives in the marks with the identical or similar goods and services in dispute. If the relevant public perceives such meaning as descriptive, laudatory or allusive (in a manner which materially affects distinctiveness), etc. for these goods and services, then its distinctiveness will be diminished accordingly. It may be nec essary to distinguish between the various goods and services involved because the finding of no or limited distinctiveness might relate to only part of those goods and services.
The criteria applied to examining the inherent distinctiveness of a sign or a component of a s ign are the same as the relevant principles applied when examining marks on absolute grounds7. However, in relative grounds disputes, the question is not merely whether a sign or component is distinctive or not (i.e. whether it reaches the minimum distinctiveness threshold for registration), but also to what degree it is distinctive within the sliding scale previously mentioned. Therefore, for instance, a term that is not descriptive but merely allusive for the goods or services in question might be distinctive enough to pass the absolute grounds test, but still have less than normal distinctiveness for the purposes of relative grounds.
Earlier registered trade marks are presumed to have at least a minimum degree of inherent distinctiveness8. Where evidence is adduced to challenge this presumption and the evidence is found to be persuasive, the earlier mark may be afforded only a very narrow scope of protection, but protection will not be c ompletely denied. If the CTM applicant proves that it has started a cancellation action against the earlier registered mark, then it might be necessary to suspend the opposition proceedings pending the outcome of said action.
The outcome of the examination of inherent distinctiveness will be one of the following.
7 These are described in The Guidelines, Part B, Examination. See also Objective 2 of the Common Practice on the impact of non-distinctive/weak components on l ikelihood of confusion agreed in the framework of the European Trade Mark and Design Network. 8 See the judgment in C-196/11, ‘F1-LIVE’, cited in paragraph 2.1.2 above.
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Components
• The component has less than normal or no distinctiveness because it is descriptive, allusive or laudatory of characteristics of the identical or similar goods or services (or because it is otherwise weak). See the examples below.
• The component has normal distinctiveness because it is not descriptive, evocative, allusive or laudatory (or because it is not otherwise weak) in relation to the identical or similar goods or services.
The earlier mark as a whole
• The earlier mark has less than normal distinctiveness because, as a whole, it is allusive (in a manner which materially affects distinctiveness) or laudatory of the characteristics of the identical or similar goods or services (or because it is otherwise weak). As set out above, the Office will not conclude that an earlier mark as a whole is descriptive and/or non-distinctive)
• The earlier mark has normal distinctiveness because, as a w hole, it is not descriptive, allusive (in a m anner which materially affects distinctiveness) or laudatory (or is not otherwise weak) in relation to the identical or similar goods or services.
It should be noted that it is the Office’s practice to consider that, when the earlier mark (or the component) is not descriptive (or is not otherwise non-distinctive), it is deemed to have a normal degree of inherent distinctiveness. As indicated above, this degree of distinctiveness can be further enhanced if appropriate evidence is adduced showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique.
As noted in paragraph 2.1 above, word marks consisting of a single word may still contain various components, some of which may be more distinctive than others (see T-331/08 ‘Solfrutta’ above).
2.2.1.1 Examples of descriptive components
Earlier sign Contested sign Case No
BYLY T-514/08
G&S: Class 3 Territory: EU Assessment of the element ‘products’: ‘… the term ‘products’ is not distinctive enough to be taken into consideration by the consumers’ (para. 39).
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Earlier sign Contested sign Case No
T-490/08
G&S: Class 36 Territory: EU Assessment of ‘CAPITAL MARKETS’: ‘the relevant public, consisting of consumers who are very attentive, well informed and familiar with basic English financial terminology, will attach little significance to the meaning of the words ‘capital’ and ‘markets’, which are descriptive of those services and which do not enable the commercial origin of the trade marks at issue to be identified’ (para. 59).
Earlier sign Contested sign Case No
R 0834/2009-1
G&S: Classes 3 and 5 Territory: EU Assessment of the earlier right: even though the signs have some similarities, the expression ‘NATURAL BRONZE’ is descriptive of the purpose of the goods (tanning) in relation to the products in Class 3 (para. 31).
Earlier sign Contested sign Case No
(CINEDAY et al.) CINETAIN R 1306/2009-4
G&S: Classes 38 and 41 Territory: Spain Assessment of the element ‘CINE’: The word ‘cine’ has a descriptive meaning in the sense of ‘cinema (film)’. Therefore, this component has only limited relevance in the perception of the signs (para. 36).
Earlier sign Contested sign Case No
NATURAL BEAUTY FROM WITHIN R 0991/2010-2
G&S: Classes 3 and 5 Territory: Germany Assessment of the element ‘NATURAL BEAUTY’: The element ‘NATURAL BEAUTY’ is a plain and essential indication of the kind and quality of the goods. The German public understands the meaning of these two basic words as well as the combination thereof (paras 31 to 35).
2.2.1.2 Examples of laudatory components
Earlier sign Contested sign Case No
MAGIC SEAT T-363/06
G&S: Class 12
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Territory: Spain Assessment of the element ‘MAGIC’: The word ‘magic’ will be perceived by the relevant public as a simple qualifier for the word ‘seat’ on account of its resemblance to the Spanish word ‘mágico’, which is purely laudatory (para. 39)..
Earlier sign Contested sign Case No
STAR SNACKS T-492/08
G&S: Classes 29, 30 and 32 Territory: EU Assessment of the element ‘STAR’: The word element ‘STAR’ is laudatory, as it merely constitutes (together with the remaining elements of the signs) a reference to high-quality food products (para. 52).
2.2.1.3 Examples of allusive components
Earlier sign Contested sign Case No
EL COTO T-332/04
G&S: Classes 33, 35, 39 Territory: EU Assessment of distinctiveness of the image in the contested CTMA: The figurative element of the mark evokes a vineyard; this component has little distinctive value as regards wines (paragraph 38).
Earlier sign Contested sign Case No
WORLDLINK T-325/04
G&S: Class 36 Territory: EU Assessment of the element ‘LINK’: the element ‘LiNK’ is not immediately descriptive of inter alia ‘banking services for the dispensing of cash; funds transfer and payment services; financial information services’ (Class 36) covered by the earlier mark, but merely allusive in relation to them.
2.2.1.4 Examples of inherently weak earlier marks (as a whole)
Earlier sign Contested sign Case No
R 522/2010-1 (confirmed T-60/11)
G&S: Classes 30, 31 and 42 Territory: EU Assessment of distinctiveness of the earlier sign: ‘… the Board considers that the earlier sign is a
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trade mark with a v ery weak distinctive character. As has been described above, the overall impression of this sign does not amount to anything more than the simplified design of a tag in which the word ‘PREMIUM’ is visually prominent. This word is a laudatory reference to something excellent (for example, the quality of a product), and owing to its widespread nature and to the common use thereof in the marketing of various goods and services, it will be understood by most of the European public’ (para. 38).
Earlier sign Contested sign Case No
KID R 0249/2002-3
G&S: Class 28 Territory: Spain Assessment of distinctiveness of the earlier sign: The earlier trade mark consists of the word KID. That word means a y oung person, a c hild. Applied to games and toys in Class 28, the term is clearly descriptive. It indicates, in a direct and immediate way, the destination of the goods covered by the earlier registration. For that reason, the trade mark of the opponent has a v ery weak distinctive character (para. 16).
2.2.2 Specific themes
2.2.2.1 One-letter signs, numerals and short signs
The Court, in its judgment of 09/09/2010, C-265/09P ‘α’, held that the distinctiveness of single letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services concerned and the same criteria that apply to other word marks (paras 33-39). Although that judgment deals with absolute grounds, the Office considers that the principle established by the Court (i.e. that the application of the criterion of distinctiveness must be t he same for all marks) also applies in inter partes cases when it comes to determine the distinctiveness of single letter trade marks.
The Court, although acknowledging that it may prove more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks, held that these circumstances do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case- law.
The Office considers the ruling to mean that, when establishing the distinctiveness of an earlier mark, it is not correct to rely on: assumptions such as a priori statements that consumers are not in the habit of perceiving single letters as trade marks or on generic arguments such as that relating to the availability of signs, given the limited number of letters.
The General Court has since stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (see judgment of 08/05/2012, T-101/11 ‘G’, para. 50, judgment of 06/10/2011, T-176/10 ‘Seven for all mankind’, para. 36 and judgment 05/11/2013, T-378/12, ‘X’ paras 37 - 51).
In its judgment of 10/05/2011, T-187/10, ‘G G Line’, the General Court dismissed the applicant’s argument that single letters are generally per se devoid of distinctive character and that therefore only their graphic representation would be protected (see paras 38 and 49).
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Consequently, whilst registered earlier trade marks consisting of a single letter (or numeral) represented in standard characters enjoy a pr esumption of validity, ultimately their degree of inherent distinctiveness will have to be assessed with reference to the goods and/or services concerned.
If the corresponding claim is made, account should be taken of evidence filed by the opponent which shows that its registered trade mark consisting of a single letter has acquired enhanced distinctiveness. This circumstance could lend the earlier trade mark a broader scope of protection.
The above considerations apply both to single letter/numeral trade marks represented in standard characters (i.e. word marks) and to stylised single letter/numeral trade marks.
Furthermore, in accordance with the ‘α’ judgment, as regards two-letter signs, unless the letter combination, as such, is intrinsically non-distinctive for the goods and services (e.g. ‘XL’ for goods in Class 25), these signs are not necessarily distinctive only to a low degree. The same rules apply to numerals.
2.2.2.2 Commonplace and banal elements
There are instances where the signs are composed of one ( or various) distinctive verbal element(s) and one (or various) figurative element(s) that are perceived by the relevant public as being commonplace or banal. Such figurative elements frequently consist of a simple geometrical shape (e.g. frames, labels) or of colours frequently used in the market sector (e.g. red for fire extinguishers, yellow or red or orange for the postal sector depending on the Member State concerned). For this reason, such commonplace and banal elements are considered non-distinctive.
Earlier sign Contested sign Case No
ARCO R1929/2010-2
G&S: Class 9 Territory: EU Assessment of figurative elements: the verbal elements of the two signs coincide. Even if it is not negligible in terms of its size, the figurative element of the contested CTM is likely to be perceived by consumers essentially as a mere decorative element, and not as an element indicating the commercial origin of the goods (para. 43).
2.2.2.3 Disclaimers
Pursuant to Article 37 CTMR, the Office may impose a disclaimer if the mark contains an element that is not distinctive and if inclusion of that element would lead to doubts as to the scope of protection. The Office also accepts disclaimers entered voluntarily. Some national trade mark systems also provide for disclaimers.
Such disclaimers bind the Office and have compulsory effect even if upon independent analysis the element might appear distinctive.
The effect of a disclaimer is:
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• if the earlier mark contains a disclaimer, that the proprietor is prevented from successfully invoking rights in the disclaimed element. Therefore, there will be no likelihood of confusion with a l ater CTMA that coincides only in the disclaimed element (see decision of 06/10/2008, R 0021/2008-4 – ‘AUTENTICO JABUGO’, para. 17, where JABUGO was disclaimed).
• if the earlier figurative mark contains two words and both are disclaimed, that the scope of protection is reduced to the precise manner and sequence in which the two words are combined.
As regards the disclaimers in the contested CTMA, they cannot bind the owner of the earlier mark, i.e., the applicant cannot unilaterally reduce the scope of protection of the earlier mark (see decision of 11/02/2010, R 0229/2009-2 – ‘DOUGHNUT THEATER’, para. 58 or decision of 29/03/2012, R 2499/2010-1 – ‘ACETAT Silicon 101E (fig.), paras 18 and 19).
2.2.2.4 Collective marks
Where the mark on which the opposition is based is a collective mark, its inherent distinctiveness is to be assessed in the usual way. The mark may have a low or even very low degree of inherent distinctiveness when it refers to the nature or other characteristics of the goods concerned. The fact that the mark is a collective mark does not imply that its scope of protection is broader (see judgment of 13/06/2012, T-534/10, ‘HELLIM’, paras 49-52, and judgment of 05/12/2012, T-143/11, ‘F.F.R.’ para. 61).
2.3 Examination of enhanced distinctiveness
After the obligatory examination of inherent distinctiveness (see paragraph 2.1.3 above), the second step is to check – provided the opponent has made the corresponding claim9 – whether the earlier mark has acquired enhanced distinctiveness at the time of filing (or priority date) of the contested CTM application as a consequence of the use that the opponent has made of it.
The distinctiveness of the earlier mark always has to be taken into account when deciding on likelihood of confusion. The more distinctive the earlier trade mark, the greater will be the likelihood of confusion (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para. 24). Therefore, marks with a highly distinctive character, either per se or because of the recognition they possess on t he market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C-39/97, ‘Canon’, para. 18).
In practice, this means that the fact that an earlier trade mark enjoys enhanced distinctive character or reputation is an a rgument in favour of finding likelihood of confusion.
Enhanced distinctiveness requires recognition of the mark by the relevant public. This recognition may enhance the distinctiveness of marks with little or no i nherent distinctiveness or those which are inherently distinctive.
9 See The Guidelines, Part C, Opposition, Section 1, Procedural Matters.
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Earlier mark Contested sign Case No
CRISTAL R 0037/2000-2
G&S: Class 33 Territory: France Assessment of the earlier mark ‘CRISTAL’: ‘As regards the claim that ‘Cristal’ is a descriptive word for the goods at issue (sparkling wines with crystalline character), the Board cannot accept it. On the one hand, it is an evocative indication which suggests the crystalline character of wines, but which in no way describes the product. On the other hand, [the Board] considers that a highly distinctive character of the mark CRISTAL on the French market had been shown’ (para. 31).
The Court has given some guidance in respect of the evaluation of distinctiveness acquired through use of the earlier mark and provided a non-exhaustive list of factors:
In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.
(See judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, para. 23)
The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area and ( ii) the relevant goods and s ervices. The opponent may claim enhanced distinctive character of the earlier mark for only part of the registered goods and services. According to the evidence submitted, the Office must establish precisely for which goods and services distinctiveness has been acquired.
The nature, factors, evidence10 and assessment of enhanced distinctiveness are the same as in reputation. However, a finding of reputation requires that a certain threshold be met whilst, as set out above, for a finding of enhanced distinctiveness the threshold may be lower. Enhanced distinctiveness is anything above inherent distinctiveness.
10 For further details on the evidence required and its assessment see The Guidelines, Part C, Opposition, Section 5, Article 8(5).
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Earlier mark Contested sign Case No
EL COTO T-332/04
G&S: Classes 33, 35, 39 Territory: EU Assessment of the enhanced distinctiveness of the trade mark ‘EL COTO’: ‘The Board of Appeal took into account the market knowledge of the earlier mark ‘EL COTO’ and made a pr oper assessment of the relevant case-law principles to conclude that the earlier mark ‘EL COTO’ has a highly distinctive character; it based its finding on the following facts: the certificate issued by the Secretary General of the Consejo Regulador de la Denominación de Origen Calificada ‘Rioja’, which certifies that the owner markets its wines, among others, under the brand names ‘El Coto’ and ‘Coto de Imaz’ since 1977 and that these marks ‘enjoy a significant well-known character’ in Spain, various decisions of the Spanish Patent and Trade Mark Office acknowledging that the mark ‘EL COTO’ is well known in Spain, a document on sales evolution, indicating that they had sold under the mark ‘El Coto’ 339,852, 379,847, 435,857 and 464,080 boxes of twelve bottles of wine in 1995, 1996, 1997 and 1998, respectively’ (paragraph 50).
Importantly, the Court has also held that the acquisition of the distinctive character of a mark may be as a result of its use as part of another registered trade mark (judgment of 07/07/2005, C-353/03, ‘Have a break’, paras 30 and 32 and judgment of 07/09/2006, T-168/04, ‘Aire Limpio’, para. 74). It is sufficient that, in consequence of such use, the relevant public actually perceives the product or service designated by the earlier marks as originating from a given undertaking.
The outcome of the examination of the enhanced distinctiveness will be one of the following.
• Where there is no evidence of enhanced distinctiveness as regards the relevant goods and services or the territory, or the evidence is insufficient, the level of distinctiveness of the earlier mark will be i ts inherent distinctiveness (less than normal or normal).
• Where there is evidence of enhanced distinctiveness as regards all or some of the relevant goods and services and the territory, and the evidence is sufficient:
○ if the earlier mark has less than normal inherent distinctiveness, the mark/component may have acquired a normal or even a high degree of distinctiveness, depending on the evidence filed11; or
○ if the earlier trade mark has normal inherent distinctiveness, it may have acquired high distinctiveness.
It must be recalled that although a mark as a whole may have acquired enhanced distinctiveness, there may be descriptive elements that will have less than normal or no distinctiveness. For example, the enhanced distinctiveness of the mark ‘Coca Cola’ as a whole does not alter the fact that the element ‘Cola’ remains entirely descriptive for certain products.
11 For further details on the evidence required and its assessment see The Guidelines, Part C, Opposition, Section 5, Article 8(5).
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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 2
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION
CHAPTER 5
DOMINANT CHARACTER
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Table of Contents
1 General remarks ........................................................................................ 3
2 Assessment of dominant character......................................................... 3
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1 General remarks
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings.
Whether a likelihood of confusion exists depends on an overall assessment of several interdependent factors, including: (i) the similarity of the goods and s ervices, (ii) the similarity of the signs, (iii) the distinctive and dominant elements of the conflicting signs, (iv) the distinctiveness of the earlier mark, and (v) the relevant public.
The first step in assessing if a likelihood of confusion exists is to establish these five factors. The second step is to determine their relevance.
The purpose of this chapter is to explain how to assess whether or not any of the signs in conflict have dominant component(s).
2 Assessment of dominant character
It is the Office’s practice to restrict the notion of dominant element to the visual impact of the elements of a sign, that is, to use it exclusively to mean ‘visually outstanding’.
For a finding that there is a dominant element within a sign, the sign should have at least two identifiable components1. Therefore, the first step is to identify the components in a sign.
The European Court of Justice (the ‘Court’) has not defined what is to be regarded as a ‘component’ of signs but has given indications. Visual indications such as a dash or the use of different font sizes and/or typefaces or colours could be regarded as ‘components’2. Rather than depending on whether a sign can be visually divided into different parts, it is the relevant public’s perception of the sign which is decisive.
The second step is to identify which of the components of a sign is the dominant one. As the Court has stated:
With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark.
(See judgment of 23/10/2002, T-6/01 ‘MATRATZEN’, para. 35, judgment confirmed by order of 28/04/2004, C-3/03 P.)
Even though, according to the established case-law of the Court, aspects other than the visual one (such as a possible semantic meaning of part of a one-word sign) may come into play when defining the notion of the dominant element of a sign, it is the
1 In this text the words ‘component’ and ‘element’ are used interchangeably. 2 For some examples see The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 3: Comparison of Signs
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practice of the Office to restrict the notion of dominant element to the visual impact of the elements of a sign, that is, to use it exclusively to mean ‘visually outstanding’ and to leave any other considerations for the overall assessment. As a result, the Office’s practice is that the dominant character of a component of a sign is mainly determined by its position, size, dimensions and/or use of colours, to the extent that they affect its visual impact.
In addition, the Court has held that:
… the weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dom inant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them.
(See judgment of 13/06/2006, T-153/03 ‘Representation of a cowhide in black and white’, para. 32.)
Consequently, the fact that a component of a mark may or may not be considered non- distinctive (or as having a l ow degree of distinctiveness) has no be aring on the assessment of the dominant character.
As a rule of thumb the following should be considered:
• The assessment of dominant character applies to both the signs under comparison.
• For a finding that there is a dominant component, the sign should have at least two identifiable components.
• Word marks have no dominant elements because by definition they are written in standard typeface. The length of the words or the number of letters is not an issue of dominance but of overall assessment3.
• Figurative elements may be dominant in signs where word elements are also present.
• Whether or not an el ement is visually outstanding may be det ermined in the visual comparison of the signs; if that is the case, it must be consistent with a subsequent evaluation of dominant character.
• Lastly, if it is difficult to decide which of the (at least) two components is dominant, this may be an indication that there is no dom inant element. The establishment of dominant character implies that one c omponent is visually outstanding compared to the other component(s) in the mark; if that assessment is difficult to make, it is because there is no dominant element.
Examples of cases:
Sign Dominant component and reasoning Case No
RPT: ‘the dominant element of the earlier marks is the acronym RPT, in which the letter “p” predominates’ (para. 33).
T-168/07
3 See The Guidelines Concerning Opposition. Double Identity and Likelihood of Confusion. Part 8. Global Assessment. Short signs.
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Sign Dominant component and reasoning Case No
Free: ‘the word “free” dominates the visual impression created by the mark of which it forms part, because it is considerably larger than the other components and, in addition, is much easier to remember and pronounce than the slogan in question’ (para. 39).
T-365/09
Xtreme: ‘On the visual level, it must be concluded that in the mark applied for, the term ‘XTREME’ occupies a central position. Indeed, the size of its typeface is bigger than that of the other verbal elements, and the word is highlighted with a white outline… The other verbal components ‘RIGHT GUARD’ and ‘SPORT’, are written in a much smaller type and are shifted to the right and towards the edge of the sign’ (para. 55)
T-286/03
(by missako)
GREEN by missako: ‘It must be noted, as a first point, that the representation of the sun has an important place within the mark applied for, in that it is positioned in the centre and covers almost two thirds of the area. Next, the position of the word element “green” is also important within the mark, as it is represented in large-typeface, stylised capital letters in black and takes up about one third of the area. As observed by the Board of Appeal in paragraph 28 of the contested decision, those two elements thus occupy the major portion of the mark applied for and are therefore striking in the overall impression of the mark… Lastly, as regards the word element “by missako”, the Board of Appeal correctly held, in paragraph 28 of the contested decision, that those words were almost illegible because of their size and that the handwriting made them difficult to decipher. It follows, first, that the dominant nature of the word “green” and of the representation of the sun are thereby further reinforced and, secondly, that the word element “by missako” is negligible in nature’ (para. 37 and 39)
T-162/08
BÜRGER: The dominant element of the mark applied for is undeniably the word element in capital letters which stands out, simply because of its position and the very large size of its lettering, from all the other elements which make up the label (para. 38).
T-460/11
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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 2
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION
CHAPTER 6
RELEVANT PUBLIC AND DEGREE OF ATTENTION
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Table of Contents
1 Introduction................................................................................................ 3
2 Defining the Relevant Public .................................................................... 4
3 Defining the Degree of Attention.............................................................. 8 3.1 Higher degree of attention .........................................................................9
3.1.1 Expensive purchases ..................................................................................... 9 3.1.2 Potentially hazardous purchases.................................................................. 10 3.1.3 Brand loyalty................................................................................................. 10 3.1.4 Pharmaceuticals ........................................................................................... 11
3.2 Lower degree of attention........................................................................11
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1 Introduction
Whether a likelihood of confusion exists depends on an overall assessment of several interdependent factors, including: (i) the similarity of the goods and services, (ii) the similarity of the signs, (iii) the distinctive and dominant elements of the conflicting signs, (iv) the distinctiveness of the earlier mark, and (v) the relevant public, and in particular its degree of attention and sophistication.
The first step in assessing if a likelihood of confusion exists is to establish these five factors. The second step is to determine their relevance and how they interact with each other.
With regard to the relevant public, the Court of Justice has held that a likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (judgment of 29/09/1998, C-39/97 ‘Canon’, para. 29). The Court has also held that it is the perception of marks in the mind of the relevant public of the goods or services in question which plays a decisive role in the global assessment of the likelihood of confusion (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para. 23 and judgment of 22/06/1999, C-342/97, ‘Lloyd Schufabrik Meyer’, para. 25).
Accordingly, the first task is to define the consumer circles that are relevant for the purposes of the case. The method for identifying the relevant public is discussed in paragraph 2. Thereafter, the relevant public’s degree of attention and sophistication must be established. The impact of the relevant public’s attention and sophistication on the assessment of the likelihood of confusion is discussed in paragraph 3.
In addition, the relevant public plays an important role in establishing a number of other factors that are relevant for the assessment of the likelihood of confusion:
• Comparison of the goods and services
The actual and potential customers of the goods and services in dispute constitute one of the factors to be dealt with in the analysis of their similarity. While a coincidence in the relevant public is not necessarily an indication of similarity of the goods or services, largely diverging publics weigh heavily against similarity.1
Example
Leather, animal skins and hides are raw materials that go to industry for further processing whereas goods made of leather are final products targeted at the general public. The relevant public is different which is a fundamental factor in deeming these goods dissimilar. Similar reasoning applies to precious metals and jewellery.
• Comparison of the signs
The question of the relevant public also plays a role in the comparison of the signs. The same word may be pronounced differently depending on the relevant public.
1 See The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 2: Comparison of Goods and Services.
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Conceptually, the public in a part of the European Union may understand the meaning of the sign, while consumers in other parts may not understand it.2
Example
The Court has already confirmed that the general public in the Scandinavian countries, the Netherlands and Fi nland has a bas ic understanding of English (judgment of 26/11/2008, T-435/07 ‘NEW LOOK’, para. 23).
• Distinctive elements of the signs / distinctiveness of the earlier mark
The inherent distinctiveness of a s ign or one of its elements also depends on the relevant public for the goods and s ervices. For example, depending on t he relevant public’s knowledge, background and language, an element contained in a trade mark may be non-distinctive or have a low degree of distinctiveness, or it may be distinctive because inter alia it is perceived as a fanciful term without any meaning.3
Example
The French word ‘Cuisine’ will not be understood as a descriptive indication for goods in Classes 29 and 30 in some Member States (decision of 23/06/2010, R 1201/2009-1 ‘GREEN CUISINE’, paras 29-33).
Example
Professionals in the IT field and scientific field are in general more familiar with the use of technical and bas ic English words than the general public: In Gateway vs. Activy Media Gateway, the Court held that the common word “gateway” directly evokes, in the mind of the relevant consumer, the concept of a gateway, which is commonly used in the computing sector (judgment of 27/11/2007, T-434/05, ‘ACTIVY Media Gateway’, paras 38, 48, confirmed by appeal C-57/08P).
2 Defining the Relevant Public
In accordance with Article 8(1)(b) CTMR, it must be determined whether a likelihood of confusion exists ‘on the part of the public in the territory where the earlier mark is protected’.
According to the Court, this wording shows that the perception of the marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the overall appreciation of the likelihood of confusion (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para. 23 and judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, para. 25).
The term ‘average consumer’ is a l egal concept that is used in the sense of the ‘relevant consumer’ or ‘relevant public’. It should not be c onfused with the ‘general public’ or ‘public at large’, albeit the Courts sometimes use it in this sense. However, in
2 See The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 3: Comparison of Signs. 3 See The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 4: Distinctiveness.
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the context of relative grounds, the term ‘average consumer’ shall not be used as a synonym of ‘general public’ as it can refer to both, professional and general public. In this respect, in cases concerning the likelihood of confusion, the Court normally distinguishes between the general public (or public at large), and a professional or specialised public (or business customers) based on the goods and services in question.
In order to properly define the relevant public in the context of relative grounds, two factors have to be taken into account:
• the territory defined by the earlier mark: the relevant public is always the public in the territory(ies) where the earlier right(s) is/are protected. Consequently, in the case of an ear lier national right, the relevant public concerned is the one of that particular EU Member State (or Member States in the case of Benelux trade marks). For an ear lier Community trade mark, the public in the whole Community has to be taken into account. For an international registration, it is the public in each of the Member States where the mark is protected.
• the goods and ser vices which have been found identical or similar: likelihood of confusion is always assessed against the perception of the consumers of the goods and services which have been found identical or similar. Depending on the goods or services the relevant public is the general public or a professional public.
The relevant public always includes both the actual and the potential consumers, that is, the consumers who are currently purchasing the goods / services or who may do so in the future.
If a significant part of the relevant public for the goods or services at issue may be confused as to the origin of the goods, this is sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods or services are likely to be confused.
As stated by the Court, the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and the product covered by the mark applied for which were found to be i dentical or similar (judgment of 01/07/2008, T-328/05, ‘QUARTZ’, para. 23, C-416/08 P appeal dismissed).
RELEVANT PUBLIC Average consumer
GENERAL PUBLIC Public at large
PROFESSIONAL PUBLIC Business customers Specialised public
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When defining the part of the public against which a likelihood of confusion is assessed the following applies:
• If the goods or services of both marks are targeted at the general public the relevant public against which a likelihood of confusion is assessed is the general public.
Example
In a case in which both the earlier and the contested mark concerned articles of clothing, the Court held: ‘clothing for men and women are everyday consumer items and t he trade mark on w hich the opposition is based is registered as a Community trade mark. It follows that the relevant public by reference to which the likelihood of confusion must be assessed is composed of the general public in the European Union’ (judgment of 06/10/2004, T-117/03 to T-119/03 and T-171/03, ‘New Look’, para. 25).
• If the goods and s ervices of both marks are directed at the same or a similar professional public, the likelihood of confusion will be as sessed from the perspective of those specialists.
Example
The relevant goods of both the earlier and the contested mark were raw plastic materials, chemical products, resins and the like. These are goods for industrial use. The targeted consumers are, therefore, engineers, chemists, i.e. highly skilled professionals who will process these products and use them in manufacturing activities. The relevant public was considered to be professionals (decision of 15/02/2012, R 2077/2010-1, ‘PEBAFLEX’ para. 18. See also decision of 16/09/2010, R 1370/2009-1, ‘CALCIMATT’, para. 20, confirmed by T-547/10).
• If the goods or services of both marks are targeted at both the general public and at specialists, the likelihood of confusion will be assessed against the perception of the part of the public displaying the lower degree of attentiveness as it will be more prone to be confused. If this part of the public is not likely to be confused, it is even more unlikely that the part of the public with a higher degree of attention will be.
Example
In a case in which both the earlier and the contested mark concerned goods in Classes 3 and 5 which are targeted at both the general public and professionals (e.g. doctors in relation to pharmaceuticals in Class 5), the Court assessed the likelihood of confusion in relation to the general public only, because it is the one displaying the lower degree of attention (see, to this effect, judgment of 15/07/2011, T-220/09, ‘ERGO’, para. 21).
• If the goods and services of the earlier mark are targeted at the general and professional public and the contested goods and s ervices are targeted exclusively at a professional public (or vice versa), the relevant public for assessing likelihood of confusion is the professional public only.
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Example
The goods of the earlier mark are polish for metals, while the goods of the application are preparations for cleaning waste pipes for the metal-working industry. As stated in the relevant GC judgment: ‘Although “polish for metals” can consist equally well of everyday consumer goods as of goods intended for a professional or specialised public, it is not disputed that the goods to which the trade mark application relates must be r egarded as directed solely at persons operating in the metal-working industry. Therefore, the only public likely to confuse the trade marks in question is formed of such operators’ (judgment of 14/07/2005, T-126/03, ‘ALADIN’, para. 81).
Example
Paints in general are sold both to professional painters (i.e. for business purposes) and to the public at large for ‘do-it-yourself purposes’. By contrast, paints for industry are not targeted at the general public. Therefore, when the specifications of the two marks cover paints and paints for industry respectively, only professionals constitute the relevant public since they are likely to be t he only consumers who encounter both marks.
Example
The services of the earlier mark are telecommunications. The contested services are telecommunication services, namely collocation, telehousing and interconnection services addressed at professionals only. The definition of the relevant public must be adj usted to the more specific list, and l ikelihood of confusion should be as sessed for professionals only (judgment of 24/05/2011, T-408/09, ‘ANCOTEL.’, paras 38-50).
• If the relevant goods are pharmaceuticals the following applies:
The average consumer of non-prescription pharmaceuticals (sold over-the- counter) is the general public, and the likelihood of confusion will be assessed in relation to that public.
According to the case-law, the general public cannot be ex cluded from the relevant public also in the case of pharmaceuticals which require a doctor’s prescription prior to their sale to end-users in pharmacies. Thus, the relevant public comprises both general public and health professionals, such as doctors and pharmacists. Consequently, even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products at various times (judgment of 09/02/2011, T-222/09, ‘ALPHAREN’, paras 42-45 and j udgment of 26/04/2007, C-412/05 P, ‘TRAVATAN’, paras 56-63). In practice, this means that the likelihood of confusion will be assessed against the perception of the general public which is more prone to confusion.
In the case of pharmaceutical goods targeted only at specialists for professional use (e.g. sterile solutions for ophthalmic surgery), the likelihood of confusion must be assessed from the point of view of that specialist public only (see judgment of 26/04/2007, C-412/05 P ‘TRAVATAN’, para. 66).
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In cases where the pharmaceutical goods of the CTM application are sold over the counter while the pharmaceutical goods covered by the earlier registration would only be a vailable on pr escription, or vice versa, the Office must assume that the relevant public consists of both qualified professionals and also of the general public without any specific medical and pharmaceutical knowledge the likelihood of confusion will be assessed in relation to the general public which is more prone to confusion.
Example
Judgment of 23/09/2009, in joined cases T-493/07, T-26/08 and T-27/08, ‘FAMOXIN’, paras 50-54 (C-461/09 P appeal dismissed).
In the above case, the goods covered by the earlier mark were pharmaceutical preparations with digoxin for human use for cardiovascular illnesses, while the contested goods were pharmaceutical preparations for the treatment of metabolic disorders adapted for administration only by intravenous, intra-muscular or subcutaneous injection.
Although both the goods of the earlier mark and the goods of the contested mark are prescribed by and adm inistered under the supervision of healthcare professionals, the GC held that the relevant public comprises both healthcare professionals and the general public.
3 Defining the Degree of Attention
The Court has indicated that for the purposes of the global assessment, the average consumer of the products concerned is deemed to be reasonably well informed and reasonably observant and ci rcumspect and that the relevant public’s degree of attention is likely to vary according to the category of goods or services in question (C-342/97, ‘Lloyd Schuhfabrik Meyer’, para. 26).
Whether its degree of attention will be higher or lower will depend, among others, on the nature of the relevant goods and services and the knowledge, experience and purchase involvement of the relevant public.
The fact that the relevant public consists of the general public does not necessarily mean that the degree of attention cannot be high (for instance when expensive, potentially hazardous or technically sophisticated goods are purchased). Likewise, the fact that the goods at issue are targeted at specialists does not necessarily mean that the degree of attention is high. In some cases the professional public may have a high degree of attention when purchasing a s pecific product. This is when these professional consumers are considered to have special background knowledge or experience in relation to the specific goods and services. Moreover, purchases made by professional consumers are often more systematic than the purchases made by the general public. However, this is not always the case. For example, if the relevant goods or services are used by a given professional on a daily basis, the level of attention paid may be average or even low (see, by analogy, judgment of 15/09/2005, T-320/03 ‘LIVE RICHLY’, para. 74: ‘that awareness can be r elatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive’).
Properly defining the degree of attention of the relevant public is important as this factor can weigh for or against a finding of a likelihood of confusion. Whilst
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the relevant public only rarely has the chance to make a direct comparison between the different signs and m ust rely on an imperfect recollection of them, a high level of attention of the relevant public may lead to conclude that it will not confuse the marks, despite the lack of direct comparison between the trade marks (see judgment of 22/03/2011, T-486/07 ‘CA’ para. 95).
However, a high degree of attention does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account (interdependence principle)4. For example, in view of the specialised nature of the relevant goods and / or services and the high degree of attention of the relevant public, likelihood of confusion may be r uled out (judgment of 26/06/2008 T-79/07 ‘POLAR’, para. 50-51). However, a likelihood of confusion can exist despite a high degree of attention. For example, when there is a strong likelihood of confusion created by other factors, such as identity or close overall similarity of the marks and the identity of the goods, the attention of the relevant public alone cannot be relied upon to prevent confusion (judgment of 21/11/2013, T-443/12 ‘ANCOTEL’ (fig.) para. 53-56, decision of 06/09/2010, R 1419/2009-4, ‘Hasi’).
3.1 Higher degree of attention
A higher degree of attention is usually connected with the following types of purchases: expensive purchases, purchase of potentially hazardous or technically sophisticated goods. The average consumer often seeks professional assistance or advice when choosing or buying certain types of goods and services (e.g. cars, pharmaceutical products).
A higher degree of attention can also apply to goods when brand loyalty is important for the consumer.
3.1.1 Expensive purchases
When purchasing expensive goods, the consumer will generally exercise a hi gher degree of care and will buy the goods only after careful consideration. Non-specialised or non-professional consumers often seek professional assistance or advice when choosing or buying certain types of goods and services. The attention may be enhanced in cases of luxury goods and where the specific product is regarded as reflecting the social status of its owner.
4 See The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 8: Global Assessment.
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Examples
• Cars: Taking into consideration their price, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a dai ly basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige. See in this respect the GC judgment of 22/03/2011, T-486/07, ‘CA’, paras 27-38 and GC judgment of 21/03/2012, T-63/09 ‘SWIFT GTi’, paras 39-42.
• Diamonds, precious and semi-precious stones: In its decision of 09/12/2010, R 900/2010-1, ‘Leo Marco’, para. 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.
• Financial services: These services are targeted at the general public, which is reasonably well-informed and reasonably observant and circumspect. However, since such services are specialised services which may have important financial consequences for their users, the consumers’ level of attention would be rather high when choosing them (decision of 03/02/2011, R 719/2010-1, ‘f@ir Credit’, para. 15) (Appeal before GC, T-220/11, dismissed. Appealed C-524/12 P dismissed).
In the overall impression combined by the signs at issue, the visual and conceptual differences between the signs are sufficient to outweigh their limited phonetic similarity, particularly since the relevant public is highly attentive and well informed (judgment of 22/06/2010, T-563/08, ‘CARBON CAPITAL MARKETS’, paras 33, 61).
• Real-estate services: The purchase and s ale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a hi gher-than- average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (decision of 17/02/2011, R 817/2010-2 ‘FIRST THE REAL ESTATE’, para. 21).
3.1.2 Potentially hazardous purchases
The impact on safety of goods covered by a trade mark (for example, firelights, saws, electric accumulators, electric circuit breakers, electric relays, etc.) may result in an increase in the relevant consumer’s degree of attention (see judgment of 22/03/2011, T-486/07 ‘CA’, para. 41).
3.1.3 Brand loyalty
Furthermore, a higher degree of attention can be the consequence of brand loyalty.
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Example
Although tobacco products are relatively cheap mass consumption articles, smokers are considered particularly careful and s elective as to the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. Therefore, in the case of tobacco products a higher degree of similarity of signs may be required for confusion to occur. This has been confirmed by several Board decisions: decision of 26/02/2010, R 1562/2008-2, ‘victory slims’, where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal, and decision of 25/04/2006, R 61/2005-2, ‘Granducato’.
3.1.4 Pharmaceuticals
It is apparent from the case-law that, so far as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on pr escription (judgment of 15/12/2010, T-331/09 ‘Tolposan’, para. 26 and judgment of 15/03/2012, T-288/08 ‘Zydus’ para. 36 and quoted case-law).
In particular, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also show a h igher degree of attention, regardless whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.
3.2 Lower degree of attention
A lower degree of attention can be associated, in particular, with habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (see by analogy judgment of 15/06/2010, T-547/08 ‘Orange colouring of the toe of a sock’ para. 43).
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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 2
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION
CHAPTER 7
OTHER FACTORS
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Table of Contents
1. Introduction................................................................................................ 3 2. Family of marks/series of marks ...............................................................3 3. Coexistence of the conflicting marks on the market in the same
territory .......................................................................................................6 3.1. Coexistence between the marks involved in the opposition........................... 6
4. Incidences of actual confusion .................................................................8 5. Prior decisions by Community or national authorities involving
conflicts between the same (or similar) trade marks...............................9 5.1. Prior Office decisions...................................................................................... 9 5.2. Prior national decisions and judgments........................................................ 10
6. Irrelevant arguments for assessing likelihood of confusion................. 11 6.1. Specific marketing strategies........................................................................ 11 6.2. Reputation of CTM application ..................................................................... 11
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1. Introduction
The Office normally examines the most salient and habitually relevant factors relating to likelihood of confusion under separate headings1 before the section containing the Global Assessment. These factors have been t reated in the preceding Chapters of these Guidelines.
However, the Global Assessment also takes into account other factors, based on arguments and evidence submitted by the parties, which are relevant for deciding on likelihood of confusion. The present chapter deals with such frequent arguments/claims raised by the parties.
2. Family of marks/series of marks
When an opposition to a CTM application is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. The Courts have given clear indications on the two cumulative conditions that have to be satisfied (judgment of 23/02/2006, T-194/03, ‘Bainbridge’, paras. 123-127, confirmed by judgment of 13/09/2007, C-234/06 P, ‘Bainbridge’, para. 63).
• Firstly, the proprietor of a series of earlier marks must furnish proof of use of all the marks belonging to the series or, at the very least, of a nu mber of marks capable of constituting a ‘series’ (i.e. at least three).
• Secondly, the trade mark applied for must not only be si milar to the marks belonging to the series, but also display characteristics capable of associating it with the series. Association must lead the public to believe that the contested trade mark is also part of the series, that is, that the goods and services could originate from the same or connected undertakings. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.
The argument that there is a ‘family of marks’ must be claimed before the expiry of the time limit set for substantiating the opposition. The opponent must prove within the same time limit that it has used the marks forming the alleged family in the marketplace to such an extent that the relevant public has become familiar with this family of marks as designating the goods and / or services of a particular undertaking.
A positive finding that the opponent has a family of marks entails the use of at least three marks, the minimum threshold for such an argument to be taken into due consideration. Proof of use relating to only two trade marks cannot substantiate the existence of a series of marks.
1 (i) Similarity of goods and services; (ii) similarity of the signs; (iii) the distinctive and dominant elements of the conflicting signs; (iv) the distinctiveness of the earlier mark; (v) the relevant public and its degree of attention.
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Normally, the trade marks constituting a ‘family’ and us ed as such are all registered marks. However, it cannot be precluded that the ‘family of marks’ doctrine may include non-registered trade marks as well.
When the opponent has proven the existence of a family of marks, it would be wrong to compare the contested application individually to each of the earlier marks making up the family. Rather, the comparison should be made between the contested mark and the family taken as a whole, in order to establish if the contested sign displays those characteristics that are likely to trigger in the consumers’ minds the association with the opponent’s family of marks. In fact, an i ndividual comparison between the conflicting signs might even lead to a finding that the signs are not sufficiently similar to lead to a likelihood of confusion, whereas the association of the contested sign with the earlier family of marks might be the decisive factor that tips the balance to a finding of likelihood of confusion. An assumption of a family of marks on the part of the public requires that the common denominator of the contested application and the earlier family of marks must have a distinctive character either per se or acquired through use such as to allow a direct association between all of these signs. Likewise, there will be no assumption of a family of marks where the further components of the earlier signs have a g reater impact in the overall impression of those signs.
Earlier signs Contested sign Case No
Ophtal, Crom-Ophtal, Visc- Ophtal, Pan-Ophtal ALERGOFTAL R 0838/2001-1
G&S: Class 5 Territory: Germany Assessment: The Board held that the differences between the signs were such as to exclude the likelihood that the contested mark would be perceived as belonging to the opponent’s family of marks (assuming the existence of this had been established). In particular, the Board considered that, whereas the claimed ‘series’ depended upon the presence in every case of the suffix ‘-ophtal’ (and not ‘oftal’) preceded by a hyphen, the contested sign did not contain exactly the same suffix nor reflect exactly the same principles of construction. When ‘ophtal’ is combined with ‘Pan-’,‘ Crom-’ and ‘ Visc-’, these partly disjointed prefixes become of greater distinctive value, affecting quite significantly the overall impression made by each of the marks as a whole, and in each case providing initial elements quite clearly different from the first half – ‘Alerg’ – of the mark applied for. The German consumer upon seeing ‘Alergoftal’ would not think of dividing it into two elements, as opposed to being invited to do so when encountering marks made up of two elements separated by a hyphen (paras. 14 and 18).
Earlier signs Contested sign Case No
TIM OPHTAL, SIC OPHTAL, LAC OPHTAL etc. OFTAL CUSI T-160/09
G&S: Class 5 Territory: EU Assessment: The element ‘Ophtal’, which denotes ophthalmologic preparations, is a weak element in the family of marks. The elements TIM, SIC and LAC are the distinctive elements (paras. 92-93).
The finding that a particular mark forms part of a family of marks requires that the common component of the signs is identical or very similar. The signs under comparison must have in common the same distinctive element and this element must play an independent role. Minor graphical differences in the common component may not exclude an as sumption of a s eries of marks, when such differences may be understood by the public as a m odern presentation of the same product line. In contrast, letters that are different from or additional to the common component generally do not allow an assumption of a family of marks.
Normally, the common element that characterises the family appears in the same position within the marks. Therefore, the same (or very similar) element appearing in
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the same position in the contested sign will be a s trong indicator that the later mark could be as sociated with the opponent’s family of marks. On the other hand, the common element appearing in a different position in the contested sign weighs heavily against such an association being established in the consumers’ minds. For example, the contested sign ISENBECK is not likely to be associated with a f amily of BECK- marks where the element BECK is at the beginning of the signs making up the family.
Earlier signs Contested sign Case No
UNIZINS, UNIFONDS and UNIRAK UNIWEB C-317-10 P
G&S: Class 36 (financial services) Territory: Germany Assessment: In this judgment the Court annulled a decision of the GC since it has not duly assessed the structure of the marks to be compared, nor the influence of the position of their common element on the perception of the relevant public (para 57).
Examples where the Boards considered that a family of marks had been established:
Earlier signs Contested sign Case No
UniSECTOR uni-gateway R 31/2007-1
G&S: Class 36 (financial services) Territory: Germany Assessment: The Board considered that the opponent had in fact furnished sufficient evidence, by submitting, in particular, references from the relevant specialist press, such as FINANZtest, and by referring to its considerable 17.6% market share of ‘Uni’ investment funds amongst German fund management companies, to show that it uses the prefix ‘UNI’ for a number of well known investment funds. There is a likelihood of confusion from the point of view of the family of trade marks since the relevant trade circles would include in the series the trade mark applied for, since it is constructed in accordance with a comparable principle (paras. 43-44).
Earlier signs Contested sign Case No
UNIFIX, BRICOFIX, MULTIFIX, CONSTRUFIX, TRABAFIX, etc. ZENTRIFIX R 1514/2007-1
G&S: Classes 1, 17 and 19 (adhesives) Territory: Spain Assessment: The Board considered that the opponent had proven the existence of a family of marks. Firstly, the Board discarded that the common element ‘FIX’ would be non-distinctive, given that it is not a Spanish word and even its Spanish meaning ‘fijar’ is not one that spontaneously comes to mind to average Spanish consumers in the context of glues and adhesives, since verbs like ‘pegar’, ‘encolar’ or ‘adherir’ are used more regularly in this context. Secondly, the opponent duly proved that all the marks forming the family are being used. Invoices and promotional literature duly show that products bearing these marks are available to consumers on the market. Consumers, therefore, are aware that there is a family of marks. Thirdly, ZENTRIFIX has characteristics which replicate those of the trade marks in the family. The FIX element is placed at the end; the element that precedes it alludes to something that has some relevance to glues; the two elements are juxtaposed without any punctuation signs, dashes or physical separation; the typeface used for the two elements is the same (paras 43- 44).
Earlier signs Contested sign Case No
CITIBANK, CITIGOLD, CITICORP, CITIBOND,
CITICARD, CITIEQUITY, etc. CITIGATE R 821/2005-1(confirmed by the GC T-301/09)
G&S: Classes 9, 16 (potentially finance-related goods)
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Territory: EU Assessment: The Board considered that the evidence – consisting in particular of extracts from the opponents’ websites, annual reports, press advertisements and so forth – is littered with references to the trade marks CITICORP, CITIGROUP, CITICARD, CITIGOLD, CITIEQUITY. The evidence shows that CITIBANK is in the nature of a ‘ house mark’ or basic brand and that the opponents have developed a whole series of sub-brands based on the CITI concept. The contested mark CITIGATE is the sort of mark that the opponents might add to their portfolio of CITI marks, in particular if they wished to offer a new service to customers and place the emphasis on the idea of access (paras 23- 24).
3. Coexistence of the conflicting marks on the market in the same territory
The CTM applicant may claim that the conflicting trade marks coexist in the relevant territory. Usually the coexistence argument comes up when the applicant owns a national trade mark corresponding to the CTM application in the territory where the opposing trade mark is protected. The applicant may also refer to coexistence with a trade mark owned by a third party.
Therefore, two different situations, both referred to as ‘coexistence’ by the parties, should be distinguished:
• coexistence between the two marks involved in the opposition can be persuasive of the absence of a likelihood of confusion in the relevant public’s perception (see below).
• where many similar marks (other than the two marks involved in the opposition) are used by competitors, the coexistence may affect the scope of protection of the earlier right. See The Guidelines concerning opposition, Part 2, Chapter 4, Distinctiveness.
3.1. Coexistence between the marks involved in the opposition
In opposition proceedings, it is most commonly argued by the CTM applicant that the conflicting marks coexist on a national level and that the coexistence is tolerated by the opponent. Occasionally, it is argued that coexistence is accepted by the parties in a coexistence agreement.
The possibility cannot be ruled out that the coexistence of two marks on a par ticular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 03/09/2009, C-498/07P, ‘La Española’, para. 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion which the Office finds between two conflicting marks (judgment of 11/05/2005, T-31/03, ‘Grupo Sada’, para. 86).
However, the indicative value of coexistence should be t reated with caution. There might be different reasons why the two signs coexist on a national level, e.g. a different legal or factual situation in the past or prior rights agreements between the parties involved.
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Therefore, whilst the impact of coexistence on the finding of likelihood of confusion is accepted in theory, the conditions for this coexistence to be persuasive of the absence of a risk of confusion are, in practice, very difficult to establish and seldom prevail.
For the CTM applicant to prove that the coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public certain conditions must be met:
• Comparable situation. The earlier (‘co-existing’) marks and the marks at issue are identical to those involved in the opposition before the Office (judgment of 11/05/2005, T-31/03, ‘Grupo Sada’, para. 86, judgment of 18/09/2012, T-460/11, ‘Bürger’, paras 60-61) and cover the same goods or services as those in conflict (decision of 30/03/2010, R 1021/2009-1, ‘Eclipse’, para. 14).
• The coexistence concerns the countries relevant in the case (e.g. alleged coexistence in Denmark is irrelevant when the opposition is based on a Spanish trade mark; judgment of 13/07/2005, T-40/03, ‘Julián Murúa Entrena’, para. 85). If the earlier trade mark is a CTM, the CTM applicant must show coexistence in the entire EU.
• Only the coexistence in the marketplace can be taken into account. The mere fact that both trade marks exist in the national register (formal coexistence) is insufficient. The CTM applicant has to prove that the trade marks were actually used (decision of 13/04/2010, R 1094/2009-2, ‘Business Royals’, para. 34). Coexistence should be understood as ‘co-use’ of concurrent and s upposedly conflicting marks (decision of 08/01/2002, R 360/2000-4, ‘No Limits’, para. 13; decision of 05/09/2002, R 0001/2002-3, ‘Chee.Tos’, para. 22).
• The period of coexistence must be taken into consideration: in the judgment of 01/03/2005, T-185/03, ‘Enzo Fusco’, the alleged coexistence of only four months was considered obviously too short. Moreover, the coexistence of the trade marks has to relate to a period close to the filing date of the CTM application (decision of 12/05/2010, R 607/2009-1, ‘Elsa Zanella’, para. 39).
• The absence of a likelihood of confusion may be only inferred from the ‘peaceful’ nature of the coexistence of the marks at issue on t he market concerned (judgment of 03/09/2009, C-498/07P, ‘La Española’, para. 82; judgment of 08/12/2005, T-29/04, ‘Cristal Castellblanch’, para. 74; judgment of 24/11/2005, T-346/04, ‘Arthur et Felicie’, para. 64). This is not the case when the conflict has been an issue before the national courts or administrative bodies (infringement cases, oppositions or applications for annulment of a trade mark).
• Moreover, the peaceful coexistence of the trade marks in the relevant national market does not outweigh the likelihood of confusion if it is based on prior right agreements between the parties including agreements settling disputes before national courts, since such agreements, even if based on the assessment of the legal situation made by the parties, may have purely economic or strategic reasons.
However, exceptional situations are possible. In its preliminary ruling of 22/09/2011, C-482/09, ‘BUD’, the Court of Justice ruled that two identical trade marks designating identical goods can coexist on the market to the extent that there has been a long period of honest concurrent use of those trade marks and that use neither has nor is
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liable to have an adverse effect on the essential function of the trade mark which is to guarantee consumers the origin of the goods and services.
As regards coexistence agreements between the parties, when assessing likelihood of confusion the Office’s policy is that such agreements may be taken into account like any other relevant factor, but they are in no way binding for the Office. This is particularly true when the application of the relevant provisions of the CTMR and the established case-law lead to a conclusion which is not in accordance with the content of the agreement.
If an a greement is disputed before national instances or there are pending court proceedings and the Office estimates that the outcome could be relevant for the case at issue, it may decide to suspend the proceedings.
In addition, as a general rule, nothing precludes the opponent from filing an opposition against a CTM application, whether or not it previously opposed other (national) marks of the applicant. This cannot be considered as ‘contradictory behaviour’ and interpreted to the opponent’s disadvantage, especially since in the opposition proceedings, unlike the invalidity proceedings, the defence of ‘acquiescence’ is not available (the rules for opposition proceedings do not contain an equivalent to Article 54 CTMR, according to which a C TM proprietor may invoke as a de fence the fact that the applicant for invalidity has acquiesced to the use of the CTM for more than 5 years).
4. Incidences of actual confusion
Likelihood of confusion means a probability of confusion on t he part of the relevant consumer and does not require actual confusion. As expressly confirmed by the Court: ‘… it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (judgment of 24/11/2005, T-346/04, ‘Arthur et Felicie’, para. 69).
In the global assessment of the likelihood of confusion all relevant factors have to be taken into consideration. Evidence of actual confusion is a factor that may weigh in favour of likelihood of confusion; its indicative value should not, however, be overestimated for the following reasons:
• It must be as sumed that in actual everyday life there will always be individual people who confuse and misconstrue everything and others who are extremely observant and entirely familiar with every trade mark. Therefore, there is no legal value in pointing to the existence of both such people since it would lead to subjective results.
• Insofar as the targeted consumer’s perception is concerned, the assessment is normative. The average consumer is assumed to be ‘ reasonably well-informed and reasonably observant and circumspect’, even though in purely factual terms some consumers are extremely observant and well-informed, whilst others are careless and c redulous (decision of 10/07/20007, R 0040/2006-4, ‘SDZ Direct World’, para. 32).
Therefore, incidences of actual confusion can influence the finding of likelihood of confusion only if it is proven that such incidences usually accompany the existence of the conflicting trade marks in the market in the typical situation in trade involving the goods and/or services concerned.
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To properly weigh evidence on t he number of occasions when actual confusion has arisen, the assessment must be made in the light of the number of opportunities for confusion. If the business transactions are voluminous but the instances of confusion are sparse, such evidence will have little weight in the assessment of likelihood of confusion.
Lack of actual confusion has been treated in the context of coexistence, in paragraph 4 above.
5. Prior decisions by Community or national authorities involving conflicts between the same (or similar) trade marks
5.1. Prior Office decisions
As regards previous decisions of the Office in conflicts between identical or similar trade marks, the General Court has stated that:
… it is settled case-law … that the legality of the decisions of the [Office] is to be as sessed purely by reference to [the CTMR] and not the Office’s practice in earlier decisions.
(See judgment of 30/06/2004, T-281/02, ‘Mehr für Ihr Geld’, para. 35.)
Accordingly, the Office is not bound by its previous decisions, since each case has to be dealt with separately and with regard to its particularities.
Notwithstanding the fact that previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon the case at hand. This was reinforced in the judgment of 10/03/2011, C-51/10 P, ‘1000’, paras 73-75:
[The] OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration.
In the light of those two principles, OHIM must, when examining an application for registration of a C ommunity trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not …
That said, the way in which the principles of equal treatment and s ound administration are applied must be consistent with respect for legality.
The indicative value of the previous decisions will in principle be limited to cases which bear a s ufficiently close resemblance to the case at hand. However, according to Article 76(1) CTMR, in opposition proceedings the Office shall be r estricted in the examination of the case to the facts, evidence and arguments provided by the parties. For this reason, even in cases based on comparable facts and involving similar legal problems, the outcome may still vary due t o the different submissions made by the parties and the evidence they present.
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5.2. Prior national decisions and judgments
Decisions of national courts and of national offices in cases regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office. According to the case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it and applies independently of any national system. Accordingly, the registrability of a s ign as a Community trade mark is to be assessed on the basis of the relevant legislation alone (judgment of 13/09/2010, T-292/08, ‘Often’, para. 84; judgment of 25/10/2006, T-13/05, ‘Oda’, para. 59).
Therefore, the decisions adopted in a Member State or in a State that is not a member of the European Union are not binding for the Office (see judgment of 24/03/2010, T-363/08, ‘Nollie’, para. 52).
Still, their reasoning and outcome should be duly considered, particularly when the decision has been t aken in the Member State that is relevant to the proceedings. National courts have a thorough knowledge of the specific characteristics of their Member State, in particular as regards the marketplace reality in which goods and services are marketed and t he customer perception of signs. This may, in particular cases, be relevant for the assessment made by the Office.
Earlier sign Contested sign Case No
MURUA T-40/03
G&S: Class 33 Territory: Spain Assessment: The Court took into consideration the reasoning of a judgment of the national court as far as it explained the perception of family names on the part of the public in the relevant country: regarding the question whether the relevant public in Spain will generally pay greater attention to the surname ‘Murúa’ than to the surname ‘Entrena’ in the trade mark applied for, the Court considers that, while it is not binding on Community bodies, Spanish case-law can provide a helpful source of guidance (para. 69).
Earlier sign Contested sign Case No
OFTEN T-292/08
G&S: Class 14 Territory: Spain Assessment: The Court did not see the relevance of the Spanish case-law according to which an average member of the Spanish public has some knowledge of English for the assessment of the particular case:
in the present case, the applicant has not put forward any factual or legal consideration, deriving from the national case-law relied upon, which is capable of providing helpful guidance for determination of the case. … The mere finding that certain English words are known to the Spanish consumer, namely the words ‘master’, ‘easy’ and ‘food’, even if that is clear from the national case-law in question, cannot lead to the same conclusion as regards the word ‘often’
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(para. 85).
Whilst it is, in principle, permissible to take into account decisions of national courts and authorities, these decisions should be examined with all the required care and in a diligent manner (judgment of 15/07/2011, T-108/08, ‘Good Life’, para. 23). Usually the understanding of such a dec ision will require the submission of sufficient information, in particular about the facts on w hich the decision was based. Their indicative value will therefore be l imited to the rare cases when the factual and legal background of the case was presented completely in the opposition proceedings and is conclusive, clear and not disputed by the parties.
The above guidelines are without prejudice to the effects of the judgments of Community trade mark courts dealing with counterclaims for revocation or for a declaration of invalidity of CTMs.
6. Irrelevant arguments for assessing likelihood of confusion
6.1. Specific marketing strategies
The examination of the likelihood of confusion carried out by the Office is a prospective examination. In contrast to trade mark infringement situations – where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial – the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner.
For this reason, specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances which it is usual to expect for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on t he assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (judgment of 15/03/2007, C-171/06 P, ‘Quantum’, para. 59, judgment of 22/03/2012, C-354/11 P, ‘G’, para. 73; judgment of 21/06/2012, T-276/09, ‘Yakut’, para. 58).
For example, the fact that one party offers its everyday consumption goods (wines) for sale at a higher price than competitors is a purely subjective marketing factor which is, as such, irrelevant when assessing the likelihood of confusion (judgment of 14/11/2007, T-101/06, ‘Castell del Remei Oda’, para. 52).
6.2. Reputation of CTM application
Applicants sometimes argue that there will be no likelihood of confusion with the earlier mark because the CTM application has a reputation. Such an argument cannot prosper because the right to a CTM begins on the date when the CTM application is filed and not before, and i t is from that date onwards that the CTM has to be e xamined with regard to opposition proceedings. Therefore, when considering whether or not the CTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the CTM are irrelevant because the rights of the opponent, insofar as they predate the CTM, are earlier than the applicant’s CTM.
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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 2
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION
CHAPTER 8
GLOBAL ASSESSMENT
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Table of Contents 1 Introduction ................................................................................................3
1.1 Nature of global assessment .......................................................................... 3
2 Interdependence Principle.........................................................................3 3 Imperfect Recollection ...............................................................................4 4 Impact of the Method of Purchase of Goods and Services .....................4
4.1 Visual similarity ............................................................................................... 5 4.2 Aural similarity ................................................................................................ 7 4.3 Conclusion ...................................................................................................... 8
5 Impact of the Conceptual Similarity of the Signs on L ikelihood of Confusion ...................................................................................................9
6 Impact of weak or non-distinctive components on Li kelihood of Confusion .................................................................................................10 6.1 Common components with low distinctiveness ............................................ 10 6.2. Common components with no distinctiveness ............................................. 12
7 Specific Cases ..........................................................................................13 7.1 Short signs.................................................................................................... 13 7.1.1 Single-letter / Single-number signs .............................................................. 13 7.1.2 Two-letter / number signs ............................................................................. 16 7.1.3 Three-letter / number signs .......................................................................... 17 7.2 Name/Surnames........................................................................................... 19
7.2.1 Names.......................................................................................................19 7.2.2 Business names in combination with other components ...........................19 7.2.3 First and family names ..............................................................................19
7.3 Beginning of marks....................................................................................... 24 7.4 Composite signs ........................................................................................... 26
7.4.1 Signs containing figurative and verbal components ..................................26 7.4.2 ‘Multi-part’ word signs................................................................................31
7.5. Colour marks per se ..................................................................................... 36
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1 Introduction
1.1 Nature of global assessment
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings. If a significant part of the relevant public of the goods or services at issue may be confused as to the origin of the goods or services, this is sufficient. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused.
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para. 22).
The Court has also held that the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dom inant components (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para. 23).
The Office normally examines the most salient and habitually relevant factors relating to likelihood of confusion under separate headings1 before the section containing the Global Assessment. However, the Global Assessment can include and weigh up many other factors that are relevant to deciding on likelihood of confusion.
2 Interdependence Principle
The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and v ice versa (judgment of 29/09/1998, C-39/97, ‘Canon’, para. 17). This principle of interdependence is crucial to the analysis of likelihood of confusion.
The interdependence of those factors is expressly referred to in recital 8 in the preamble to the CTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association which can be m ade with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (see judgment of 10/09/2008, T-325/06 ‘CAPIO’, para. 72 and the case-law cited).
1 (i) Similarity of goods and services; (ii) similarity of the signs; (iii) the distinctive and dominant elements of the conflicting signs; (iv) the distinctiveness of the earlier mark; (v) the relevant public and the level of attention.
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The requirement for a global appreciation and the principle of interdependence means that where there is at least some degree of similarity between the signs and the relevant goods/services, there will be an as sessment of likelihood of confusion involving an iterative process that weighs up all the relevant factors. This process takes place in the Global Assessment section.
In practice, this means that the Office will weigh up, inter alia, the degree of similarity between the goods and services and the degree of attention paid by the relevant public to those goods and services, the degree of similarity between the signs and whether the impression produced by any one of the levels of comparison (visual/aural/conceptual) is more important. The Office will also consider whether the similarity between the signs lies in an identical or similar element and whether that element is dominant and/or distinctive, whether there are any additional dominant and/or distinctive elements which could counteract the similarities and whether the earlier trade mark is highly distinctive.
Moreover, the factors evaluated in the Global Assessment will vary according to the particular circumstances. For example, in clear-cut cases where goods/services and the signs are highly similar or identical, the Office may find a l ikelihood of confusion without assessing all factors – such as enhanced distinctiveness, family of marks, etc.
Importantly, it is not possible to set out in the abstract whether one factor carries more weight than another because these factors will have varying degrees of relative importance depending on the circumstances. For instance, the degree of visual similarity may weigh more heavily in connection with goods that are usually examined visually, whilst the degree of aural similarity may be more relevant to goods normally ordered orally.
3 Imperfect Recollection
Although, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, para. 26).
4 Impact of the Method of Purchase of Goods and Services
The Court has stated that when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (judgment of 22/09/1999, C-342/97, ‘Lloyd Shuhfabrik Meyer’, para. 27).
The category of goods and services involved may increase the importance of one of the different aspects of similarity between signs (visual, phonetic and conceptual) because of how goods and s ervices are ordered and/or purchased. An aural or conceptual similarity between signs may be less important in the case of goods and services that are usually examined visually or may be tried on before being bought. In
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such cases, the visual impression of signs counts more in the assessment of likelihood of confusion.
However, it is important to emphasise that, as with all of the factors that are relevant to likelihood of confusion, the factors are interlinked and each set of circumstances must be examined on a c ase-by-case basis. This means that no general rule should be applied to broad categories of goods or services.
4.1 Visual similarity
A good example of where visual similarity can play a greater – but not an exclusive – role in the global assessment of the likelihood of confusion is clothing. Generally, in clothing shops, customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a g reater role in the global assessment of the likelihood of confusion (judgment of 14/10/2003, T-292/01, ‘Bass’, para. 55; judgment of 06/10/2004, joined cases T-117/03, T-119/03 and T-171/03, ‘NLSPORT’ para. 50; judgment of 18/05/2011, T-502/07, ‘McKENZIE’ para. 50; and judgment of 24/01/2012, T-593/10, ‘B’, para. 47). These considerations played a role in finding no likelihood of confusion between the marks below for, inter alia, certain goods in Class 25:
Earlier sign Contested sign Case No
McKENZIE T-502/07
T-593/10
The same considerations were central to a finding of likelihood of confusion in the following cases:
Earlier sign Contested sign Case No
ICEBERG ICEBREAKER T-112/09
R 1050/2008-4
PETER STORM PEERSTORM T-30/09
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T-376/09
However, granting preferential consideration to the visual perception does not mean that identical verbal elements can be ov erlooked due t o the presence of striking figurative elements, as can be seen in the case below where likelihood of confusion was found:
Earlier sign Contested sign Case No
FISHBONE T-415/09(appeal dismissed C-621/11P)
In a similar way, the visual impression for marks covering ‘video games’ has also been held to be par ticularly relevant because these goods are normally purchased after a comprehensive examination of their respective specifications and technical characteristics, firstly upon t he basis of information that appears in specialist catalogues or on the internet, and t hen at the point of sale. For these reasons, the visual differences were key to the finding of no likelihood of confusion below (judgment of 08/09/2011, T-525/09, ‘Metronia’, paras. 38-47):
Earlier sign Contested sign Case No
T-525/09
The visual similarity between signs may also have an increased importance where the goods are ordinary consumer products that are most commonly purchased in supermarkets or establishments where goods are arranged on s helves and w here consumers are guided more by the visual impact of the mark they are looking for. Consequently, for such goods the visual differences were central to a finding of no likelihood of confusion in the UK between the marks below.
Earlier sign Contested sign Case No
EGLÉFRUIT T-488/07
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However, the broad principle above does not mean that for goods that are normally purchased visually, the phonetic impression can be overlooked. This latter point was highlighted in a case involving the marks below where the General Court, confirming the finding of a likelihood of confusion, held that although computers and computer accessories are sold to consumers ‘as seen’ on shelves in self-service areas, the phonetic identity between the marks at issue was, in this case, at least as important as their visual similarity because an oral discussion of the characteristics of the goods and their mark is also likely to take place at the time of purchase. Furthermore, those goods could be advertised orally, on radio or by other consumers:
Earlier sign Contested sign Case No
CMORE T-501/08
4.2 Aural similarity
In contrast to the cases above where visual similarity played a stronger role, similarity on the phonetic level may have more weight than similarity on the visual level when the goods at issue are traditionally ordered orally. This consideration came into play in the finding of likelihood of confusion in the case below, which dealt with vehicle rental and associated services, which are recommended and c hosen orally in a s ignificant number of cases.
Earlier sign Contested sign Case No
CICAR ZIPCAR T-36/07
Where goods are ordered orally, the phonetic perception of the sign may also be influenced by factors such as the likely presence of various other sounds perceived by the recipient of the order at the same time. Such considerations are relevant where the goods in question are normally ordered at sales points with an increased noise factor, such as bars or nightclubs. In such cases, attaching particular importance to the phonetic similarity between the signs at issue may be appr opriate. These considerations came into play in the finding of likelihood of confusion between the marks below for certain goods in Class 33 (judgment of 15/01/2003, T-99/01, ‘Mystery’ para. 48).
Earlier sign Contested sign Case No
MIXERY T-99/01
Similarly, a particular method or customary way of ordering goods may mean increased importance being attributed to the phonetic similarity between the signs. For instance, the General Court has held that in the wines sector consumers usually describe and
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recognise wine by reference to the verbal element that identifies it, in particular in bars and restaurants, in which wines are ordered orally after their names have been seen on the wine list (judgment of 23/11/2010, T-35/08, ‘Artesa Napa Valley’ para. 62; judgment of 13/07/2005, T-40/03, ‘Julián Murúa Entrena’ para. 56; and judgment of 12/03/2008, T-332/04, ‘Coto d’Arcis’ para. 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations came into play in the finding of likelihood of confusion between the marks below for wine despite their considerable visual differences.
Earlier sign Contested sign Case No
MURÚA T-40/03
T-35/08
Nevertheless, the broad principle above does not mean that the visual impression can be overlooked for goods normally purchased orally. Indeed, the General Court has held that although preponderant importance had sometimes been accorded to the phonetic perception of marks for beverages, the phonetic dissimilarities of the marks did not merit particular importance where the specific beverages were widely distributed and sold not only in specialist shops, where they would be or dered orally, but in large shopping centres as well, where they would be purchased visually (judgment of 03/09/2010, T-472/08, ‘61 a nossa alegria’, para. 106).
4.3 Conclusion
The circumstances set out above demonstrate that in certain situations the Office should grant preferential consideration to the visual or aural perception of marks depending on how the goods and services at issue are ordered or purchased. However, even in these situations identical or highly similar visual or aural elements cannot be entirely overlooked because all the relevant factors are interlinked and interdependent, and each set of circumstances must be examined on a case-by-case basis.
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5 Impact of the Conceptual Similarity of the Signs on Likelihood of Confusion
A conceptual similarity between signs with analogous semantic content may give rise to a likelihood of confusion where the earlier mark is particularly distinctive, either per se or because of the reputation it enjoys with the public (see judgment of 11/11/1997, C-251/95 ‘Sabèl’, para. 24, where the signs shared the broader concept of a ‘bounding feline’, but did not evoke the same animal: a puma in the earlier mark and a cheetah in the contested mark).
However, exceptionally where the signs have the same distinctive concept in common accompanied by visual similarities between the signs, this may lead to a likelihood of confusion even in the absence of a particularly high distinctiveness of the earlier mark (either per se or due to reputation on the market), as illustrated by the following example:
Earlier sign Contested sign Case No
Joined Cases T-81/03, T-82/03 and T-103/03
G&S: Classes 32, 33 Territory: Spain (where ‘venado’ means ‘deer’) Assessment: The Court found that the signs had the same concept and that there was significant visual similarity. In the absence of a clear semantic link between a deer or a d eer’s head and alcoholic or non‑alcoholic beverages, the Court found it impossible to deny that the concept of a deer’s head portrayed facing forward inside a circle had at least average distinctive character for designating beverages (para. 110.). Enhanced distinctiveness was not considered. – LoC (for the Spanish public).
A conceptual similarity between the signs may not be sufficient to outweigh the visual and phonetic differences, where the concept in common is non-distinctive:
Earlier sign Contested sign Case No
K2 SPORTS T-54/12
G&S: Classes 18, 25, 28 Territory: Germany and the UK Assessment: contrary to the Board’s finding that there is no c onceptual similarity, the term ‘sport’, notwithstanding its descriptive character, refers to the same concept and leads to the conclusion that there is a de gree of conceptual similarity. The Court concluded that this similarity was weak in the context of the overall impression of the signs and in particular of the very weak distinctive character of this term. However, the weak conceptual similarity did not offset the significant visual and phonetic differences between the signs (para. 49) – NO LOC.
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The conceptual difference between the signs may not be sufficient to neutralise the visual and phonetic similarities:
Earlier sign Contested sign Case No
MUNDICOLOR MUNDICOR Joined Cases T-183/02and T-184/02
G&S: Class 2 Territory: Spain Assessment: Whilst ‘MUNDICOLOR’ is to a certain extent evocative of ‘colours of the world’ or ‘the world in colours’ for the Spanish public, it cannot be regarded as having any clear and specific meaning. In the mark applied for, the same prefix is accompanied by the suffix ‘cor’, a term which has no meaning in the Spanish language. Therefore, notwithstanding the evocative nature of the prefix ‘mundi’ (world), the latter is ultimately devoid of any concept for that public. As neither of the signs has a clear and specific meaning likely to be grasped immediately by the public, any conceptual difference between them is not such as to counteract their visual and aural similarities (paras. 90-99) – LOC
The finding of conceptual similarity must therefore be followed by a careful assessment of the inherent and acquired distinctiveness of the earlier trade mark.
6 Impact of weak or non-distinctive components on Likelihood of Confusion
When assessing likelihood of confusion, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out in order to calculate the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused as to origin due to similarities that solely pertain to weak or non-distinctive elements.2
The Office and a number of Trade Mark Offices of the European Union have agreed on a Common Practice under the European Trade Mark and Designs Network with regard to the impact of weak or non-distinctive components on the finding of likelihood of confusion.
6.1 Common components with low distinctiveness
According to the Common Practice, when the marks share an el ement with low distinctiveness the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. The assessment will take into account the similarities/differences and distinctiveness of the non-coinciding components.
A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the
2 See The Guidelines Concerning Proceedings Before the Office, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 4, Distinctiveness.
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marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical.
The following are examples agreed in the context of the Common Practice, where the common component(s) is/are considered possessing a low degree of distinctiveness3:
Earlier mark Contested mark Goods/services Outcome
MORELUX INLUX Class 44: BeautyTreatment NO LOC
DURALUX VITALUX Class 44: BeautyTreatment NO LOC
Class 32: Fruit juices NO LOC
Class 9: Credit cards NO LOC
Class 32: Fruit juices NO LOC
Class 30: Tea NO LOC
Class 9: Credit cards NO LOC
COSMEGLOW COSMESHOW Class 3: Cosmetics LOC
Class 11: Refrigerators LOC
Class 43: Holiday accommodation services LOC
3 For the purpose of the common Practice, all the other factors which may be r elevant for the global appreciation of LoC are deemed not to affect the outcome. Also it is considered that the goods and services are identical.
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6.2. Common components with no distinctiveness
According to the Common Practice, when marks share an element with no distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. The assessment will take into account the similarities/differences and distinctiveness of the non-coinciding components.
A coincidence only in non-distinctive components does not lead to likelihood of confusion. However, when marks also contain other figurative and/or word elements which are similar, there will be likelihood of confusion, if the overall impression of the marks is highly similar or identical.
The following are examples agreed in the context of the Common Practice, where the common component(s) is/are considered possessing no distinctiveness4:
4.For the purpose of the Common Practice, all the other factors which may be relevant for the global appreciation of LoC are deemed not to affect the outcome. Also it is considered that the goods and services are identical
Earlier mark Contested mark Goods/services Outcome
GREENGRO GREENFLUX
Class 19: Building materials Class 37:
Construction services
NO LOC
BUILDGRO BUILDFLUX
Class 19: Building Materials Class 37:
Construction Services
NO LOC
Class 9: Mobile phones NO LOC
Class 36: Financial Services NO LOC
Class 29: Fish NO LOC
CRE-ART PRE-ART Class 41: Artgallery services LOC
TRADENERGY TRACENERGY
Class 9: Solar energy collectors
for electricity generation
LOC
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7 Specific Cases
7.1 Short signs
As indicated elsewhere in this section, the Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case, including the degree of similarity between the signs. The Court has also held that the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks.
The length of the signs may influence their overall impression and thus the effect of the differences between them. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements. In contrast, the public is usually less aware of differences between longer signs. However, each case must be judged on its own merits, having regard to all the relevant factors.
The Courts have not exactly defined what a short sign is. However, signs with three or less than three letters/numbers are considered by the Office as short signs. The paragraphs below thus analyse the likelihood of confusion for one-, two- and three- letter/number signs.
7.1.1 Single-letter / Single-number signs
It should be noted that the General Court held that the global assessment of the likelihood of confusion between signs consisting of a single letter (or a combination of letters not recognisable as a word) follows the same rules as that in respect of word signs comprising a word, a name or an invented term (see judgment of 06/10/2004, joined cases T-117/03, T-118/03 T-119/03 and T-171/03 NL SPORT, NL JEANS, NL ACTIVE, NL COLLECTION, paras 47 and 48, and judgment of 10/05/2011, T-187/10, ‘G’, para. 49).
In the assessment of the likelihood of confusion it is important to establish the degree of inherent distinctiveness of the earlier trade mark, and therefore its scope of protection. See in this respect The Guidelines, Part C, Opposition, Section 2, Double Identity and Li kelihood of Confusion, Chapter 4, Distinctiveness and t he specific section on short signs.
As to the overall assessment of likelihood of confusion, the Court made it clear that the fact that two trade marks consisting of the same letter (or of the same sequence of letters) are found to be identical from an aur al and a c onceptual point of view is relevant when it comes to assessing the existence of a likelihood of confusion. In such cases, it is only when the later trade mark causes a sufficiently different visual
Class 9: Solar energy collectors
for electricity generation
LOC
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impression that a likelihood of confusion can be safely ruled out (see the already cited judgment T-187/10, ‘G’, para. 60).
Consequently, a l ikelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of the same single letter, are stylised in a sufficiently different way or contain a sufficiently different figurative element, so that their different overall graphical representation eclipses the common verbal element.
Where the opponent has successfully proven that its single-letter mark has acquired enhanced distinctiveness through intensive use or reputation, the impact thereof on the final outcome has to be c arefully assessed. Firstly, enhanced distinctiveness on the part of the earlier single-letter mark can not justify a finding of a likelihood of confusion if the overall visual impression of the signs is so different as to safely set them apart. Secondly, if the evidence shows use of a single-letter mark stylised or accompanied by additional figurative elements, the benefit of the resulting broader scope of protection accrues to the form in which it was used and not to the single letter as such or any other stylised variation.
In the following examples, a likelihood of confusion was found due to the similarity between the overall graphic representations of the signs:
Earlier sign Contested sign Case No
T-115/02
G&S: Classes 9, 16, 25, 35, 41 Territory: EU Assessment: Having regard, first, to the strong similarity between the conflicting signs and, second, to the similarity between the goods concerned, limited though it may be in the case of footwear and clothing, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public (para. 27) – LOC.
Earlier sign Contested sign Case No
A R 1508/2010-2
G&S: Classes 9, 18, 24, 25, 28 Territory: Germany Assessment: It must be assumed that the earlier German mark has the required distinctiveness for protection as a trade mark. The signs are similar and the goods identical (paras 18 and ff.) – LOC
Earlier sign Contested sign Case No
(i)
(ii) T-187/10
(appeal dismissed C-354/11 P)
G&S: Classes 9, 18, 25 Territory: EU, Italy Assessment: The overall impression of the signs in dispute was considered similar. Having regard to the similarity of signs, the reputation of the earlier sign as an abbreviation of the trade mark Gucci, and the identity of the products, there was LOC
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On the other hand, in the examples below no likelihood of confusion was found due to the different stylisations or graphic elements of the single-letter signs:
Earlier sign Contested sign Case No
R 1655/2006-4
G&S: Class 25 Territory: Spain Assessment: The letter “M” was considered to be viewed by Spanish consumers as referring to the size of an item of clothing. Its distinctive character was low (para. 21) – NO LOC.
Earlier sign Contested sign Case No
A T-174/10(appeal dismissed C-611/11 P)
G&S: Classes 18, 25 Territory: Germany Assessment: The Court concluded NO LOC on the basis of the particular graphic design of the contested trade mark and the fact that the public would not pronounce the contested trade mark given the particular graphic design – NO LOC.
Earlier sign Contested sign Case No
F R 1418/2006-2
G&S: Class 25 Territory: EU Assessment: The Board finds that the visual differences between the signs will counterbalance the identical nature of the goods (para. 26) – NO LOC.
Earlier sign Contested sign Case No
R 576/2010-2 (confirmed by T-593/10)
G&S: Classes 25, 41, 43 Territory: Germany Assessment: The Board finds that the different visual overall impression of the signs will counterbalance the identical nature of the goods (paras 19-21) – NO LOC.
Lastly, it should be pointed out that the verbal representation of ‘one-letter / one-digit sign’ is not to be considered equivalent to the sign (e.g. ‘ONE’ is not equal to ‘1’ or ‘EM’ to ‘M’). Therefore, the aforementioned arguments are not directly applicable to such cases5.
5 See The Guidelines Concerning Proceedings Before the Office, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 3, Comparison of Signs.
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7.1.2 Two-letter / number signs
Unless the letter combination as such is intrinsically weak for the goods and services (e.g. ‘XL’ for goods in Class 25), two-letter/number signs are not necessarily distinctive to a low degree. However, it must nevertheless be taken into account that consumers frequently encounter abbreviations and letter combinations of all kinds in everyday life and in business.
The abovementioned rules for single letters/numbers marks apply to two-letter/number signs: in general, no likelihood of confusion will arise between two-letter/number signs that are stylised in a different way or consist of different graphic representations of the same letters/numbers so they cause a sufficiently different visual impression.
Consequently, a likelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of the same combination of two-letters, are stylised in a sufficiently different way or contain a sufficiently different figurative element, so that their different overall graphical representation eclipses the common verbal element.
In the following examples, likelihood of confusion was found due to the similar overall visual impression of the same two-letter combinations:
Earlier sign Contested sign Case No
(i)
(ii) B 61 046
G&S: Class 36 Territory: Spain Assessment: The overall visual impression of the conflicting marks is that they consist of two letters in an arbitrary figurative design which conveys the same impression. The trade marks are considered similar and the services identical – LOC.
Earlier sign Contested sign Case No
GE T-520/11
G&S: Classes 6, 7, 9. 11, 17 Territory: UK Assessment: It cannot be excluded that part of the relevant public will interpret the contested mark as the letter combination ‘GE’ (paras. 33-35). Given that the goods are identical, and the marks are phonetically identical and visually similar to a medium degree, there is a likelihood of confusion, which cannot be excluded even for an informed public whose level of attention is high (para. 60) – LOC.
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In the following example, no likelihood of confusion was found due to the different graphic representation of the same letters:
Earlier sign Contested sign Case No
(i)
(ii) R 0082/2011-4
G&S: Class 33 Territory: EU Assessment: The graphical design in which the letter combinations appear strongly influences the consumer’s perception. The distinctive character of the conflicting marks to a large extent rests on their specific graphic elements (para. 16) – NO LOC.
Differences in one of the letters will normally lead to no likelihood of confusion:
Earlier sign Contested sign Case No
(i) CX
(ii) KX R 0864/2010-2
G&S: Class 7 Territory: EU Assessment: In terms of the overall impression and applying the interdependence principle, the Board confirmed that the difference in the first letter is sufficient to exclude LOC on t he part of the public concerned, taking into account that the relevant public is particularly attentive (para. 28) – NO LOC.
Earlier sign Contested sign Case No
KA T-486/07
G&S: Classes 9, 11, 12 Territory: EU Assessment: While the relevant consumer only rarely has the chance to make a direct comparison between the different signs and must rely on an imperfect recollection of them, as the applicant has submitted, in the present case, given the important visual differences between the marks at issue, the fact that the goods at issue are generally purchased after they have been seen and the high level of attention of the relevant consumer, it must be held that the relevant consumer will not confuse the marks at issue despite the lack of direct comparison between the different marks (para. 95) – NO LOC.
7.1.3 Three-letter / number signs
When the signs in conflict are three-letter/number signs, there seems to be a tendency to find likelihood of confusion where the only difference lies in one phonetically similar letter so that the overall impression of the signs is still similar.
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In the following cases, the outcome was likelihood of confusion:
Earlier sign Contested sign Case No
ELS T-388/00
G&S: Classes 16, 35, 41 Territory: Germany Assessment: Two of the three letters are identical and in the same sequence; the difference in a single letter does not constitute a significant visual and aural difference. The letters “E” and “I” in Germany are pronounced similarly (paras 66-71) – LOC.
Earlier sign Contested sign Case No
Ran R.U.N. T-490/07
G&S: Classes 35, 38, 42 Territory: EU, Germany Assessment: The Court held that the signs in the mind of the relevant consumer, having a good command of the English language, are similar (para. 55) and that, due to the similarity between the signs and between certain products and services, there exists a likelihood of confusion in the mind of the relevant public (para. 71) – LOC.
In contrast, in the following cases the outcome was no likelihood of confusion:
Earlier sign Contested sign Case No
(i)
(ii)
(iii)
R 0393/1999-2
G&S: Class 25 Territory: Benelux, Germany, Spain, France, Italy, Portugal, Austria Assessment: When trade marks are composed of only three letters, with no meaning, the difference in one letter may be sufficient to render them not similar, especially when the first letter is different and the marks in dispute include figurative elements that appear visually different. In this case the pronunciation of the first letters of the marks in dispute, i.e. J and T, is different in all relevant languages. These letters are also visually dissimilar. Further, the figurative elements of the compared marks do not resemble each other (paras 17 and 18) – NO LOC.
Earlier sign Contested sign Case No
COR T-342/05
G&S: Class 3 Territory: Germany Assessment: The GC considered that the signs were only aurally lowly similar (para. 47, 50). The relevant public in Germany will certainly notice the differences in the beginning of the signs – NO LOC.
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7.2 Name/Surnames
7.2.1 Names
In principle, there are no specific criteria to be taken into account when likelihood of confusion between names is assessed. However, because of the very nature of names and surnames, there are certain aspects that come into play (as we shall see below), such as whether a g iven name and/or surname is common or not in the relevant territory, that have to be carefully considered and balanced.
7.2.2 Business names in combination with other components
When assessing likelihood of confusion in relation to composite signs that contain several verbal elements, one of which might be seen as being a business name, i.e. indicating the company ‘behind’ the trade mark, an overall assessment must be done in order to identify which element functions as the trade mark of the goods and services concerned. Factors to be taken into account include the distinctiveness of each element as well as the size and/or space they occupy in a f igurative mark, which determine the dominant element of the conflicting signs.
Where the business name is not the dominant element, although each of the elements making up the sign might have their own independent distinctive role, consumers are likely to focus more on the element that would be s een as identifying the specific product line rather than on the element that would be perceived (because it is preceded by ‘by’ or another equivalent term) as identifying either the company who has control of the products concerned or the designer who created the product line.
Therefore, whenever there is a sufficient degree of similarity between the component that would be perceived as the trade mark and a conflicting sign, in principle there will be likelihood of confusion (provided the other relevant factors are met).
Earlier sign Contested sign Case No
T-43/05
G&S: Class 25 Territory: Denmark, Finland, Sweden Assessment: ‘The element “by CAMPER” will be perceived as subsidiary, also due to the fact that the relevant public will perceive it as a mere indication of the undertaking producing the goods in question.’ Therefore, the relevant consumer will focus their attention on the word ‘BROTHERS’ and might attribute a common origin to the goods concerned (paras. 65 and 86) – LOC.
7.2.3 First and family names
The perception of signs made up of personal names may vary from country to country within the European Union. Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people that have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between
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them (identity of the persons or a family link). In determining whether, in a par ticular country, the relevant public generally attributes greater distinctiveness to the surname than the forename, the case-law of that country, although not binding on the OHIM and the Community courts, may provide useful guidelines (judgment of 01/03/2005, T-185/03, ‘Enzo Fusco’, para. 52).
There are instances where the applicants invoke, as a defence, their right to use their name. However, such arguments are not valid in opposition proceedings, since it does not influence the issue of whether there will be likelihood of confusion on the part of the public. Furthermore, the registration of trade marks does not hinder the use of personal names due to the special protection which is provided for in Article 12(a) CTMR and in the relevant national trade mark laws according to Article 6(1)(a) of the Trade Mark Directive.
• First name against the same first name or slight variations thereof
The rule of thumb is that when two conflicting signs consist exclusively of the same first name, consumers are likely to perceive the similar/identical goods/services marketed under those marks as coming from the same source. It is clear that in the absence of any differentiating element, likelihood of confusion is the necessary conclusion.
Earlier sign Contested sign Case No
GIORDANO GIORDANO T-483/08
G&S: Classes 18, 25 Territory: Portugal Assessment: The two word marks at issue are identical, which increases the likelihood that consumers might perceive the goods marketed under those marks as coming from the same source. Moreover, the applicant has not shown that the Italian first name ‘Giordano’ which makes up bot h trade marks is common in Portugal (para. 32) – LOC.
Earlier sign Contested sign Case No
ELISE T-130/09
G&S: Classes 9, 42 Territory: Portugal Assessment: The Court considers that even if it is not certain that the relevant public throughout the European Union will necessarily perceive the signs at issue as being specifically diminutives of the name ‘Elizabeth’, the relevant public will certainly regard them as highly similar female names derived from the same root. In certain Member States, notably the United Kingdom, Ireland, Germany and Austria, they will certainly be perceived by the relevant public as being diminutives of the full forename Elizabeth (para. 36) – LOC.
Earlier sign Contested sign Case No
GISELA GISELE R 1515/2010-4
G&S: Class 25 Territory: EU Assessment: The compared marks are both variations of the female first name Giselle of old German and French origin and they are overall very similar, so that a likelihood of confusion exists (paras. 14, 15 and 20) – LOC.
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• First name against identical first name plus surname
Whenever two signs share the same first name and one o f the two also contains a surname, and when the first name is likely to be perceived as a common (let alone very common) name in the relevant territory, the rule of thumb is that there will be no likelihood of confusion, since consumers will be aware that there are many people with that name.
Earlier sign Contested sign Case No
LAURA LAURA MERCIER R 0095/2000-2
G&S: Class 3 Territory: Spain Assessment: In the Board’s view, the average Spanish consumer who is familiar with the trade mark ‘LAURA’ for perfumes will not be confused. Conceptually, ‘LAURA’ will be seen as a common first name in Spain. It is highly unlikely that the average Spanish consumer would consider linking the more specific name ‘LAURA MERCIER’ with ‘LAURA’ (para. 16) – NO LOC.
An exception applies when a given first name is likely to be perceived as uncommon in the relevant territory. In such cases, the presence of this uncommon element is likely to focus the consumers’ attention and they could be misled into attributing a common origin to the goods/services concerned.
Earlier sign Contested sign Case No
AMANDA AMANDA SMITH R 1892/2007-2
G&S: Classes 29, 30 Territory: Spain Assessment: The term ‘SMITH’ in the trade mark application will be per ceived by the Spanish consumers as a common Anglo-Saxon surname and will have less weight than the first name ‘AMANDA’ (which is less common in Spain) (para. 31) – LOC.
Earlier sign Contested sign Case No
ROSALIA ROSALIA DE CASTRO T-421/10(appeal dismissed C-649/11P)
G&S: Classes 32, 33, 35 Territory: Spain Assessment: The signs are visually and conceptually similar, and aurally very similar. The products are identical. The services are similar. Neither the name ROSALIA nor the surname DE CASTRO is common in Spain. None of these elements has a higher distinctive character than the other (paras 50 and 51) – LOC.
A further exception applies in those cases where the public would take/use the first name of a f amous person for the complete name and w here the goods/services relate to the field of activity of that person, or where the earlier mark, consisting of a first name only, has acquired a high degree of distinctiveness.
Earlier sign Contested sign Case No
KENZO KENZO TAKADA R 643/2003-1
G&S: Classes 3, 25, 42 Territory: EU Assessment: The average consumer, who will remember the word ‘KENZO’, which is particularly distinctive because it is so well known, will tend, on coming across goods or services designated by the mark ‘KENZO TAKADA’, to attribute to them the same commercial origin as the goods or services sold
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under the ‘KENZO’ mark. This likelihood is all the more real since it is common in the fashion, cosmetics and perfumes sector for the same mark to be configured in various different ways according to the type of product that it designates (p. 22) – LOC.
• First name plus surname against identical first name plus different surname
When two conflicting signs contain the same first name but are followed by clearly different surnames, the rule of thumb is that there is no likelihood of confusion. Consumers will realise that they distinguish goods/services of different, unconnected undertakings.
Invented example: ‘Michael Schumacher’ / ‘Michael Ballack’ (no likelihood of confusion).
However, when the overall impression created by the signs is one of clear similarity, i.e. the differences between the signs are lost in the overall perception caused by the signs, then, applying the normal criteria, the outcome will be that there is likelihood of confusion.
Earlier sign Contested sign Case No
(Emidio Tucci fig.)
T-8/03 and joined cases R 700/2000-4 and
R 746/2000-4 Confirmed by C-104/05 P
G&S: Classes 3, 18, 24, 25 Territory: Spain Assessment: Both marks consist of the combination of a first name and a surname and make a similar overall impression – LOC.
• First name plus surname against different first name plus identical surname
When the conflicting signs contain the same surname preceded by different first names, the outcome will very much depend on t he perception of the surname in the relevant territory. The less common a surname is, the more likely that it will focus the consumers’ attention (regardless of whether the first names are common or not).
Earlier sign Contested sign Case No
ANTONIO FUSCO ENZO FUSCO T-185/03
G&S: Classes 18, 25 Territory: Italy Assessment: Since it was contested that ‘Fusco’ was not one of the most common surnames in Italy, the Court considered that since the Italian consumer generally attributes greater distinctiveness to the surname than the forename, it will keep in mind the (neither rare nor common) surname ‘Fusco’ rather than the (common) forenames ‘Antonio’ or ‘Enzo’. Therefore, a consumer faced with goods bearing the trade mark applied for, ENZO FUSCO, might confuse it with the earlier trade mark, ANTONIO FUSCO, so that there is a likelihood of confusion (paras. 53 and 67) – LOC.
In contrast, when two marks have the same surname and this is likely to be perceived as common (let alone very common) in the relevant territory, consumers will not normally be misled into attributing a common origin to the goods/services concerned
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(judgment of 01/03/2005, T-169/03, ‘Sissi Rossi’, paras. 82 and 83; judgment of 24/06/2010, C-51/09 P, ‘Barbara Becker’, para. 36). Consumers are used to trade marks which contain common surnames and will not blindly assume that every time a common surname occurs in two conflicting signs the goods/services in question all emanate from the same source.
Earlier sign Contested sign Case No
VITTORIO ROSSI R 0547/2010-2
G&S: Classes 18, 25 Territory: EU Assessment: Not only are consumers throughout the Community aware of the fact that people share the same surname without being necessarily related, but they will also be a ble to distinguish the Italian surname ‘ROSSI’ bearing two different first names in the fashion field (paras. 33-35) – NO LOC.
• First name plus surname against different first name plus identical surname conjoined in a single word
In cases where one of the conflicting signs consists of a name and surname and the other of a single word that will however be broken down into separate components by at least part of the relevant public, due to the recognisable presence of a name and surname combined to form the one word making up that sign, the result will be one of likelihood of confusion whenever the overall impression created by the marks is one of similarity.
Earlier sign Contested sign Case No
PETER STORM Peerstorm T-30/09
G&S: Class 25 Territory: EU Assessment: Both of the marks at issue are made up of a first name and a s urname. It is common ground that the element ‘storm’ in the two marks at issue can be a surname. The elements ‘peer’ and ‘peter’ in the mark applied for and the earlier mark respectively are first names. In particular in the Nordic countries and in Germany, Peer is a first name. The fact that the mark applied for is written as one word cannot cast doubt on the finding that the two marks at issue are made up of a first name and a surname (para. 66) – LOC.
• Surname against first name plus identical surname
When two signs contain the same surname but only one of them also contains a given first name, the rule of thumb is that normally there will be likelihood of confusion. Consumers might be misled and attribute a common origin to the goods/services concerned. The presence of a first name in one of the conflicting signs will not suffice to safely distinguish the signs in the minds of the consumers. The surname alone will be perceived as the short version of the full name, thus identifying the same origin.
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Earlier sign Contested sign Case No
MURÚA T-40/03
G&S: Class 33 Territory: Spain Assessment: It is common ground that the Spanish public will perceive the verbal element making up the trade mark applied for as a proper name (first name plus surnames) and the earlier trade mark as a surname. It is quite likely that the relevant public will regard the addition, in the trade mark applied for, of the first name ‘Julián’ and the surname ‘Entrena’ merely as a way of distinguishing a range of wines produced by the undertaking that owns the earlier trade mark or, at least, an undertaking economically linked to the intervener (paras. 42 and 78) – LOC.
Earlier signs Contested sign Case No
BRADLEY VERA BRADLEY R 1918/2010-1
G&S: Class 11 Territory: EU Assessment: The sign for which the CTM applied for seeks protection consists of the term ‘Vera Bradley’, which will most probably be seen as the name (forename and family name) of a person, fictitious or real. It is composed of the first name ‘VERA’, which is a common name for women in many EU countries such as, e.g. in the Czech Republic, Germany, Ireland, the Netherlands, Austria, Slovenia, and the United Kingdom, and the surname ‘BRADLEY’, which is an English family name. The latter surname is not a common family name, neither in English-speaking countries nor in any other countries within the European Union. Even if consumers might be able to distinguish between the signs due to the element ‘Vera’, which has no counterpart in the earlier trade mark, they will see a specific line of products or an ex tended form of the mark. Consequently, consumers might believe that the trade marks belong to the same undertakings or economically linked undertakings (paras. 36-37 and 52) – LOC.
7.3 Beginning of marks
In word signs, the first part is generally the one that primarily catches the consumer’s attention and therefore will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgment of 15/12/2009, T-412/08 ‘Trubion’, para. 40, judgment of 25/03/2009 T-109/07 ‘Spa Therapy’, para. 30).
Nevertheless, the concept ‘beginning of the sign’ is undetermined, as there is no particular indication of what forms the beginning, what is the end or even if there is or is not a middle part of the sign. Again, this perception mostly depends on the circumstances of the case (length of sign, syllabic distribution, use of typeface, etc.) and not on a set rule. It could even be that a sign is perceived as having a short beginning and endi ng and a pr oportionally much bigger middle or central part. Consequently, depending on the circumstances, the rule of the relevance of the beginning of the sign could have less weight to the benefit of a more relevant central part.
As it is usually the beginning of a sign which catches consumers’ attention, where signs only differ in their endings, this difference is often insufficient to exclude similarity. However, this is not a fixed rule and the outcome depends on the circumstances of the case. Moreover, this rule only applies when the sign contains a verbal element (which
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would explain the reading from left to right) and when this verbal element is not very short (otherwise the sign will be perceived immediately in its entirety). Very short signs are signs consisting of three or fewer letters/numbers (see paragraph 6.1 above).
In the following examples, likelihood of confusion was found:
Earlier sign Contested sign Case No
ALENTIS ALENSYS R 1243/2010-1
G&S: Class 42 Territory: Spain Assessment: The trade marks are visually and phonetically highly similar, in particular because they coincide in their first four letters ‘ALEN’. It is generally accepted that people pay more attention to the first part of a trade mark, at least when they perceive the mark visually (para. 33) – LOC.
Earlier sign Contested sign Case No
AZURIL AZULIB R 1543/2010-1
G&S: Class 5 Territory: Greece Assessment: The signs share five of their six letters and the first two syllables are identical. There is a certain degree of visual similarity. Aurally the signs are highly similar as the initial part, which is normally the most important, is identical. Neither sign has a meaning in Greek, The similarity of the signs, combined with the identity or similarity of the ‘pharmaceutical products’, leads to confusion (paras. 35- 36) – LOC.
In the following examples, the outcome was no likelihood of confusion despite identical beginnings. In some of these cases, the identical beginnings were in fact a weak element in the signs; in others, despite identical beginnings, the conceptual differences outweigh the similarities for a finding of no likelihood of confusion.
Earlier sign Contested sign Case No
CALSURA CALSORIN R 0484/2010-2
G&S: Class 5 Territory: EU Assessment: The initial ‘CALS’ (bringing to mind ‘calcium’) is not particularly distinctive, but must be considered as a weak trade mark element in relation to the goods at issue (para. 24) – NO LOC.
Earlier sign Contested sign Case No
NOBLESSE NOBLISSIMA R 1257/2010-4
G&S: Class 30 Territory: Denmark, Finland, Sweden Assessment: The signs differ in the fifth letter and in their ending. They are visually similar to an average degree. In view of the length of the CTMA, the signs differ in rhythm and intonation and are thus aurally similar to a low degree. The earlier signs ‘NOBLESSE’ do have a clear connotation in both Finland and Sweden. In these territories, the word ‘NOBLISSIMA’ lacks any meaning. They are therefore conceptually dissimilar. The earlier marks are laudatory in nature and to a certain extent descriptive of the characteristics of the goods ‘chocolate’, namely describing their superior character. The distinctive character is below average. Taking into account the low level of similarity between the goods ‘chocolate’ and ‘edible ices’ (Class 30), the low level of aural similarity and the conceptual dissimilarity, there exists no LOC (para. 36) – NO LOC.
Earlier sign Contested sign Case No
ALBUMAN ALBUNORM R 0489/2010-2
G&S: Class 5 Territory: EU Assessment: Visually, phonetically and conceptually the signs are similar in so far as they have the prefix ‘ALBU’ (abbreviation of ‘albumin’ or ‘albumen’) in common. But this similarity is of little significance
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because the prefix is generic and so devoid of distinctiveness. The second element of the earlier mark, ‘MAN’, is visually, phonetically and conceptually completely different from the second element, ‘NORM’, of the contested mark. Taking into account how highly attentive and well informed consumers being guided by professionals in the medical field are supposed to be, even if applied to the identical goods in Class 5, there is no LOC. (para. 41) – NO LOC.
7.4 Composite signs
For ‘composite’ signs (signs composed of more than one el ement e.g. verbal and figurative elements, multi-part word signs), the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 12/06/2007, C-334/05 P ‘Limoncello’, para. 35).
This rule applies when an element or the whole of a sign is totally or partially included in the other sign:
… assessment of the similarity between two marks means more than taking just one c omponent of a c omposite trade mark and c omparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a w hole (C-334/05 P, ‘Limoncello’, para. 41).
Still, the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components.
In addition, the distinctive character of the overlapping/common elements has a decisive impact on the similarity of the signs as a part of the general assessment of the likelihood of confusion (for further details see paragraph 6 above).
7.4.1 Signs containing figurative and verbal components
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (judgment of 14/07/2005, T-312/03 ‘Selenium-Ace’, para. 37; decision of 19/12/2011, R 0233/2011-4, ‘Best Tone’ para. 24; decision of 13/12/2011, R 0053/2011-5 ‘Jumbo’, para. 59).
However, the verbal element of a sign does not automatically have a stronger impact (see judgment of 31/01/2013, T-54/12, ‘K2 SPORTS’, para. 40). The visual impression of a sign may play an important role in its perception by the relevant public, for example when Class 25 goods are at issue.
Besides, the fact that the verbal element may have a stronger impact is a different issue from dominance. The verbal element of a complex sign is not systematically dominant. It is dominant if it is visually outstanding.6
6 See The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 5: Dominant Elements.
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Moreover, in assessing the impact of the verbal element of a c omplex trade mark, account should be taken of the distinctiveness of this element7.
• Signs with an identical or very similar verbal element and different figurative elements
A finding of likelihood of confusion is normally reached when the verbal elements are identical or similar and the figurative element has neither semantic meaning nor striking stylisation. In this scenario, the figurative element will be c onsidered not to have a significant influence in the relevant public’s perception of the sign.
In the following examples, likelihood of confusion was found since the verbal elements were identical or similar and t he figurative elements were weak or not particularly fanciful.
Earlier sign Contested sign Case No
COTO DE IMAZ EL COTO
T-276/10 (invalidity proceedings)
G&S: Class 33 Territory: EU Assessment: The GC considered that the figurative element of the contested sign was weak for the relevant goods and therefore did not have a s trong impact on t he overall perception of the sign (para. 45) – LOC.
Earlier sign Contested sign Case No
( i )
( i i ) PUKKA T-483/10
G&S: Class 18 Territory: Spain, EU Assessment: The figurative elements of the earlier Community trade mark – namely, the oval and the geometric shape vaguely recalling a five-point star superimposed thereon – do not convey any identifiable conceptual content. Consequently, it is highly unlikely that these figurative elements will hold the attention of the relevant consumer. By contrast, although the verbal element does not convey any
7 See The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 4: Distinctiveness.
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conceptual content either, the fact remains that it may be read and pronounced and that it is, therefore, likely to be remembered by consumers. Therefore, the verbal element of the earlier Community trade mark must be considered to dominate the visual impression made by that mark (para. 47) – LOC.
In contrast, when the common verbal elements are likewise weak or even less distinctive than the figurative elements, the differences in the figurative elements may tip the balance for no likelihood of confusion:
Earlier sign Contested sign Case No
T-60/11
G&S: Classes 30, 31, 42 Territory: EU Assessment: The word element ‘premium’ in this case does not lead to a finding of likelihood of confusion, even where the goods are identical. The similarity of the marks is based solely on a word that has no distinctive character and would not be r emembered by consumers as the key element of the marks at issue. (para. 53) – NO LOC.
(i)
(ii) THE NATURAL CONFECTIONERY
CO.
R 1285/2009-1 (invalidity)
G&S: Class 29 (sweets and sugar confectionery) Territory: EU Assessment: Although the word ‘NATURAL’ occupies a substantial part of the marks, consumers will not see it as a distinctive element (para. 25) Although the goods at issue are identical, the overall impression given by the marks at issue would not give rise to a likelihood of confusion in the minds of the relevant public. Faced with the two signs at issue it would be absolutely impossible for the relevant public to establish a link between them giving rise to a likelihood of confusion based on the presence in both of the descriptive word ‘NATURAL’ causing the public to believe that the goods concerned came from the same undertaking or from economically-linked undertakings (para. 33) – NO LOC.
Earlier sign Contested sign Case No
(i)
(ii) R 0745/2009-2
G&S: Classes 3, 9, 35 Territory: Spain Assessment: The conceptual differences outweigh the visual and aural similarities. Moreover, the BoA considered the term ‘AROMA’ to be generic for the relevant goods (para. 31) – NO LOC.
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Earlier sign Contested sign Case No
R 1321/2009-1
G&S: Classes 19, 35 Territory: EU Assessment: The weakness of the verbal element ‘PreTech’ of the earlier mark and the significant visual differences between the two conflicting signs attenuate the effect of the aural similarity. Furthermore, the degree of aural similarity between two signs is of less importance where the relevant public sees the name of a mark on the goods and services which it buys, as can be expected in the present case (para. 27) – NO LOC.
Earlier sign Contested sign Case No
R 1357/2009-2
G&S: 5, 29, 30, 32 Territory: EU Assessment: The BoA took into account the non-distinctive and descriptive character of the word ‘Lactofree’ for the relevant goods. The Board found that the notable visual and conceptual differences between the signs would counterbalance the partially identical and partially similar nature of the goods (para. 98) – NO LOC.
• Signs with an identical or very similar figurative element and different verbal elements
In general, the identity or similarity of the figurative component of the signs is insufficient to establish similarity in cases where at least one of the signs contains a further verbal component that is not contained in the other sign. The outcome will however depend on the particular circumstances in each individual case.
In the following examples, due to the aural and conceptual differences no likelihood of confusion was found despite the visual similarities of the signs.
Earlier sign Contested sign Case No
(IBIZA REPUBLIC)
T-311/08
G&S: Classes 25, 41, 43 Territory: France Assessment: Taking into account the phonetic and conceptual dissimilarities and low degree of visual similarity between the signs, the lack of enhanced distinctiveness for the earlier mark and the dominant character of the verbal element in the mark applied for, the Board was not mistaken in considering that there was not a likelihood of confusion even in the presence of identical goods (para. 58) – NO LOC.
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Earlier sign Contested sign Case No
R 0280/2009-4
G&S: Classes 16, 36, 41 Territory: Germany Assessment: The only thing the two signs have in common is that they depict a c ross with eight characteristic points, known as a ‘Maltese cross’, referring to the Order of Malta. Even in the area in question, ‘charitable fundraising; education, periodicals; medical services’ (Classes 16, 36, 41, 45), the specific Maltese cross shape is not used exclusively by the appellant. The CTMA contains the unreservedly distinctive word sequence ‘Pro concordatia populorum’ and cannot be r educed to its figurative element. The signs are also dissimilar phonetically, as the opposing sign has no v erbal elements. There is no conceptual similarity, as the CTMA means ‘for the understanding of the peoples’, a phrase that has nothing in common with the earlier sign. Therefore, there can be no LOC, even in the case of the identical goods found only in Class 16 – NO LOC.
Earlier sign Contested sign Case No
R 1373/2009-2
G&S: Classes 9, 12, 14, 18, 22, 25, 28 Territory: EU Assessment: In the Board’s view, bearing in mind the low distinctive power of the similar figurative components of the marks, and the main distinctive role played by the verbal component in the applicant’s sign, there is no LOC despite the identity or similarity of the contested goods in Classes 9, 12, 14, 18, 22, 25 and 28 – NO LOC.
A finding of likelihood of confusion is possible, however, in cases of a clear dominant character of the common figurative component and neg ligible consideration of the dissimilar verbal element or due to the limited distinctiveness of the verbal component:
Earlier sign Contested sign Case No
Joint R 0068/2001-4 and R 0285/2001-4
G&S: Classes 18, 24, 25, 28 Territory: Benelux, Germany, Spain, France, Italy, Austria Assessment: The respective trade marks coincide in that one consists of an animal’s paw print and the other includes an animal’s paw print. There are differences between the devices, e.g. the opponent’s registrations include claws. However, the overall impression is of a paw print in black. The verbal element of the contested application is not present in the opponent’s trade mark. In a French linguistic context, the verbal element of the contested application will be s een to mean, as stated by the applicant, ‘the fake fur house’. As such it is an element with inherently very limited distinctiveness – LOC.
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In other cases, the figurative element may ‘cooperate’ with the verbal part in defining a particular concept and may even help with the understanding of words that, in principle, might not be w idely known to consumers. Therefore, in the following examples, likelihood of confusion was found despite the verbal element being present only in one of the signs:
Earlier sign Contested sign Case No
B 210 379
G&S: Class 3 Territory: Germany, Spain Assessment: The signs were considered sufficiently similar for LOC based on identity of goods as the figure of a moon, present in both signs, made the equivalence between the Spanish and English words ‘LUNA’ and ‘MOON’ clearer to Spanish consumers – LOC.
Earlier sign Contested sign Case No
R 1409/2008-2
G&S: Classes 18, 25, 35 Territory: EU Assessment: Visually, the trade marks are highly similar. An aural comparison is not possible. Conceptually, the word ‘horse’ means ‘cheval’ in the language of the case (French). This element will be understood by English-speaking consumers as a direct reference to the figurative element of the contested CTM. Therefore, the marks are conceptually identical. Considering the fact that the average consumer does not, as a rule, have the chance to make a direct comparison between the marks and given the principle of interdependence of the factors, there is a likelihood of confusion between the signs when applied to the identical goods in Classes 18 and 25 – LOC.
7.4.2 ‘Multi-part’ word signs
In these cases the whole sign or just one of its components is fully incorporated in the other sign, i.e. the earlier sign (or a component thereof) is fully included in the contested sign or vice-versa.
The most frequent and problematic type of case concerns one word against two words. This may lead to a similarity of the trade marks and result, together with other factors, in a likelihood of confusion, as stated by the Courts in the following cases:
… the fact that [a mark] consists exclusively of the earlier … mark, to which another word … has been added, is an indication that the two trade marks are similar.
(See judgment of 04/05/2005, T-22/04 ‘Westlife’, para. 40.)
… where one of the two words which alone constitute a w ord mark is identical, both visually and aurally, to the single word which constitutes an earlier word mark, and where those words, taken together or in isolation,
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have no conceptual meaning for the public concerned, the marks at issue, each considered as a whole, are normally to be regarded as similar.
(See judgment of 25/11/2003, T-286/02, ‘KIAP MOU’, para. 39.)
In the following judgment a further criterion (an independently distinctive role of the common element) was mentioned:
… where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark that has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.
(See judgment of 06/10/2005, C-120/04 ‘Thomson Life’, para. 37.)
When assessing whether the coincidence in a verbal element may lead to a similarity of the signs and (together with further relevant factors) to likelihood of confusion, two factors are of importance: whether the common element is (a) recognisable and (b) has an independent distinctive role.
• Recognisable element
It is of particular importance whether the common word can be identified in an isolated manner in the composite mark, either because it is separated by a space or hyphen, or is otherwise (because of its clear meaning) identified as an individual element.
An average consumer perceiving a word sign will break it down into elements which suggest a c oncrete meaning or resemble known words (judgment of 06/10/2004, T-356/02 ‘Vitakraft’, para. 51, confirmed by C-512/04 P).
On the other hand, mere coincidence in a string of letters is not enough for similarity. Decisions should not be based on the mere fact that one sign is ‘contained’ in the other.
In the following examples the coincidence is clearly perceived since the common part is a separate word:
Earlier sign Contested sign Reason Case No
CENTER CENTER SHOCK The earlier TM corresponds to the firstword of the CTMA – LOC. C-353/09
SCHUHPARK JELLOSCHUHPARK The earlier TM is identical to the second word of the CTMA – LOC. T-32/03
FLEX FLEXI AIR The CTMA consists essentially of the word “flex” (para. 64) – LOC.
T-112/03 (confirmed by C-235/05P)
In the following examples the common element is a par t of a w ord, but could be identified since the public will logically split the word according to the meaning of its elements:
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Earlier sign Contested sign Reason Case No
CADENACOR COR Spanish-speaking public will identify the elements ‘cadena’ and ‘cor’ in the earlier TM (para. 47) – LOC.
T-214/09
BLUE ECOBLUE The relevant public will split the CTMA into the commonly used prefix ‘eco’ and the word ‘blue’ (para. 30) – LOC.
T-281/07 confirmed by C-23/09 P)
In the following examples the coincidence was not recognisable:
Earlier sign Contested sign Reason Case No
ARAVA PARAVAC
Mere coincidence in a string of letters, when the first and the last letter of the CTMA change its overall impression – NO LOC.
R 1398/2006-4
LUX LUXINIA Mere coincidence in a string of letters –NO LOC R 347/2009-2
CS CScreen
The contested sign will probably be broken down into the elements ‘C’ and ‘Screen’, which is highly relevant for computers and their peripherals. It will not be perceived as containing the separate distinctive entity ‘CS’ – NO LOC.
R 545/2009-4
VALDO VAL DO INFERNO The elements VAL and DO areseparate – NO LOC. R 1515/2008-4
Although more attention is usually paid to the beginning of a word, it generally does not matter much whether the common element constitutes the first or second element of the composite mark. In particular, where the contested trade mark is the composite mark, it should not matter too much whether the contested trade mark incorporates the earlier mark as its first or second element. The protection against likelihood of confusion applies in both directions: the owner of the earlier mark is protected not only against the contested trade mark being understood as referring to its goods/services, but also against its mark being taken as referring to the applicant’s goods/services.
• Independent distinctive role
The finding that there is a likelihood of confusion should not be subject to the condition that the overall impression conveyed by the composite sign is dominated by the part of it represented by the earlier mark (judgment of 11/12/2008; C-57/08 P ‘ACTIVY Media Gateway’, para. 53; judgment of 06/10/2005, C-120/04 ‘Thomson Life’, para. 32).
On the other hand, a coincidence in a weak or visually negligible element will usually not result in likelihood of confusion. The fact that the sign making up the earlier mark is reproduced in the mark applied for does not lead to a likelihood of confusion if that common element is not distinctive or if additional elements outweigh this common element.
For the analysis of composite signs vs. one-word signs the level of distinctiveness of the common or differing elements is of particular significance. Coincidence in a weak element will generally not lead to likelihood of confusion. For details and further
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examples on the impact of common weak or non-distinctive components on likelihood of confusion see paragraph 6 above.
Earlier sign Contested sign Case No
GATEWAY, et al ACTIVY Media Gateway T-434/05
(confirmed by C-57/08 P)
G&S: Classes 9, 35, 38, 42 Territory: EU Assessment: “ … both the element ‘media gateway’ and the element ‘gateway’ in the trade mark applied for directly evoke, in the mind of the relevant consumer, the concepts of a media gateway and a gateway, which are commonly used in the computing sector. Those elements of the trade mark applied for are therefore highly descriptive of the goods and services covered by that trade mark” (para. 48) – NO LOC.
Earlier sign Contested sign Case No
P&G PRESTIGE BEAUTE T-366/07
G&S: Class 3 Territory: Italy Assessment: The Court considered that the element ‘prestige’ of the mark applied for was laudatory in nature and to a certain extent descriptive of the claimed characteristics and intended use of the goods at issue (para. 65) – NO LOC.
However, the Court speaks in favour of likelihood of confusion if the element in which the marks differ is of less inherent distinctiveness than the common element:
Earlier sign Contested sign Case No
(NEGRA MODELO)
T-169/02
G&S: Classes 25, 32, 42 Territory: Portugal Assessment: ‘Negra’ is a descriptive component, since it may be used in Portuguese to designate brown beer, i.e. the type of beer sold under the trade mark NEGRA MODELO. The attention of the average Portuguese consumer will be focused on the word ‘modelo’ (paras. 36-37) – LOC.
It may also be t hat the common element has acquired a higher degree of distinctiveness through use:
Earlier sign Contested sign Case No
CRISTAL R 0037/2000-4
T-29/04 (C-131/06 P)
G&S: Class 33 Territory: France Assessment of the earlier mark ‘CRISTAL’: As regards the claim that ‘Cristal’ is a descriptive word for the goods at issue (sparkling wines with crystalline character), the Board cannot accept it. On the one
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hand, it is an evocative indication which suggests the crystalline character of wines, but which in no way describes the product. On the other hand, [the Board] considers that a highly distinctive character of the mark CRISTAL on the French market had been shown (para. 31) – LOC. The Court confirmed LOC but found renown of CRISTAL only for a part of the relevant public (professionals) (para. 67).
• Importance of additional (not common) elements
The next factor to be taken into account in the analysis is the importance and weight of the additional (not common) elements in the overall impression of both signs. Elements like length, structure and configuration of the signs played a role in the following examples:
Earlier sign Contested sign Case No
LOFT ANN TAYLOR LOFT T-385/09
G&S: Classes 18, 25, 35 Territory: France Assessment: The word ‘loft’ is not the distinctive element in the mark applied for. Furthermore, it is also apparent from the same findings that it is the ‘ann taylor’ element, because it lacks meaning for the target public, that must be considered more distinctive than the word ‘loft’ in the mark applied for, as the latter word has a specific meaning for that public (paras. 43-49) NO LOC.
Earlier sign Contested sign Case No
P&G PRESTIGE BEAUTE T-366/07
G&S: Class 3 Territory: Italy Assessment: The trade marks both contain the word ‘prestige’ (which is represented in the earlier mark in a special font without any other figurative element). However, this coincidence is offset in particular by the different length and configuration of the signs overall. The CTMA is longer than the earlier TM, and the element ‘p&g’ at the beginning will attract the attention of the public. ‘Prestige’ is also laudatory by nature (paras. 62-68) – NO LOC.
• Practical suggestions
As a rule, when one of the conflicting trade marks or a part thereof is reproduced in the other mark, there will be a s imilarity of signs, which together with other factors may lead to likelihood of confusion, unless:
− the common element is no l onger recognisable as such in the other mark (PARAVAC / ARAVA);
− the elements added in the other mark are clearly preponderant (P&G PRESTIGE BEAUTE / Prestige);
− through the addition of other elements, the other mark becomes conceptually different (invented example: Line / Skyline)8;
− the common element has a low degree of inherent distinctiveness or is close to a descriptive term (ACTIVY Media Gateway / GATEWAY).
8 See The Guidelines Concerning Opposition. Part 2: Double Identity and Likelihood of Confusion. Chapter 3: Comparison of Signs. Conceptual Comparison.
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In all other cases the general rule of thumb is that if a sign as a whole is fully incorporated in the other sign, the signs are similar. In addition, when the goods are identical or highly similar, in the absence of other specific factors, there will be likelihood of confusion.
As seen, both these rules apply where both signs contain elements in addition to the common component. The coincidence in one word is, however, generally not sufficient in itself for establishing likelihood of confusion: the impact of the common element on the overall impression of both signs has to be compared with the impact of the differing parts. In this context the existence of an additional element in each of the signs under comparison is more likely to outweigh the coincidence in a common component than where a one-word mark is contained in another word mark.
7.5. Colour marks per se
When likelihood of confusion of two colour marks per se is assessed, a phonetic or conceptual comparison of the signs cannot be m ade and t he visual similarities will depend on the colour of the signs.
In the overall assessment, the Office takes into account the fact that there is a ‘public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought’ (judgment of 24/06/2004, C-49/02 ‘Heidelberger Bauchemie’, para. 41, judgment of 06/05/2003, C-104/01 ‘Libertel’, paras. 52-56). The inherent distinctiveness of colour marks per se is limited. The scope of protection should be limited to identical or almost identical colour combinations.
Earlier sign Contested sign Case No
R 0755/2009-4
G&S: Class 8 Territory: EU Assessment: In the case at hand, the colour combinations, identified by different colour codes, are not sufficiently close to lead to a likelihood of confusion, taking into account that the inherent distinctiveness is limited (para. 18). The BoA referred to ECJ judgments and public interest in ensuring that colours remain available to competitors (para. 19). The opponent did not prove enhanced distinctive character (para. 25) – NO LOC.
Proof of Use
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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 6
PROOF OF USE
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Table of Contents
1 General Considerations ............................................................................ 5 1.1 Function of proof of use ............................................................................5 1.2 Legislative framework................................................................................5
1.2.1 CTMR and CTMIR.......................................................................................... 5 1.2.1.1 Article 15 CTMR – obligation to use registered marks ................................5 1.2.1.2 Article 42 CTMR – consequences of lack of use.........................................6 1.2.1.3 Rule 22 CTMIR – procedural rules, evidence and language .......................7
1.2.2 Trade Marks Directive and national law implementing the Directive.............. 7
2 Substantive Law ........................................................................................ 8 2.1 Genuine use: the principles of the Court of Justice ................................8 2.2 Genuine use: standard of proof applied by the Office.............................9 2.3 Nature of use: use as a mark in the course of trade ..............................10
2.3.1 The term ‘nature of use’................................................................................ 10 2.3.2 Use as a mark............................................................................................... 11 2.3.3 Public use in the course of trade .................................................................. 13
2.3.3.1 Public use vs internal use..........................................................................13 2.3.3.2 Commercial activity vs promotional activity ...............................................13
2.3.4 Use in relation to goods or services ............................................................. 14 2.3.4.1 Use in relation to goods.............................................................................14 2.3.4.2 Use in relation to services .........................................................................15 2.3.4.3 Use in advertising......................................................................................15 2.3.4.4 Use on the internet ....................................................................................17
2.4 Place of use ..............................................................................................18 2.4.1 Use on the ‘domestic’ market ....................................................................... 18 2.4.2 CTMs: use in the European Union ............................................................... 19 2.4.3 National marks: use in the relevant member state ....................................... 19 2.4.4 Use in import and export trade ..................................................................... 20
2.5 Time of use ...............................................................................................20 2.5.1 Earlier mark registered for not less than five years ...................................... 20
2.5.1.1 CTMs.........................................................................................................21 2.5.1.2 National marks ..........................................................................................21 2.5.1.3 International registrations designating a Member State ............................22 2.5.1.4 International registrations designating the European Union ......................23
2.5.2 Relevant time frame ..................................................................................... 24 2.5.3 Summary ...................................................................................................... 25
2.6 Extent of use.............................................................................................25 2.6.1 Criteria .......................................................................................................... 25 2.6.2 Examples of insufficient use ......................................................................... 27 2.6.3 Examples of sufficient use............................................................................ 28
2.7 Use of the mark in forms different from the one registered .................. 30 2.7.1 Introduction ................................................................................................... 30 2.7.2 Criteria of the Court ...................................................................................... 30 2.7.3 Office practice............................................................................................... 31
2.7.3.1 Additions....................................................................................................32 2.7.3.2 Omissions..................................................................................................38
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2.7.3.3 Other alterations........................................................................................43
2.8 Use for the goods or services for which the mark is registered ........... 48 2.8.1 Comparison between goods/services used and specification of
goods/services.............................................................................................. 49 2.8.2 Relevance of the classification ..................................................................... 50 2.8.3 Use and registration for general indications in ‘class headings’................... 50 2.8.4 Use for sub-categories of goods/services and similar goods/services ........ 51
2.8.4.1 Earlier mark registered for broad category of goods/services ...................51 2.8.4.2 Earlier mark registered for precisely specified goods/services ..................53 2.8.4.3 Examples...................................................................................................53
2.8.5 Use of the mark as regards integral parts and after-sales services of the registered goods........................................................................................... 56
2.9 Use by the proprietor or on its behalf .....................................................56 2.9.1 Use by the proprietor .................................................................................... 56 2.9.2 Use by authorised third parties..................................................................... 56 2.9.3 Use of collective marks................................................................................. 57
2.10 Legal use...................................................................................................57 2.11 Justification of non-use ...........................................................................58
2.11.1 Business risks............................................................................................... 58 2.11.2 Government or Court intervention ................................................................ 59 2.11.3 Defensive registrations ................................................................................. 60 2.11.4 Force majeure............................................................................................... 60 2.11.5 Consequences of justification of non-use..................................................... 60
3 Procedure................................................................................................. 61 3.1 Request by the applicant .........................................................................61
3.1.1 Time of request............................................................................................. 61 3.1.2 Request must be explicit, unambiguous and unconditional ......................... 61 3.1.3 Applicant’s interest to deal with proof of use first ......................................... 63 3.1.4 Reaction if request is invalid......................................................................... 63
3.2 Express invitation by the Office ..............................................................63 3.3 Reaction from the opponent: providing proof of use ............................64
3.3.1 Time limit for providing proof of use ............................................................. 64 3.3.2 Means of evidence ....................................................................................... 65
3.3.2.1 Principles...................................................................................................65 3.3.2.2 References................................................................................................66 3.3.2.3 Declarations ..............................................................................................67
3.4 Reaction from the applicant ....................................................................69 3.4.1 Forwarding of evidence ................................................................................ 69 3.4.2 No evidence or no relevant evidence submitted .......................................... 69 3.4.3 No reaction from applicant............................................................................ 70 3.4.4 Formal withdrawal of the request ................................................................. 70
3.5 Further reaction from the opponent........................................................70 3.6 Languages in proof of use proceedings.................................................70 3.7 Decision ....................................................................................................71
3.7.1 Competence of the Office............................................................................. 71
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3.7.2 Need for taking a decision ............................................................................ 72 3.7.3 Overall assessment of the evidence presented ........................................... 72 3.7.4 Examples ...................................................................................................... 73
3.7.4.1 Genuine use accepted ..............................................................................73 3.7.4.2 Genuine use not accepted.........................................................................74
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1 General Considerations
1.1 Function of proof of use
Community legislation on trade marks establishes an ‘obligation’ for the owner of a registered trade mark to use that mark in a genuine manner. The obligation of use is not applicable immediately after registration of the earlier mark. Instead, the owner of a registered mark has a so-called ‘grace period’ of five years during which it is not necessary to demonstrate use of the mark in order to rely upon i t – including in opposition proceedings before the Office. After this grace period, the owner may be required to demonstrate use of the earlier mark on t he relevant goods and services. Before this period elapses, the mere formal registration gives the mark its full protection.
The reason behind the requirement that earlier marks can be required to demonstrate that they have been put to genuine use is to restrict the number of trade marks registered and protected and, consequently, the number of conflicts between them. This interpretation is supported by the ninth recital in the preamble to Directive 2008/95, which explicitly refers to that objective (judgment of 12/03/2003, T-174/01, ‘Silk Cocoon’, para. 38).
When it comes to the requirement to prove use in opposition proceedings before the Office, it is important to bear in mind that the purpose of Article 42(2) and (3) CTMR is not to assess commercial success or to review the economic strategy of an undertaking, nor is it to restrict trade-mark protection to only large-scale commercial use of the marks (judgment of 08/07/2004, T-334/01, ‘Hipoviton’, para. 32 and judgment of 08/07/2004, T-203/02, ‘VITAFRUIT’, para. 38).
The Office does not inquire ex officio whether the earlier mark has been used or not. Such examination takes place only when the CTM applicant makes an explicit request for proof of use. Such a r equest, if the legal requirements are met, triggers the procedural and substantive consequences laid down in the CTMR and the CTMIR.
1.2 Legislative framework
The legislative framework consists of provisions in the CTMR, in the CTMIR, and in the Trade Marks Directive as implemented in the national law of the Member States.
1.2.1 CTMR and CTMIR
1.2.1.1 Article 15 CTMR – obligation to use registered marks
Article 15 CTMR stipulates the basic substantive requirement for the obligation to use registered marks and Article 15(1) CTMR reads:
If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
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In accordance with Article 15(1)(a) and (b) CTMR, the use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered and the affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes, also constitute use within the meaning of Article 15(1) CTMR.
In accordance with Article 15(2) CTMR, the use of the Community trade mark with the consent of the proprietor will be deemed to constitute use by the proprietor.
1.2.1.2 Article 42 CTMR – consequences of lack of use
The consequences of a lack of use in opposition proceedings are dealt with in Article 42(2) and (3) CTMR. According to Article 42(2) CTMR:
If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he c ites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In accordance with Article 42(3) CTMR:
Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.
There is no express provision in the CTMR that such forms of use as mentioned in Article 15(1) and ( 2) CTMR may also be regarded as use of earlier national trade marks. However, the concept of the obligation to use the registered mark is harmonised as a consequence of Article 10(2) and (3) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (‘Directive’). Hence, it is appropriate to apply the same substantive provision as Article 15(1) and (2) CTMR to the use of earlier national trade marks, with the only difference being that such use must be made in the Member State in which the national mark is registered.
Moreover, it results from the wording of Article 42(2) and (3) CTMR that proof of use can only be requested if the earlier right is a CTM or other trade mark having effect in the EU or an EU Member State, as defined in Article 8(2)(a) CTMR. Since oppositions brought under Article 8(4) CTMR cannot be b ased on ei ther CTMs or other trade marks referred to in Article 8(2)(a) CTMR, the CTM applicant is not entitled to request proof of use for earlier rights relied upon in oppositions brought under this provision. Nevertheless, Article 8(4) CTMR requires the opponent to prove use in the course of trade of more than mere local significance for the earlier rights in question.
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As for Article 8(3) CTMR, the Office’s practice is that requests for proof of use of the earlier right cannot be made. The reason is that such earlier rights include both trade marks having effect in the EU/EU Member States (CTMs, national trade marks, IRs) and national non-EU trade marks, requests for proof of use of the latter not being possible under the CTMR. It would be discriminatory to request proof of use for some countries’ trade marks but not for others. Accordingly, and in view of the specific subject matter for protection under Article 8(3) CTMR, while the use or lack of use made of the earlier rights may have a bearing on arguments regarding the justification for applying for the CTMA, the opponent cannot be obliged to provide proof of use under Article 42(3) CTMR for any earlier rights thereby relied upon.
1.2.1.3 Rule 22 CTMIR – procedural rules, evidence and language
In accordance with Rule 22(2) CTMIR, where, pursuant to Article 42(2) or (3) CTMR, the opponent has to furnish proof of use or show that there are proper reasons for non- use, the Office will invite the opponent to provide the proof required within a period specified by the Office. If the opponent does not provide such proof before the time limit expires, the Office will reject the opposition.
In accordance with Rule 22(3) CTMIR, the indications and evidence required in order to furnish proof of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based, and evidence in support of these indications in accordance with paragraph 4.
In accordance with Rule 22(4) CTMIR, the evidence must consist of written documents and in principle be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) CTMR.
In accordance with Rule 22(5) CTMIR, a request for proof of use may be made with or without submitting, at the same time, observations on t he grounds on which the opposition is based. Such observations may be filed together with the observations in reply to the proof of use.
In accordance with Rule 22(6) CTMIR, where the evidence supplied pursuant to paragraphs 1, 2 and 3 i s not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of that evidence in that language, within a period specified by the Office.
1.2.2 Trade Marks Directive and national law implementing the Directive
Article 10 of the Directive contains provisions identical to Article 15 CTMR, with ‘use in the Community’ being replaced by ‘use in the Member State’.
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2 Substantive Law
2.1 Genuine use: the principles of the Court of Justice
Neither the CTMR nor the CTMIR defines what is to be regarded as ‘genuine use’. However, the Court of Justice (the ‘Court’) has laid down several important principles as regards the interpretation of this term.
‘Minimax’ 2003 (judgment of 11/03/2003, C-40/01, ‘Minimax’): the Court established the following principles:
• Genuine use means actual use of the mark (para. 35).
• Genuine use must, therefore, be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark (para. 36).
• Genuine use must be c onsistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling the latter, without any possibility of confusion, to distinguish the product or service from others which have another origin (para. 36).
• Genuine use entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned (para. 37).
• Genuine use must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (para. 37).
• When assessing whether there has been genuine use, regard must be had to all the facts and c ircumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark (para. 38).
• The circumstances of the case may, therefore, include giving consideration, inter alia, to the nature of the goods or services at issue, the characteristics of the market concerned and the scale and frequency of use of the mark (para. 39).
• Use need not, therefore, always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market (para. 39).
La Mer 2004 (order of 27/01/2004, C-259/02, ‘Laboratoire de la mer’): the Court further elaborated the ‘Minimax’ criteria as follows:
• The question whether use is sufficient to preserve or create market share for those goods or services depends on s everal factors and on a c ase-by-case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of
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them, or evidence which the proprietor is able to provide, are among the factors which may be taken into account (para. 22);
• Use of the mark by a single client which imports the goods for which the mark is registered can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (para. 24);
• A de minimis rule cannot be laid down (para. 25).
2.2 Genuine use: standard of proof applied by the Office
Article 42 CTMR requires proof of genuine use of the earlier mark. The proof must consist of solid and obj ective evidence of effective and ef ficient use (judgment of 18/01/2011, T-382/08, ‘Vogue’, para. 22). Making merely a prima facie case is not sufficient.
Moreover, the Office cannot determine ex officio the genuine use of earlier marks. Even proprietors of purportedly well-known marks must submit evidence to prove genuine use of the earlier mark(s).
The Office does not necessarily require a high threshold of proof of genuine use. The Court has indicated that it is not possible to prescribe, in the abstract, what quantitative threshold should be chosen in order to determine whether use was genuine or not, and accordingly there can be no objective de minimis rule to establish a priori the level of use needed in order for it to be ‘genuine’. So, whilst a minimum extent of use must be shown, what exactly constitutes this minimum extent depends on the circumstances of each case. The general rule is that, when it serves a real commercial purpose, even minimal use of the trade mark could be sufficient to establish genuine use, depending on t he goods and s ervices, and t he relevant market (judgment of 23/09/2009, T-409/07, ‘Acopat’, para. 35 and the quoted case-law; judgment of 02/02/2012, T-387/10, ‘Arantax’, para. 42).
In other words, it will be sufficient if the evidence of use proves that the trade mark owner has seriously tried to acquire or maintain a commercial position in the relevant market as opposed to having solely used the mark with the intention of preserving the rights conferred by the mark (token use). For instance, in some cases, relatively few sales might be sufficient to conclude that the use is not merely token, in particular with regard to expensive goods (decision of 04/09/2007, R 0035/2007-2, ‘DINKY’, para. 22). Nonetheless, even if inter alia a very modest amount of use can suffice in certain circumstances, proprietors should adduce comprehensive evidence of use.
In accordance with Rule 22(3) CTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services.
These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, ‘STRATEGI’, para. 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various
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relevant factors, each considered in isolation, is not suitable (judgment of 17/02/2011, T-324/09, ‘Friboi’, para. 31).
Thus, the Office evaluates the evidence submitted in an overall assessment. All the circumstances of the specific case have to be taken into account and all the materials submitted must be assessed in conjunction with each other. Therefore, although pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, they may contribute to proving use in combination with other documentation and information.
Evidence of use may be of an indirect/circumstantial nature, such as evidence about the share in the relevant market, the import of the relevant goods, the supply of the necessary raw material or packaging to the owner of the mark, or the expiry date of the relevant goods. Such indirect evidence can play a dec isive role in the overall assessment of the evidence submitted. Its probative value has to be c arefully assessed. For instance, the judgment of 08/07/2010, T-30/09, ‘peerstorm’, para. 42 et seq. found that catalogues in themselves could – under certain circumstances – be conclusive evidence of sufficient extent of use.
It is necessary to take into account the specific kind of the goods and services involved when assessing the probative value of the evidence submitted. For example, it may be c ommon in a par ticular market sector for the samples of the goods and services themselves not to bear indications of the place, time, extent and nature of use. In these cases it is obviously not appropriate to disregard such evidence of use if indications in this respect can be found in the other evidence submitted.
Each of the materials submitted has to be carefully evaluated as to whether it really reflects use in the five years preceding the publication of the CTM application (see in this regard paragraph 2.5 below) or use in the relevant territory (see paragraph 2.4 below). In particular, the dates and place of use shown on orders, invoices and catalogues are carefully examined.
Material submitted without any indication of date of use may, in the context of an overall assessment, still be r elevant and t aken into consideration in conjunction with other pieces of evidence which are dated (judgment of 17/02/2011, T-324/09, ‘Friboi’, para. 33). This is the case in particular if it is common in a particular market sector for the samples of the goods and s ervices themselves not to bear indications of time (decision of 05/09/2001, R 0608/2000-4, ‘Palazzo’, para. 16, noting that ice-cream menus are rarely dated).
For implementation of the abovementioned general principles in practice, see the examples in paragraph 3.7.4 below.
2.3 Nature of use: use as a mark in the course of trade
2.3.1 The term ‘nature of use’
The required ‘nature of use’ of the sign refers to its use as a trade mark in the course of trade.
However, it is important to note that the expression ‘nature of use’ in the context of Rule 22(3) CTMIR further comprises the need for evidence of:
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• the use of the mark as registered, or of a variation thereof according to Article 15(1)(a) CTMR (paragraph 2.7 below), and
• the use for the goods and services for which it is registered (paragraph 2.8 below).
2.3.2 Use as a mark
Articles 15 and 42(2) CTMR require proof of genuine use in connection with the goods or services in respect of which the trade mark is registered and which the opponent cites as justification for its opposition. Hence, the opponent has to show that the mark has been used as a trade mark on the market.
As a trade mark has, inter alia, the function to operate as a link between the goods and services and the person responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Rule 22(4) CTMIR, it is not necessary for the mark to be affixed to the goods themselves. A representation of the mark on pac kaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use (see also paragraph 2.3.3.2 below).
Genuine use requires that use is made as a trade mark:
• not for purely illustrative purposes or on purely promotional goods or services.
• in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered (judgment of 11/03/2003, C-40/01, ‘Minimax’, para. 43).
Therefore, the following are not suitable to support genuine use of the trade mark:
• Use as a certification mark. Certification marks can be obt ained in some jurisdictions for compliance with defined standards. The holder of a certification mark is not the authorised user, producer or provider of the certified goods or services, but rather the certifier, who exercises legitimate control over the use of the certification mark. Certification marks may be used together with the individual trade mark of the producer of the certified goods or of the provider of the certified services. The essential function of a certification mark is different from the essential function of an individual trade mark: while the latter primarily serves to identify the origin of goods and services, the former serves to certify that the goods or services meet certain established standards and po ssess particular characteristics. Therefore, use as certification mark does not serve as use as individual trade mark, which is the use required by Article 42(2) and (3) CTMR (decision of 16/08/2011, R 87/2010-2, ‘DVC-DVB’, para. 32).
• Use as Protected Geographical Indication (PGI) / Protected Denomination of Origin (PDO). The essential function of PGIs/PDOs is to designate the origin of goods as being from a particular region or locality. This is in contrast with the main function of an i ndividual trade mark, namely to serve as an i ndicator of
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commercial origin. When a PGI/PDO has been registered as an individual mark (and not, for example, as a collective mark), the opponent has to submit proof about the use as an individual mark. Evidence of use as PGI/PDO (e.g. general statements of Regulatory Councils) cannot serve for proving use as an individual mark. If the PGI/PDO is registered as a collective mark, evidence of use must be provided to show that the PGI/PDO is used according to the essential function of collective marks, which is to distinguish the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings (see decision of 23/11/2011, R 1497/2010-2, ‘YECLA’, paras 34 and 45).
• The use of the sign as a company name or trade name, because the purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being run. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being run, such use cannot be considered as being ‘in relation to goods or services’ (judgment of 11/09/2007, C-17/06, ‘Céline’, para. 21; judgment of 13/05/2009, T-183/08, ‘Jello Schuhpark II’, paras 31, 32).
The use of a sign as a business or trade name cannot be regarded as trade mark use unless the relevant goods or services themselves are identified and offered on the market under this sign (judgment of 13/04/2011, T-209/09, ‘Adler Capital’, paras 55, 56). In general, this is not the case when the business name is merely used as a shop sign (except when proving use for retail services), or appears on t he back of a catalogue or as an incidental indication on a l abel (judgment of 18/01/2011, T-382/08, ‘Vogue’, para. 47).
The use of a company name/trade name can be regarded as use ‘in relation to goods’ where:
• a party affixes the sign constituting its company name, trade name or shop name to the goods or,
• even though the sign is not affixed, that party uses that sign in such a way that a link is established between the company, trade or shop name and the goods or services (judgment of 11/09/2007, C-17/06, ‘Céline’, paras 21-23).
Provided that either of these two conditions is met, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (judgment of 30/11/2009, T-353/07, ‘Coloris’, para. 38).
Depending on the circumstances, the following may be suitable to support genuine use of the registered trade mark:
• The presentation of the business name at the top of order forms or invoices, depending on how the sign appears on them. However, mere use of a business name at the top of invoices without a clear reference to specific products/services is not enough.
• Use of a sign as a domain name or as part of a domain name primarily identifies the owner of the site (e.g. www.trademark.com). However, depending on t he
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circumstances, such use may also be us e of a registered mark (which presupposes that it connects to a site on which the goods and services appear).
2.3.3 Public use in the course of trade
2.3.3.1 Public use vs internal use
The use must be publ ic, i.e. it must be ex ternal and appar ent to actual or potential customers of the goods or services. Use in the private sphere or purely internal use within a company or a group of companies does not amount to genuine use (judgment of 09/12/2008, C-442/07, ‘Verein Radetzky-Orden’, para. 22; judgment of 11/03/2003, C-40/01, ‘Minimax’, para. 37).
The mark must be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services which it represents (judgment of 12/03/2003 T-174/01, ‘Silk Cocoon’, para. 39; judgment of 30/04/2008, T-131/06, ‘Sonia Sonia Rykiel’, para. 38). Outward use does not necessarily imply use aimed at end consumers. For instance, the relevant evidence can validly stem from an intermediary, whose activity consists of identifying professional purchasers, such as distribution companies, to whom the intermediary sells products it has had manufactured by original producers (judgment of 21/11/2013, T-524/12, ‘RECARO’, paras 25 and 26).
Relevant evidence can also validly come from a distribution company forming part of a group. Distribution is a method of business organisation which is common in the course of trade and i mplies use of the mark which cannot be r egarded as purely internal use by a g roup of companies, since the mark is also used outwardly and publicly (judgment of 17/02/2011, T-324/09, ‘Friboi’, para. 32).
Use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way. Mere preparation to use the mark – such as the printing of labels, producing of containers, etc. – is internal use and, therefore, not use in the course of trade for the present purposes (judgment of 11/03/2003, C-40/01, ‘Minimax’, para. 37).
2.3.3.2 Commercial activity vs promotional activity
Where the mark is protected for goods or services of not-for-profit enterprises, and the mark has been us ed, the fact that there is no pr ofit motive behind the use is irrelevant: ‘The fact that a charitable association does not seek to make profit does not mean that its objective cannot be to create and, later, to preserve an outlet for its goods or services’ (judgment of 09/12/2008, C-442/07, ‘Verein Radetzky-Orden’, para. 17).
Goods and services offered free of charge may constitute genuine use when they are offered commercially, i.e. with the intention of creating or maintaining an outlet for those goods or services in the EU, as opposed to the goods or services of other undertakings, and t herefore of competing with them (judgment of 09/09/2011, T-289/09, ‘Omnicare Clinical Research’, paras 67, 68).
Mere use of the mark on promotional material for other goods cannot normally be considered as sufficient (indirect) evidence of use within the meaning of trade mark law for the type of promotional items on which the mark is or has been used. For example,
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giving away articles of clothing such as T-shirts and bas eball caps at promotional events with the purpose of marketing a certain other product, such as a drink, cannot be considered as genuine use of the mark at issue for clothing.
The Office practice concerning ‘genuine use’ with regard to promotional articles has been confirmed by the Court:
Earlier sign Case No
WELLNESS C-495/07(preliminary ruling)
The opponent owned the mark ‘WELLNESS’ in Classes 25 and 32. In the context of selling its ‘WELLNESS’ clothing, it also used the mark to designate an alcohol-free drink, which was handed out in small bottles as a gift along with the clothing sold. No drinks were sold separately under the ‘WELLNESS’ mark.
The Court held that, where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter, the mark loses its commercial raison d’être for the promotional goods and cannot be considered to have been genuinely used on the market for goods in that class (para. 22).
2.3.4 Use in relation to goods or services
2.3.4.1 Use in relation to goods
Trade marks have traditionally been used on goods (printed on the goods, on labels, etc.) or their packaging. However, showing use on goods or their packaging is not the only way of proving use in relation to goods. It is sufficient, if there is a proper connection between the mark and the goods, that the mark is used ‘in relation to’ the goods or services, such as on brochures, flyers, stickers, signs inside places of sale, etc.
Earlier sign Case No
Schuhpark T-183/08
The GC found that the use of the sign Schuhpark for footwear on advertisements, bags and invoices was not meant to identify the origin of the shoes (which bore their own mark or no mark at all) but rather the company name or trade name of the shoe retailer. This was considered insufficient to establish a link between the sign Schuhpark and the shoes. In other words, Schuhpark may well be a mark for the retail of shoes, but it was not used as a trade mark for goods (paras 31, 32).
When the opponent sells its goods only through catalogues (mail-order sales) or the internet, the mark may not always appear on the packaging or even on the goods themselves. In such cases use on the (internet) pages where the goods are presented – provided it is otherwise genuine in terms of time, place, extent and nature (see paragraph 2.3.4.4.) – will generally be considered sufficient. The owner of the mark will not have to provide proof that the mark actually appeared on the goods themselves.
It is only under extraordinary circumstances that catalogues may in themselves be conclusive evidence of a non-negligible extent of use:
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Earlier sign Case No
PETER STORM T-30/09
The GC accepted that catalogues could substantiate the extent of use of a mark in circumstances in which ‘a large number of items designated by the trade mark ‘Peter Storm’ were offered in the catalogues and those items were available in more than 240 shops in the United Kingdom for a significant part of the relevant period. Those factors support the conclusion that the extent of its use was fairly significant’ (para. 43; see also paras 38–45).
Earlier sign Case No
CATAMARAN R 0566/2010-2
The Board concluded that, despite the fact that the evidence did not comprise invoices, the sales catalogues (spring/summer 2001 to autumn/winter 2006) combined with the different samples of clothing items and the affidavit (with sales figures) represented sufficient evidence of the extent of use of the earlier trade marks (paras 31, 32).
2.3.4.2 Use in relation to services
Marks cannot be directly used ‘on’ services. Therefore, as regards marks registered for services, their use will generally be on business papers, in advertising, or in some other way directly or indirectly related to the services. Where the use on such items demonstrates genuine use, such use will be sufficient.
Earlier sign Case No
STRATEGIES T-92/09
Where an earlier mark was registered in respect of ‘business management’ services and used as the title of business magazines, the GC did not exclude that such use be considered genuine in respect of the services in question. This could be the case if it is shown that the magazine provides support for the supply of the ‘business management’ services, i.e. if these services are provided through the medium of a magazine. The fact that there is no ‘direct bilateral link’ between the publisher and the recipient of the services does not impair such a finding of genuine use. This is because the magazine is not distributed free of charge, which could give credibility to the claim that the payment of the price of the magazine constitutes remuneration for the service provided.
2.3.4.3 Use in advertising
Trade marks fulfil their function of indicating the commercial origin of goods or services and symbols of the goodwill of their owner not only when they are actually used on or in relation to goods or services, but also when they are used in advertising. In fact, the advertising or market communication function of trade marks is one o f their most important functions.
Therefore, use in advertising will generally be considered as amounting to genuine use:
• if the volume of advertising is sufficient to constitute genuine public use of the mark and
• if a relation can be established between the mark and the goods or services for which the mark is registered.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 16
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The Court confirmed this approach in the ‘Minimax’ case, where it held that use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgment of 11/03/2003, C-40/01, ‘Minimax’, para. 37).
However, the outcome in a particular case will depend very much on the individual circumstances. It is particularly important in this context that the evidence submitted also gives a clear indication of the extent of use (volume and period of distribution of advertising materian( �
Earlier sign Case No
BLUME R 0681/2001-1
Services: services of a publishing company in Class 41.
The Board confirmed that the evidence (consisting of catalogues, press notes and advertisements) read in conjunction was enough to prove genuine use of the trade mark.
‘Although the order record and the receipt of the bank account do not provide any information on how and to what extent the mark was used in Spain, the remaining documents, namely the catalogues, press notes and advertisements, when read in conjunction, demonstrate that during the relevant period, the opponent has published in Spain books and magazines under the trade mark BLUME. Even if the opponent does not provide any invoices, orders or sales figures, there is some reason to assume that it advertised its books and magazines, promoted and sold them under the trade mark BLUME. Although the advertising documents and the press notes were identified and dated by the opponent, the trade mark BLUME is always mentioned in the press notes and on the cover page of the quoted books. In addition, the text is in the Spanish language and the price mentioned in pesetas. When read together with the catalogues, these press notes demonstrate that they refer to some of the books expressly quoted in the catalogues …’ (para. 23).
Earlier sign Case No
BIODANZA R 1149/2009-2(confirmed by T-298/10)
G&S: Class 16 and 41.
The Board rejected the Opposition Division’s finding that the evidence (only advertisements) proved genuine use.
It follows clearly from the finding of the contested decision that the evidence of use submitted by the opponent consists solely of advertisements that can prove only that the opponent advertised a yearly ‘BIODANZA’ festival during the whole of the relevant period and w orkshops on both a regular and irregular basis from 2002.
However, contrary to the finding of the contested decision, such advertisements cannot provide proof of their distribution to a potential German clientele. Nor can they prove the extent of any distribution or the number of sales or contracts made for the services protected by the mark. The mere existence of advertisements could, at most, make it probable or credible that the services advertised under the earlier mark were sold or, at least, offered for sale within the relevant territory, but it cannot prove this, as was unduly supposed by the contested decision.
Where advertising is carried out in parallel to the marketing of goods and services and there is proof of both activities, advertising will support the genuineness of the use.
Advertising in advance of the actual marketing of goods and services – if with a view to establishing a market for the goods or services – will generally be considered to constitute genuine use.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 17
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Whether mere advertising, without any current or future plans to actually market goods or services, constitutes genuine use appears doubtful. As in most other situations, the outcome will depend on t he circumstances of each case. For example, where the goods or services are available abroad, such as holiday accommodation or particular products, advertising alone may be sufficient to amount to genuine use.
2.3.4.4 Use on the internet
The standard applied when assessing evidence in the form of print-outs from the internet is no stricter than when evaluating other forms of evidence. Consequently, the presence of the trade mark on websites can show inter alia the nature of its use or the fact that products or services bearing the mark have been of fered to the public. However, the mere presence of a trade mark on a website is, of itself, not sufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.
Earlier sign Case No
SHARP R 1809/2010-4
The opponent submitted ‘extracts from the opponent’s websites for different countries’. The Board considered that ‘simple print-outs from a company’s own Internet page is not able to prove use of a mark for certain goods without complementary information as to the actual use of the Internet site by potential and relevant consumers or complementary advertising and sales figures regarding the different goods, photos of the goods with the corresponding mark etc.’ (para. 33).
Earlier sign Case No
WALZERTRAUM T-355/09 (confirmed by C-141/13 P)
The opponent, a bakery, who owns the German trade mark ‘WALZERTRAUM’ for goods in Class 30, in order to prove the extent of use of its mark, submitted evidence regarding an advertising brochure published on the Internet, which gives general information about its working methods, the ingredients used for its products and the product range, including its ‘WALZERTRAUM’ chocolate. The goods could, however, not be ordered online on the web page. For this reason the GC held that a connection between the website and the number of items sold could not be established (para. 47).
In particular, the value in terms of evidence of internet extracts can be strengthened by submitting evidence that the specific website has been v isited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period. For instance, useful evidence in this regard could be r ecords that are generally kept when operating a business web page, for example records relating to the hits attained at various points in time or, in some cases, the countries from which the web page has been accessed.
As to the relevant period, information on the internet or in online databases is considered to be of the date on which the information was posted. Internet websites often contain highly relevant information. Certain information may even be a vailable only on the internet from such websites. This includes, for example, online catalogues that are not available in printed format.
The nature of the internet can make it difficult to establish the actual date on which information was in fact made available to the public. For instance, not all web pages mention when they were published. In addition, websites are easily updated, yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public to establish precisely what was published when.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 18
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In this context, the date of use on the internet will be considered reliable in particular where:
• the website time-stamps each entry and thus provides information relating to the history of modifications applied to a file or web page (for example, as available for Wikipedia or as automatically appended to content, e.g. forum messages and blogs); or
• indexing dates are given to the web page by search engines (e.g. from the Google™ cache); or
• a screenshot of a web page bears a given date.
The evidence submitted must show that the online transactions were connected with the goods or services designated by the mark.
Earlier sign Case No
ANTAX T-387/10
The opponent has submitted, inter alia, internet extracts from the home pages of several tax consultancies using the opposing mark. The GC considered that the indications on the internet pages allowed the reader to establish a link between the trade mark and the services provided (paras 39, 40).
Whereas the nature of the mark and, to a certain extent, the time (as seen above) and place are less complex elements to prove, the extent of the use presents more difficulties if only evidence of internet use is provided. It should be taken into account that transactions on the internet tend to eliminate most of the ‘traditional’ evidence of sales such as invoices, turnover, taxation documents, etc. New ‘electronic’ evidence tends to substitute them, or has already substituted them, as certified means of payment, orders and confirmations thereof, registrations of safe transactions, etc.
Earlier sign Case No
Skunk funk (fig.) R 1464/2010-2
‘[E]xcerpts from third parties’ websites, despite having been printed out on 10 June 2008, contain consumers’ comments about ‘SKUNKFUNK’ clothes and shops dated within the relevant period. In particular, as regards the relevant territory, the documents show various comments made by consumers in Spain and dated December 2004 and February-March-April-May-July 2007. Moreover, as the Opposition Division pointed out, a blog comment (dated 4 March 2007) on the Internet page www.cybereuskadi.com mentions that the opponent (‘designer of Skunkfunk’) ‘exports surf clothes worldwide and has a turnover of nearly 7 million euros per year’.’ (para. 21).
2.4 Place of use
2.4.1 Use on the ‘domestic’ market
Trade marks must be used in the territory where they are protected (European Union for CTMs, the territory of the Member State for national marks or Benelux for Benelux marks and the territories of the relevant countries for international registrations).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 19
FINAL VERSION .1.0 01/02/2015
As the Court held in ‘Leno Merken’ ‘the territorial scope of the use is only one of several factors to be t aken into account in the determination of whether that use is genuine or not’ (judgment of 19/12/2012, C-149/11, ‘Leno Merken’, para. 30). The Court further indicated that use of the mark in non-EU territories cannot be taken into account (para. 38).
In view of the globalisation of trade, an indication of the registered seat of the owner of the mark may not be regarded as sufficient indication that the use has taken place in that particular country. Even though Article 15(1)(b) CTMR stipulates that the affixing of the trade mark to goods or to the packaging thereof in the European Union solely for export purposes is considered as use of the mark, mere indication of the opponent’s seat as such does not constitute evidence of such acts. On the other hand, the fact that clients who have their seats outside the relevant territory are listed in the documents for proving use of the earlier mark is in itself not sufficient to rule out that services (e.g. promotion services) may actually have been rendered in the relevant territory for the benefit of these companies located in other territories (decision of 09/06/2010, R 0952/2009-1, ‘Global Tabacos’, para. 16).
2.4.2 CTMs: use in the European Union
If the earlier mark is a C ommunity mark, it must be us ed ‘in the Community’ (Articles 15(1) and 42(2) CTMR). Following ‘Leno Merken’, Article 15(1) CTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether a CTM has been put to ‘genuine use’ in the Community (para. 44).
In territorial terms and in view of the unitary character of the CTM, the appropriate approach is not that of political boundaries but of market(s). Moreover, one of the aims pursued by the CTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.
As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (para. 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (para. 58).
The Office must determine on a c ase-by-case basis whether the various indications and evidence can be combined for the purpose of assessing the genuine character of use, the geographical dimension of which is only one of the aspects to be considered.
In any event, it must be underlined that the European requirements or standards for genuine use are applicable (i.e. the conditions of Article 15 CTMR) and not national standards or practices applied to CTMs.
2.4.3 National marks: use in the relevant member state
If the earlier mark is a national mark with effect in one of the Member States of the European Union, the mark must have been genuinely used in the country where it is
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 20
FINAL VERSION .1.0 01/02/2015
protected (Article 42(3) CTMR). Use in a part of the Member State, provided it is genuine, may be considered sufficient:
Case No Earlier trade mark Comment
C-416/04 P VITAFRUT
Use considered sufficient, even though the earlier Spanish mark was not present in a substantial part of the territory of Spain, given that the evidence referred to the sale of everyday consumer goods (concentrated fruit juices) to only a single customer in Spain (para. 60, 66 and 76).
2.4.4 Use in import and export trade
According to Article 15(1)(b) CTMR, the affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes also constitutes use within the meaning of Articles 15(1) CTMR. The mark has to be used (i.e. affixed to goods or their packaging) in the relevant market – that is, the geographical area where it is registered.
Case No Earlier trade mark Comment
T-34/12 Herba Shine
The Court ruled that the Board of Appeal should have reasoned why it disregarded evidence of sales outside the relevant territory (invoices addressed to clients outside the EU). In fact, such sales outside the EU cannot be simply discarded for that reason only (paras 48-49 and 54).
R 0602/2009-2 RED BARON The Board indicated that sales in Austria and Great Britain from the Netherlands also constituted genuine use within the meaning of Article 15(1)(b) CTMR (para. 42).
Evidence that only relates to the import of the goods in the relevant area may, depending on the circumstances of the case, suffice as proof of use in this area (see by analogy judgment of 09/07/2010, T-430/08, ‘Grain Millers’, paras 33, 40 et seq. regarding the proof of use in the course of trade of a sign on the basis of imports from Romania to Germany).
The Court has held that transit, which consists in transporting goods lawfully manufactured in a Member State to a non-member country by passing through one or more Member States, does not involve any marketing of the goods in question and is therefore not liable to infringe the specific subject matter of the trade mark (regarding the transit through France of goods originating in Spain and destined for Poland, see judgment of 23/10/2003, C-115/02, ‘Rioglass and Transremar’, para. 27 and judgment of 09/11/2006, C-281/05, ‘Diesel’, para. 19). Therefore, mere transit through a Member State cannot constitute genuine use of the earlier mark in that territory.
2.5 Time of use
2.5.1 Earlier mark registered for not less than five years
In accordance with Article 42(2) CTMR, the obligation to provide proof of use requires that the earlier registered mark has, at the date of publication of the CTM application, been registered for not less than five years.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 21
FINAL VERSION .1.0 01/02/2015
For oppositions filed against international registrations designating the EU, the opponent’s mark is under use obligation if at the beginning of the opposition period, namely six months after the date of the first re-publication of the international registration, it has been registered for not less than five years.
2.5.1.1 CTMs
The decisive date for establishing whether a trade mark has been registered for not less than five years at the time of publication of the contested application is, according to Article 15 and Article 42(2) CTMR, the registration date of the earlier CTM. If five years or more have elapsed between the registration date of the earlier CTM and the date of publication of the CTM application (or in the case of a contested IR, six months after the date of the first re-publication of the IR), the applicant (or in the case of a contested IR, the holder) is entitled to request proof of use.
2.5.1.2 National marks
For national marks, it is necessary to determine the date that is equivalent to the registration date for CTMs. In interpreting this term, it should be taken into account that there are national trade mark systems which have an opp osition procedure after registration.
In view of these differing national proceedings, Article 10(1) of the Directive (which is the equivalent of Article 42 CTMR) refers, as concerns the use requirement for national marks, to the period of ‘five years following the date of the completion of the registration procedure’.
The date of the completion of the registration procedure (Article 10(1) of Directive 2008/95) that serves for calculating the starting point for the obligation of use for national and international registrations (Article 42(2) and (3) CTMR) is determined by each Member State according to their own procedural rules (judgment of 14/06/2007, C-246/05, ‘Le Chef de Cuisine’, paras 26-28).
The owner of a mark is not expected to make genuine use of the mark while examination or opposition proceedings are pending, before the five-year grace period mentioned. This is in harmony with the approach towards earlier CTMs, since the registration date of a CTM, which is mentioned in Article 42(2) CTMR as the decisive date for the beginning of the grace period, is always the date of completion of the registration procedure. Furthermore, this interpretation keeps the use requirement under the CTMR in line with the relevant national laws (decision of 06/05/2004, R 0463/2003-1, ‘Wrap House’, para. 19; decision of 18/06/2010, R 0236/2008-4, ‘RENO’).
The completion of the registration procedure occurs after a pre-registration opposition or in some Member States even after completion of a post-registration opposition. The exact relevant dates are those published in the OHIM Brochure ‘National Law Relating to the CTM’, Chapter 12: http://oami.europa.eu/en/office/diff/pdf/National_law.pdf.
The Office does not investigate on its own initiative the actual date of completion of the registration proceedings. Without evidence to the contrary, the Office assumes that the registration procedure was completed on the date that is indicated as the registration
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 22
FINAL VERSION .1.0 01/02/2015
date in the evidence submitted. The opponent has to rebut this presumption by proving the exact date when the registration procedure was completed.
2.5.1.3 International registrations designating a Member State
Under Article 5(2)(a) and (b) of the Madrid Protocol, the Designated Offices have a period of 12 or 18 months from the date of notification of the designation to issue provisional refusals.
Where the Member State has not been designated in the international application but in a subsequent designation, the 12 or 18 months start from the date the subsequent designation was notified to the Designated Offices.
Member States which use the 12-month deadline to issue a provisional refusal under the Protocol when acting as a de signated party are: Benelux, Czech Republic, Germany, Spain, France, Latvia, Hungary, Austria, Portugal, Romania and Slovenia.
Member States which have opted for the 18-month deadline to issue a provisional refusal under the Protocol when acting as a designated party are: Denmark, Estonia, Ireland, Greece, Lithuania, Finland, Sweden and the United Kingdom.
The applicable deadline (12 or 18 months) for Bulgaria, Italy, Cyprus, Poland and Slovakia when acting as a designated party depends on whether (i) such country was designated or subsequently designated before or after 01/09/2008 and (ii) the Office of origin is bound by both the Agreement and the Protocol (deadline: 12 months) or only the Protocol (deadline: 18 months).
See overview table below:
Designated country1 Country of origin Deadline to issue a refusal
Benelux, Czech Republic, Germany, Spain, France, Latvia, Hungary, Austria, Portugal, Romania and Slovenia, (Contracting EU parties bound by both the Agreement and the Protocol)
All contracting parties [Status 15/01/2013: 89 Member States]2 (Irrespective of whether they are bound by both the Agreement and the Protocol or the Protocol only)
12 months
Denmark, Estonia, Ireland, Greece, Lithuania, Finland, Sweden, UK (Contracting EU parties bound by the Protocol only)
All contracting parties [Status 15/01/2013: 89 Member States] (Irrespective of whether they are bound by both the Agreement and the Protocol or the Protocol only)
18 months
Bulgaria, Italy, Cyprus, Poland, Slovakia; if designated or subsequently designated before 01/09/20083
(Contracting EU parties bound by both the Agreement and the Protocol which have
All contracting parties [Status 15/01/2013: 89 Member States] (Irrespective of whether they are bound by both the Agreement and the Protocol or the Protocol only)
18 months
1 Malta is not part of the Madrid System. 2 For the full list of all Member States to the Madrid Agreement and to the Madrid Protocol see: https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf 3 The date of entry into force of Article 9sexies(1)(b ) of the Protocol, which rendered inoperative any declaration under Article 5(2)(b) or (c) of the Protocol (extension of the time limit for notifying a provisional refusal) between Contracting Parties bound by both the Agreement and the Protocol.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 23
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opted for an extended deadline)
Bulgaria, Italy, Cyprus, Poland, Slovakia; if designated or subsequently designated on or after 01/09/2008 (Contracting EU parties bound by both the Agreement and the Protocol which have opted for an extended deadline)
Contracting parties bound by both the Agreement and the Protocol [Status 15/01/2013: 55 Member States]
12 months
Contracting parties bound by the Protocol only [Status 15/01/2013: 33 Member States]
18 months
The Office will, on its own motion, apply the 12-month or 18-month deadline according to the above rules. Deadlines are calculated by adding the relevant periods to the date of notification from which the time limit to notify the refusal starts, indicated by INID code 580 on t he ROMARIN extract (i.e. not the date of international registration or subsequent designation) (Rule 18(1)(a)(iii) and Rule 18(2)(a) of the Common Regulations).
Only when it is decisive for determining whether the earlier mark is subject to the proof of use obligation is it for the opponent to claim a da te that is later (e.g. when a provisional refusal has been lifted after these dates or if the designated country opted for a period even longer than 18 months for notifying a refusal based on an opposition pursuant to Article 5(2)(c) of the Protocol) and for the applicant or holder to claim a date that is earlier than these dates (e.g. when a Statement of Grant of Protection has been issued before these dates) and to provide the Office with conclusive documentation thereof.
In particular, the Court has confirmed, in relation to an earlier international registration designating Germany, that the date on w hich an earlier international registration is deemed to have been ‘registered’ has to be established in accordance with the German law giving effect to the earlier right, and not by reference to the date of registration with the International Bureau of WIPO. Under German trade mark law, if protection for an i nternationally registered trade mark is provisionally refused but subsequently granted, the registration is regarded as having taken place on the date of receipt by the International Bureau of WIPO of the final notification that protection has been granted. Proper application of Article 42(2) and (3) CTMR and of Article 4(1) of the Madrid Agreement cannot lead to a breach of the principle of non-discrimination (order of 16/09/2010, C-559/08 P, ‘Atoz’, paras 44, 53-56).
2.5.1.4 International registrations designating the European Union
For international registrations designating the European Union, Article 160 CTMR provides that:
For the purposes of applying Article 15(1), Article 42(2), Article 51(1)(a) and Article 57(2), the date of publication pursuant to Article 152(2) shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put to genuine use in the Community.
As from that publication the international registration has the same effects as a registered CTM pursuant to Article 151(2) CTMR.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 24
FINAL VERSION .1.0 01/02/2015
2.5.2 Relevant time frame
If the earlier mark is subject to the use requirement at all (registered for not less than five years), the actual period for which use must be shown can simply be computed backwards from the publication date.
For example, if the contested CTM application was published on 15/06/2012 and the earlier mark was registered on 01/04/2000, the opponent would have to prove genuine use of its mark within the period beginning on 15/06/2007 and ending on 14/06/2012.
For oppositions filed against international registrations designating the EU, the opponent’s mark is under the use obligation if, at the beginning of the opposition period (which is six months after the date of the first re-publication of the international registration), it has been r egistered for not less than five years. For example, if the contested international registration was published on 15/06/2009 and the earlier mark was registered on 01/04/1996, the opponent would have to prove genuine use of its mark within the period beginning on 15/12/2004 and ending on 14/12/2009.
In the event that the European Union has not been des ignated in the international application but in a subsequent designation, the 18 months start from the date that the subsequent designation was notified to the OHIM. See decision of 20/12/2010, R 0215/2010-4 ‘Purgator’:
From the day of the subsequent designation of the European Community, an international registration has the same effect as the application for a Community trade mark, against which opposition can be raised. Publication of the date of the subsequent designation will take the place of publication of the application of the Community trade mark (Article 152 CTMR). In the present case, publication of the date of the subsequent designation of the European Community took place on 8 October 2007. At this point, the earlier trade marks with a r egistration date of 14/06/2005 had not yet been registered for five years and was not subject to a requirement of use.
Any use or non-use before or after the last five years is in general immaterial. Evidence referring to use made outside this time frame is disregarded, unless it constitutes conclusive indirect proof that the mark must have been put to genuine use also during the relevant time. The Court held in this context that circumstances subsequent to the relevant point of time may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (order of 27/01/2004, C-259/02, ‘Laboratoire la mer’, para. 31).
Where a mark has not been genuinely used for more than five years before the publication date, the fact that there may be r emaining goodwill or knowledge of the mark in the mind of the trade or customers does not ‘save’ the mark.
The use need not have been made throughout the period of five years, but rather within the five years. The provisions on the use requirement do not require continuous use (judgment of 16/12/2008, T-86/07, ‘Deitech’, para. 52).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 25
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2.5.3 Summary
Earlier mark Calculation of the beginning of the 5-year period (grace period)
CTM Date of registration
National mark By default, date of registration or of completion of registration proceedings ifproven by opponent.
IR designating Member States
By default, 12 or 18 months after the date of notification from which the time limit to notify the refusal starts (INID code 580). Can be earlier or later if proven by parties.
IR designating the EU Date of the second re-publication of the EU designation in part M.3. of theBulletin.
Contested mark Calculation of the 5-year period to prove genuine use of opposing mark(relevant time)
CTMA 5 years counted back from date of publication of the CTMA in Part A of the CTMBulletin.
IR designating the EU 5 years counted back from date of re-publication of the IR (or the subsequent designation of the EU) in part M.1. of the CTM Bulletin + 6 months (corresponding to beginning of opposition period. Second date published under INID code 441).
2.6 Extent of use
2.6.1 Criteria
In this regard, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has s eriously tried to acquire a com mercial position in the relevant market. The trade mark has to be us ed for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgment of 11/03/2003, C-40/01, ‘Minimax’, para. 37). This does not mean that the opponent has to reveal the total volume of sales or turnover figures.
Concerning the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred as well as the frequency of those acts on the other (judgment of 08/07/2004, T-334/01, ‘Hipoviton’, para. 35).
The assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (judgment of 08/07/2004, T-203/02, ‘VITAFRUIT’, para. 42).
Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (judgment of 08/07/2010, T-30/09, ‘peerstorm’, para. 42 et seq.).
Use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous during the relevant period five years.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 26
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It is sufficient if the use had been m ade at the very beginning or end o f the period, provided that this use was genuine (judgment of 16/12/2008, T-86/07, ‘Deitech’).
The exact decisive threshold proving genuine use cannot be de fined out of context. The turnover and volume of sales of the product must always be assessed in relation to all the other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. Use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on t he corresponding market (judgment of 11/03/2003, C-40/01, ‘Minimax’, para. 39; judgment of 08/07/2004, T-203/02, ‘Vitafruit’, para. 42).
Low turnover and sales, in absolute terms, of a medium- or low-priced product might support the conclusion that use of the trade mark in question is not genuine. However, with regard to expensive goods or an exclusive market, low turnover figures can be sufficient (decision of 04/09/2007, R 0035/2007-2, ‘Dinky’, para. 22). It is, therefore, always necessary to take the characteristics of the market in question into account (judgment of 08/07/2004, T-334/01, ‘Hipoviton’, para. 51).
A de minimis rule cannot be l aid down. Use of the mark by a s ingle client, which imports the products for which the mark is registered, can be sufficient to demonstrate that such use is genuine if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (order of 27/01/2004, C-259/02, ‘Laboratoire de la mer’, para. 24 et seq.).
It is irrelevant that the use has been m ade with the same customer, as long as the trade mark is used publicly and outwardly and not solely within the undertaking which owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (judgment of 08/07/2004, T-203/02, ‘VITAFRUIT’, para. 50).
However, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence to dispel possible doubts as to its genuineness (judgment of 08/07/2004, T-334/01, ‘Hipoviton’, para. 37).
Concerning the ratio between the turnover generated by the sales of products under the earlier mark and the applicant’s annual turnover, it should be noted that the degree of diversification of the activities of undertakings operating in one and the same market varies. Moreover, the obligation to produce evidence of genuine use of an earlier trade mark is not designed to monitor the commercial strategy of an undertaking. It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (judgment of 08/07/2004, T-334/01, ‘Hipoviton’ para. 49).
Special circumstances, for example lower sales figures during the initial marketing phase of a product, could be of relevance when assessing the genuineness of the use (judgment of 08/07/2004, T-334/01, ‘Hipoviton’, para. 53).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 27
FINAL VERSION .1.0 01/02/2015
2.6.2 Examples of insufficient use
Case No Comment
‘WALZERTRAUM’,paras 32 ff. (confirmed by C-141/13 P)
The opponent, a G erman bakery located in a c ity of 18,000 inhabitants, proved constant monthly sales of approximately 3.6 kg of exclusive, handmade chocolates over a per iod of 22 months. Despite being advertised on a web page accessible throughout the world, the chocolates could only be or dered and bought in the opponent’s bakery. In view of the territorial and quantitative limits, the GC considered that use had not been sufficiently proven.
Judgment of 30/04/2008, T-131/06, ‘SONIA SONIA RYKIEL’
54 units of women’s slips and 31 units of petticoats were sold over a period of 13 months, for a total sum of EUR 432. The GC considered these modest quantities with regard to the relevant market (everyday consumption goods, sold at a very reasonable price) to be insufficient.
Decision of 27/02/2009, R 0249/2008-4 – ‘AMAZING ELASTIC PLASTIC II’
500 plastic balloon kits given away as ‘samples’ free of charge cannot constitute genuine use.
Decision of 20/04/2001, R 0378/2000-1 – ‘Renacimiento’
The Board of Appeal confirmed the decision of the Opposition Division that the submission of one bill of loading showing the delivery of 40 packages of sherry is insufficient to prove genuine use.
Decision of 09/02/2012, R 0239/2011-1 – ‘GOLF WORLD’ (B 1 456 443, Golf World)
As the only evidence of use for printed matter, the opponent submitted evidence which proved 14 subscribers for a magazine in Sweden. The OD held that this is insufficient to prove genuine use in Sweden, particularly taking account of the fact that magazines are not high-priced articles.
R 2132/2010-2, – ‘SUSURRO (fig.)
Nine invoices concerning the sale of wine in 2005, 2006, 2007 and 2008 showing that over a p eriod of 36 months goods marketed under the earlier mark and worth EUR 4 286.36 were sold, as well as an undated sample of a product label were not considered as sufficient proof of genuine use of a Spanish trade mark registered for ‘alcoholic drinks (except beers)’ in Class 33. The evidence showed that the sales of wine had been made in a small, very provincial, part of Spain. For a country with over 40 million inhabitants, the amount sold of a relatively cheap wine was found to be too small to create or preserve an outlet for goods (wine) that are consumed in large quantities by the average Spanish consumer.
Decision of 07/07/2011, R 0908/2010-2 – ‘ALFA-REN’
Table of sales figures for ALFACALCIDOL products in Lithuania between 2005 and 2 008, indicating products sold by Teva Corp. under the trade mark ‘ALPHA D3’ (source: IMS health database, Lithuania); an undated copy of packaging for a product ‘ALPHA D3’ (undated); and a copy of an advertisement for ‘ALPHA D3’ products sold in Lithuania (not translated) were found insufficient to show genuine use of the mark in Lithuania. It could not be seen from the evidence submitted whether the marked goods were actually distributed and, if so, the quantities involved.
Decision of 16/03/2011, R 0820/2010-1 – ‘BE YOU’
Sales of goods with profits below EUR 200 during the 9-month period of use were not considered sufficient proof of genuine use of the opposing mark in respect of the goods in Class 14.
Decision 06/04/2011, R 0999/2010-1 – ‘TAUTROPFEN CHARISMA (fig.)’
Eleven invoices showing that 13 units of ‘perfumery’ goods were sold in Spain between 2003 and 2005, for a total amount of EUR 84.63, were deemed as insufficient proof of genuine use of the sign. Account has been taken of the fact that the goods were intended for daily use and available at a very affordable price.
Decisión of 27/10/2008, B 1 118 605, ‘Viña la Rosa’
Photocopies of three independent wine guides mentioning the opponent’s trade mark (without further explanation as to the volume, edition, publisher, etc.) were not considered sufficient to prove use for wines.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 28
FINAL VERSION .1.0 01/02/2015
Case No Comment
Decision of 21/06/1999, B 70 716, ‘Oregon’
The Opposition Division found an invoice for 180 pairs of shoes as insufficient to prove genuine use.
Decision of 30/01/2001, B 193 716, ‘Lynx’
As evidence of use the opponent filed two invoices for a total amount of 122 items of clothing and four undated labels with no indication of what goods they were to be af fixed to. The Opposition Division considered them insufficient.
2.6.3 Examples of sufficient use
Case No Comment
Judgment of 16/11/2011, T-308/06, ‘BUFFALO MILE Automotive Polishing Products, para. 68
Nine invoices dated between April 2001 and March 2002 representing sales of around EUR 1 600 (with a t urnover figure barely above EUR 1 000 000 per year) and showing that items were delivered to different customers in small quantities (12, 24, 36, 48, 60, 72 or 144 pieces), for widely-used products like shoe polish, in the largest European market, Germany, with approximately 80 million potential consumers, were deemed as providing evidence of use that objectively is such as to create or preserve an outlet for polishing cream and leather conditioner. Furthermore, the volume of sales, in relation to the period and frequency of use, was deemed to be significant enough not to be concluded as merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark. Confirmed by the GC.
Judgment of 10/09/2008, T-325/06, ‘CAPIO’, paras 48, 60
Evidence (invoices, lists of sales) proving that the intervener sold 4 hollow- fibre oxygenators with detachable hard-shell reservoirs in Finland in 1998, 105 in 1999 and 12 in 2001, for a total amount of EUR 19 901.76, was deemed sufficient proof of genuine use of the CTM registered for ‘oxygenators with integrated pump; controllers for integrated pump; regulating devices of air pressure for integrated pump; suction pumps; blood flow meters’, in Class 10.
Judgment of 27/09/2007, T-418/03, ‘LA MER’, paras 87-90
Ten invoices over a period of 33 months, regarding several product ranges, the packaging of which bears the trade mark concerned, with numbers very far apart (22 214 for the invoice of 3 January 1995, 24 085 for that of 4 May 1995, 24 135 for that of 10 May 1995 and 31 348 for that of 26 March 1997), showing that the sales were made to different persons, were deemed as permitting the inference that they had been submitted merely by way of illustration of total sales but not as showing that the trade mark was used publicly and outwardly rather than solely within the undertaking that owned the earlier trade mark or within a distribution network owned or controlled by that undertaking. Nevertheless, the sales effected, while not considerable, were deemed as constituting use that objectively was such as to create or preserve an outlet for the products concerned and entailing a volume of sales that, in relation to the period and frequency of use, was not so low as to allow the conclusion that the use was merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 29
FINAL VERSION .1.0 01/02/2015
Case No Comment
Judgment of 25/03/2009, T-191/07, ‘BUDWEISER’
The Board of Appeal (decision of 20/03/2007, R 0299/2006-2 – ‘BUDWEISER/earlier international word mark BUDWEISER’, para. 26) found, essentially, that the documents presented to it during the administrative proceedings – invoices proving the sale of beer in France amounting to more than 40 000 litres between October 1997 and April 1999, 23 invoices issued in Austria between 1993 and 2000 to a single buyer in Austria, and 14 invoices issued in Germany between 1993 and 1997 – were sufficient to demonstrate the extent of use of the earlier international word mark BUDWEISER (IR No 238 203) in those countries. The Board’s findings were confirmed by the GC.
Judgment of 11/05/2006, C-416/04 P, ‘Vitafruit’, paras 68-77
Evidence of the sale to a single customer in Spain of concentrated fruit juices during a period of eleven and a half months with a total volume of sales of EUR 4 800, corresponding to the sale of 293 cases of 12 items each, was considered sufficient use of the earlier Spanish trade mark.
Judgment of 08/07/2010, T-30/09, ‘peerstorm’, paras 42, 43
As evidence of use, the opponent (merely) provided several catalogues for end consumers, featuring the relevant trade mark on clothing articles. The Court held that ‘…it is true that those catalogues provide no information on the quantity of goods actually sold by the intervener under the trade mark PETER STORM. However, it is necessary to take into account … the fact that a large number of items designated by the trade mark PETER STORM were offered in the catalogues and that those items were available in more than 240 shops in the United Kingdom for a significant part of the relevant period. Those factors support the conclusion, in the context of a global assessment … that the extent of its use was fairly significant.’
Decision of 04/09/2007, R 0035/2007-2 – ‘DINKY’
The sale of approximately 1 000 miniature toy vehicles was considered sufficient extent of use in light of the products being sold mainly to collectors at a high price in a particular market.
Decision of 11/10/2010, R 0571/2009-1 – ‘VitAmour’
The sale of 500 kg of milk proteins for a total value of EUR 11 000 was considered sufficient to prove genuine use for milk proteins for human consumption. In view of the nature of the products, which are not consumer goods but ingredients for use by the food processing industry, the amount and values shown did demonstrate a market presence above the threshold required.
Decision of 27/07/2011, R 1123/2010-4 – ‘Duracryl’
Eleven invoices made out to different undertakings in various regions of Spain, showing that the proprietor of the mark sold, in the relevant period and under the mark, 311 containers of the product, in different sizes, for a net amount of EUR 2 684, were deemed sufficient to prove genuine use of a mark registered for ‘preservatives against deterioration of wood’ in Class 2.
Decision of 01/02/2011, B 1 563 066
An annual turnover of more than EUR 10 million over several years was claimed for medical preparations. The corresponding invoices (one per relevant year) only proved actual sales of about EUR 20 per year. In an overall assessment, and in the context of further material submitted such as price lists, a sworn statement, packaging and advertising material, the Office found this sufficient to prove genuine use.
Decision of 26/01/2001, B 150 039 The Opposition Division regarded evidence of sales for around2 000 furry toy animals in a high-priced market sector as sufficient.
Decision of 18/06/2001, B 167 488
The opponent submitted one invoice referring to the sale of one high-precision laser cutting machine for FRF 565 000, a catalogue describing its performance and some photographs depicting the product. The Opposition Division considered them as sufficient evidence taking into account the nature of the product, the specific market and its considerably high price.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 30
FINAL VERSION .1.0 01/02/2015
2.7 Use of the mark in forms different from the one registered
2.7.1 Introduction
Article 15 CTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark.
The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be bet ter adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23/02/2006, T-194/03, ‘Bainbridge’, para. 50).
The General Court (the ‘GC’) further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (judgment of 23/02/2006, T-194/03, ‘Bainbridge’, para. 50).
In order to decide whether the sign as used and the sign as registered are broadly equivalent, it must first be established which elements are negligible. The GC has developed criteria for doing so in several judgments.
Paragraph 2.7.2 will deal with these criteria. Paragraph 2.7.3 will describe Office practice in relation to the ‘variation’ of marks, ‘additions’ of elements to marks and ‘omissions’ of elements of marks.
Finally, it should be not ed that, in order to establish use of the trade mark for the purposes of Article 15(1)(a) CTMR, the proprietor of a r egistered trade mark is not precluded from relying on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even if that different form is itself registered as a trade mark (judgment of 25/10/2012, C-553/11, ‘Rintisch’, para. 30).
2.7.2 Criteria of the Court
In brief, the test developed by the Court consists of first determining what the distinctive and dominant elements of the registered sign are and t hen verifying if they are also present in the sign as used.
The GC has held that:
the assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (judgment of 24/11/2005, T-135/04, ‘Online Bus’, para. 36).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 31
FINAL VERSION .1.0 01/02/2015
With regard to additions:
• Several signs may be used simultaneously without altering the distinctive character of the registered sign (judgment of 08/12/2005, T-29/04, ‘Cristal Castellblanch’, para. 34).
• If the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (judgment of 30/11/2009, T-353/07, ‘Coloris’, paras 29-33 et seq., judgment of 10/06/2010, T-482/08, ‘Atlas Transport’, paras 36 et seq.).
With regard to omissions:
• If the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trade mark (judgment of 24/11/2005, T-135/04, ‘Online Bus’, para. 37).
2.7.3 Office practice
In general, it has to be assessed whether the use of the mark constitutes an acceptable or unacceptable ‘variation’ of its registered form.
Therefore, there are two questions to be answered. Firstly, it must be clarified what is to be regarded as the distinctive character of the mark as registered4. Secondly, it must be evaluated whether the mark as used alters this distinctive character. These questions have to be answered on a case-by-case basis.
There is interdependence between the strength of the distinctive character of a mark and the effect of alterations. Marks of strong distinctive character may be less influenced by changes than marks of limited distinctiveness. Adding elements to or omitting elements from the mark are more likely to affect the distinctive character of marks of limited distinctiveness.
Where a mark is composed of several elements, only one or some of which are distinctive and have rendered the mark as a whole registrable, an alteration of that distinctive element(s) or its omission or replacement by another element will generally mean that the distinctive character is altered.
In order to determine whether the use of a variation of the mark should be accepted or whether the distinctive character is altered, account must be taken of the practices in the branch of business or trade concerned and the relevant public.
The following sections contain a number of practical guidelines for assessing whether additions (paragraph 2.7.3.1), omissions (paragraph 2.7.3.2) and alterations (paragraph 2.7.3.3) in the form of the sign as used alter the distinctive character of the registered trade mark.
4 See The Guidelines, Part C, Opposition, Section 2, Identity and Li kelihood of Confusion, Chapter 4, Distinctiveness.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 32
FINAL VERSION .1.0 01/02/2015
2.7.3.1 Additions
As indicated above, with regard to additions, (i) several signs may be us ed simultaneously without altering the distinctive character of the registered sign and (ii) if the addition is non-distinctive or weak and/or not dominant, it does not alter the distinctive character of the registered trade mark.
The following sections provide examples of these two types of scenarios:
• use of several signs simultaneously;
• additions of other verbal elements;
• additions of figurative elements.
Use of several marks or signs simultaneously
It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a di fferent form, but the two independent marks are validly used at the same time.
There is no legal precept in the Community trade mark system which obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 CTMR. Two or more trade marks may be us ed together in an autonomous way, with or without the company name, without altering the distinctive character of the earlier registered trade mark.
The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (judgment of 18/04/2013, C-12/12, ‘SM JEANS/LEVI‘S’, para. 36.). Similarly, the Court has clarified that use can be genuine where a figurative mark is used in conjunction with a word mark superimposed over it, even if the combination of those two marks is itself registered, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do no t change the distinctive character of that trade mark as registered (judgment of 18/07/2013, C-252/12 ‘Specsavers’ para. 31)
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 33
FINAL VERSION .1.0 01/02/2015
Registered form Actual use Case No
CRISTAL T-29/04
‘In the present case the mark CRISTAL appears clearly four times on the neck of the bottle marketed by the intervener and t wice on the main label, accompanied by the symbol ®. On the neck, that mark is separate from the other elements. In addition, the mark CRISTAL appears alone on the boxes in which bottles of the mark CRISTAL are marketed. Equally, on the invoices produced by the intervener reference is made to the term ‘cristal’ with the mention ‘1990 coffret’. It should be noted that the mark CRISTAL thus identifies the product marketed by the intervener’ (para. 35).
‘As regards the mention ‘Louis Roederer’ on the main label, it merely indicates the name of the manufacturer’s company, which may provide a direct link between one or more product lines and a specific undertaking. The same reasoning applies to the group of letters ‘lr’ which represents the initials of the intervener’s name. As pointed out by OHIM, joint use of those elements on the same bottle does not undermine the function of the mark CRISTAL as a means of identifying the products at issue’ (para. 36). ‘Furthermore, OHIM’s finding that the use of the word mark together with the geographical indication ‘Champagne’ cannot be considered to be an addition capable of altering the distinctive character of the trade mark when used for champagne must be endorsed. In the wine sector the consumer is often particularly interested in the precise geographical origin of the product and the identity of the wine producer, since the reputation of such products often depends on whether the wine is produced in a certain geographical region by a certain winery’ (para. 37).
‘In those circumstances it must be held that the use of the word mark CRISTAL together with other indications is irrelevant and that the Board of Appeal did not infringe Article 15(2)(a) of Regulation No 40/94, Article 43(2) and (3) thereof, or Rule 22(2) of the implementing regulation’ (para. 38).
Registered form Actual use Case No
L.114 Lehning L114 T-77/10 and T-78/10
L.114 is a French trade mark registered for ‘pharmaceutical products’ in Class 5.
The Court found that: 1) the missing full-stop between the capital letter ‘L’ and the number 114 constituted a minor
difference which did not deprive earlier mark L.114 of its distinctive character (para. 53). 2) the fact that earlier mark ‘L.114’ was used together with the house mark ‘Lehning’ was insignificant
and did not alter its distinctive character within the meaning of Article 15(1)(a) CTMR (para. 53).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 34
FINAL VERSION .1.0 01/02/2015
Registered form Actual use Case No
YGAY YGAY together with a number of other verbal and figurative
elements
R 1695/2007-1 (confirmed by T-546/08)
In the Board’s decision (confirmed by the Court in T-546/08, paras 19, 20) it was pointed out that the trade mark YGAY appears in many photographs on both the label and the box in which the bottle is sold. On the labels, the trade mark in question is separated from the other elements. On some labels, it appears on its own, beneath the phrase MARQUES DE MURRIETA, written in large bold letters. On others, the phrase BODEGAS MARQUES DE MURRIETA is written in small letters in the upper part, while the elements CASTILLO YGAY are written in large, stylised letters across the label. The trade mark YGAY also appears on its own or together with the phrase CASTILLO YGAY on the boxes in which the bottles are sold. Reference is also made, on the invoices submitted by the opponent, to the trade mark YGAY, along with general information such as the year of production and origin, etc. It follows, therefore, that the sign YGAY functions as the trade mark identifying the goods, ‘wine’, sold by the opponent (para. 15).
The mention of MARQUES DE MURRIETA in this context might merely be an indication of the name of the manufacturer’s company or the vineyard that produces and sells the wine, which might provide a direct link between one or more product lines and a specific undertaking (see Court of First Instance (CFI) judgment of 08/12/2005, T-29/04, ‘Cristal Castellblanch’, para. 36) (para. 16).
Registered form Actual use Case No
Mark No 1
Mark No 2
C-12/12
Levi Strauss is the proprietor of the two CTMs reproduced above. Mark No 1 is always used in conjunction with the word mark LEVI’S, i.e., as in Mark No 2. The Court found that the condition of ‘genuine use’ may be f ulfilled where a C ommunity figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.
Registered form Actual use Case No
C-252/12
Specsavers commenced proceedings for trade mark infringement and passing off on the basis of the
earlier CTMs SPECSAVERS (word mark), as well as the figurative signs , and
, against ASDA, a supermarket chain which relaunched its optical business and targeted Specsavers in its marketing campaign. Specsavers used in colour its B&W registrations and a cquired
reputation in the UK for the colour green, using its sign as follows: . ASDA also acquired reputation in the UK for another shade of green in its supermarket business and applied it to the optical
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 35
FINAL VERSION .1.0 01/02/2015
business: .
The Court found that the use of with the superimposed word sign may be considered genuine use of the wordless logo mark to the extent that the wordless logo mark as it was registered always refers in that form to the goods of the Specsavers group (to be determined by the referring court) (para. 24).
However, the opponent must provide evidence that the additional sign is in fact an independent mark or sign, which refers, for instance, to the company mark, the manufacturer, etc.
Registered form Actual use Case No
MINUTO DUBOIS MINUTO R 0206/2000-3
The Board of Appeal regarded the presentation of the two words as the use of two separate marks, since the evidence submitted by the opponent showed that one of them was an old brand of the opponent with its own identity and that this mark was present on the market with a number of accompanying signs, as is common practice in the labelling of the specific products (wine).
‘DUBOIS’ and ‘MINUTO’ are separate marks which are affixed together in the concrete product, as is common practice in the labelling of wine products (name of the winery and nam e of the product). As regards Spanish brands see for example ‘TORRES’ - ‘Sangre de Toro’, ‘TORRES’ - ‘Acqua d’Or’. When asking for ‘MINUTO’ wine, the relevant consumer will be aware that such wine is included within the line of products ‘DUBOIS’, however, ‘MINUTO’ will be perceived as a t rade mark of its own, even if it may appear next to the sign ‘DUBOIS’ in the invoices, brochures and/or product labels’ (para. 18).
On the other hand, the genuineness of use could be put into doubt in cases where used together with another mark, the registered mark is perceived as a mere decorative element.
Addition of other verbal elements
In principle, a di fference in words or even letters constitutes an al teration of the distinctive character of the mark. However, in the following three paragraphs a number of situations are described where additions are acceptable. The fourth paragraph provides examples of unacceptable additions.
Additions of non-dominant elements
Registered form Actual use Case No
COLORIS T-353/07
The GC confirmed that the use of the mark Coloris with additional word elements such as ‘global coloring concept’ or ‘gcc’ did not alter its distinctive character because the additional elements were merely used together with the mark Coloris and positioned below it and were of such a s ize that they were not predominant in that mark.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 36
FINAL VERSION .1.0 01/02/2015
The same finding applies with even greater force to the additional words (global coloring concept) as they are words with a general meaning and the word ‘coloring’ refers to the goods concerned and, consequently, has a certain descriptive character.
Additions with generic or descriptive meaning
Use of a registered word mark (or any other mark) together with a generic indication of the product or descriptive term will be considered as use of the registered mark. Additions which are just indications of characteristics of the goods and services, such as their kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, do not in general constitute use of a variant but use of the mark itself.
For example:
Registered form Actual use Case No
HALDER HALDER I, HALDER II,
HALDER III, HALDER IV, HALDER V
T-209/09
The Court indicated that “the fact that, in that newspaper article, the names of the funds are composed of the term ‘halder’ to which a number in Roman numerals has been added is not such as to call into question the conclusion on use of the mark, since, because of their brevity, their weak distinctive character and their ancillary position, those additions do not alter the distinctive character of the mark in the form in which it was registered” (para. 58).
Other acceptable additions
The addition of insignificant elements such as punctuation marks does not alter distinctive character:
Registered form Actual use Case No
PELASPAN-PAC PELASPAN PAC R 1986/2011-4
The use of the earlier mark ‘PELASPAN-PAC’ without the hyphen connecting the elements ‘PELASPAN’ and ‘PAC’ does not alter the distinctive character of the earlier mark as registered and therefore counts for the genuine use assessment.
In the same way, the use of plural or singular forms or vice versa in meaningful words (for instance, by adding/omitting a letter ‘s’ in English or other languages) normally does not alter distinctive character:
Registered form Actual use Case No
Tentation Tentations R 1939/2007-1
‘In the present case, and after examination of the evidence submitted, which focuses essentially on the Spanish market, the Board is of the opinion that use of the registered trade mark ‘TENTATION’ through use of the sign ‘TENTATIONS’ does not alter the distinctive character of the original registered trade mark. Specifically, the mere addition of the letter ‘S’ to the end of the trade mark neither substantially alters the visual appearance or pronunciation of the registered trade mark nor creates a different conceptual impression on the Spanish market. The trade mark in question will be perceived merely as being in the plural instead of the singular. Therefore, this change does not alter the distinctive character of
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 37
FINAL VERSION .1.0 01/02/2015
the sign’ (para. 17).
The addition of the ‘type of enterprise’ is also acceptable:
Registered form Actual use Case No
The used form contained the logo plus the words
‘SOCIEDAD LIMITADA’ (in small letters) underneath the
term ‘SISTEMAS’ and/or the ‘E’ device with the words ‘epco
SISTEMAS, S.L.’ in bold
R 1088/2008-2 Confirmed by T-132/09
‘…these signs are not, as the applicant seems to suggest, significant alterations of the distinctive character of the earlier mark as registered’ (para. 24).
Unacceptable additions
Registered form Actual use Case No
Captain Captain Birds Eye R 0089/2000-1
‘It cannot be considered … that the use of CAPTAIN BIRDS EYE constitutes use of the mark CAPTAIN in a form which does not alter the distinctive character of the mark as registered, since the two signs appear essentially different’ (para. 20).
Registered form Actual use Case No
ECO ECOORD-ECO, ECOCOM-ECO, ECOSEM-ECO R 0634/2009-4
‘The opponent relies further on a set of 75 invoices, in which not the opponent’s mark as such is indicated but the terms ECOORD-ECO, ECOSEM-ECO and ECOCOM-ECO. None of these constitutes the form as registered. … The opponent’s argument that the terms ECOORD, ECOSEM and ECOCOM are negligible, descriptive terms cannot be accepted. It is irrelevant if it was the intention of the opponent to place descriptive elements in front of its trade mark. The decisive point is whether the consumers perceive these additional elements as mere descriptive prefixes or rather as genuine, distinctive elements … The terms as such have no meaning in Italian and the explanations provided by the opponent in solving the rather complex acronyms cannot be regarded as self-explanatory for the Italian consumers. They appear to be fanciful and distinctive, forming an integral part of the marks’ (paras 17-20).
‘Finally, the terms used in the invoices have different prefixes and are three times longer than the original mark. Moreover, the combinations used, ECOORD, ECOSEM and ECOCOM, have their own distinctive character and they are placed at the beginnings of the marks, to which the consumer pays generally more attention. For these reasons, the use of the terms ECOORD-ECO, ECOSEM-ECO and ECOCOM-ECO cannot be regarded as a slightly different use of the earlier mark’ (para. 21).
Addition of figurative elements
In cases where the figurative element plays only a minor role, the distinctive character of the sign as registered is not affected.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 38
FINAL VERSION .1.0 01/02/2015
Registered form Actual use Case No
BIONSEN R 1236/2007-2
‘Moreover, this material shows that the respondent’s products also contain other elements, in particular a Japanese character within a small circle, which is depicted either above or below the word ‘BIONSEN’’ (para. 19).
‘However, in the present case, the combination of the stylized form of the word ‘BIONSEN’ and the Japanse character, independently of whether it is above or under the word ‘BIONSEN’, constitutes at the most use which differs from the form in which it was registered only in negligible elements. The word ‘BIONSEN’ as used is merely a slight and banal stylization of the word ‘BIONSEN’. As to the addition of the figurative element in the form of a circular element with a Japanese character, this will hardly be noticed by the average consumer due to its relatively small size and position, either under or on the right side above the word ‘BIONSEN’’ (para. 23).
Registered form Actual use Case No
BLUME
Sign used in connection with the following figurative element:
R 0681/2001-1
‘As regards the trade mark BLUME No 1 518 211, the Opposition Division correctly held that the addition of the figurative element … does not alter the distinctive character of the trade mark BLUME since the word ‘BLUME’ is separated from the device element, which is clearly legible and written in block letters’ (para. 22).
On the other hand the addition of a figurative element can alter the distinctive character of a mark if this figurative element is not seen as a mere decorative element but is dominant and distinctive in the overall impression of the mark.
Registered form Actual use Case No
R 0275/2006-2
‘The Board concurs with the CTM Proprietor in that the sign [actually used] cannot be considered merely as a slight variation of the earlier mark … as registered. Regardless of the fact that the signs have the word element ‘HYBRIS’ in common, the additional figurative element – an inverted letter ‘y’ in peculiarly shaped brackets – cannot be considered as a ‘negligible element’. The figurative element at issue is rather unusual and eye-catching. It is not a mere decorative element. Further, it occupies the prominent first position within the sign as used and forms an integral part thereof. It will not be neglected in the overall impression created by the sign’ (para. 23).
2.7.3.2 Omissions
When considering ‘omissions’ of elements of a mark in its used form, care has to be taken to check that the distinctive character of the mark has not been altered.
If the omitted element is in a secondary position and not distinctive, its omission does not alter the mark (judgment of 24/11/2005, T-135/04, ‘Online Bus’).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 39
FINAL VERSION .1.0 01/02/2015
Omissions of non-dominant elements
Registered form Actual use Case No
T-135/04
The GC considered that both the registered form of the earlier mark and the form used included the word ‘BUS’ and the figurative element of ‘three interlaced triangles’. The presentation of the elements is not particularly original or unusual in either form. The variation in them does not affect the distinctive character of the trade mark. As regards the omission of ‘Betreuungsverbund für Unternehmer und Selbständige e.V.’, the latter was ‘a string of words, written in small characters and occupying a s econdary position, at the bottom of the sign. Its meaning (Association for the assistance of businessmen and the self-employed, registered association) refers to the services in question. Therefore, in the light of the descriptive content of that element and its accessory position in the presentation of the sign, it must be held that it is not distinctive … It follows from the foregoing that the form used of the earlier trade mark used does not contain any differences such as to alter the distinctive character of that trade mark’ (paras 34 et seq.).
Omissions of generic or descriptive elements
Where a registered mark contains a generic indication of the product or descriptive term, and this term is omitted in the used form of the sign, such use will be considered as use of the registered mark.
Omissions which are just indications of characteristics of the goods and services, such as their kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, in general constitute use of an acceptable variant.
Registered form Actual use Case No
T-415/09 (confirmed by C-621/11 P)
The Board considered that although in some pieces of evidence the earlier mark did not include the word ‘beachwear’ ‘this does not alter the distinctiveness of the earlier mark because it is plainly descriptive of the nature of the goods’ (‘T-shirts, beachwear’). The GC held: ‘In the present case, the earlier mark is a composite mark, representing a ship’s wheel, that is to say, a sign with a rounded shape. In the centre of the sign there is a fish skeleton, at the top of which is written the term ‘fishbone’, and at the bottom the term ‘beachwear’. … [A]lthough the use of the earlier mark varies in certain items of evidence and is used in a form different from that under which it was registered, in the sense that the sign does not include the term ‘beachwear’, such a fact does not affect its distinctive character. The term ‘beachwear’, which means ‘beach clothing’ in English, is descriptive of the nature of the goods covered by the earlier mark [emphasis added]. That descriptive character is obvious in the case of the ‘beach clothing’ covered by the earlier mark, but also in the case of ‘t-shirts’, for which the term ‘beachwear’ will immediately be perceived as meaning that it refers to a t-shirt to be worn in casual situations, for example, on the beach in summer. Consumers will thus understand that term as
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 40
FINAL VERSION .1.0 01/02/2015
designating the type of goods and will not perceive it as an indication of their commercial origin. The fact that the term ‘beachwear’ is written in a more fanciful font than that of the term ‘fishbone’, which is written in ordinary capital letters, cannot alter such an assessment. Furthermore, the font of the term ‘beachwear’ cannot be regarded as uncommon, since it comprises printed lower-case characters. As for the horizontal position of the term ‘beachwear’ in the earlier mark, which runs in a perpendicular sense across the bottom of a ship’s wheel, it is no more graphically incisive than that of the term ‘fishbone’ which, also written horizontally, follows the rounded shape of that wheel’ (paras 62-63).
Registered form Actual use Case No
R 1190/2011-4
The figurative signs reproduced in the evidence of use contain the distinctive elements of the earlier mark and those elements are clearly visible on the labels. The inversion of the figurative and word elements of the sign and the additional indication of the respective appellation of origin (Soave, Soave Superior and Chianti) do not alter the distinctive character of the earlier mark, which appears reproduced in the sign with all its distinctive elements. Consumers of wines are particularly interested in knowing the precise geographical origin of these products; however, the addition of this information about the geographical origin of the goods is not capable of altering the distinctive character of a trade mark in its essential function of identifying a particular commercial origin (judgment of 08/12/2005, T-29/04, ‘Cristal Castellblanch’, para. 19).
Other acceptable omissions
The omission of insignificant prepositions does not alter the distinctive character:
Registered form Actual use Case No
CASTILLO DE PERELADA CASTILLO PERELADA B 103 046
It is not considered that absence of use of the word ‘de’ affects the distinctive character of the trade mark.
There are instances where the earlier sign is composed of a distinctive verbal element (or several) and a figurative element (or several), with the latter perceived by the relevant public as banal. Such banal elements are considered non-distinctive, and their omission does not change the distinctive character of the sign. Therefore, it is important to establish which elements influence the distinctive character of the mark and how consumers will perceive them.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 41
FINAL VERSION .1.0 01/02/2015
Registered form Actual use Case No
ROYAL
R 214/2012-1
The signs depicted above differ from the earlier word marks ‘ROYAL’ only inasmuch as the words are curved and, in the case of the sign used for products other than baking-powder, show a red banner in the background. From the point of view of the relevant public, this banal graphic representation will be perceived to be merely decorative and to adapt the signs to the get-up of the product packaging. This graphic representation does not convey any distinctiveness on its own to the signs as used and thus does not alter the earlier word mark’s distinctive character. The same considerations apply as regards the earlier figurative mark, which according to its colour claim is coloured in red and white and whose word element ‘Royal’ is depicted diagonally. In that respect, it corresponds to the sign used in the course of trade for products other than baking-powder. (paras. 33, 34).
The omission of the transliteration of a term is generally considered as an acceptable alteration.
Registered form Actual use Case No
APALIA-ΑΠΑΛΙΑ APALIA R 2001/2010-1
The omission of the transliteration of the term in Greek characters does not alter the distinctive character of the mark as the form used contains the term APALIA, which is distinctive and dominant.
Unacceptable omissions
In principle, a di fference in words or even letters constitutes an alteration of the distinctive character of the mark.
Registered form Actual use Case No
TONY HAWK
HAWK
B 1 034 208
‘[T]he absence of the word element ‘TONY’ in the first two marks significantly alters the distinctive character of the registered earlier mark ‘TONY HAWK’. Therefore, these marks shall be per ceived as separate marks and their use cannot be considered as the use of the word mark ‘TONY HAWK’.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 42
FINAL VERSION .1.0 01/02/2015
Registered form Actual use Case No
(in Spain)
Figurative (without ‘Light Technology’ or only with the term ‘Light’ and other verbal elements) or in word form
R 1625/2008-4 (appeal T-143/10 did not refer to
the Spanish trade marks)
‘In the present case, the Board has been able to verify that none of the items of proof of use supplied reproduces the earlier Spanish signs in the form in which they were registered, since either the mark is represented in its purely visual form, that is, without the expression ‘light technology’, or the visual element is accompanied only by the term ‘Light’ and other word elements or the expression ‘LT Light- Technology’, which is also in the form of a word lacking the visual element which obviously characterises the earlier Spanish marks on which the opposition is based … Under these circumstances, and in view of the fact that the modifications made to the representation of earlier marks modify their distinctive character, it is considered that, in any case, the proof submitted does not demonstrate use of the Spanish marks on which the opposition is based’ (paras 15, 16).
Registered form Actual use Case No
SP LA SPOSA LA SPOSALA SPOSA COLLECTION R 1566/2008-4
‘The earlier trade mark is registered as ‘SP LA SPOSA’. The documents submitted as proof of use refer only to female wedding dresses. The element ‘LA SPOSA’ is a common term, which will be understood by the Italian and Spanish public as ‘the bride’ and has a weak distinctive character for the goods in issue, namely wedding dresses. The opponent itself, in its price list ‘tarifa de precios’ which is drafted in various official languages of the EC, translated this term into the respective languages; underneath the term ‘LA SPOSA’, the terms ‘novia’ are mentioned in the Portuguese version of the list, ‘bride’ in the English version, ‘Braut’ in the German version, and so on. This shows that even the respondent itself understands the term ‘LA SPOSA’ as a reference to the consumer targeted, namely the bride’ (para. 18).
‘Therefore the element ‘SP’ at the beginning of the earlier mark is a distinctive element and cannot be disregarded. This element cannot be neglected, first and foremost as it is placed at the beginning of the mark. Also, it is meaningless and distinctive on its own, in all the languages of the European Community’ (para. 19).
‘[T]he omission of the letter ‘SP’ in the word ‘LA SPOSA’ or ‘LA SPOSA COLLECTION’ is not an acceptable variation of the earlier mark but a significant modification to the distinctive character of the mark. The documents submitted by the respondent are insufficient to prove that the mark ‘SP LA SPOSA’ has been put to genuine use’ (para. 26).
In cases where the figurative element is the dominant or distinctive element and not merely decorative or banal, its omission can alter the distinctive character of the sign.
Registered form Actual use Case No
ESCORPION R 1140/2006-2
‘The earlier trade marks are strongly characterised by the presence of the figurative element. However, the documents submitted during the opposition proceedings and, even if they were to be t aking into account, the appeal proceedings, do not show any use of the figurative element contained in the earlier trade marks’ (para. 19).
‘Therefore, the Office considers that the alteration of the opponent’s trade mark appearing in the way it is currently used is not an acceptable alteration and consequently use of the registered mark is not shown.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 43
FINAL VERSION .1.0 01/02/2015
The opponent has not complied with the requirements of Article 43(2) and (3) CTMR and thus the opposition must be rejected, as far as it was based on the Spanish trade mark registrations’ (para. 20).
2.7.3.3 Other alterations
Acceptable alterations
Word marks
Word marks are considered used as registered regardless of typeface, use of upper/lower case or colour. It would not be correct to analyse this type of use from the perspective of whether distinctive character is altered. However, a very particular typeface (highly stylised) may lead to a different conclusion.
Changing the letter size or switching between upper/lower case is customary when using word marks. Therefore, such use is considered use of the registered mark.
Registered form Actual use Case No
MILENARIO R 0289/2008-4
The Board confirmed OD’s views that use of the word mark ‘MILENARIO’ written in stylised bold characters did not affect the distinctive character of the mark, as the word ‘MILENARIO’ was considered to be the dominant element of the mark registered for ‘sparkly wines and liquors’ in Class 33 (para. 13).
Registered form Actual use Case No
AMYCOR R 1344/2008-2
Representation of the word mark, registered for ‘pharmaceutical and sanitary preparations; plasters; materials for dressings; fungicides; disinfectants’ covered by the earlier trade mark in Class 5, in a stylised form together with figurative elements was not considered as substantially changing the distinctive character of the word trade mark ‘AMYCOR’ as registered.
Registered form Actual use Case No
THE ECONOMIST R 0056/2011-4
‘The applicant’s argument that the proof of use is insufficient because it refers to the device mark … and not to the word mark ‘THE ECONOMIST’ fails. First, the submitted evidence refers to both earlier marks (i.e. the word mark and the device mark). Furthermore, use of the earlier device mark constitutes use of the earlier word mark. In this respect it should be noted that word marks are considered used as registered, also if the typeface is different (this may be different if the typeface is a very particular one), if there is a usual change in the letter size or a usual change between lower-case and capital letters, if used in a specific colour or if used in combination with generic additions. Use of the word ‘THE ECONOMIST’ in a standard typeface, with the usual use of capitals at the beginning of the words ‘The’ and ‘Economist’, in a white colour on a contrasting background is considered use, not only of the earlier device mark but of the earlier word mark as well’ (para. 14).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 44
FINAL VERSION .1.0 01/02/2015
Word marks are registered in black and white. It is customary to use marks in colour. Such use does not constitute a variant but use of the registered mark.
Registered form Actual use Case No
BIOTEX (various) R 0812/2000-1
‘The mark, as shown in those documents, has been variously depicted in the following styles: – The word BIOTEX in white block capitals on a dark background in advertisements. – Reference in newspaper articles to the word BIOTEX in plain typeface. – The word BIOTEX in white block capitals with the top-most point of the letter ‘I’ in darker colouring. – The word BIOTEX in plain block white capitals on the labels and packaging of detergent products. – The word BIOTEX in plain typeface on shipping invoices. – The word BIOTEX in white upper and lower cases block letters on a darker background incorporating a figurative ‘wave’ device’ (para. 14).
‘The evidence of use shows the mark has remained, in spite of various stylistic changes, essentially BIOTEX. The letters forming the mark have in general been mere block capitals, lacking anything fanciful. Sometimes the capitals are plain and two-dimensional, at other times they are shadowed to give the impression of being three-dimensional. Sometimes the letter ‘I’ has a different colour tip. The Board considers these variations minimal and routine and that they demonstrate a practice that is commonplace not only in the particular business field of relevance here, but in other fields also. The Board does not consider that these variations invalidate use of the mark BIOTEX and therefore the contested decision must be annulled at this point’ (para. 17).
Registered form Actual use Case No
SILVER B 61 368
‘The actual use of the trade mark which can be seen on the beer pack, the newspaper extract and on the calendar is not the use of the registered word mark SILVER, but of the colour device mark, namely a beer label with the word SILVER written in white capital letters in a red banner which overlaps a golden circle which contains the word elements “Bière sans alcool”, “Bière de haute qualité”, “pur malt” and “Brassée par le Brasseries Kronenbourg”. This does not automatically mean that the mark was not used as registered. Each case must be looked at on its own merits. In this case, the Office finds that the mark SILVER is the actual trade mark. The appearance of the other word elements “Bière sans alcool”, “Bière de haute qualité”, “pur malt” and “Brassée par le Brasseries Kronenbourg” and the figurative element is only secondary to the mark SILVER. It is also clear from the marketing study, the newspaper extract and the invoices that the actual trade mark is SILVER. The Office finds that the use of the word SILVER is so dominant in the figurative mark that it fulfils the requirements of having been used as registered.’
Figurative marks
Using a purely figurative mark (without word elements) in a f orm other than registered often constitutes an unacceptable alteration.
In the case of composite marks (i.e. marks composed of word and figurative elements), changes to certain figurative elements do not normally affect the distinctive character of the marks.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 45
FINAL VERSION .1.0 01/02/2015
Registered form Actual use Case No
T-147/03 (C-171/06 P dismissed)
‘[T]he only elements which differentiate the earlier national mark, as it was registered, from the sign used by the applicant are the stylisation of the letter ‘q’, suggesting the face of a watch, and the use of capital letters to write the verbal element of the earlier national mark … In the first place, although it is true that the stylisation of the letter ‘q’ is more pronounced in the representation of the sign used than in that of the earlier national mark, the distinctive character of the earlier mark is still based on the entire verbal element of that mark. In any case, since the stylisation of the letter ‘q’ suggests, as has just been said, the face of a watch, it is not particularly distinctive for goods in Class 14, the only goods for which the applicant has furnished proof of use of the earlier mark. In the second place, as regards the use of capital letters, it suffices to note that that is not at all original and also does not alter the distinctive character of the earlier national mark … It follows that the proof furnished by the applicant which refers to the sign reproduced in paragraph 10 above for the Class 14 goods ‘watches and watch bands or straps’ could legitimately be taken into account by the Board of Appeal for the purposes of assessing whether the applicant had shown genuine use of the earlier national mark’ (paras 28-30).
This is particularly relevant in cases where the figurative element is mainly descriptive of the relevant goods and services.
Registered form Actual use Case No
GRECO TAVERNA R 2604/2011-1
‘In relation to the ‘FETA’ product, as regards the two Greek flags next to the word ‘TAVERNA’ it should be noted that the obligation of using a trade mark as registered, does not require its proprietor to use the mark in isolation in the course of trade. Article 15(1) CTMR does not preclude the possibility of the trade mark’s proprietor adding further (decorative or descriptive) elements, or even other marks such as its house mark on the packaging of the product, as long as the trade mark ‘as registered’ remains clearly recognizable and in an individual form. The two Greek flags do not possess any distinctive character in relation to the products at hand which are commonly known to be f ood specialities originating from Greece. This is supported by the whole get-up of the product, coloured in blue and white in accordance with the colours of the Greek flag, the depiction of scenery which calls to mind a Mediterranean scene and the symbol for a Protected Designation of Origin below the picture’ (para. 39).
This is also the case where the dominant elements remain unchanged (see T-135/04, ‘Online bus’ above).
As regards specifically alterations in colour, the main question that needs to be addressed is whether the mark as used alters the distinctive character of the registered mark, i.e. whether use of the mark in colour, while being registered in black and white or greyscale (and vice versa) constitutes an alteration of the registered form. The Office and a number of Trade Mark Offices of the European Union have agreed on a common practice under the European Trade Mark and Designs Network whereby a change only in colour does not alter the distinctive character of the trade mark as long as:
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 46
FINAL VERSION .1.0 01/02/2015
• the word /figurative elements coincide and are the main distinctive elements;
• the contrast of shades is respected;
• colour or combination of colours does not have distinctive character in itself;
• colour is not one of the main contributors to the overall distinctiveness of the sign.
Registered form Actual use Case No
T-152/11
The Court took the view that, if no colour is claimed in the application, the use of different colour combinations ‘must be allowed, as long as the letters contrast against the background.’ The Court also noted that the letters M, A, D were arranged in a particular way in the CTM. Accordingly, representations of the sign which do not alter the arrangement of the letters, or the contrast of colour, constitute genuine use (paras 41 and 45).
Registered form Actual use Case No
R 1479/2010-2
The word element was considered to be the dominant feature of the figurative mark, since it was in a central position and in large letters. It was considered that the distinctive character was not changed (para. 15).
Registered form Actual use Case No
R 0877/2009-1
‘The orange background is the colour of packaging of the products. The mark is used in black on a white background, outlined in silver similar to the earlier registered mark. The typeface has been slightly modernised and the small hyphen between ‘Bi’ and ‘Fi’ has been deleted. Nevertheless, these may be considered as minor changes which do not alter the distinctive character of the mark in the form in which it is registered in the sense of Article 15(1)(a) CTMR. The typeface has been modernised but the letters keep their rounded shape and the deletion of the hyphen may pass unnoticed. The distinctive character of the earlier mark is still based on the large black letters ‘Bi Fi’, the ‘B’ and ‘F’ being in capital letters and the two ‘i’ letters in lower case, on a white background and outlined in silver’ (para. 45).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 47
FINAL VERSION .1.0 01/02/2015
3D marks
The use of a 3D mark in varying sizes usually amounts to use of the mark as registered. The addition of a word/figurative element to such a mark does not generally alter the distinctive character of the sign.
Colour marks
Colour marks are marks consisting of one or more colours per se. Where the mark is a colour combination, the registration must indicate the proportion of each colour and specify how they will appear.
Colour marks must be used with the colours as registered. Insignificant variations in the colour shade and strength will not alter distinctive character.
Where a colour combination is registered without specifying the respective proportions, use in varying proportions will not affect distinctive character. The case is different when particular proportions were claimed and t hese are substantially altered in the variant as used.
Where a c olour or colour combination is registered, use in combination with a distinctive or descriptive word will not affect distinctive character. See, by analogy, the Court judgment below regarding the proof of acquired distinctiveness of a m ark (examination):
Registered form Actual use Case No
(with word mark John Deere) T-137/08(AG case)
‘The colours covered by the application for registration were designated using the Munsell system as: 9.47 GY3.57/7.45 (green) and 5.06 Y7.63/10.66 (yellow). The arrangement is described as being ‘green for the vehicle body and yellow for the wheels’, as is shown by a picture attached to the application and
reproduced below ’ (para. 3).
‘It follows from the above that, although it is true that the disputed mark was used and promoted in conjunction with the word mark John Deere [underlining added] and that the intervener’s advertising expenditure in the European Union was presented as a whole and not individually for each country, the applicant is wrong to claim that it was not proved to the required legal standard that the intervener had used the combination of the colours green and yellow on its goods as a trade mark and that the market penetration of its goods had been deep and long-lasting in all the Member States of the European Union as at 1 April 1996’ (para. 46).
Unacceptable alterations
Where a m ark is composed of several elements, only one or some of which are distinctive and have rendered the mark as a whole registrable, an alteration of that element or its omission or replacement by another element will generally mean that the distinctive character is altered.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 48
FINAL VERSION .1.0 01/02/2015
Registered form Actual use Case No
MEXAVIT MEXA-VIT C R 0159/2005-4
In this case the use of the mark in a different spelling and the addition of the letter ‘C’ alter the distinctive character of the registered sign, because the letters ‘VIT’ are now seen as a descriptive element, namely ‘VIT C’ (which refers to ‘Vitamin C’).
Registered form Actual use Case No
R 2066/2010-4
‘[T]he ‘NOVEDADES’ catalogues dated 2004-2009 consistently show the mark and only this version. This does not constitute use of the mark [as registered] (with or without colour) as admissible under Article 15 (1) (a) CTMR. The mere fact that both marks include a word element LLOYD’S is not enough for that purpose, also the figurative elements of the earlier mark must appear in the form as used. The form as used is in a different font, lacks the single letter L at the end and surrounded by an orbital device, and lacks the circular or orbital device around the word ‘LLOYD’S’. In other words, all its figurative elements are missing in the form as used. On top, the form as used contains the conspicuous device of a flying bird with a long beak. The omission of all the figurative elements of the mark as registered and the addition of another figurative element does alter, in the form as used, the distinctive character of the mark and is much more than a mere variation or modernization’ (para. 35).
Alteration of a sign made in a dominant position
See example R 0275/2006-2 ‘HYBRIS’ quoted above in paragraph 2.7.3.1.
2.8 Use for the goods or services for which the mark is registered
In accordance with Article 15 CTMR, the mark must be used for the goods or services for which it is registered in order to be en forceable. In accordance with the first sentence of Article 42(2) CTMR, the earlier registered mark must have been put to genuine use in connection with the goods or services in respect of which it is registered and which the opponent cites as justification for its opposition. The third sentence of Article 42(2) CTMR stipulates that if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
As the GC stated in the ‘Aladin’ case:
[The provisions of Article 42 CTMR] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established (i) are a limitation on the rights which the proprietor of the earlier trade mark gains from his registration …, and ( ii) must be r econciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him. That is particularly so when, as here, the goods and services for which the trade mark has been registered form a sufficiently narrowly-defined category …
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 49
FINAL VERSION .1.0 01/02/2015
(See judgment of 14/07/2005, T-126/03, ‘Aladin’, para. 51, emphasis added.)
The analysis of genuine use must in principle extend to all of the registered goods and/or services on which the opposition is based and for which the CTM applicant has made an explicit request for proof of use. However, in situations where it is clear that likelihood of confusion can be es tablished on t he basis of some of the earlier goods and/or services, the Office’s analysis of genuine use need not extend to all the earlier goods and/or services but instead may focus on only those goods and/or services sufficient for establishing identity/similarity to the contested goods and/or services.
In other words, since likelihood of confusion can be es tablished on t he basis of a finding of genuine use for some of the earlier goods and/or services, it is unnecessary to examine the evidence of use filed by the opponent with respect to the remaining earlier goods and/or services.
The following sections include a num ber of guidelines to help establish whether the earlier trade mark has been effectively used for the registered goods and services. For further details see the Guidelines concerning Opposition, Part 2.2, Comparison of goods and services and in particular the practice regarding the use of all the general indications in the class heading, and the Guidelines concerning Examination, Part B.3, Classification of Goods and services.
2.8.1 Comparison between goods/services used and specification of goods/services
It must always be c arefully assessed whether the goods and s ervices for which the mark has been used fall within the category of the registered goods and services.
Examples:
Case No Registered G&S Used G&S Comment
T-382/08 VOGUE Footwear Retail of footwear Not OK (paras 47, 48)
T-183/08 SCHUHPARK Footwear
Retail services regarding footwear Not OK (para. 32)
R 0807/2000-3 – Demara
Pharmaceuticals, veterinary and disinfectant products
Napkins and napkin pants for incontinence
Not OK, even though the specific goods might be distributed by pharmacies (paras 14-16)
R 1533/2007-4 – GEO MADRID
Telecommunication services in Class 38
Providing an internet shopping platform
Not OK (para. 16)
R 0068/2003-2 – Sweetie
Preserved, dried and cooked fruits and vegetables; concentrated citrus fruit and fruit extracts, preserves; sugar, biscuits, cakes, pastry and confectionery
Dessert toppings that are strawberry, caramel or chocolate flavoured
Not OK (para. 20)
R 1519/2008-1 – DODOT et al
Baby diapers of textile in Class 25
Disposable diapers of paper and cellulose (Class 16)
Not OK (para. 29)
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 50
FINAL VERSION .1.0 01/02/2015
Case No Registered G&S Used G&S Comment
R 0594/2009-2 – BANIF
Administration, representation and general counsel in Class 35 Technical, economic and administrative projects in Class 42
Administration of funds and personal assets or real estate affairs (Class 36)
Not OK (para. 39)
B 1 589 871 OXIL
Electric switches and ‘parts of lamps’
Apparatus for lighting Not OK
B 253 494 CAI/Kay Education services
Entertainment services Not OK
B 1 259 136, LUPA
Transportation and distribution services in Class 39
Home delivery of goods purchased in a retail store
Not OK as the registered services are provided by specialist transport companies whose business is not the provision of other services, while the home delivery of goods purchased in a retail store is just an additional auxiliary service integrated in retail services
R1330/2011-4 – AF (fig)
Advertising, business management, business administration, office functions in Class 35
Retail services.
Not OK. If a trade mark is registered for the general indications in Class 35, but use is proven only for ‘retail services’ for particular goods, this cannot amount to valid proof of use for any of the specific indications of Class 35 or the class heading as a whole (para. 25 by analogy).
2.8.2 Relevance of the classification
It is relevant to establish whether the specific goods or services for which a mark has been used fall under any general indication listed in the class heading of a particular class of goods or services, and if so, which.
For instance, in Class 25, the class heading is ‘clothing, footwear, and headgear’ and each of these three items constitutes a ‘general indication’. Whereas, in general, classification does not serve more than administrative purposes, it is relevant, in order to assess the nature of the use, to establish whether the goods for which a mark has been used fall under the general indication of ‘clothing’, ‘footwear’ or ‘headgear’.
This is apparent when similar categories of goods have been classified differently for certain reasons. For instance, shoes have been classified in various classes according to their intended purpose: ‘orthopaedic shoes’ in Class 10 and ‘ordinary’ shoes in Class 25. It must be established, according to the evidence provided, to which kind of shoes the use relates.
2.8.3 Use and registration for general indications in ‘class headings’
Where a mark is registered under all or part of the general indications listed in the class heading of a particular class and where it has been used for several goods or services that are properly classified in the same class under one of these general indications, the mark will be considered as having been used for that specific general indication.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 51
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Example: The earlier mark is registered for clothing, footwear, headgear in Class 25. The evidence relates to ‘skirts’, ‘trousers’ and ‘T-shirts’.
Conclusion: The mark has been used for clothing.
On the other hand, when a mark is registered for only part of the general indications listed in the class heading of a particular class but has been used only for goods or services which fall under another general indication of that same class, the mark will not be considered as having been used for the registered goods or services (see also paragraph 2.8.4 below).
Example: The earlier mark is registered for clothing in Class 25. The evidence relates to ‘boots’ only.
Conclusion: The mark has not been used for the goods for which it is registered.
2.8.4 Use for sub-categories of goods/services and similar goods/services
This part deals with the extent of protection granted where there is use for sub- categories of goods and of ‘similar’ goods (or services).
In general, it is not appropriate to accept proof of use for ‘different’ but somehow ‘linked’ goods or services as automatically covering registered goods and services. In particular, the concept of similarity of goods and ser vices is not a v alid consideration within this context. The third sentence of Article 42(2) CTMR does not provide any exception in this regard.
Example: The earlier mark is registered for clothing in Class 25. The evidence relates to ‘boots’ only.
Conclusion: The mark has not been used for the goods for which it is registered.
2.8.4.1 Earlier mark registered for broad category of goods/services
In Aladin, the GC held:
if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a par t of those goods or services affords protection, in opposition proceedings, only for the sub- category or sub-categories to which the goods or services for which the trade mark has actually been used belong.
(See judgment of 14/07/2005, T-126/03, ‘Aladin’, para. 45.)
Therefore, if the earlier mark has been r egistered for a broad category of goods or services but the opponent provides evidence of use only for specific goods or services falling within this category, this raises the question of whether the submitted evidence is to be regarded strictly as proof of use only for the particular goods or services, which are not mentioned as such in the list of goods or services, or for the broad category as specified in the registration.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 52
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The GC further pointed out, on the one hand, that it is necessary to interpret the last sentence of Article 42(2) CTMR as seeking to deny a trade mark extensive protection if it has only been used in relation to part of the goods or services for which it is registered merely because it has been registered for a wide range of goods or services. Therefore, it is necessary to take account of the breadth of the categories of goods or services for which the earlier mark is registered, in particular the extent to which the categories concerned are described in general terms for registration purposes, and to do this in the light of the goods or services for which genuine use has actually been established (para. 44).
On the other hand, it is not necessary for the opponent to file evidence of all the commercial variations of similar goods or services but merely of those goods or services which are sufficiently distinct to constitute coherent categories or sub- categories (para. 46). The underlying reason is that in practice it is impossible for the proprietor of a t rade mark to prove that the mark has been us ed for all conceivable variations of the goods concerned by the registration
Thus, protection is available only for the sub-category or sub-categories to which the used goods or services belong if:
1. a trade mark had been registered for a category of goods or services:
(a) which is sufficiently broad to cover a number of sub-categories other than in an arbitrary manner;
(b) that are capable of being perceived as being independent from each other;
and
2. it can be shown that the mark has been genuinely used in relation to only part of the initial broad specification.
Appropriate reasoning should be g iven for defining the sub-categories and, on the basis of the evidence submitted by the opponent, it must be explained whether use has been shown in relation to only part of the initial broad specification/sub-category(ies). See examples in paragraph 2.8.4.3 below.
This is especially important in the case of trade marks registered for ‘pharmaceutical preparations’, which are usually used only for one kind of medicine for treating a certain disease (see the examples pharmaceutical preparations in paragraph 2.8.4.3 below).
On the other hand, the use for a whole category has to be ac cepted if there are examples of different kinds of products belonging to this category and there is no other sub-category which covers the different products.
Contested sign Case No
CARRERA R 0260/2009-4(revocation)
The proven use of a trade mark for:
• decorative lettering • increased performance packages • covers for storage compartments
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 53
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• wheel sets and complete wheel sets for summer and winter • door sill cover plates
was considered sufficient proof of use for ‘motor vehicle and land vehicle parts’ overall, for which the mark was registered. The main arguments were that it was used for numerous different motor vehicle parts and the goods for which use had been proven thus covered a wide spectrum of motor vehicle parts: elements of the chassis, the bodywork, the engine, the interior design and decorative elements.
2.8.4.2 Earlier mark registered for precisely specified goods/services
In contrast, proof of genuine use of the mark for some of the specified goods or services necessarily covers the entire category if:
(1) a trade mark has been registered for goods or services specified in a relatively precise manner so that
(2) it is not possible, without any artificiality, to make any significant sub-divisions within the category concerned (see judgment of 14/07/2005, T-126/03, ‘Aladin’, para. 45).
The decision should duly indicate in which cases it is considered impossible to make sub-divisions and, if necessary, why.
2.8.4.3 Examples
In order to define adequate sub-categories of general indications, the criterion of the purpose or intended use of the product or service in question is of fundamental importance, as consumers do e mploy this criterion before making a pur chase (judgment of 13/02/2007, T-256/04, ‘Respicur’, paras 29, 30; judgment of 23/09/2009, T-493/07, ‘Famoxin, para. 37). Other applicable criteria for defining adequate sub- categories could be the characteristics of the product or service, for instance the nature of the product or service or the target consumer of the product or service.
Earlier sign Case No
ALADIN T-126/03
G&S: Polish for metals in Class 3.
Assessment of PoU: The earlier mark was registered for ‘polish for metals’ in Class 3, but was actually used genuinely only for ‘magic cotton’ (a product for polishing metals consisting of cotton impregnated with a polishing agent). The Court held that ‘polish for metals’, which in itself is already a sub-category of the class heading term ‘polishing preparations’, is sufficiently precise and narrowly defined in terms of the function and intended purpose of the claimed goods. No further sub-category can be established without being artificial, and thus, use for the entire category of ‘polish for metals’ was assumed.
Contested sign Case No
Turbo R 0378/2006-2Revocation
G&S: Clothing in Class 25.
Assessment of PoU: the Board found that, in addition to swimwear, other types of clothing were referred to in the invoices and could be found in the catalogues. Thus, the Board found that use of the contested mark had been proved for ‘clothing’ (para. 22). The Board moreover found it almost impossible and certainly unduly onerous to impose on the proprietor of a registered CTM for ‘clothing’ the obligation to
Proof of Use
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demonstrate use in all possible sub-categories that could be endlessly sub-divided by the applicant (para. 25).
Earlier sign Case No
R 1088/2008-2 (confirmed by T-132/09)
G&S: Measuring apparatus and instruments in Class 9.
Assessment of PoU: The mark was used for apparatus and par ts thereof for the measurement of temperature, pressure and level. The contested decision considered that the original specification of the earlier mark for ‘measuring apparatus and instruments’ was a ‘very wide’ one, and determined, applying the criteria established in the Aladin judgment, that use had in fact only been shown for a sub-category of goods, namely: ‘measuring apparatus, all being for the measurement of temperature, pressure and level; parts for the aforesaid apparatus’. The Board found that approach to be a reasonable one in the circumstances of the case and endorsed the reasoning and findings of the contested decision in this regard (para. 29).
Contested sign Case No
ICEBERG R 1166/2008-1Revocation
G&S: Apparatus for heating, steam generating, refrigerating, drying, ventilating and water supply purposes in Class 11.
Assessment of PoU: The Board concluded that the trade mark use was only proven for fridges, freezers and air-conditioning modules for yachts and boats (para. 26). These goods were included in the sub- categories ‘apparatus for heating’ (insofar as an air-conditioning machine can also perform as a heater), ‘apparatus for refrigerating’ (insofar as an air-conditioning machine, a fridge and a freezer can keep air/things cold), and ‘apparatus for ventilating’ (insofar as an ai r-conditioning machine, a f ridge and a freezer all include ventilation circuits) for which the mark was registered. Therefore, the Board thought it should remain registered for those sub-categories (para. 27). However, the Board did not consider it appropriate to limit the scope of protection of the trade mark to ‘yachts and boats’. This would have further split the ‘sub-categories’ and would amount to unjustified limitation (para. 28). Conclusion: use was considered proven for ‘apparatus for heating, refrigerating and ventilating’.
Contested sign Case No
LOTUS R 1295/2007-4Revocation
G&S: Outerwear and underwear, hosiery, corsets, neckties, braces, gloves, underclothes in Class 25.
Assessment of PoU: No evidence was submitted in respect of the goods ‘corsets, neckties, braces’. None of the pieces of evidence submitted mentions these goods or refers to them. Use must be demonstrated for all goods or services in respect of which the trade mark is registered. The trade mark is registered for ‘outerwear and underwear’, but also for specific products within this category – inter alia ‘corsets, neckties, braces’. Use for other goods is not sufficient to maintain protection under trade mark law for these goods, even if these other goods also fall under the category ‘outerwear and underwear’. The Invalidity Division, however, considered use to be sufficient, because according to the principles of the Aladin judgment (see judgment of 14/07/2005, T-126/03) the ‘corsets, neckties, braces’ fall under the generic term of ‘outerwear and underwear’. While this is indeed true, this question is subordinate to examining whether the goods used can be subsumed under the claimed term at all. This is not the case for ‘corsets, neckties, braces’. If alongside the broad generic term the trade mark also explicitly claims specific goods covered by the generic term, it must also have been used for these specific goods in order to remain registered for them (para. 25).
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 55
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Earlier sign Case No
GRAF-SYTECO R 1113/2009-4
G&S: Electric instruments (included in Class 9); optical, weighing, measuring, signalling and c hecking (supervision) instruments; data processing equipment and computers, in particular for operating, monitoring and c hecking machines, installations, vehicles and buildings; recorded computer programs; electronic counters in Class 9, repair services in Class 37 and computer programming in Class 42.
Assessment of PoU: The devices which the opponent has proven to have placed on the market fall under the wording of hardware as specified in Class 9. This is, however, a vast category, especially considering the massive development and high specialisation taking place in this field, which can be divided into sub- categories according to the actual goods produced. In the present case the goods must be limited to the automotive industry. As the opponent is obliged to provide a legal guarantee to clients, it can be considered that it has also proven use of the service relating to repair of the hardware in question (Class 37). The Board also found that recorded computer programs in Class 9 were a very broad category and had t o be l imited to the actual field of activity of the opponent (paras 30, 31). No evidence was submitted for Class 42.
Earlier sign Case No
HEMICELL R 0155/2010-2
G&S: Foodstuffs for animals in Class 31, and animal foodstuffs, animal feed and non-medicated additives for animal feed; all included in Class 31.
Assessment of PoU: The contested decision erred in considering that the earlier mark had been put to genuine use for ‘foodstuffs for animals’ in Class 31, and ‘animal foodstuffs, animal feed and non- medicated additives for animal feed; all included in Class 31’, since this finding is contrary to the findings of the Court in ALADIN. The reason given by the contested decision is not acceptable because it should have been tested whether or not the category of goods covered by the earlier mark was susceptible of being divided into independent sub-categories and whether the goods for which use of the earlier mark had been proven could be classified in one of those. Therefore, the Board considers that the earlier CTM is, for the purposes of examination of the opposition, deemed to be registered in respect of ‘additives for animal feed’ only in Class 31.
Pharmaceutical preparations
In a num ber of cases, the Court had t o define adequate sub-categories for pharmaceutical preparations in Class 5. It held that the purpose and intended use of a therapeutic preparation are expressed in its therapeutic indication. Thus, the therapeutic indication is the key for defining the relevant sub-category of pharmaceutical products. Other criteria (such as dosage form, active ingredients, whether it is sold on prescription or over the counter) are irrelevant in this regard.
The following sub-categories for pharmaceutical preparations were assumed to be adequate by the Court:
Case No Adequate Non-adequate
T-256/04 ‘RESPICUR’
Pharmaceutical preparations for respiratory illnesses
Multi-dose dry powder inhalers containing corticoids, available only on prescription
T-493/07 ‘FAMOXIN’
Pharmaceutical preparations for cardiovascular illnesses
Pharmaceutical preparations with digoxin for human use for cardiovascular illnesses
T-487/08 ‘KREMIZIN‘
Pharmaceutical preparations for heart treatment
Sterile solution of adenosine for use in the treatment of specific heart condition, for intravenous administration in hospitals
T-483/04 ‘GALZIN‘ Calcium-based preparations Pharmaceutical preparations
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 56
FINAL VERSION .1.0 01/02/2015
2.8.5 Use of the mark as regards integral parts and after-sales services of the registered goods
In the ‘Minimax’ judgment, the Court held that, in certain circumstances, use of the mark may be considered genuine also for ‘registered’ goods that had been sold at one time and w ere no longer available (judgment of 11/03/2003, C-40/01, ‘Minimax’, para. 40 et seq.).
• This may apply where the proprietor of the trade mark under which such goods had been put on t he market sells parts that are integral to the make-up or structure of the goods previously sold.
• The same may apply where the trade mark proprietor makes actual use of the mark for after-sales services, such as the sale of accessories or related parts, or the supply of maintenance and repair services.
Sign Case No
Minimax C-40/01
G&S: fire extinguishers and associated products vs. components and after-sales services.
Assessment of PoU: The authorisation for the fire extinguishers sold by Ansul under the Minimax trade mark expired in the 80’s. Since then, Ansul has not been selling fire extinguishers under that mark. However, Ansul nonetheless sold component parts and extinguishing substances for fire extinguishers bearing the mark to undertakings with responsibility for maintaining them. During the same period it also maintained, checked and repaired equipment bearing the Minimax mark itself, used the mark on invoices relating to those services and affixed stickers bearing the mark and strips bearing the words ‘Gebruiksklaar Minimax’ (Ready for use Minimax) to the equipment. Ansul also sold these stickers and strips to undertakings that maintain fire extinguishers.
However, this finding of the Court should be interpreted strictly and applied only in very exceptional cases. In ‘Minimax’, the Court accepted use for goods other than those registered, which runs counter to the general rule laid down in Article 42(2) CTMR.
2.9 Use by the proprietor or on its behalf
2.9.1 Use by the proprietor
According to Articles 42(2) and 15(1) CTMR, it is in general the owner who has to put the earlier registered mark to genuine use. These provisions also cover use of the mark by the previous owner during its ownership (decision of 10/12/1999, case B 74 494).
2.9.2 Use by authorised third parties
According to Article 15(2) CTMR, use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor. This means that the owner must have given its consent prior to the use of the mark by the third party. Acceptance later is insufficient.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 57
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A typical case of use by third parties is use made by licensees. Use by companies economically related to the trade mark proprietor, such as members of the same group of companies (affiliates, subsidiaries, etc.) is similarly to be c onsidered as authorised use. Where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered as use of the mark (judgment of 17/02/2011, T-324/09, ‘Friboi’, para. 32 and judgment of 16/11/2011, T-308/06, ‘Buffalo Milke’, para. 73).
At the evidence stage it is prima facie sufficient that the opponent only submits evidence that a third party has used the mark. The Office infers from such use, combined with the opponent’s ability to present evidence of it, that the opponent has given prior consent.
This position of the Office was confirmed by judgment of 08/07/2004, T-203/02, ‘VITAFRUIT’, para. 25 (and confirmed by the Court in C-416/04 P). The Court pointed out that it was unlikely that the proprietor of a trade mark would be i n a position to submit evidence that the mark had been us ed against its wishes. There was all the more reason to rely on that presumption, given that the applicant did not dispute the opponent’s consent.
However, if there are doubts on the part of the Office or, in general, in cases where the applicant explicitly contests the opponent’s consent, the burden is on the opponent to submit further evidence that it gave its consent prior to use of the mark. In such cases the Office gives the opponent a further period of two months for the submission of such evidence.
2.9.3 Use of collective marks
Collective marks are generally used not by the proprietor but by members of an association.
According to Article 70 CTMR, use by (at least) one aut horised person satisfies the user requirement, provided use is otherwise genuine.
The specific characteristic of collective trade marks is that their main objective is not to indicate that the goods or services originate from a specific source but that they originate from a c ertain region and/or comply with certain characteristics or qualities (‘geographical and complementary indications of origin or quality’). This different function has to be taken into account when evaluating the proof of use in accordance with Article 70 CTMR.
Mere lists of persons authorised to use the collective mark and lists of products that are certified under the collective mark are generally not sufficient on their own to prove any genuine use (decision of 25/05/2009, B 1 155 904, see also decision of 24/02/2009, R 0970/2008-2 – ‘NFB’).
2.10 Legal use
Whether a mark has been used in a way that satisfies the use requirements of Articles 15 and 42 C TMR requires a factual finding of genuine use. Use will be ‘genuine’ in this context even if the user violates legal provisions.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 58
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Use that is deceptive within the meaning of Article 7(1)(g) or Article 51(1)(c) CTMR or under provisions of national law remains ‘genuine’ for the purpose of asserting earlier marks in opposition proceedings. The sanctions for deceptive use are invalidation or revocation, as the case may be, or a pr ohibition of use (provided for pursuant to Article 110(2) CTMR).
The same principle applies where use is made under an illegal licensing arrangement (for example arrangements violating the competition rules of the Treaty or national rules). Similarly, the fact that use may infringe third party rights is also irrelevant.
2.11 Justification of non-use
According to Article 42(2) CTMR, the opponent may alternatively prove that there are justifiable reasons for non-use of its earlier registered mark. These reasons cover, as mentioned in the second sentence of Article 19(1) of the TRIPS agreement, circumstances arising independently of the will of the owner of the trade mark that constitute an obstacle to the use of the trade mark.
As an exception to the obligation of use, the concept of proper reasons for non-use is to be interpreted rather narrowly.
‘Bureaucratic obstacles’ as such, which arise independently of the will of the trade mark proprietor, are not sufficient, unless they have a direct relationship with the mark, so much so that the use of the trade mark depends on successful completion of the administrative action concerned. However, the criterion of a direct relationship does not necessarily imply that use of the trade mark is impossible; it might suffice that use is unreasonable. It must be assessed on a case-by-case basis whether a change in the undertaking’s strategy to circumvent the obstacle under consideration would make use of the mark unreasonable. Thus, for example, the proprietor of a mark cannot reasonably be r equired to change its corporate strategy and s ell its goods in its competitors’ sales outlets (judgment of 14/06/2007, C-246/05, ‘Le Chef de Cuisine’, para. 52).
2.11.1 Business risks
The concept of proper reasons must be considered to refer to circumstances arising independently of the will of the owner that make use of the mark impossible or unreasonable, rather than to circumstances associated with commercial difficulties it is experiencing (decision of 14/05/0008, R 0855/2007-4 – ‘PAN AM’, para. 27; judgment of 09/07/2003, T-162/01, ‘GIORGI’, para. 41).
Thus, financial difficulties encountered by a company as a result of an economic recession or due to its own financial problems are not considered to constitute proper reasons for non-use within the meaning of Article 42(2) CTMR as these kinds of difficulties constitute a natural part of running a business.
Proof of Use
Guidelines for Examination in the Office, Part C, Opposition Page 59
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2.11.2 Government or Court intervention
Import restrictions or other government requirements are two examples of proper reasons for non-use that are explicitly mentioned in the second sentence of Article 19(1) of the TRIPS agreement.
Import restrictions include a trade embargo affecting the goods protected by the mark.
Other government requirements can be a S tate monopoly, which impedes any kind of use, or a S tate prohibition of the sale of goods for reasons of health or national defence. Typical cases in this respect are regulatory procedures such as:
• clinical trials and aut horisation for new medicines (decision of 18/04/2007, R 0155/2006-1 – ‘LEVENIA’); or
• the authorisation of a Food Safety Authority, which the owner has to obtain before offering the relevant goods and services on the market.
Earlier sign Case No
HEMICELL R 0155/2010-2
The evidence filed by the opponent duly shows that use of the earlier marks for a food additive, namely, ‘zootechnical digestibility enhancer (feed enzyme)’ was conditional upon prior authorisation, to be issued by the European Food Safety Authority following an application filed before that body. Such a requirement is to be deemed a government requirement in the sense of Article 19(1) of TRIPS.
With regard to Court proceedings or interim injunctions the following must be differentiated:
On the one hand, the mere threat of litigation or a pending cancellation action against the earlier mark should, in general, not exempt the opponent from the obligation to use its trade mark in the course of trade. It is up to the opponent, being the attacking party in opposition proceedings, to conduct an adequate risk assessment of its chances to prevail in the litigation proceedings and to draw the appropriate conclusions from this evaluation as to whether or not to continue with use of its mark (see decision of 18/02/2013, R 1101/2011-2 – ‘SMART WATER’, para. 40).
Earlier sign Case No
HUGO BOSS R 0764/2009-4
The national [French cancellation] proceedings brought against the opposing trade mark cannot be acknowledged as a proper reason for non-use (para. 19).
The fact remains that proper reasons for non-use are only those outside the sphere and influence of the trade mark proprietor, for instance national authorisation requirements or import restrictions. These are neutral with regard to the trade mark to be used; they concern not the trade mark but the goods and services that the proprietor wishes to use. Such national authorisation requirements or import restrictions apply to the type or properties of the product to which the trade mark is affixed, and cannot be circumvented by choosing a different trade mark. In the present case, conversely, the trade mark proprietor could have readily manufactured cigarettes in France or imported them into France if it had chosen a different trade mark (para. 25).
Earlier sign Case No
MANPOWER R 0997/2009-4
According to Article 9 CTMR and Article 5 of the Trade Marks Directive, the trade marks of third parties
Proof of Use
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must not be infringed. The requirement not to infringe trade marks applies to any person using a name in the course of trade, regardless of whether it has itself applied for or been granted trade mark protection for that name. A person refraining from such infringements is acting not for ‘proper reasons’ but as ordered by law. Hence even refraining from use that would otherwise infringe a r ight is not a proper reason (decision of the Boards of Appeal of 09/03/2010, R 0764/2009-4 – ‘HUGO BOSS/BOSS’, para. 22) (para. 27).
Nor is use in such instances ‘unreasonable’. Persons who, as trade mark proprietors, are threatened with proceedings or an interim injunction if they start using it, must consider the prospects of the action against them succeeding and can either capitulate (not start using the trade mark) or defend themselves against the complaint. In any event they have to accept the decision of the independent courts, which may be in expedited proceedings. Nor, pending a decision at final instance, can they object that they must be protected by the fact that, until that decision becomes final, uncertainty is to be recognised as a proper reason for non-use. In fact, the issue of what should happen in the period between the filing of an action or the application for an interim injunction and the conclusive final decision is again to be left to the courts, in that they take decisions that are not yet final on provisional enforceability. The defendant is not entitled to ignore those decisions and be put in a position as if there were no courts (para. 28).
On the other hand, for example, an interim injunction or a r estraining court order in insolvency proceedings, imposing a general prohibition of transfers or disposals on the trade mark owner, can be a proper reason for non-use because it obliges the opponent to refrain from using its mark in the course of trade. Use of the mark contrary to such a court order would make the trade mark owner liable to damage claims (decision of 11/12/2007, R 0077/2006-1, – ‘Miss Intercontinental’, para. 51).
2.11.3 Defensive registrations
The GC has clarified that the existence of a na tional provision recognising what are known as ‘defensive’ registrations (i.e. of signs not intended to be us ed in trade on account of their purely defensive function in relation to another sign which is being commercially exploited) cannot constitute a proper reason for non-use of an earlier trade mark invoked as a bas is of an oppos ition (judgment of 23/02/2006, T-194/03, ‘Bainbridge’, para. 46).
2.11.4 Force majeure
Further justifiable reasons for non-use are cases of force majeure which hinder the normal functioning of the owner’s enterprise.
2.11.5 Consequences of justification of non-use
The existence of justified reasons does not mean that non-use during the period concerned is treated as equivalent to actual use, which would result in a ne w grace period beginning after the end of the period of justified non-use.
Rather, non-use during such period merely stops the five-year period from running. This means that the period of justified non-use is not taken into account in calculating the grace period of five years.
In addition, the length of time during which justified reasons existed may be significant. Reasons for non-use existing during only part of the five-year-period before publication of the CTM application may not always be considered justification for setting the proof- of-use requirement aside. In this context, the period of time during which these reasons
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were pertinent and t he elapse of time since they no l onger applied are of particular importance (decision of 01/07/1999, B 2 255).
3 Procedure
3.1 Request by the applicant
According to Article 42(2) CTMR, use of the earlier mark needs be shown – and only be shown – if the applicant requests proof of use. The institution of proof of use is, therefore, designed in opposition proceedings as a defence plea of the applicant.
The Office may neither inform the applicant that he could request proof of use nor invite him to do so. In view of the Office’s impartial status in opposition proceedings it is left to the parties to provide the factual basis and to argue and defend their respective positions (see second sentence of Article 76(1) CTMR).
Article 42(2) CTMR is not applicable when the opponent, on i ts own motion, submits material relating to use of the invoked earlier mark (see paragraph 3.1.2. below for an exception to this rule). As long as the CTM applicant does not request proof of use, the issue of genuine use will not be addressed by the Office ex officio. In such cases, in principle, it is even irrelevant that the evidence produced by the opponent might demonstrate only a particular type or manner of use, or use which is limited to only part of the goods or services for which the earlier mark is registered.
The request to furnish proof of use is only valid if the earlier mark is under the use requirement at all, i.e. if it had been registered for not less than five years (for details see paragraph 2.5.1 above).
3.1.1 Time of request
Pursuant to Rule 22(1) CTMIR, the request for proof of use pursuant to Article 42(2) CTMR shall be admissible only if the applicant submits such a request within the period specify by the Office. The request for proof of use must be made within the first time limit for the applicant to reply to the opposition under Rule 20(2) CTMIR.
If the request for proof of use is submitted during the cooling-off period or during the two-month period given to the opponent for filing or amending facts, evidence and arguments, it is forwarded to the opponent without delay.
3.1.2 Request must be explicit, unambiguous and unconditional
The applicant’s request is a formal declaration with important procedural consequences.
Therefore, it has to be explicit and unambiguous. In general, the request for proof of use must be expressed in positive wording. As use or non-use can be an issue in manifold constellations (for example, to invoke or deny a hi gher degree of distinctiveness of the earlier mark), mere observations or remarks by the applicant in respect of the (lack of) use of the opponent’s mark are not sufficiently explicit and do
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not constitute a v alid request for proof of genuine use (judgment of 16/03/2005, T-112/03, ‘Flexi Air’).
Examples:
Sufficiently explicit and unambiguous request:
• ‘I request the opponent to submit proof of use…’;
• ‘I invite the Office to set a time limit for the opponent to prove use…’;
• ‘Use of the earlier mark is hereby contested…’;
• ‘Use of the earlier mark is disputed in accordance with Article 42 CTMR.’;
• ‘The applicant raises the objection of non-use.’ (decision of 05/08/2010, R 1347/2009-1 – ‘CONT@XT’).
Not sufficiently explicit and unambiguous request:
• ‘The opponent has used its mark only for …’;
• ‘The opponent has not used its mark for …’;
• ‘There is no evidence that the opponent has ever used his mark …’;
• ‘[T]he opponents’ earlier registrations cannot be “validly asserted against the CTM Application…”, since “…no information or evidence of use … has been provided…’ (decision of 22/09/2008, B 1 120 973).
An implicit request is accepted as an exception to the above rule, when the opponent spontaneously sends evidence of use before the applicant’s first opportunity to file arguments and, in its first reply, the applicant challenges the evidence of use filed by the opponent (judgment of 12/06/2009, T-450/07, ‘Pickwick COLOUR GROUP’). In such a case, there can be no mistake as to the nature of the exchange, and the Office should consider that a request for proof of use has been made and give the opponent a deadline for completing the evidence. In the event that proceedings have been closed and the existence of a request for proof of use is found out only when a decision has be taken, the examiner should re-open the proceedings and g ive the opponent a deadline for completing the evidence.
In all events, the request has to be unconditional. Phrases such as ‘if the opponent does not limit its goods/services in Classes ‘X’ or ‘Y’, we demand proof of use’, ‘if the Office does not reject the opposition because of lack of likelihood of confusion, we request proof of use’ or ‘if considered appropriate by the Office, the opponent is invited to file proof of use of its trade mark’ present conditional or auxiliary claims, which are not valid requests for proof of use (decision of 26/05/2010, R 1333/2008-4 – ‘RFID SOLUTIONS’).
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3.1.3 Applicant’s interest to deal with proof of use first
Under Rule 22(5) CTMIR, the applicant may limit its first observations to requesting proof of use. It must then reply to the opposition in its second observations, namely when it is given the opportunity to reply to the proof of use submitted. It may also do this if only one earlier right is subject to the use requirement, as the applicant should not be obliged to split its observations.
If, however, the request is completely invalid, the Office will close proceedings without granting the applicant a further opportunity to submit observations (see paragraph 3.1.4 below).
3.1.4 Reaction if request is invalid
If the request is invalid on an y of the above grounds or if the requirements of Article 42(2) and (3) CTMR are not met, the Office nevertheless forwards the applicant’s request to the opponent but advises both parties of the invalidity of the request.
The Office will immediately terminate the proceedings if the request is completely invalid and not accompanied by any observations by the applicant. However, the Office can extend the time limit established in Rule 20(2) CTMIR if such an invalid request was received before expiry of the time limit set for the applicant but was not dealt with by the Office until after expiry thereof. Because refusal of the request for proof of use after expiry of the time limit will disproportionately harm the interests of the applicant, the Office extends the time limit by the number of days that were left when the party submitted its request. This practice is based on the rules of fair administration.
If the request is only invalid as regards part of the earlier rights on which the opposition is based, the Office expressly limits the invitation to the opponent to submit proof of use to the rights that are subject to the use requirement.
3.2 Express invitation by the Office
If the applicant’s request for proof of use is valid, the Office gives the opponent two months to submit proof of use or show that there are proper reasons for non-use. Taking a decision on use in the absence of an explicit invitation by the Office to submit proof of use constitutes a substantive procedural violation, even if the applicant’s request is clear, the opponent understands it and submits the requested evidence of use (decision of 28/02/2011, R 0016/2010-4, ‘COLORPLUS’, para. 20; decision of 19/09/2000, R 0733/1999-1, ‘Affinité/Affinage’).
In cases where the request for proof of use arrives during the cooling-off period and is communicated to the opponent during that period, the deadline for submitting proof of use will coincide with the deadline for providing initial or additional facts, evidence and arguments. The time limit will be extended automatically if the cooling-off period is extended.
If the request reaches the Office before the end of the period for submitting or amending facts, evidence and arguments, and is dealt with in this period, the deadline
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for submitting such facts, evidence and arguments will be extended to coincide with the deadline of two months for submitting proof of use.
3.3 Reaction from the opponent: providing proof of use
3.3.1 Time limit for providing proof of use
The Office gives the opponent two months to submit proof of use. The opponent may request an extension of the deadline in accordance with Rule 71 CTMIR. The common practice on extensions is applicable to these requests5.
Rule 22(2) CTMIR expressly states that the Office will reject the opposition if the opposing party does not provide proof of use before the time limit expires.
Two scenarios are to be differentiated:
• The opponent has not submitted any or no r elevant evidence within the time limit: the submission of relevant evidence of proof of use for the first time after the expiry of the time limit results in rejection of the opposition without the Office having any discretionary powers. In that regard the Court has held that Rule 22(2) CTMIR is an essentially procedural provision and that it is apparent from the wording of that provision that when no pr oof of use of the mark concerned is submitted within the time limit set by OHIM, the opposition must automatically be rejected (judgment of 18/07/2013, C-621/11 P, ‘Fishbone’, paras 28 and 29).
• The opponent has submitted relevant evidence within the time limit and presents additional evidence after the time limit has expired: in such a case, where the additional evidence merely strengthens and clarifies the prior relevant evidence submitted within the time limit, and provided the opponent does not abuse the time-limits set by knowingly employing delaying tactics or by demonstrating manifest negligence, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 76(2) CTMR (judgment of 29/09/2011, T-415/09, ‘Fishbone’, para. 31; confirmed by judgment of 18/07/2013, C-621/11 P, ‘Fishbone’, paras 28, 30). The Court made it clear that, mutatis mutandis, the same considerations apply to revocation proceedings (judgment of 26/09/2013, C-610/11 P, ‘Centrotherm’, para. 87 applying Rule 40(5) CTMIR).
The Office shall duly motivate why it rejects or takes into account ‘additional evidence’ in the decision. General statements such as ‘the evidence is not relevant’ or ‘the opponent has not justified why the additional evidence has been submitted after the expiry of the time limit’ will not suffice (judgment of 26/09/2013, C-610/11 P, ‘Centrotherm’, para. 111).
As regards the exercise of that discretion taking such facts and evidence into account, it is particularly likely to be justified where the Office considers, first, that the material produced late is, on the face of it, likely to be relevant to the outcome of the opposition and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not preclude
5 See The Guidelines, Part C, Opposition, Section 1, Procedural Matters, paragraph 6.2.1, Extension of time limits in opposition proceedings.
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such matters being taken into account (judgment of 13/03/2007, C-29/05 P ’ARCOL/CAPOL’, para. 44).
3.3.2 Means of evidence
3.3.2.1 Principles
The evidence of use must be provided in a structured manner.
Article 76(1) CTMR provides that ‘…in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties …’ The filing of evidence must be sufficiently clear and precise to enable the other party to exercise its right of defence and the Office to perform its examination, without reference to extraneous or supportive information.
Essentially, the Office is prevented from making the case for one or other party and cannot take the place of the opponent, or its counsel, by itself trying to locate and identify among the documents on file the information that it might regard as supporting proof of use. This means that the Office should not seek to improve the presentation of any party’s evidence. Responsibility for putting evidence in order rests with the party. Failure to do so leaves open the possibility that some evidence may not be taken into account.
In terms of format and content of evidence submitted, the Office recommends that the following be taken into account as key aspects of a structured presentation:
1. The corresponding file number (CTM, Opposition, Cancellation, and A ppeal) should be included at the top of all correspondence.
2. A separate communication for documents with Proof of Use should be provided. Nevertheless, if correspondence includes urgent issues such as a request for limitation, suspension, extension of time, withdrawal, etc., indication of this should also be included on the front page.
3. The total number of pages of correspondence should be s tated. Page numbering of annexes is equally important.
4. The Office strongly recommends that the opponent does not exceed a maximum of 110 pages in its correspondence.
5. If the documentation is sent in different packages, an indication of the number of packages is recommended.
6. If a large amount of documentation is submitted by fax in different batches, an indication of the total number of pages, number of batches and identification of the pages contained in each batch is recommended.
7. Use plain DIN-A4 sheets in preference to other formats or devices for all the documents submitted including separators between annexes or enclosures, as they can also be scanned.
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8. Physical specimens, containers, packaging, etc. should not be sent. Instead, a picture should be taken of them, which should be printed (if relevant in colour, if not in black and white) and sent as a document.
9. Original documents or items sent to the Office should not be stapled, bound or placed in folders.
10. The second copy for forwarding to the other party should be clearly identified.
11. If the original is submitted to the Office only by fax, no second fax copy should be sent.
12. The front page should clearly indicate whether the correspondence submitted contains colour elements of relevance to the file.
13. A second set of colour elements should be i ncluded for sending to the other party.
These recommendations are also sent to the opponent together with the Office’s communication of the applicant’s request for proof of use.
According to Rule 22(4) CTMIR, the evidence is to be filed in accordance with Rules 79 and 79a and, in principle, is confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) CTMR. Rule 22(4) CTMIR also allows market surveys and quotations of the mark in lists and publ ications of associations of the relevant profession as suitable means of evidence (decisions of 14/03/2011, B 1 582 579, and of 18/06/2010, B 1 316 134).
Price lists and catalogues are examples of ‘material stemming directly from the party itself’. A company’s ‘annual report and accounts’ would also come under that heading.
Rule 22(4) CTMIR is to be read in conjunction with Rule 79a CTMIR. This means that material that cannot be scanned or photocopied (such as CDs, physical items) cannot be taken into account unless submitted in two copies so that it can be forwarded to the other party.
The requirement of proof of use always raises the question of the probative value of the submitted material. The evidence must at least have a certain degree of reliability. As a general rule, the Office considers material produced by third parties as being of a higher probative value than material produced by the owner himself or by its representative. Reference of the opponent to internal print-outs or hypothetical surveys or orders is particularly problematic. However, where material must regularly be produced for use by the public and/or authorities according to statutory rules, for instance, company law and/or Stock Exchange Regulations, and w here it may be assumed that such material is subject to certain official verification, its probative value is certainly higher than ordinary ‘personal’ material produced by the opponent (see also under 3.3.2.3 ‘Declarations’).
3.3.2.2 References
The opponent may avail itself of findings of national offices and c ourts in parallel proceedings. Although the Office is not bound by findings of the national offices and
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courts, such decisions must be t aken into account and may influence the Office’s decision. It is important for the Office to have the possibility of considering the kind of evidence that led to the relevant decision at national level. The Office takes into account the different procedural and s ubstantive requirements that may exist before the respective national body (decisions of 25/08/2003, R 1132/2000-4 – ‘VANETTA’, para. 16, and of 18/10/2000, R 0550/1999-3 – ‘DUKE’, para. 23).
The opponent may wish to refer to material filed as proof of use in previous proceedings before the Office (confirmed by the GC in ‘ELS’ quoted above). The Office accepts such references on condition that the opponent clearly identifies the material referred to and the proceedings in which it was filed. If the reference does not sufficiently identify the relevant material, the Office requires the opponent to clearly specify the material referred to or to file it (decision of 30/11/2010, B 1 080 300). See further details on the conditions for identifying the relevant material in The Guidelines, Part C, Opposition, Section 1: Procedural Matters.
The onus of providing proof of use is on t he opponent and not on t he Office or the applicant. Therefore, a mere indication of the website where the Office can find further information is insufficient, as this does not provide the Office with sufficient indications about place, nature, time and extent of use (decision of 31/10/2001, B 260 192).
3.3.2.3 Declarations
Whereas the means of evidence listed, such as packages, labels, price lists, catalogues, invoices, photographs and newspaper advertisements, do not present any particular problems, it is necessary to consider in some detail declarations as referred to in Article 78(1)(f) CTMR.
The opposing party is not obliged to submit an af fidavit concerning the sales made under the earlier trade mark. It is up t o the opposing party to select the form of evidence that it considers suitable for the purpose of establishing that the earlier trade mark was put to genuine use during the relevant period (judgment of 08/07/2004, T-203/02, ‘VITAFRUIT’, para. 37).
Distinction between admissibility and relevance (probative value)
The importance of declarations has been much debated. In this regard, there must be a clear differentiation between the admissibility and the probative value of such evidence.
As far as admissibility is concerned, Rule 22(4) CTMIR expressly mentions written statements referred to in Article 78(1)(f) CTMR as admissible means of proof of use. Article 78(1)(f) CTMR cites means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. Therefore, it has to be evaluated whether the statement submitted constitutes a statement within the sense of Article 78(1)(f) CTMR. Only in cases where the statements have not been sworn or affirmed is it necessary to consider the rules of law of the national jurisdiction as to the effects of a written statement (judgment of 07/06/2005, T-303/03, ‘SALVITA’, para. 40). In cases of doubt as to whether a statement has been sworn or affirmed, it is up to the opponent to submit evidence in this regard.
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Article 78(1)(f) CTMR does not specify by whom these statements should be signed so that there is no reason to consider that statements signed by the parties to the proceedings themselves are not covered by this provision (judgment of 16/12/2008, T-86/07, ‘DEITECH-DEI-tex’, para. 46).
With regard to probative value, neither the CTMR nor the CTMIR supports the conclusion that the evidential value of items of evidence of use of the mark, including affirmations, must be a ssessed in the light of the national law of a Member State. Irrespective of the position under national law, the evidential value of an af fidavit is relative, i.e. its contents have to be assessed freely (judgment of 28/03/2012, T-214/08, ‘OUTBURST’, para. 33). The probative value of a statement depends first and foremost on the credibility of the account it contains. 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, on the face of it, the document appears sound and reliable (judgment of 07/06/2005, T-303/03, ‘SALVITA’, para. 42).
As far as the probative value of this kind of evidence is concerned, the Office makes a distinction between statements drawn up by the interested parties themselves or their employees and statements drawn up by an independent source.
Declarations by the proprietor or its employees
Statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 0490/2010-4 – ‘BOTODERM’, para. 34; decisions of 27/10/2009, B 1 086 240 and of 31/08/2010, B 1 568 610).
However, this does not mean that such statements are totally devoid of all probative value (judgment of 28/03/2012, T-214/08, ‘OUTBURST’, para. 30). Generalisation should be avoided, since the exact value of such statements always depends on i ts concrete form and c ontent. Statements including detailed and c oncrete information have a higher probative value than very general and abstractly drafted statements.
The final outcome depends on t he overall assessment of the evidence in each individual case. In general, further material is necessary for establishing evidence of use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important. An assessment should be made of whether the content of the affidavit is sufficiently supported by the further material (or vice versa). The fact that the national office concerned may adopt a certain practice in assessing such kind of evidence of use does not mean that it is applicable in the proceedings concerning Community trade marks (judgment of 07/06/2005, T-303/03, ‘Salvita’, paras 41 et seq.).
A change of ownership that took place after the date of publication of the CTM application may render declarations made by the new owners void as the latter generally do not have any direct knowledge as a basis for making declarations concerning use of the mark by the previous owner (decision of 17/06/2004, R 0016/2004-1 – ‘Reporter’).
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Nevertheless, in the case of a transfer or other succession in title, any new owner may rely on use within the grace period concerned by their predecessor(s). Use made by the predecessor may be evidenced by the predecessor and by all other reliable means, for instance, information from business records if the predecessor is not available.
Declarations by third parties
Statements (such as e.g. surveys) drawn up by an independent source, for example by experts, professional organisations, Chambers of Commerce, suppliers, customers or business partners of the opponent, are given more probative weight (see decision of 19/01/2011, R 1595/2008-2 – ‘FINCONSUMO’, para. 9(ii); decision of 30/03/2010, R 0665/2009-1 – ‘EUROCERT’, para. 11 and decision of 12/08/2010, B 1 575 615).
This practice is in line with the case-law of the Court of Justice in the ‘Chiemsee’ judgment (judgment of 04/05/1999, joined cases C-108/1997 and C-109/1997), where the Court gave some indications of appropriate evidence proving the acquired distinctiveness of a mark in the market place. Although acquisition of distinctiveness is not per se the same as genuine use, the former does comprise elements of evidence of use of a sign on the market. Consequently, case-law relating to these can be used by analogy.
Statements drawn up by the parties themselves are not ‘third party evidence’ whereas all other evidence, such as opinion polls, statements from Chambers of Commerce, or from professional organisations or from experts, originates from third parties.
3.4 Reaction from the applicant
3.4.1 Forwarding of evidence
After having received the evidence of use submitted by the opponent, the Office forwards the complete evidence to the applicant.
The Office, in general, allows the applicant two months to file its observations in reply to the evidence of use (and to the opposition).
3.4.2 No evidence or no relevant evidence submitted
However, the Office may close the proceedings immediately if the opponent has submitted no evidence, or has submitted no relevant evidence within the time limit given and all the earlier rights of the opposition are affected. The rationale behind this practice is to avoid the continuation of the proceedings when their outcome is already known, that is, the rejection of the opposition for lack of proof of use (principle of economy and good administration of proceedings).
In cases where the evidence might suffice, it is forwarded to the applicant giving the party two months to file its observations. The Office must not indicate to the opponent that the sufficiency of the evidence is doubtful, or even invite the opponent to file further evidence in such cases. Such acts would be against the impartial position of the Office in adversarial proceedings (decision of 01/08/2007, R 0201/2006-4 – ‘OCB/O.C.B.’, para. 19).
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3.4.3 No reaction from applicant
If the applicant does not react within this time limit, the Office will give a decision on the basis of the evidence before it. The fact that the applicant does not reply does not mean that it accepts the submitted evidence as sufficient proof of use (judgment of 07/06/2005, T-303/03, ‘Salvita’, para. 79).
3.4.4 Formal withdrawal of the request
Where the applicant reacts to the proof of use by formally withdrawing its request for proof of use, the issue will no l onger be r elevant. As it is the applicant who sets in motion the respective procedure, the applicant logically is in a position to bring an end to this part of the proceedings by formally withdrawing its request (decision of 21/04/2004, R 0174/2003-2 – ‘Sonnengarten’, para. 23).
3.5 Further reaction from the opponent
The opponent is entitled to file observations in reply to the applicant’s observations. This is of particular importance in cases where the decision to be taken might be based in part on the arguments put forward by the applicant to the effect that the evidence does not prove the use of the mark.
The Board of Appeal has regarded failure to allow the opponent to comment in such a case as a substantial procedural violation (decision of 28/02/2011, R 16/2010-4 – ‘COLORPLUS’, para. 20).
For further details on t he submission of additional evidence, see paragraph 3.3.1 above.
3.6 Languages in proof of use proceedings
According to Rule 22(6) CTMIR, where the evidence supplied pursuant to paragraphs 1, 2 and 3 i s not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of that evidence in that language, within a period specified by the Office.
It is left to the discretion of the Office whether the opponent has to submit a translation of the evidence of use into the language of the proceedings. In exercising its discretion, the Office balances the interests of both parties.
It has to be bor ne in mind that it might be ex tremely costly and bur densome for the opponent to translate the evidence of use submitted into the language of the proceedings.
On the other hand, the applicant has the right to be informed about the content of the evidence filed in order to be capable of defending its interests. It is absolutely necessary that the applicant is able to assess the content of the evidence of use submitted by the opponent. In this regard, the nature of the documents submitted has
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to be taken into account. For example, it might be considered that ‘standard’ invoices and samples of packaging do not require a translation in order to be understood by the applicant (judgment of 15/12/2010, T-132/09, ‘EPCOS’, paras 51 et seq.; decisions of 30/04/2008, R 1630/2006-2 – ‘DIACOR’, paras 46 et seq. (under appeal T-258/08) and of 15/09/2008, R 1404/2007-2 – ‘FAY’, paras 26 et seq.).
If the applicant explicitly requests a translation of the evidence in the language of the proceedings, the Office, in principle, will require a t ranslation from the opponent. However, a rejection of such a request is feasible where it appears that the applicant’s request, in view of the self-explanatory character of the submitted evidence, is exaggerated or even abusive.
Where the Office requires translation of the evidence, it gives the opponent a period of two months to submit it. Where the evidence of use filed by the opponent is voluminous, the Office may explicitly invite the opponent to translate only the parts of the submitted material that the opponent regards as sufficient for establishing genuine use of the mark within the relevant period. It is in general up to the opponent to evaluate whether a c omplete translation of all the evidence submitted is necessary. The means of evidence will only be taken into account insofar as a translation has been produced or insofar as the means of evidence are self-explanatory regardless of their textual components.
3.7 Decision
3.7.1 Competence of the Office
The Office makes its own evaluation of the evidence of use submitted. This means that the probative value of the evidence submitted is evaluated independently of the observations submitted by the applicant in this respect. Assessment of the relevance, pertinence, conclusiveness and e fficacy of evidence lies within the discretion and power of judgment of the Office, not the parties, and falls outside the adversarial principle which governs inter partes proceedings (decisions of 01/08/2007, R 201/2006-4 – ‘OCB’, para. 19 and of 14/11/2000, R 823/1999-3 – ‘SIDOL’).
A declaration by the applicant concluding that use has been pr oved does not, therefore, have any effect on the Office’s findings. The request for proof of use is a defence plea by the applicant. However, once the defence plea has been raised by the applicant, it is solely up t o the Office to carry out the subsequent procedure and evaluate whether the evidence submitted by the opponent is to be r egarded as of sufficient probative value. However, the applicant does have the possibility of formally withdrawing the request for proof of use (see paragraph 3.4.4 above).
This is not contrary to Article 76(1) CTMR, which stipulates that in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. However, although the Office is bound by the facts, evidence and arguments provided by the parties, it is not bound by the legal value that the parties may give thereto. Hence, the parties may agree as to which facts have been proved or not, but may not determine whether or not these facts are sufficient to establish genuine use (decisions of 01/08/2007, R 0201/2006-4 – ‘OCB’, para. 19, and o f 14/11/2000, R 0823/1999-3 – ‘SIDOL’, para. 20; and al so decision of 13/03/2001, R 0068/2000-2 – ‘NOVEX PHARMA’).
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3.7.2 Need for taking a decision
A decision on fulfilment of the obligation of having genuinely used the registered mark is not always necessary. The question of proof of use is not to be c onsidered as a preliminary question that always has to be examined first when taking a decision on substance. Neither Article 42(2) CTMR nor Rule 22(1) CTMIR indicates this to be the case.
When proof of use of the earlier rights has been requested by the applicant, the Office will also examine whether, and to what extent, use has been proved for the earlier marks, provided this is relevant for the outcome of the decision in question:
• If there are earlier rights that were not subject to the obligation of use and which lead to a c onclusion of likelihood of confusion, there is no need to assess the proof of use provided for the other earlier rights.
• Additionally, if the signs or the goods and services for which the earlier mark is registered are dissimilar to those of the contested trade mark, or if there is no likelihood of confusion between the signs, there is no need t o enter into the question of proof of use.
3.7.3 Overall assessment of the evidence presented
As stated in more detail above (see paragraph 2.2 above), the Office has to evaluate the evidence submitted with regard to place, time, extent and na ture of use in an overall assessment. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (judgment of 17/02/2011, T-324/09, ‘Friboi’, para. 31).
The principle of interdependence applies, meaning that weak evidence with regard to one relevant factor (e.g. low sales volume) might be compensated by solid evidence with regard to another factor (e.g. continuous use over a long period of time).
All the circumstances of the specific case have to be taken into account in conjunction with each other in order to determine whether the mark in question has been genuinely used. The particular circumstances can include e.g. the specific features of the goods/services in question (e.g. low/high-priced; mass products vs. special products) or the particular market or business area.
Indirect/circumstantial evidence, under certain conditions even on its own, can also be suitable for proving genuine use.
As the Office does not assess commercial success, even minimal use (but not mere token or internal use) can be sufficient to be deemed ‘genuine’, as long as it is viewed as warranted in the economic sector concerned to maintain or acquire a share in the market.
The decision indicates what evidence was filed. However, in general, only the evidence relevant for the conclusion is mentioned. If the evidence is found convincing, it suffices for the Office to indicate those documents that were used to come to this conclusion
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and why. If an opposition is rejected because the proof of use was not sufficient, likelihood of confusion is not to be addressed.
3.7.4 Examples
The following cases present some of the decisions of the Office or the Court (with different outcomes) where the overall assessment of the submitted evidence was important:
3.7.4.1 Genuine use accepted
Case No Comment
Judgment of 17/02/2011, T-324/09, ‘Friboi’
The opponent (Fribo Foods Ltd.) submitted several invoices relating to large quantities of goods, addressed to its distribution company (Plusfood Ltd.), which belongs to the same group (Plusfood Group). It is not disputed that the distribution company put the products on the market later. Furthermore, the opponent presented undated brochures, a press clip and three price lists. With regard to the ‘internal’ invoices, the Court held that the chain producer-distributor-market was a common method of business organisation, which could not be regarded as purely internal use. The undated brochures had to be seen in conjunction with other dated evidence such as invoices and price lists and, therefore, might still be taken into consideration. The Court accepted genuine use and stressed that an overall assessment implied that all the relevant factors be viewed as a whole and not in isolation.
Decision of 02/05/2011, R 0872/2010-4, ‘CERASIL’
The opponent submitted inter alia about 50 invoices, not in the language of proceedings. The names of the addressees as well as the quantities sold were blacked out. The Boards held that standard invoices containing the usual information (date, indication of seller’s and buyer’s name/address, product concerned, price paid) did not require a translation. Even though the names of the addressees and the quantities sold were blacked out, the invoices nevertheless confirmed the sale of ‘CERATOSIL’ products, measured in kilograms, to companies throughout the relevant territory during the relevant period. Together with the remaining evidence (brochures, affidavit, articles, photographs), this was considered sufficient to prove genuine use.
Decision of 29/11/2010, B 1 477 670
The opponent, who was active in the field of vehicle maintenance and the management of businesses associated with buying and selling vehicles, provided several Annual Reports giving a general overview of its overall commercial and financial activities. The OD found that these reports, by themselves, did not provide sufficient information on actual use for the majority of services claimed. However, in conjunction with advertisements and publicity displaying the mark in question for particular services, the OD concluded that the evidence as a whole provided sufficient indications as to the scope, nature, period and place of use for these services.
Decision of 29/11/2010, R 0919/2009-4 – ‘GELITE’
The documents submitted by the appellant show use of the trade mark in relation to ‘coating materials based on artificial resin (base, intermediate and top coatings) and industrial lacquers’. The attached labels show use of the trade mark for various base, primer and t op coatings. This information coincides with the attached price lists. The associated technical information sheets describe these goods as corrosion coatings based on artificial resin, which are offered for sale in various colours. The attached invoices show that these goods were supplied to various customers in Germany. Although the turnover figures stated in the written declaration in relation to the period from 2002 to 2007 do not expressly refer to Germany, it must be concluded that they were obtained at least in part also in Germany. Consequently, the earlier mark is deemed to be us ed for the goods ‘lacquer, lacquer paints, varnishes, paints; dispersions and emulsions to coat and repair surfaces’ because it is not possible to create any further sub- categories for these goods.
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Decision of 20/04/2010, R 0878/2009-2 – ‘SOLEA’
The solemn declaration refers to high sales figures (over EUR 100 million) for marked products from 2004 to 2006 and attaches internet extracts of pictures of the products sold during the relevant period (soap, shampoo, deodorant (for feet and body), lotions, and c leaning items). Although the internet extracts bear a copyright date of 2008, the credibility of what the declaration affirms is reinforced by the judgment of the State Court of Mannheim, a copy of which had been adduced previously by the opponent in order to demonstrate the enhanced distinctiveness of the earlier mark and which referred to the market share enjoyed by products bearing the opponent’s mark for ladies’ face care products (6.2%), caring lotions (6.3%), shower soaps and shampoos (6.1%) and men’s face care and shaving products (7.9%). Moreover, the judgment states that according to a GfK study one fifth of German citizens purchase at least one BALEA product per annum. Reference is also made to two further studies that demonstrate that the brand is well known in Germany. Thus, proof of use for the mark has been demonstrated sufficiently for the products on which the opposition is based.
Decision of 25/03/2010, R 1752/2008-1 – ‘ULUDAG’
The evidence provided to substantiate use of the earlier Danish trade mark appears to be sufficient. The Board is satisfied that the invoice provided shows place and time of use, as it proves the sale to a Danish company of 2 200 cartons of products within the relevant date. The labels filed show use on soft drinks bearing the mark as represented on the registration certificate. As to the question whether proof consisting of one single invoice is sufficient in terms of extent of use, in the Board’s view, the content of that invoice, in the context of the remaining pieces of evidence, serves to conclude that the use made of the mark in Denmark is sufficient and genuine in connection with ‘aerated water, aerated water with fruit taste and soda water’.
3.7.4.2 Genuine use not accepted
Case No Comment
Judgment of 18/01/2011, T-382/08, ‘VOGUE’
The opponent submitted a declaration from the opponent’s managing partner and 15 footwear manufacturers (‘footwear has been produced for the opponent under the trade mark VOGUE over a number of X years’), 35 photographs of VOGUE footwear models, photographs of stores and 670 invoices issued to the opponent by footwear manufacturers. The Court held that the declarations did not provide sufficient evidence concerning the extent, place and time of use. The invoices concerned the sale of footwear to the opponent, not the sale of footwear to end c onsumers and, therefore, were not suitable for proving external use. Mere presumptions and suppositions (‘highly unlikely’, ‘unreasonable to think’, ‘… which probably explains the absence of invoices …’, ‘reasonable to assume’, etc.) cannot replace solid evidence. Therefore, genuine use was denied.
Decision of 19/09/2007, 1359 C (confirmed by R 1764/2007-4)
The owner of the mark owned a US-based airline, operating solely in the US. The fact that flights could also be booked via internet from the European Union could not alter the fact that the actual services of transportation (Class 39) were rendered exclusively outside the relevant territory. Furthermore, the lists submitted of passengers with addresses in the European Union could not prove that the flights had actually been booked from Europe. Finally, the website was exclusively written in English, the prices were announced in US dollars and the relevant telephone and fax numbers were from within the US. Therefore, genuine use in the relevant territory was denied.
Decision of 04/05/2010, R 0966/2009-2 – ‘COAST’
There are no special circumstances which might justify a f inding that the catalogues submitted by the opponent, on their own or in combination with the website and magazine extracts, prove the extent of use of any of the earlier signs for any of the G&S involved. Although the evidence submitted shows use of the earlier sign in connection with ‘clothing for men and women’, the opponent did not produce any evidence whatsoever indicating the commercial volume of the exploitation of this sign to show that such use was genuine.
Decision of It is well established in the case-law that a declaration, even if sworn or affirmed
Proof of Use
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08/06/2010, R 1076/2009-2 – ‘EURO CERT’
in accordance with the law under which it is rendered, must be corroborated by independent evidence. The declaration in this case, drawn up by an employee of the opponent’s company, contains an outline of the nature of the relevant services, but only general statements concerning trade activities. It contains no detailed sales or advertising figures or other data that might show the extent and use of the mark. Furthermore, a mere three invoices with important financial data blanked out and a list of clients can hardly be c onsidered corroborative evidence. Therefore, no genuine use of the earlier mark has been demonstrated.
Decision of 01/09/2010, R 1525/2009-4 – ‘OFFICEMATE’
The spreadsheets with turnover figures and the Analysis and Review reports concerning sales figures are documents drawn up by or commissioned by the appellant itself and, therefore, have less probative value. None of the evidence filed contains any clear indication concerning the place of use of the earlier mark. The spreadsheets and the Analysis and Review Reports, which contain data compiled on the total value of estimated sales (in SEK) between the years 2003 to 2007, contain no information on w here the sales took place. There is no reference to the territory of the European Union, where the earlier trade mark is registered. The invoices do not cover any sales of goods made by the appellant. Therefore, the evidence submitted is clearly insufficient to prove the genuine use of the earlier mark.
Judgment of 12/12/2002, T-39/01, ‘HIWATT’
A catalogue showing the mark on three different models of amplifiers (but not indicating place, time or extent), a catalogue of the Frankfurt International trade fair showing that a company called HIWATT Amplification International exhibited at that fair (but not indicating any use of the trade mark) and a copy of the 1997 HIWATT Amplification Catalogue showing the mark on different models of amplifiers (but not indicating place or extent of use) were not considered sufficient to prove genuine use, principally because of lack of extent of use.
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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 D
CANCELLATION
SECTION 1
PROCEEDINGS
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Table of Contents
1 Introduction: General Outline of Cancellation Proceedings.................. 3
2 Application for Cancellation ..................................................................... 4 2.1 Persons entitled to file an application for cancellation ...........................4 2.2 Written application .....................................................................................4
3 Payment of the Fee.................................................................................... 5
4 Admissibility Check................................................................................... 5 4.1 Relative admissibility requirements (Rule 37 CTMIR)..............................7
4.1.1 Registration number of the contested CTM and name and address of its owner (Rule 37(a)(i) and (ii) CTMIR) ......................................................... 7
4.1.2 Extent of the application for cancellation (Rule 37(a)(iii) CTMIR) .................. 7 4.1.3 Grounds of the application for cancellation and facts, evidence and
arguments presented in support of those grounds (Rule 37(b) CTMIR) ........ 7 4.1.4 Identification of the applicant (Rule 37(c) CTMIR) ......................................... 8
4.2 Invitation to remedy deficiencies ..............................................................9
5 Notification of the Application to the CTM Proprietor and Further Exchanges between the Parties ............................................................. 10
6 Languages Used in Cancellation Proceedings ..................................... 11 6.1 Translation of the application for cancellation.......................................12 6.2 Translation of the evidence submitted by the applicant in support
of the application......................................................................................12 6.3 Translation of observations submitted by the parties in the
course of the proceedings.......................................................................13 6.4 Translation of evidence submitted by the CTM proprietor in the
course of the proceedings.......................................................................13 6.5 Translation of proof of use ......................................................................14
7 Other Issues............................................................................................. 14 7.1 Continuation of proceedings...................................................................14 7.2 Suspensions.............................................................................................15 7.3 Surrenders and withdrawals....................................................................15
7.3.1 Surrenders covering all the contested goods and/or services ..................... 15 7.3.2 Surrenders covering only a part of the contested goods and/or
services......................................................................................................... 16 7.3.3 Withdrawals .................................................................................................. 16
7.4 Applications for revocation and for invalidity against the same CTM ...........................................................................................................17
7.5 Contested international registrations designating the EU .................... 17
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1 Introduction: General Outline of Cancellation Proceedings
Proceedings in the Office concerning the revocation or invalidity of a registered Community trade mark (‘CTM’) are grouped under the general heading of ‘cancellation proceedings’ and are managed in the first instance by the Cancellation Division. The basic rules regarding these proceedings are mainly contained in Articles 56 and 57 CTMR and in Rules 37 to 41 CTMIR.
Cancellation proceedings are initiated with the submission of an application for revocation or for a declaration of invalidity (the ‘application for cancellation’) against a registered CTM. An application for cancellation against a C TMA which has not yet been registered is not admissible.
Once the application for cancellation is received, the Office checks that the corresponding cancellation fee has been paid. (If the fee has not been paid, the application is deemed not to have been filed). Next, the Office carries out a preliminary assessment of the admissibility requirements, which includes, in particular, those stated under Rule 37 CTMIR. The Office also notifies the CTM proprietor of the application. If there are any deficiencies related to relative admissibility requirements, the Office will ask the applicant to remedy them within a specified time limit.
Once the admissibility check has been completed, the Office will make an entry in the Register of the pending cancellation proceedings for the contested CTM (Rule 84(3)(n) CTMIR). This is to inform third parties about them. In parallel, the adversarial part of the proceedings is opened and t he parties are invited to file observations (and, if applicable, proof of use).
There are usually two rounds of observations, after which the adversarial part is closed and the file is ready for a decision. Once the decision becomes final (i.e. if no appeal has been filed within the prescribed time limit or when the appeal proceedings are closed), the Office will make the corresponding entry in the Register, in accordance with Article 57(6) CTMR.
In many respects cancellation proceedings follow the same or analogous procedural rules as those established for opposition proceedings (e.g. friendly settlement, restrictions of the contested CTM and withdrawals of the application for cancellation, correction of mistakes and revocation, time limits, multiple cancellations, change of parties, restitutio, etc.). For all these matters, see the relevant sections of the Guidelines and in particular Part C, Opposition, Section 1, Procedural Matters. This part of the Guidelines will, therefore, only focus on those aspects of the cancellation proceedings which are different from opposition proceedings.
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2 Application for Cancellation
2.1 Persons entitled to file an application for cancellation
Articles 41(1) and 56(1) CTMR
Cancellation proceedings can never be initiated ex officio by the Office but only upon receipt of an application from a third party.
Applications for revocation or for invalidity based on absolute grounds (Articles 51 and 52 CTMR) may be filed by:
1. any natural or legal person, or
2. any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers or services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued.
As regards applications for revocation or for invalidity based on absolute grounds, the applicant does not need to show an individual interest in bringing proceedings (see judgment of 08/07/2008, T-160/07, ‘COLOR EDITION, paras 22-26, confirmed by judgment of 25/02/2010, C-408/08 P, ‘COLOR EDITION’, paras 37-40). This is because, while relative grounds for invalidity protect the interests of proprietors of certain earlier rights, the absolute grounds for invalidity and for revocation aim to protect the general interest (including, in the case of revocations based on lack of use, the general interest in revoking the registration of trade marks which do not satisfy the use requirement).
In contrast, applications for invalidity based on relative grounds (Article 53 CTMR) may only be filed by the persons mentioned in Article 41(1) CTMR (in the case of applications based on Article 53(1) CTMR) or by those entitled under the law of the Member State concerned to exercise the rights in question (in the case of applications based on Article 53(2) CTMR).
Applications for revocation or invalidity based on Articles 73 or 74 CTMR (in particular specific revocation and absolute grounds for collective marks) follow the same rules, with regard to entitlement, as applications for revocation or for invalidity based on absolute grounds (Article 66(3) CTMR).
2.2 Written application
Article 56(2) CTMR
An application for cancellation has to be filed in writing. It is not obligatory to use the forms provided by the Office, as long as all the admissibility requirements are met. However, the use of the official forms is highly recommended.
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3 Payment of the Fee
Articles 8(3) and 56(2) CTMFR Rule 39(1) CTMIR
For general rules on payments, please consult the Guidelines Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.
An application for cancellation is not deemed to have been filed until the fee has been paid. For this reason, before examining the admissibility of the application, the Office will first check that the fee has been received.
Where the Office finds that the fee has not been paid, it will invite the applicant to pay it within a given time limit (in practice usually one month). If the required fee is not paid within the time limit, the Office will inform the applicant that the application for cancellation is deemed not to have been filed and (if it was paid, but after the specified time limit) the fee will be refunded to the applicant. In cases where the fee is received after the expiry of the time limit specified by the Office but the applicant provides proof that, within the time limit, it duly gave an order to a banking establishment to transfer the amount of the payment in a Member State, Article 8(3) CTMFR will be applied, including the payment of a surcharge where applicable (see the Guidelines Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
The filing date of an application for cancellation is not affected by the date of payment of the fee, since Article 56(2) CTMR is a r ule of order in the context of cancellation proceedings and does not establish any consequence as regards the filing date of the application. Therefore, when the fee is paid before the expiry of the time limit specified by Rule 39(1) CTMIR, the application is deemed to be filed and the filing date will be that on which the written statement was received by the Office.
As a general principle, the cancellation fee is an application fee due for the filing of the application regardless of the outcome of the proceedings. Therefore, it will not be refunded in cases of inadmissibility.
Neither will the cancellation fee be refunded in cases where the application for cancellation is withdrawn at any stage.
In this context, the only provision which foresees the refund of the cancellation fee is Rule 39(1) CTMIR, applicable only in cases where the application is deemed not to have been filed as a result of a late payment.
4 Admissibility Check
Article 51 and Articles 53(4) and 56(3) CTMR Rule 37 and Rule 38(1) CTMIR
Once the Office has established that the corresponding fee has been duly paid, it proceeds with an admissibility check of the application.
In contrast to opposition proceedings, there is no cooling-off period and no subsequent time limit for substantiation in cancellation proceedings. This means, in particular, that
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in the case of an application for invalidity based on relative grounds the proof of the existence, validity and scope of protection of all the earlier rights and the evidence proving the applicant’s entitlement to them have to be filed, in principle, together with the application.
The admissibility check may result in the identification of absolute and/or relative admissibility deficiencies in the application.
Absolute admissibility deficiencies are those that cannot be remedied by the applicant and will automatically lead to the application being considered inadmissible, such as the following:
• The application is filed against a CTM which has not yet been registered. An application for cancellation can only be filed against a registered CTM. A request directed against an application which has not yet been registered is premature and should be rejected as inadmissible (see decision of 22/10/2007, R 0284/2007-4, ‘VISION’).
• There is res judicata (Article 56(3) CTMR). For example, when there is a previous final decision by the Cancellation Division or by a court in a Member State, in the context of a c ounterclaim, relating to the same trade mark, the same goods and/or services and the same parties. In cases of invalidity based on relative grounds, where the applicant owns several earlier rights and has already applied for the invalidity (also counterclaims) of the same CTM on the basis of another of those earlier rights (Article 53(4) CTMR).
• An application for revocation based on non use is filed against a trade mark that has not been registered for five years at the date of the application (Article 51 CTMR).
• An application for cancellation is filed but not using the official form and it is neither in the correct language as established in Article 119 CTMR nor translated into that language within one month of the filing of the application for cancellation (Rule 38(1) CTMIR).
Where an absolute admissibility deficiency is found, the Office will invite the applicant to comment on the inadmissibility within two months. If, after hearing the applicant, the Office still maintains that there is an absolute admissibility deficiency, a decision will be issued rejecting the application for cancellation as inadmissible.
Relative admissibility deficiencies, on the other hand, are those that can in principle be remedied by the applicant. They include non-compliance with one or more of the relative admissibility requirements contained in Rule 37 CTMIR (which are described in detail in paragraph 4.1 below). In these cases, in accordance with Rule 39(3) CTMIR, the Office will invite the applicant to remedy the deficiency within two months (see paragraph 4.2 below).
Where one or more relative admissibility deficiencies have been found and they are not remedied within the specified time limit, a decision will be i ssued rejecting the application for cancellation as inadmissible.
Any decision to reject an application for cancellation in its entirety as inadmissible will be communicated to the applicant and the proprietor of the CTM (Rule 39(4) CTMIR) and can be appealed by the applicant.
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However, if the result of the admissibility check is that the application is considered partially admissible (i.e. admissible for at least some of the grounds and/or earlier rights on which it is based), the proceedings will continue. If one of the parties disagrees with the result of the admissibility check, it can appeal against it together with the final decision terminating the proceedings (Article 58(2) CTMR).
4.1 Relative admissibility requirements (Rule 37 CTMIR)
The relative admissibility requirements laid down by Rule 37 CTMIR are set out below.
4.1.1 Registration number of the contested CTM and name and address of its owner (Rule 37(a)(i) and (ii) CTMIR)
An application for cancellation must contain the CTM registration number and the name and address of its proprietor (please note that this is different in opposition proceedings, where Rule 15(2) only requires the opponent to identify the contested CTMA and the name of the applicant, but not its address).
The Office will check that the proprietor’s name and address correspond to the CTM identified by its registration number. In the event of discrepancies (or omission of one of these details), a deficiency letter will be sent to the applicant inviting it to remedy this deficiency (see the paragraphs on deficiencies below).
4.1.2 Extent of the application for cancellation (Rule 37(a)(iii) CTMIR)
The applicant must indicate if the request is filed against all the goods and services or against part of the goods and services in the contested registration. In the latter case, the applicant will have to clearly identify the specific goods and services in a list.
Please note the difference with opposition proceedings where, for the purposes of admissibility, the extent of the opposition is only an opt ional indication (Rule 15(3) CTMIR).
4.1.3 Grounds of the application for cancellation and facts, evidence and arguments presented in support of those grounds (Rule 37(b) CTMIR)
The CTMR and CTMIR clearly distinguish between an application for revocation and an application for a declaration of invalidity. Therefore, revocation and invalidity grounds cannot be combined in a single application but must be subject to separate applications and entail the payment of separate fees. However, an application for revocation can be based on several revocation grounds and an application for invalidity can be based on a combination of absolute and relative grounds. If an applicant files a single application based on revocation and invalidity grounds, the Office will send a deficiency letter inviting the applicant to choose one o r the other type of grounds and will inform the applicant that another cancellation application can be filed subject to the payment of an additional application fee. If the applicant does not indicate, within the time limit specified, which type of grounds it wishes to choose, the application will be rejected as inadmissible (Rule 39(3) CTMIR).
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An application for cancellation must contain an indication of the grounds on which it is based, that is, the specific provisions of the CTMR which justify the requested cancellation. The applicant may limit the grounds on which the application was initially based but may not enlarge the scope of the application by claiming any additional grounds during the course of the proceedings.
In addition, where an application for invalidity is based on relative grounds (Article 53 CTMR), the application must contain particulars of the right or rights on which the application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity (meaning all the indications contained in Rule 15(b), (d), (e), (f), (g) and (h) CTMIR, which are applied by analogy).
According to Rule 37(b)(iv) CTMIR, an application for cancellation must also contain an indication of the facts, evidence and arguments presented in support of the cancellation grounds. This means that the mere submission of an application form in which all the relevant boxes are ticked, but which does not include, or at least indicate, any facts, evidence and arguments to support it, will normally lead to an admissibility deficiency. The only exception is for applications for revocation based on non-use (Article 51(1)(a) CTMR), in which the burden of proof is on the CTM proprietor.
Finally, an i mportant distinction should be dr awn between admissibility and substantiation requirements. As already mentioned in the introduction to paragraph 4, even though in invalidity proceedings based on relative grounds there is no time limit for the substantiation of the earlier rights, and the proof of the existence, validity and scope of protection of all the earlier rights and the evidence proving the applicant’s entitlement to them have to be filed together with the application, this does not mean that there is no distinction between admissibility and substantiation requirements. If, for instance, an appl icant clearly identifies the earlier mark on w hich the application is based (Rule 37(b)(ii) CTMIR) and indicates the evidence in support of those grounds (Rule 37(b)(iv) CTMIR), the application will be admissible. If the evidence provided is later found insufficient to substantiate the earlier right (e.g. certificate is not from an official source or not translated into the language of proceedings), the application will be rejected as unfounded (see, by analogy, Rule 20(1) CTMIR), and not as inadmissible (see decision of 12/07/2013, R 1306/2012-4, ‘URB EUROPE’, para. 21, decision of 12/07/2013, R 1310/2012-4, ‘URB Bearings’, para. 21 and decision of 12/07/2013, R 1309/2012-4, ‘URB’, para. 20).
However, the absence of a time limit for the substantiation of the earlier rights means that at any subsequent stage of the proceedings (before the closure of the adversarial part) the applicant can remedy, on its own motion, any deficiency as regards substantiation.
As regards substantiation requirements of earlier rights, see the section on pr oof of existence of earlier rights in the Guidelines Part C, Opposition, Section 1, Procedural Matters and the section on i nvalidity proceedings based on relative grounds in the Guidelines Part D, Cancellation, Section 2, Substantive Provisions.
4.1.4 Identification of the applicant (Rule 37(c) CTMIR)
An application for cancellation must contain the applicant’s name and address and, if it has appointed a r epresentative, the representative’s name and addr ess. Applicants who do not have either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Union must be
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represented by a pr ofessional representative (Article 92(2) CTMR). For more information, see the Guidelines Part A, General Rules, Section 5, Professional Representation.
Concerning multiple applicants, applications for invalidity based on relative grounds follow the same rules as oppositions (see the Guidelines Part C, Opposition, Section 1, Procedural Matters). These rules are directly connected to the entitlement requirements of Article 56(1) CTMR and Article 41(1) CTMR (see above).
In contrast, in the case of applications for invalidity based on absolute grounds and for revocation there are no particular requirements regarding multiple applicants, except that they have to be clearly indicated in the application.
Please note that in all cases concerning multiple applicants, Rule 75 and Rule 94(7)(e) CTMIR will be applied (appointment of a common representative and fixing of costs).
4.2 Invitation to remedy deficiencies
Rule 39(3), (4) CTMIR
In accordance with Rule 39(3) CTMIR, if the Office finds that an application for cancellation does not comply with Rule 37 CTMIR, it will invite the applicant to remedy the deficiencies within a specific time limit (in the practice of the Office, two months). This will be done as soon as the deficiency is found, whether or not within the context of the admissibility check. Please note that this only applies to deficiencies as regards admissibility requirements, and not to deficiencies as regards substantiation requirements, which the applicant must remedy on its own motion (see paragraph 4.1.3 above).
If the deficiencies are not remedied before the expiry of the time limit, the Office will issue a decision rejecting the application as inadmissible. In cases where the application for cancellation is based on several grounds and/or earlier rights and the deficiencies only relate to some of them, the proceedings can continue in relation to the other grounds or earlier rights for which there are no admissibility deficiencies (partial admissibility).
As mentioned above in connection with the grounds of the application, in the context of Rule 39(3) CTMIR the fact that the applicant is invited to remedy a deficiency cannot lead to enlarging the scope of the proceedings (earlier rights, goods and services, etc.) determined by the initial request. For example, if the application for cancellation indicates that it is directed against part of the goods and services in the contested registration and the Office invites the applicant, in accordance with Rule 39(3) CTMIR, to specify which specific goods and services of the CTM the application is directed against. An answer must clearly list the part of the goods and services against which the application for cancellation is directed. If the applicant does not respond appropriately, the Office will issue a decision rejecting the application as inadmissible.
Finally, Rule 39(3) CTMIR is only applicable to the list of relative admissibility requirements contained in Rule 37 CTMIR. Deficiencies in relation to absolute admissibility requirements (e.g. the lack of translation of the application in accordance with Rule 38(1) CTMIR, the existence of res judicata or of a p revious application for invalidity based on another earlier right from the same proprietor, or non-compliance
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with the five-year period between a r evocation request and the registration of the contested CTM) are not covered by Rule 39(3) CTMIR and cannot be remedied (i.e. they lead to the rejection of the application in question as inadmissible).
5 Notification of the Application to the CTM Proprietor and Further Exchanges between the Parties
Article 57 CTMR Rule 40 CTMIR
Rule 40(1) CTMIR states that every application for cancellation which is deemed to have been filed must be notified to the proprietor of the contested CTM and that when the Office has found the application admissible, it will invite the proprietor to file its observations within such time limit as it may specify.
Therefore, once the Office has verified that payment has been received (and thus the application is deemed to have been filed) and has carried out the admissibility check, it notifies the CTM proprietor of the application for cancellation.
If no deficiencies are detected in the admissibility check, the notification of the application to the CTM proprietor will also contain an invitation to file observations (and in the case of an application for revocation based on Article 51(1)(a) CTMR, an invitation to submit proof of genuine use – see Rule 40(5) CTMIR). In practice, the Office grants the CTM proprietor three months for its first response to the application.
If the admissibility check reveals that there are some deficiencies to be remedied, the CTM proprietor will still be notified of the application and will be informed of the deficiencies which the applicant has to remedy. However, in this case just the notification of the application is sent and the Office will not invite the CTM proprietor to file observations (or, when applicable, proof of use) until the applicant has remedied the deficiencies.
According to the judgment of the Court of Justice of 18/10/2012 in case C-402/11 P, ‘REDTUBE’ (applicable by analogy to cancellation proceedings), the notification sent to the parties after the admissibility check informing them that the cancellation is admissible in accordance with Rule 37 CTMIR constitutes a decision that may be appealed together with the final decision on the case as stated in Article 58(2) CTMR. Consequently, the Office is bound by this decision and may only revoke it at a later stage of the proceedings provided that the requirements stated in Article 80 CTMR for the revocation of decisions are met.
According to Article 57(1) CTMR, the Office may invite the parties to file observations as often as it considers this necessary. In practice, and in the interest of avoiding an unnecessary prolongation of the proceedings, the Office will usually grant two rounds of observations, usually ending with those of the CTM proprietor (i.e. application for cancellation – CTM proprietor’s observations – applicant’s observations – CTM proprietor’s observations). Nevertheless, in cases when one of the parties, within the time limit to file observations, does not submit any evidence or observations and/or indicates that it has nothing more to comment, the Office may directly proceed to closure of the adversarial part of the proceedings, notifying the parties that a decision will be taken.
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However, additional rounds of observations may be granted in exceptional cases, in particular when additional relevant evidence, which could not have been filed beforehand, is filed in the last round. It is the Office’s practice to give the parties a time limit of two months to file their observations (except for the first submission of the CTM proprietor, see above).
As regards applications for invalidity based on relative grounds, the CTM proprietor may also file a request for proof of use of the earlier trade marks on which the application is based. If the request is admissible (for the rules on the admissibility of a request for proof of use, see the Guidelines Part C, Opposition, Section 6, Proof of Use), the Office will invite the applicant to submit the proof (Article 57(2) and (3) CTMR and Rule 40(6) CTMIR). In contrast to opposition proceedings (Rule 22(1) CTMIR), in cancellation proceedings the request can be filed by the CTM proprietor together with its first response to the application or in any of the subsequent rounds of observations.
Once the parties have submitted their observations and/or proof of use (if applicable), the adversarial part is closed and the file is ready for decision.
If at any stage of the proceedings one of the parties does not file observations within the specified time limit, the Office will close the adversarial part and take a decision on the basis of the evidence before it (Rule 40(2) CTMIR, applicable by analogy to both parties).
As regards the rules on time limits, extensions, notification or change of parties in the course of proceedings, etc., see the procedural matters section of the Guidelines Part C, Opposition, Section 1, Procedural Matters as the rules are applicable mutatis mutandis.
6 Languages Used in Cancellation Proceedings
Article 119(5), (6) and (7) CTMR Rules 38(1), (3), 39(2), (3) and 96(1), (2) CTMIR
For detailed rules on use of languages in the proceedings, see the procedural section of the Guidelines Part C, Opposition, Section 1, Procedural Matters. This section will only address the specific rules which are applicable to cancellation proceedings.
The parties to cancellation proceedings may also agree on a different official language of the European Union as the language of the proceedings (Article 119(7) CTMR). This agreement has to be communicated to the Office within two months of the notification of the application for cancellation to the CTM proprietor. In this case, the applicant must file a translation of the application into the language chosen by both parties (where it was not already filed in that language) within one month of the date on which the agreement is communicated to the Office. Where the translation is not filed or filed late, the language of the proceedings will remain unchanged (Rule 38(3) CTMIR).
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6.1 Translation of the application for cancellation
Article 119(6) CTMR Rules 38(1), (3) and 39(2) CTMIR
If the application is filed in a language of the Office that is one of the two languages of the contested CTM, that language will automatically become the language of the proceedings.
If the application is filed in a language of the Office that is not one of the two languages of the contested CTM, and the official form is not used, on its own motion the applicant has to file a translation into the correct language (either of the two languages of the contested CTM, if they are both languages of the Office, or the second language of the contested CTM, when the first is not a language of the Office) within one month of the filing date of the application for cancellation. The language into which the application has been translated will then become the language of the proceedings.
If the applicant does not file a translation into the appropriate language within the time limit, the application for cancellation will be r ejected as inadmissible (Article 119(6) CTMR, Rules 38(1) and 39(2) CTMIR).
Rule 39(3) CTMIR does not refer to Rule 38(1) CTMIR and, therefore, in these cases the Office will not send a deficiency letter and will wait for one month after the filing date for the translation of the cancellation application to be submitted.
Where the applicant uses the official form for revocation or invalidity, and this form is in the wrong language, there may be exceptions concerning the translation and the indication of the language of the proceedings. Please see the different scenarios on pages 11 to 12 of the Guidelines Part C, Opposition, Section 1, Procedural Matters.
6.2 Translation of the evidence submitted by the applicant in support of the application
Rules 38(2) and 39(3) CTMIR
According to Rule 38(2) CTMIR, where the evidence in support of the application is not filed in the language of the revocation or invalidity proceedings, the applicant must file, on its own motion, a translation into that language within two months of the filing date of the evidence in support of the application. This applies to all the evidence submitted by the applicant in the course of the proceedings, whether it is filed together with the application or at a later stage.
The Office will not send a deficiency letter and it is up to the applicant to submit the translation of the evidence in support of the application on its own motion.
If the applicant does not file a translation of evidence in support of the application which is required to evaluate the admissibility of the case (e.g. the particulars of the earlier right on which the application is based, or the indication of the facts, evidence and arguments in support of the grounds are not translated), the Office will invite the applicant to remedy the deficiency pursuant to Rule 39(3) CTMIR (decision of 02/03/2007, R 0300/2006-4 ‘ACTILON/AC TELION’). If the deficiency is not remedied,
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the application for cancellation will be r ejected as totally or partially inadmissible (Article 119(6) CTMR, Rules 38(2) and 39(3) CTMIR).
If the applicant does not provide translations for the other evidence, which would not affect the admissibility of the case, any document in support of the application which is not translated by the applicant into the language of proceedings within the time limit specified in Rule 38(2) CTMIR will be deemed not to have been received by the Office and, therefore, will not be taken into account (Rule 98(2) CTMIR) (see decision of 05/03/2012, R 0826/2010-4, ‘MANUFACTURE PRIM 1949 (FIG.MARK)’, para. 25).
6.3 Translation of observations submitted by the parties in the course of the proceedings
Rules 96(1) and 98(2) CTMIR
A party who submits observations in a language of the Office other than the language of the proceedings has to file a translation of those observations in the language of the proceedings within one month of the submission date (Rule 96(1) CTMIR).
The Office will not ask for the translations and will proceed with the case. It is up to the party to submit the requisite translations.
If the translations are not submitted within the time limit of one month, the observations will be deemed not to have been received by the Office and, therefore, will not be taken into account (Rule 98(2) CTMIR).
6.4 Translation of evidence submitted by the CTM proprietor in the course of the proceedings
Rules 96(2) and 98(2) CTMIR
The documents submitted by the CTM proprietor in the course of the proceedings (except for proof of use, see below) are subject to Rule 96(2) CTMIR and, therefore, may be submitted in any official language of the European Union.
In accordance with this provision, the CTM proprietor is not automatically obliged to file a translation, but the Office may require it to do so within a time limit. In exercising its discretion in this matter, the Office will take into account the nature of the evidence and the interests of the parties.
In cases where the Office does invite the CTM proprietor to submit translations of the evidence, failure to do so within the specified time limit will mean that the non-translated documents will not be taken into account (Rule 98(2) CTMIR).
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6.5 Translation of proof of use
Rule 22(6) CTMIR
Although Rule 40(5) and (6) CTMIR only expressly refers to Rule 22(2), (3) and (4) CTMIR, it is considered that Rule 22(6) CTMIR should also be applied by analogy in cancellation proceedings, since the underlying logic is the same, that is, to request translation of evidence, which for proof of use tends to be quite lengthy, only to the extent to which it is considered necessary (see decision of 11/03/2010, R 0167/2009-1, ‘INA/INA (figurative mark)’ paras 24-25). Consequently, Rule 22(6) CTMIR applies as lex specialis, vis-à-vis the lex generalis contained in Rule 38(2) CTMIR (evidence submitted by the applicant) and Rule 96(2) CTMIR (evidence submitted by the CTM proprietor), as regards proof of use submitted by either of the parties.
According to Rule 22(6) CTMIR, where the evidence of use filed by one of the parties is not in the language of the proceedings, the Office may require the party who filed it to submit a translation of that evidence in that language within a time limit of two months. In exercising its discretion in this matter, the Office will take into account the nature of the evidence and the interests of the parties. In cases where the Office does invite the CTM proprietor to submit translations of the evidence, failure to do so within the specified time limit will mean that the non-translated documents will not be taken into account (except those that are considered to be self-explanatory). For further guidance on the application of Rule 22(6) CTMIR, see the Guidelines Part C, Opposition, Section 1, Procedural Matters and Part C, Opposition, Section 6, Proof of Use.
7 Other Issues
7.1 Continuation of proceedings
Article 82 CTMR
According to Article 82(1) CTMR, any party to proceedings before the Office who has omitted to observe a time limit vis-à-vis the Office may, upon request, obtain the continuation of proceedings, provided that at the time the request is made the omitted act has been carried out. The request for continuation of proceedings will be admissible only if it is presented within two months of the expiry of the unobserved time limit and will not be deemed to have been filed until the corresponding fee has been paid.
This provision is applicable to all the proceedings before the Office. For more details, see the Guidelines Part A, General Rules, Section 1, Means of Communication, Time Limits.
However, the reason why it is specifically mentioned in relation to cancellation proceedings is to highlight the difference with opposition proceedings. As regards opposition, Article 82(2) CTMR establishes that continuation of proceedings is not applicable, inter alia, to the time limits laid down in Articles 41 and 42 CTMR (period for filing notice of opposition, time limits given by the Office to file facts, evidence and arguments or observations). In cancellation proceedings, by contrast, continuation of proceedings can be requested in relation to any of the different time limits within the cancellation proceedings (except for the time limit established in Article 60 CTMR to file an appeal).
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7.2 Suspensions
Article 104 CTMR
In the matter of suspensions, see in general the Guidelines Part C, Opposition, Section 1, Procedural Matters (taking into account, however, that in cancellation proceedings there is no cooling-off period). Rule 20(7) CTMIR is applicable by analogy.
The main particularity of cancellation proceedings in this matter concerns the specific rules on r elated actions before Community trade mark courts. According to Article 104(2) CTMR, the Office, when hearing an application for cancellation will, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, suspend the proceedings where the validity of the contested CTM is already in issue on account of a counterclaim before a Community trade mark court.
Article 104(2) CTMR also states that if one of the parties to the proceedings before the Community trade mark court so requests, the Community trade mark court may, after hearing the other parties to these proceedings, suspend the proceedings. The Office will in this case continue the proceedings pending before it.
A request for suspension pursuant to Article 104(2) CTMR should be s upported by relevant evidence. Suspension requests are only considered relevant to the proceedings and might be granted under Article 104(2) CTMR in cases where they refer to the contested CTM and not where they refer to other CTMs contested in parallel cancellation proceedings.
7.3 Surrenders and withdrawals
The Office’s practice on the surrender of CTMs is described in the Guidelines Part E, Register Operations, Section 1, Changes in a Registration.
7.3.1 Surrenders covering all the contested goods and/or services
In principle, the consequences in cancellation proceedings of a total surrender of the contested CTM (or of a partial surrender covering all the goods and/or services against which the application for cancellation is directed) are similar to those of the withdrawal of a CTM application in opposition proceedings.
However, unlike what happens with the withdrawal of a CTM application, the effects of the surrender of a registered CTM are not the same as those of the decision on the substance terminating the proceedings in question. While the surrender of a CTM only becomes effective on the date on which it is registered, a decision cancelling the CTM produces its effects from an earlier date, be it the registration date of the CTM (in the case of invalidity) or the date on which the cancellation request was filed (in the case of revocation). Consequently, as a rule and despite the surrender of the contested CTM, the applicant is deemed to still have a legitimate interest in continuing the cancellation proceedings in order to obtain a dec ision on the substance (see judgment of 24/03/2011, C-552/09 P, ‘TiMi KiNDERJOGHURT’, para. 39 and decision of 22/10/2010, R 0463/2009-4, ‘MAGENTA’, paras 25-27).
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In practice, when there is a surrender of a CTM which is subject to cancellation proceedings, the Office will suspend the registration of the surrender and, in parallel, the Cancellation Division will notify the cancellation applicant of the surrender, inviting it to submit observations within two months and to indicate whether it wishes to continue the proceedings or whether it agrees to the closure of the proceedings without a decision on the substance. This letter will also inform the applicant that, if it does not reply, the cancellation proceedings will be closed without a decision on the substance.
If the applicant replies and expressly agrees with the closure of the proceedings, the surrender will be r ecorded and the cancellation action will be deem ed to have been withdrawn and the proceedings will be closed without a decision on the substance. The costs will be borne by the CTM proprietor (Article 85(3) CTMR).
If the applicant does not submit any observations on the closure of the cancellation proceedings, the Cancellation Division will send both parties a letter closing the proceedings and informing the applicant of its possible loss of rights for the purposes of Rule 54(2) CTMIR. If the applicant does not explicitly apply for a decision on the matter within the time limit established in this rule, the surrender will be r ecorded in the Register.
If the applicant does request the continuation of the cancellation proceedings (either in reply to the Office’s invitation to submit observations or when applying for a decision under Rule 54(2) CTMIR), the cancellation proceedings will continue until there is a final decision on the substance. In these cases, the costs will be borne by the loosing party and not necessarily to the party terminating proceedings, as indicated in Article 85(3) CTMR. After the decision on the cancellation has become final, the surrender will be recorded only for the goods and/or services for which the contested CTM has not been revoked or declared invalid, if any.
7.3.2 Surrenders covering only a part of the contested goods and/or services
The CTM proprietor may partially surrender its CTM for part of the contested goods and/or services. In such cases the Office will notify the cancellation applicant and will invite it to indicate if it wishes to maintain its cancellation application. If the cancellation applicant does request the continuation of proceedings and maintains its application for cancellation, proceedings will continue despite the partial surrender of the CTM in the Register. If the cancellation applicant does not wish to maintain its application for cancellation, the Office will close the proceedings and take a d ecision on c osts indicating that each party will bear its own costs (Article 85 (2) CTMR).
7.3.3 Withdrawals
The cancellation applicant can withdraw its application for cancellation at any time of the proceedings. The Office will inform the CTM proprietor about the withdrawal, close the proceedings and take a de cision on c osts, which will be borne by the applicant (Article 85(3) CTMR), except in cases where the withdrawal immediately follows a surrender (see above).
The parties may indicate that a surrender or a withdrawal is a c onsequence of an agreement they have reached and that a decision on costs is not necessary. The Office will not issue a decision on costs if such a request is received together with a request for surrender or withdrawal and is signed by both parties. Such a request can also be
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sent in two separate letters to the Office. In cases where no indication is given as to whether the parties have agreed on the costs, the Office will take a decision on costs immediately. The decision on costs already issued will not be revised by the Office in the event that the parties provide such information after the date of the decision. It is left to the parties to respect the agreement and not to ‘execute’ the Office’s decision on costs.
7.4 Applications for revocation and for invalidity against the same CTM
If the same CTM is subject to both revocation and invalidity proceedings, the Office has the power of discretion to decide in each case, taking into account the principles of economy of proceedings and administrative efficiency, whether one of the proceedings has to be suspended until the other is terminated or in which order the proceedings should be decided.
If it is first decided that the CTM is totally invalid (or partially but for all the goods/services against which the revocation is directed), and once this decision becomes final, the parallel revocation proceedings will be aut omatically closed since they no l onger have any object. The costs are at the discretion of the Office (Article 85(4) CTMR), which will usually conclude that each party has to bear its own costs.
However, taking into account the different effects of a revocation (ex nunc) and o f a declaration of invalidity (ex tunc), when it is first decided that the CTM should be totally revoked (or partially but for all the goods/services against which the invalidity is directed), the Office will inform the applicant of this decision when it becomes final and will invite it to submit its observations on the closure of the invalidity proceedings. If the applicant demonstrates a sufficient legal interest in obtaining a declaratory invalidity decision, the proceedings will continue.
7.5 Contested international registrations designating the EU
Article 152(2) and Article 158 CTMR
Cancellation proceedings can also be directed against international registrations (IRs) designating the European Union. The specific rules that are applicable in these cases (in particular in connection with the filing date and the relevant time limit for proof of use) can be found in the Guidelines, Part M, International Marks.
A cancellation application against an IR may be filed after the date of the publication of the IR designating the European Union in the Official Bulletin of the Office (M.3.1. – International registrations with or without amendments since their publication under Article 152(1) of the CTMR).
As regards WIPO representatives of the holders of contested IRs, as a general rule the Office will communicate with them, irrespective of the IR holder’s location, when they comply with the criteria of Article 93 CTMR.
Where the WIPO representative of the IR holder does not comply with the criteria of Article 93 CTMR, the notification of the cancellation application will be sent directly to
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the IR holder, and a copy will be sent to its WIPO representative for information purposes.
The notification of the cancellation application will also invite the IR holder to appoint a professional representative in accordance with Article 93 CTMR within three months of its receipt. In cases of obligatory representation (Article 92(2) CTMR), the notification will indicate the consequences of not complying with this requirement (namely, that any communications sent by the IR holder in the course of the proceedings will not be taken into account).
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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 E
REGISTER OPERATIONS
SECTION 2
CONVERSION
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Table of Contents
1 Introduction................................................................................................ 3
2 Conversion of CTMs and IRs Designating the EU .................................. 3 2.1 Conversion of CTMs...................................................................................3 2.2 Conversion of IRs designating the EU......................................................4
3 Valid CTM Application as a Condition for Conversion........................... 5
4 Grounds Precluding Conversion ............................................................. 5 4.1 Revocation on the grounds of non-use ....................................................6 4.2 Ground for refusal limited to a M ember State or extended to the
entire EU .....................................................................................................6 4.3 Withdrawal/surrender after a decision has been rendered .....................7 4.4 Competence to decide on grounds precluding conversion ....................7
5 Formal Requirements for the Request of Conversion............................ 8 5.1 Time limit ....................................................................................................8
5.1.1 Start of time limit where the Office issues a notification................................. 8 5.1.2 Start of time limit in other cases ..................................................................... 8
5.2 Request for conversion..............................................................................9 5.3 Language ..................................................................................................11 5.4 Fee.............................................................................................................12
6 Examination by the Office....................................................................... 12 6.1 Stages of the procedure, competence ....................................................12 6.2 Examination..............................................................................................13
6.2.1 Fees.............................................................................................................. 13 6.2.2 Time limit ...................................................................................................... 13 6.2.3 Language...................................................................................................... 13 6.2.4 Formalities .................................................................................................... 14 6.2.5 Grounds ........................................................................................................ 14 6.2.6 Representation ............................................................................................. 15 6.2.7 Partial conversion ......................................................................................... 15
6.3 Publication of the request and entry in the Register .............................15 6.4 Transmission to designated offices........................................................16
7 Effects of Conversion.............................................................................. 17
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1 Introduction
Conversion is the process of turning a CTM into one or more national applications. Its main features are laid down in Articles 112 to 114 CTMR and Rules 44 to 47 CTMIR. If a CTM ceases to exist it can, depending on the precise reason for that, be converted into trade marks that are valid in certain Member States. Conversion is particularly useful for overcoming possible problems with the CTM’s unitary character. For example, if the Community Trade Mark faces a registrability problem in only one or certain countries on absolute grounds or due to an opposition based on an earlier right valid in only one country or certain countries, the CTM applicant can apply to convert the CTM into individual, national trade mark applications in the other countries not affected by these grounds.
The Community Trade Mark system is based on the principle that the Community and national trade mark systems are complementary. They are notably linked to each other by seniority and conversion procedures. The system is construed in such a way that the earlier filing date of a registered right will always prevail in the territory in which it is valid, irrespective of whether the registered trade mark results from a national filing, an international designation or a CTM application (decision of the Grand Board of Appeal, 15/07/2008 R 1313/2006-G, and decision of 22/09/2008, R 0207/2007-2, ‘Restoria’ para. 34).
Conversion is a two-tier system involving, firstly, the payment of the conversion fee of EUR 200 and t he examination of the conversion application before the OHIM and, secondly, the conversion procedure itself before the national offices. Depending on national law, the converted trade mark will either be registered immediately or enter the national examination, registration and opposition procedure like a normal national trade mark application.
Where the EU is designated in an IR and to the extent that the designation has been withdrawn, refused or has ceased to have effect, a request may also be m ade for conversion into national trade mark applications in one, more or all of the Member States or through a subsequent designation of the Member States under the Madrid system.
Conversion of IRs designating the EU is not to be c onfused with ‘Transformation’, which is a legal feature introduced by the Madrid Protocol (MP) in order to soften the consequences of the five-year dependency period existing under the Madrid Agreement (see Article 6(3) MP). Transformation allows for a centrally attacked mark to be transformed into a direct CTM application but it does not allow for the conversion of an EU designation into national filings. For more information on Transformation see The Guidelines, Part M, International Marks.
2 Conversion of CTMs and IRs Designating the EU
2.1 Conversion of CTMs
Articles 112(1), 113(1), Article 159 CTMR Rule 44(1)(e), (f), Rules 122, 123 CTMIR
The applicant of a C ommunity trade mark (CTM) application or proprietor of a registered CTM may request the conversion of its CTM application or registered CTM.
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The request may be i nto national trade mark applications in one, more or all of the Member States, it being understood that the term ‘national applications’ or ‘national office’ includes Benelux trade mark applications or the Benelux Trade Mark Office, as far as Belgium, Luxembourg and The Netherlands are concerned.
Conversion is possible in the following circumstances (‘grounds for conversion’):
• where a CTM application has been finally refused by the Office (Article 112(1)(a) CTMR), in a dec ision on abs olute or relative grounds for refusal during examination or opposition proceedings;
• where a CTM application has been withdrawn by the applicant (Article 112(1)(a), Article 44 CTMR);
• where a CTM application is deemed to be w ithdrawn, namely when class fees are not paid within the relevant time limit after filing the application (Article 112(1)(a), Article 36(5) CTMR);
• where a CTM registration ceases to have effect (Article 112(1)(b) CTMR), which applies in the following circumstances:
○ where a CTM registration has been validly surrendered (Article 50 CTMR);
○ where a CTM registration has not been renewed (Article 47 CTMR);
○ where a CTM registration has been declared invalid by the Office or by a Community trade mark court (Articles 55 and 100 CTMR);
○ where the rights of the proprietor of a CTM registration have been revoked by the Office or by a Community trade mark court (Article 55 CTMR) except in the case of revocation due to non-use (Article 112(2) CTMR).
2.2 Conversion of IRs designating the EU
The holder of an IR designating the EU may request the conversion of the designation of the EU:
• into national trade mark applications in one, more or all of the Member States;
• into subsequent designations of one or more Member States under the Madrid Agreement or Protocol (‘opting-back‘), provided that the Member State was a party to either Treaty not only at the point in time of the conversion request, but already on the date of the IR designating the EU;
• into national trade mark applications for some Member States and subsequent designations for other Member States, it being understood that the same Member State can only be designated once.
IR conversion is possible in the following circumstances (‘grounds for conversion’) where the designation of the EU in an IR ceases to have effect, which applies in the following circumstances:
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• where the effects of an IR designating the EU have been invalidated by the Office or a CTM court (Article 158 CTMR, Rule 117 CTMIR);
• where a renunciation of the designation of the EU has been recorded in the International Register (Rule 25(1), Rule 27 CR1);
• where a c ancellation of the IR has been r ecorded in the International Register (Rule 25(1), Rule 27 CR): in such cases opting-back conversion is not possible; only national conversion is available where the Office is informed by WIPO that the IR has not been renewed, provided that the grace period for the renewal is over (Rule 31(4)(a) or (b) CR).
• where an I R designating the EU has been definitively refused by the Office (Rules 113(2)(b), (c), 115(5)(b), (c) CTMIR).
Conversion may be requested for all or for some of the goods or services to which the act or decision mentioned above relates.
Where the abovementioned decision or act relates only to some of the goods and services for which the application was filed or registered, conversion may be requested only for those specific goods or services, or a part of those goods or services.
3 Valid CTM Application as a Condition for Conversion
Article 112(1) CTMR
Where conversion is requested on the basis of a CTM application, conversion is possible only if there is a valid CTM application (See The Guidelines, Part B, Examination, Section 2, Examination of Formalities).
4 Grounds Precluding Conversion
Article 112(2) and Article 159 CTMR Rules 45 and 123 CTMIR
Conversion will not take place in the following two cases: first, when a registered CTM or IR designating the EU is revoked on grounds of non-use (see paragraph 4.1. below) and, second, where the particular ground for which the CTM application or registered CTM or IR designating the EU ceasing its effects would preclude registration of the same trade mark in the Member State concerned (see paragraph 4.2. below). Therefore, a request for conversion of a rejected CTM application will not be admissible in respect of the Member State to which the grounds of refusal, invalidity or revocation apply.
Even if the ground for conversion is the withdrawal of an appl ication, if such a withdrawal takes place after a dec ision has been r endered refusing the mark on the
1 Common Regulations under the Madrid Agreement concerning the IR of Marks and the Protocol relating to that Agreement.
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basis of a ground that would preclude registration in the Member State concerned, such a request for conversion will be refused if no appeal has been filed.
Even if the ground for conversion is the surrender of a registration, if such a surrender takes place after a decision revoking a CTM or IR on grounds of non-use, or refusing the mark on the basis of a ground that would preclude registration in the Member State concerned has been rendered, such a r equest for conversion will be refused if no appeal has been filed (see paragraph 4.3 below).
4.1 Revocation on the grounds of non-use
Article 112(2)(a) CTMR
The first reason for precluding conversion is when the rights of the CTM proprietor or IR holder have been revoked on the grounds of non-use.
Conversion will not take place where the rights of the proprietor of the Community trade mark, or the holder of the IR, have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the Community trade mark has been put to use that would be considered genuine under the laws of that Member State.
No subsequent allegations by the conversion applicant regarding the substance of the case will be allowed. For instance, if the CTM was revoked for non-use, the conversion applicant cannot plead before the Office that it is able to prove use in a par ticular Member State.
4.2 Ground for refusal limited to a Member State or extended to the entire EU
Article 112(2)(b) CTMR Rule 45(4) CTMIR
The second reason for precluding conversion is related to a ground for refusal, for revocation (other than for non-use) or for a declaration of invalidity. It applies when the decision of the Office or of a C ommunity trade mark court expressly states that the ground for refusal, for revocation or for invalidity applies in respect of a par ticular Member State, and p recludes conversion for that Member State (decision of 05/03/2009, R 1619/2008-2 ‘orange colour mark’, paras 23-24).
Examples
• Where an absolute ground for refusal exists only in respect of one language, conversion will not take place in respect of Member States where that language is an official language. For example, if an absolute ground for refusal was raised in relation to the English-speaking public, conversion would not take place in respect of the United Kingdom, Ireland and Malta (see Rule 54(4) CTMIR).
• Where an absolute ground for refusal exists only in respect of one Member State, which may be the case because the trade mark is descriptive or deceptive only in
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a particular Member State and not in other Member States (see The Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal and Community Collective Marks), conversion will not take place in respect of that Member State, whereas conversion may be requested for all Member States in which the ground for refusal has not been expressly found to exist.
• Where a C TM application or IR designating the EU has been r efused in an opposition based on an ear lier national trade mark in a g iven Member State, conversion will not take place in respect of that Member State. When the opposition is based on a num ber of earlier rights from different Member States but the final decision rejects the CTM application or the IR designating the EU on the basis of only one of those earlier rights, conversion may be requested for the remaining Member States. For example, if in an opposition based on a UK, an Italian and a Fr ench national right, the opposition is successful insofar as it is based on the UK national right, and there is no analysis of the remaining earlier rights, conversion will not take place in respect of the United Kingdom, but may take place in respect of Italy and France (and all remaining Member States) (see judgment of 16/09/2004, T-342/02, ‘MGM’ and judgment of 11/05/2006, T-194/05 ‘Teletech’).
• According to Rule 45(4) CTMIR, applicable by analogy to IRs designating the EU in accordance with Rule 123(2) CTMIR, where a CTM application has been refused or a CTM registration has been invalidated on relative grounds based on an earlier CTM, or, in the cases of invalidation, another Community industrial property right, this has the effect of excluding conversion for the entire Union, even if likelihood of confusion exists only in part of it. This is the case even if the CTM enjoys a seniority claim under Article 34 or 35 CTMR.
4.3 Withdrawal/surrender after a decision has been rendered
Where, in any of the above cases, the applicant withdraws the CTMA or the owner surrenders the CTM, or the holder renounces the designation of the EU before the decision becomes final (i.e. during the appeal period) and subsequently requests conversion of the mark into national trade marks in some or all of the Member States for which a g round for refusal, for revocation or invalidity applies, such a request for conversion will be refused in respect of those Member States.
If the applicant/owner/holder files an appeal and subsequently withdraws the refused application/surrenders the invalidated/revoked CTM/designation and then requests a conversion, the withdrawal/surrender will be forwarded to the competent Board and may be put on hold pending the outcome of the appeal proceedings (see judgment of 24/03/2011, C-552/09 P, ‘TiMi KiNDERJOGHURT’, para. (43), decision of 22/10/2010, R 0463/2009-4, ‘MAGENTA’, paras 25-27 and decision of 07/08/2013, R 2264/2012-2 – “SHAKEY’S). Only once the withdrawal/surrender is processed will the conversion be forwarded as admissible to all the Member States applied for or refused, depending on the outcome of the case. (see also The Guidelines, Part D, Cancellation and Part E, Section 1, Changes to a registration).
4.4 Competence to decide on grounds precluding conversion
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Article 113(1), (3) CTMR
The Office will decide whether the request for conversion fulfils the conditions set out in the Regulations in conjunction with any final decisions (their operative part and reasons) which gave rise to the conversion.
If one of the grounds precluding conversion exists, the Office will refuse to forward the conversion request to the respective national office (or, in the case of an opting-back conversion, will refuse to forward the conversion to WIPO as a subsequent designation for the Member States for which conversion is so precluded). This decision will be subject to appeal.
5 Formal Requirements for the Request of Conversion
5.1 Time limit
A general time limit of three months for requesting conversion applies. The start of the time limit depends on the ground for conversion.
The time limit may not be extended.
Furthermore, continuation of proceedings cannot be requested for this time limit, according to Article 82(2) CTMR. However, restitutio in integrum is, in principle, possible.
5.1.1 Start of time limit where the Office issues a notification
Article 112(4) CTMR Rule 70(4) CTMIR
Where a CTM application is deemed to be withdrawn, the Office will notify the applicant or proprietor that a request for conversion may be filed within three months from the date of that communication.
The notification will be contained in the communication on the loss of rights.
5.1.2 Start of time limit in other cases
Article 112(5), (6) CTMR
In all other cases the time limit of three months for requesting conversion starts automatically, namely:
• where the CTM application is withdrawn, on the day the withdrawal is received by the Office;
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• where the CTM is surrendered, on the day on which the surrender is entered in the CTM Register (which is the day on which it becomes effective pursuant to Article 50(2) CTMR);
• where protection of the IR has been limited or renounced with effect for the EU, on the day as of which it has been recorded by WIPO pursuant to Rule 27(1)(b) CR;
• where the CTM registration was not renewed, on the day following the last day of the period within which a r equest for renewal may be s ubmitted pursuant to Article 47(3) CTMR, i.e. six months after the last day of the month in which protection has expired;
• where the IR was not renewed with effect for the EU, on the day following the last day on which renewal may still be effected before WIPO pursuant to Article 7(4) MP;
• where the CTM application or IR designating the EU is refused, on the day on which the decision becomes final;
• where the CTM or IR designating the EU is declared invalid or revoked, on the day on w hich the decision of the Office or the judgment of the CTM court becomes final.
A decision of the Office becomes final:
• where no appeal is lodged, at the end of the two-month time limit for appeal pursuant to Article 60 CTMR;
• following a decision of the Boards of Appeal at the end of the time limit for appeal to the General Court, or, where applicable, with the final decision of the Court of Justice.
A decision of a CTM court becomes final:
• where no appeal is lodged, at the end of the time limit for appeal under national law;
• otherwise, with the final decision of the CTM court of final (second or third) instance.
For example, if a CTM is rejected by a decision of the Office on absolute grounds for refusal that is notified on 11/11/2011, the decision becomes final on 11/01/2012. The three-month period for requesting conversion ends on 11/04/2012
5.2 Request for conversion
Article 113(1) CTMR Rule 83(2) CTMIR
The request for conversion will be filed at the Office. The ‘Application for Conversion’ form can be found on the Office’s web site. The use of this form is recommended.
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The ‘Application for Conversion of an IR designating the EC’ form can be found on the Office’s web site. This form may also be used in the event of opting-back. WIPO’s MM16 form may also be us ed; however, the Office will send the conversion data to WIPO in electronic format and not the form itself. Using the forms made available by the Office enables the latter to extract the relevant information concerning the converted CTM and the data concerning the applicant and representative from its database and to transmit them, together with the Conversion Form, to the designated offices.
Rule 44(1), (2) CTMIR
Applicants or their representatives may use forms of a similar structure to those made available by the Office provided that the following basic information is submitted:
• the name and address of the applicant for conversion, i.e. the applicant/proprietor of the CTM application or registration or the holder of the IR;
• the representative’s name, if any;
• the filing number of the CTM application or the registration number of the CTM or the IR;
• the filing date of the CTM application or registration or, for an IR designating the EU, the date of the IR or the subsequent designation;
• particulars of any priority or seniority claim;
• the indication of the Member State or the Member States for which conversion is requested; for an IR it must also be indicated whether conversion is requested into a nat ional application for that Member State or into a des ignation of the Member State under the Madrid Agreement or Protocol. As far as Belgium, the Netherlands and Luxembourg are concerned, conversion may be requested only for these three countries together, and not independently; the conversion form made available by the Office only allows for Belgium, the Netherlands and Luxembourg to be de signated together; where the applicant nevertheless indicates only one of these three countries, the Office will take that as a request for conversion for Belgium, the Netherlands and Luxembourg and forward the request to the Benelux Trade Mark Office;
• the indication of the ground on which conversion is requested:
○ where conversion is requested following the withdrawal of the application, the date of withdrawal shall be indicated;
○ where conversion is requested following failure to renew the registration, the date on which protection expired shall be indicated;
○ where conversion is requested following the surrender of a CTM, the date on which it was entered in the Register shall be indicated;
○ where conversion is requested following a partial surrender, the goods/services for which the CTM no longer has protection and the date on which the partial surrender was entered in the Register shall be indicated;
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○ where conversion is requested following a limitation, the goods/services for which the CTM application no longer has protection and the date of limitation shall be indicated;
○ where conversion is requested because the mark ceases to have effect as a result of a decision of a Community trade mark court, the date on which that decision became final shall be indicated, and a copy of that decision, which may be i n the language in which the decision was given, shall be supplied;
○ where conversion is requested because an IR designating the EU has been finally refused by the Office, the date of the decision shall be indicated;
○ where conversion is requested because the effects of an IR designating the EU have been invalidated by the Office or by a CTM Court, the date of the decision of the Office or the date on which the judgment of the CTM Court became final shall be i ndicated together with a c opy of the judgment attached;
○ where conversion is requested because the designation of the EU has been renounced or cancelled before the WIPO, the date on which it has been recorded by WIPO shall be indicated;
○ where conversion is requested because the IR designating the EU has not been renewed, and provided that the grace period for the renewal is over, the date of expiry of protection shall be indicated.
The request for conversion may contain:
• an indication that it relates only to a part of the goods and services for which the application was filed or registered, in which case the goods and services for which conversion is requested must be indicated;
• an indication that conversion is requested for different goods and services with respect to different Member States, in which case the respective goods and services must be indicated for each Member State.
The request for conversion may also contain an appointment of a representative before a designated national office, by ticking the relevant boxes in the Annex to the Conversion Form. This indication is voluntary and not of relevance for the conversion procedure before the Office but will be useful for the national offices once they receive the conversion request, so that they can immediately communicate with a representative who is authorised to practise before that national office (see paragraph 6 below).
5.3 Language
Rule 95(a), Rule 126 CTMIR
Where the request for conversion is made in respect of a CTM application, it must be filed in the language in which the CTM application was filed or in the second language indicated therein.
Where the request for conversion is made in respect of an I R designating the EU before the point in time when a statement of grant of protection was issued pursuant to Rule 116 CTMIR, the request must be filed in the language in which the international application was filed with WIPO or in the second language indicated therein.
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Rule 95(b), Rule 126 CTMIR
Where the request is made in respect of a CTM registration, it may be filed in any of the five languages of the Office.
Where the request for conversion is made in respect of an IR designating the EU after a statement of grant of protection has been issued, the request may be filed in any of the five languages of the Office, except in the case of an ‘opting back’ conversion, when the request must be filed in English, French or Spanish.
However, when the request for conversion is filed by using the form provided by the Office pursuant to Rule 83 CTMIR, the form may be us ed in any of the official languages of the Community, provided that the form is completed in one of the languages of the Office as far as textual elements are concerned. This concerns, in particular, the list of goods and services in the event of a request for partial conversion.
5.4 Fee
Article 113(1) CTMR Rule 45(2) CTMIR Articles 2(20), 8(3) CTMFR
The request for conversion is subject to payment of a fee of EUR 200, including for conversion of an IR designating the EU. The request will not be deemed to be filed until the conversion fee has been paid. This means that the conversion fee has to be paid within the abovementioned time limit of three months. A payment made after the expiry of the period will be considered to have been made in due time if the person concerned submits evidence that, in a Member State and within the period of three months, the payment had been made to a bank or a transfer order placed, and if at the same time of payment a s urcharge of ten per cent of the total amount due w as paid (see The Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
6 Examination by the Office
6.1 Stages of the procedure, competence
The Office will deal with requests for conversion by:
Article 113(2), (3) CTMR Rules 45-47 CTMIR
• examining them,
• publishing them, and
• transmitting them to the designated offices.
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6.2 Examination
The examination of the request for conversion by the Office relates to the following points:
• fees • time limit • language • formalities • grounds • representation • partial conversion.
6.2.1 Fees
Rules 45(2), 122(3) CTMIR
The Office will examine whether the conversion fee has been paid within the applicable time limit.
Where the conversion fee has not been paid within the applicable time limit, the Office will inform the applicant that the application for conversion will be deemed not to have been filed. Any fees paid late will be reimbursed.
6.2.2 Time limit
Rules 45(1), 122(3) CTMIR
The Office will examine whether the request has been filed within the time limit of three months.
The Office will reject the request for conversion where the request was not filed within the relevant time limit of three months. Any fees paid late will not be reimbursed.
6.2.3 Language
Rule 95(a), Rule 126 CTMIR
The Office will examine whether the request has been filed in the correct language.
When the request is filed in a language which is not one of the acceptable languages for the conversion procedure (see paragraph 5.3 above), the Office will send a deficiency letter to the applicant and specify a per iod within which it may amend the application for conversion. If the applicant fails to respond, the request will not be dealt with and will be considered not to have been filed. Any fees paid will not be reimbursed.
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6.2.4 Formalities
Rule 44(1)(b), (d), (e) CTMIR
The Office will examine whether the request complies with the formal requirements of the Implementing Regulation (see paragraph 5 above).
Where the conversion applicant has not used the Conversion Form made available by the Office and where the deficiency lies in not having indicated the elements referred to in Rule 44(1)(b), (d) or (e) CTMIR, the conversion applicant will be invited to either submit the missing indications or, where such indications may be readily ascertained from data available to the Office, will be considered as having authorised the Office to make available to the designated offices the relevant extracts from its database.
6.2.5 Grounds
The Office will examine:
• whether one of the grounds for conversion mentioned in paragraph 2 above exists;
• whether one of the grounds precluding conversion referred to in paragraph 4 above exists;
Rule 123(2) CTMIR
• for an opting-back conversion, whether it would have been possible at the date of the IR to designate the Member State concerned in an international application;
• for partial conversion, whether the goods and services to be converted were in fact contained in, and do not go beyond, the goods and services of the CTM or IR designating the EU at the point in time when it lapsed or ceased to have effect (see paragraph 6.3, below);
• for partial conversion in the sense that part of the CTM or IR designating the EU remains alive, whether the goods and services to be converted overlap with the goods and services for which the mark remains alive (see paragraph 6.3, below).
The aim of these last two examination steps is to avoid conversion for more or broader goods and services than have been refused or cancelled.
When the request for conversion does not comply with any of the other mandatory elements and i ndications referred to in paragraphs 4 and 5 .2 above, the Office will send a deficiency letter to the applicant and specify a period within which it may amend the application for conversion. If the applicant fails to respond, the request will not be dealt with and will be considered not to have been filed. Any fees paid will not be reimbursed.
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6.2.6 Representation
Rule 76(1)-(4) CTMIR
The general rules on representation apply (see The Guidelines, Part A, General Rules, Section 5, Professional Representation). The person requesting conversion may appoint a new or an additional representative (legal practitioner or OHIM professional representative) for the conversion procedure.
Any authorisation to act on behal f of the applicant or proprietor extends only to acts before the Office. Whether a representative appointed for proceedings before the Office may act before the national office in respect of the resulting national application and, if so, whether they need to present an additional authorisation, is determined by the national law concerned. In the event of an opting-back conversion, the name of the representative appointed before the OHIM will be transmitted to WIPO.
6.2.7 Partial conversion
Article 112(1) CTMR Rule 44(1)(e) CTMIR
Where conversion is requested only for some of the goods and services, or for different goods and s ervices for different Member States (‘partial conversion’), the Office will examine whether the goods and s ervices for which conversion is requested are contained within the goods and services for which the ground of conversion applies. For this assessment the same criteria apply as in similar procedural situations, such as restriction of an application or partial refusal in an opposition proceeding.
Where an appl ication is refused in part or a r egistration is invalidated or revoked in part, conversion may be requested only for the goods or services for which the application was refused or the registration was invalidated or revoked, and not for the goods or services for which the application or registration remains valid.
Where an application is limited, or a registration is partially surrendered, conversion may be requested only for the limited/partially surrendered goods or services, and not for the goods or services for which the application or registration remains valid. However, please refer to paragraph 4.3 above when such a limitation/partial surrender takes place following a decision.
The applicant must indicate in the abovementioned cases the goods and services for which conversion is requested. Expressing the limitation in a negative way, such as by using expressions of the type ‘beverages with the exception of ...’, is admissible in the same way that such an ex pression is admissible when filing or restricting a C TM application or partially surrendering a CTM registration (see The Guidelines, Part B, Examination, Section 3, Classification).
6.3 Publication of the request and entry in the Register
Article 113(2) CTMR Rule 84(3)(p) CTMIR
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Upon acceptance of a request for conversion which is deemed to have been filed because the required fee has been paid, the Office will make an entry in the Register of Community Trade Marks recording the receipt of the request for conversion, provided that the request for conversion is of a published CTMA or a registered CTM.
Article 113(2) CTMR Rule 46(1) CTMIR
After having examined the request for conversion and having found it in order, the Office will register and publish the request for conversion in the Community Trade Marks Bulletin in Part E.1. for CTMS and Part E.3. for IRs designating the EC. However, no such publication will be made when the request for conversion is submitted at a time when the CTM application has not already been published in accordance with Article 39 CTMR.
Rule 46 CTMIR
The request for conversion is published only after the Office has completed examination of it and found it to be in order. The request is not in order if there is no payment.
Rule 46(2) CTMIR
The publication of the application for conversion must contain the indications referred to in Rule 46(2) CTMIR and, unless it concerns an IR designating the EC, include a reference to the previous publication in the Community Trade Marks Bulletin and the date of the application for conversion.
Rule 46(2), Rules 122, 123 CTMIR
Lists of goods and services for which conversion is requested will not be published if the conversion is for an IR designating the EC.
6.4 Transmission to designated offices
Articles 113(3), 114(1) CTMR Rule 47 CTMIR
Once the Office has completed examination of the request for conversion and has found it to be in order, it will transmit the request without delay to the designated offices. The transmission will be made irrespective of whether any required publication has already taken place.
The Office will send a copy of the request for conversion and make available an extract of its database containing the data referred to in Rule 84(2) CTMIR of the converted CTM or IR. Any central industrial property office to which the request for conversion is transmitted may obtain from the Office any additional information concerning the
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request, enabling that office to make a dec ision regarding the national trade mark resulting from the conversion.
Rule 47 CTMIR
At the same time, the Office will inform the conversion applicant of the date of transmission to national offices.
In the case of an op ting-back conversion, WIPO will deal with the request as a subsequent designation in accordance with Rule 24(6), (7) CR. If a national office is the designated office, conversion will result in a nat ional application or registration.
Article 114(3) CTMR
The national law in force for the Member States concerned may provide that the request for conversion be subject to one, or all, of the following requirements:
• payment of a national application fee;
• filing of a t ranslation in one of the official languages of the Member State in respect of the request and i ts accompanying documents; in particular, for applications for conversion prior to publication of the CTM, the national office will usually require a translation of the list of goods and services;
• indication of an address for service in the Member State in question;
• submission of a r epresentation of the mark in a number of copies specified by that Member State.
National rules on the appointment of a dom estic representative remain applicable. Where use is made of the option to indicate, in the Conversion Form, a representative for the purposes of the procedure before a given national office, that national office will be in a pos ition to communicate directly with that representative so that no separate communication to appoint a domestic representative will be necessary.
Article 114(2) CTMR
National law may not subject the request for conversion to any formal requirements different from or additional to the requirements provided for in the CTMR and CTMIR.
7 Effects of Conversion
Article 112(3) CTMR
In each Member State concerned, the national trade mark application resulting from the conversion will enjoy the filing date or, if any, the priority date of the CTM application, as well as the seniority of an earlier trade mark with effect for that State validly claimed for the CTM application or registration under Article 34 or 35 CTMR. For information on
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conversion of a CTM into national trade mark applications for new Member States see the Manual Part A, Section 9, Enlargement.
In the event of an opting-back conversion, the international application resulting from the subsequent designation of the Member State under Rule 24(6)(e), (7) CR will enjoy the original date of the IR designating the EC, that is, either the actual date of the IR (including, if appropriate, its priority date) or the date of the subsequent designation of the EC.
However, there is no harmonised procedure for how national offices will proceed with the examination of the converted CTM. As mentioned in the introduction, the conversion procedure is a two-tier system, where the second tier, the conversion procedure itself, is dealt with by the national trade mark and patent offices. Depending on national law, the converted trade mark will either be registered immediately or will enter the national examination, registration and opposition procedure like any other national trade mark application.
National applications deriving from the conversion of an earlier CTM(A) are considered to come into existence as soon as a v alid conversion request is filed. Therefore, in opposition proceedings, such rights will be considered properly identified for admissibility purposes under Rule 18(1) CTMIR if the opponent indicates the number of the CTM(A) under conversion and the countries for which it has requested conversion.
When, during opposition or invalidity proceedings on relative grounds, the CTM application (or CTM) on which the opposition is based ceases to exist (or the list of goods and services is restricted), but at the same time a request for conversion is filed, the opposition or invalidity proceedings can continue. This is because national trade mark registrations resulting from a conversion of a C TM application (or CTM) can constitute the basis of the opposition or invalidity procedure originally made on the basis of that CTM application or registration (see decision of the Grand Board of Appeal in R 1313/2006-G) (see also The Guidelines, Part C, Opposition, Section 1, Procedural Matters).
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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 E
REGISTER OPERATIONS
SECTION 4
RENEWAL
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Table of Contents
1 Fraud Warning ........................................................................................... 4 1.1 Private companies sending misleading invoices.....................................4 1.2 Renewal by unauthorised third persons...................................................4 1.3 Contact........................................................................................................4
2 Terms of Registration................................................................................ 4
3 Notification of Expiry of Registration ...................................................... 5
4 Renewal of a CTM Application ................................................................. 5
5 Fees and Other Formal Requirements for the Request for Renewal .... 5 5.1 Persons who may submit a request for renewal ......................................6 5.2 Content of the request for renewal............................................................6
5.2.1 Name and address and other particulars of the person submitting a request for renewal ......................................................................................... 7 5.2.1.1 Request filed by the proprietor of the Community trade mark .....................7 5.2.1.2 Request filed by a person authorised to do so by the proprietor .................7
5.2.2 Registration number of the Community trade mark........................................ 7 5.2.3 Indication as to the extent of the renewal....................................................... 7
5.3 Languages ..................................................................................................8 5.4 Time limit ....................................................................................................8
5.4.1 Six months period for renewal before expiry (basic period) ........................... 8 5.4.2 Six months grace period following expiry (grace period) ............................... 8
5.5 Fees.............................................................................................................9 5.5.1 Fees payable .................................................................................................. 9 5.5.2 Time limit for payment .................................................................................... 9 5.5.3 Payment by third parties............................................................................... 10 5.5.4 Fee refund .................................................................................................... 10
6 Procedure Before the Office ................................................................... 11 6.1 Examination of formal requirement.........................................................11
6.1.1 Observation of time limits ............................................................................. 11 6.1.1.1 Payment during the basic period or the grace period ................................11 6.1.1.2 Payment after the expiry of the grace period.............................................11 6.1.1.3 Situation where the proprietor holds a current account .............................12 6.1.1.4 Continuation of proceedings......................................................................13 6.1.1.5 Restitutio in integrum.................................................................................13
6.1.2 Compliance with formal requirements of the Implementing Regulation ....... 13 6.1.2.1 Renewal requested by authorised person .................................................13 6.1.2.2 Further requirements.................................................................................13
6.2 Items not to be examined.........................................................................14 6.3 Alteration ..................................................................................................15
7 Entries in the Register............................................................................. 15
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8 Date of Effect of Renewal or Expiry, Conversion ................................. 16 8.1 Date of effect of renewal ..........................................................................16 8.2 Conversion of lapsed CTMs ....................................................................16
9 Renewal of International Marks Designating the EU ............................ 16
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1 Fraud Warning
1.1 Private companies sending misleading invoices
The Office is aware that users in Europe are receiving an i ncreasing amount of unsolicited mail from companies requesting payment for trade mark and design services such as renewal.
A list of letters from firms or registers, which users have complained are misleading, is published on t he Office website. Please note that these services are not connected with any official trade mark or design registration services provided by IP Offices or other public bodies within the European Union such as OHIM.
If you receive a letter or invoice please check carefully what is being offered to you, and its source. Please note that the OHIM never sends invoices to users or letters requesting direct payment for services (see the Guidelines, Part A, General Rules, Section 3, Payment of fees, cost and charges).
1.2 Renewal by unauthorised third persons
The Office is also aware that fraudsters have targeted the e-Renewal module applying for renewal without the consent of the proprietor and thus blocking renewal via the module for persons legitimately authorised to do so. This technical block is designed to prevent a renewal being paid for twice. If, upon filing a request for e-Renewal you discover that the mark is ‘blocked’, as renewal has already been requested for the mark, please contact the Office.
1.3 Contact
If you have any doubt or detect any new case, please check with your legal advisors or contact us at +34 96 513 9100 or by e-mail at information@oami.europa.eu.
2 Terms of Registration
Article 46 CTMR Articles 26, 27 CTMR Rule 9 CTMIR
The term of registration of a Community trade mark (CTM) is ten years from the filing date of the application. For example, a CTM with a filing date of 16 April 2006 will expire on 16 April 2016.
The filing date of the application is determined according to Articles 26, 27 CTMR and Rule 9 CTMIR.
Registration may be renewed indefinitely for further periods of 10 years.
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3 Notification of Expiry of Registration
Article 47(2) CTMR Rule 29 CTMIR Communication No 5/05 of the President of the Office of 27 July 2005
At least six months before the expiry of the registration, the Office will inform:
• the registered proprietor of the Community trade mark and • any person having a registered right in respect of the Community trade mark
that the registration is approaching expiry. Persons having a registered right include the holders of a registered licence, the proprietors of a registered right in rem, the creditors of a registered levy of execution or the authority competent to act on behalf of the proprietor in insolvency procedures.
Failure to give such information does not affect the expiry of the registration and does not involve the responsibility of the Office.
4 Renewal of a CTM Application
In the exceptional circumstance where an appl ication has not yet matured to registration because of pending proceedings, the Office will not send the notice referred to in Article 47(2) CTMR. The applicant is not obliged to renew its application during proceedings that last for more than 10 years and where the outcome of registration is uncertain. Only once the trade mark is registered will the Office invite the owner to renew the CTM and pay the renewal fee (retroactively). The owner will then have two months to pay the renewal fee (including any additional class fees). If the renewal fee is not paid within this first time limit, the owner will be given a second time limit of two additional months (a total of four months from the date of the first letter) in which to pay the renewal fee. During this further time limit of two months, the surcharge for the renewal fee of 25% pursuant to Article 2(16) CTMFR does not apply. If the renewal fee is not paid within the additional time limit given, the Office will issue a notice that the registration has expired.
5 Fees and Other Formal Requirements for the Request for Renewal
Rules 79, 80, 82 CTMIR Communication No 8/05 of the President of the Office of 21 December 2005 concerning the renewal of Community trade marks
The general rules concerning communications to the Office apply (see the Guidelines Part A. Section 1. Means of communication, time limits), which means that the request may be submitted as follows:
• by electronic means available on t he OHIM Website (e-renewal). There is a reduction of 10% of the renewal basic fee in case of e-renewal. Entering the name and surname in the appropriate place on the electronic form is deemed to
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be a signature. In addition to the fee reduction, using e-renewal offers additional advantages such as the receipt of immediate electronic confirmation of the renewal request automatically or the use of the renewal manager feature to complete the form quickly for as many CTMs as needed.
• by transmitting a signed original form by fax, mail, or any other means (see the Guidelines Part A. Section 1. Means of communication, time limits). A standard form is available on t he OHIM website. Forms have to be s igned but annexes need not be.
5.1 Persons who may submit a request for renewal
Articles 17(7), 47(1) CTMR Communication No 8/05 of the President of the Office of 21 December 2005 concerning the renewal of CTMs
The request for renewal may be submitted by:
• the registered proprietor of the Community trade mark;
• where the CTM registration has been transferred, the successor in title as from the point in time a request for registration of the transfer has been received by the Office;
• any person expressly authorised by the proprietor of the Community trade mark to do s o. Such a per son may, for instance, be a r egistered licensee, a non- registered licensee or any other person who has obtained the authorisation of the CTM proprietor to renew the mark.
An authorisation will have to exist in its favour; however, it does not need to be filed with the Office unless the Office requests it (see paragraph 6.1.2.1 below). If the Office receives fees from two different sources, neither of which is the owner or its representative on file, the owner will be c ontacted in order to know which person is authorised to file the renewal request. Where no reply is received from the owner, the Office will validate the payment that reached the Office first.(judgment of 12/05/2009, T-410/07 ‘JURADO’, paras 33-35 and decision of 13/01/2008, R 0989/2007-4 ‘Elite glass-seal’, paras 17-18)
Representation pursuant to Article 92(2) CTMR is not mandatory for renewal.
5.2 Content of the request for renewal
Article 47(1) CTMR Rule 30(1) and (3) CTMIR
The request for renewal must contain the following: name and address of the person requesting the renewal and the registration number of the renewed CTM. The extent of the renewal is deemed total by default.
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Payment alone can constitute a v alid request for renewal providing such payment reaches the Office and contains the name of the payor, the registration number of the CTM and the indication ‘renew’. In such circumstances no further formalities need be complied with (see The Guidelines Concerning Proceedings Before The Office for Harmonization In The Internal Market (Trade Marks And Designs) Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).
5.2.1 Name and address and other particulars of the person submitting a request for renewal
5.2.1.1 Request filed by the proprietor of the Community trade mark
Where the request is filed by the CTM proprietor, its name must be indicated.
If the Office has attributed an I D number to the proprietor, this number should be indicated together with the name.
5.2.1.2 Request filed by a person authorised to do so by the proprietor
Rules 1(1)(b) and (e) CTMIR
Where the request for renewal is filed by a person authorised by the proprietor to do so, the name and address of the authorised person must be indicated.
The name and address or ID number and name (see preceding subparagraph) of the authorised person must be given in accordance with Rule 1(1)(b) CTMIR.
5.2.2 Registration number of the Community trade mark
Rule 30(1)(b) CTMIR
The registration number of the Community trade mark must be indicated.
5.2.3 Indication as to the extent of the renewal
Rule 30(1)(c) CTMIR
Where renewal is total, i.e. it is requested for all the goods and services for which the mark is registered, an indication to that effect is required; if nothing is indicated, the renewal is deemed to be total by default.
Where renewal is requested for only some of the goods or services for which the mark is registered:
• an indication of those classes or those goods and services for which renewal is requested in a c lear and unequivocal way. E-renewal only allows for deleting whole classes and not only part of the class.
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Or, alternatively,
• an indication of those classes or those goods and services for which renewal is not requested in a clear and unequivocal way (this is only possible when filed on the paper form).
5.3 Languages
Rule 95(b) CTMIR
The request for renewal may be filed in any of the five languages of the Office. This language becomes the language of the renewal proceedings. However, when the request for renewal is filed by using the form provided by the Office pursuant to Rule 83, such a form may be used in any of the official languages of the Community, provided that the form is completed in one o f the languages of the Office, as far as textual elements are concerned. This concerns, in particular, the list of goods and services in the event of a partial renewal.
5.4 Time limit
Article 46, 47(3) CTMR Rule 72(1) CTMIR
5.4.1 Six months period for renewal before expiry (basic period)
The request for renewal and the renewal fee must be submitted within a period of six months ending on the last day of the month in which protection ends.
For example, where the Community trade mark has a f iling date of 1 April 2006, the last day of the month in which protection ends will be 30 April 2016. Therefore, a request for renewal must be introduced and the renewal fee paid as from 1 November 2015 until 30 April 2016 or, where this is a Saturday, Sunday or other day on which the Office is closed, or does not receive ordinary mail within the meaning of Rule 72(1) CTMIR, the first following working day on which the Office is open to the public and receives ordinary mail.
5.4.2 Six months grace period following expiry (grace period)
Where the Community trade mark is not renewed within the basic period, the request may still be s ubmitted and the renewal fee may still be pai d, upon p ayment of an additional fee (see paragraph 5.5 below), within a further period of six months following the last day of the month in which protection ends.
For example, where the Community trade mark has a f iling date of 1 April 2006, the last day of the month in which protection ends will be 30 April 2016. Therefore, the grace period during which a request for renewal may still be introduced upon payment of the renewal fee plus the additional fee is counted from the day after 30 April 2016, namely from 1 May 2016, and ends on 31 October 2016 or, if 31 October 2016 i s a Saturday, Sunday or other day on w hich the Office is closed, or does not receive
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ordinary mail within the meaning of Rule 72(1) CTMIR, the first following working day on which the Office is open to the public and receives ordinary mail. This also applies if in the above example 30 April 2016 was a Saturday or Sunday; the rule that a time limit to be observed vis-à-vis the Office is extended until the next working day applies only once and to the end of the basic period, and not to the starting date of the grace period.
5.5 Fees
5.5.1 Fees payable
Article 47(3) CTMR Rules 30(2)(a) and (b) CTMIR Article 2 CTMFR
The fees payable for the renewal of a Community trade mark consist of a basic fee and class fees for each class of goods and s ervices exceeding three of the classes contained in the CTM in respect of which renewal is applied for.
The basic fee is
• in respect of an individual mark: EUR 1500 / EUR 1350 in case of e-renewal and • in respect of a collective mark: EUR 3000
The class fee for each additional class exceeding three is:
• in respect of an individual mark: EUR 400 • in respect of a collective mark: EUR 800
5.5.2 Time limit for payment
The fee must be paid within a period of six months ending on the last day of the month in which protection ends (for calculation of the period, see the example given in paragraph 5.4.1 above).
Article 47(3) CTMR Rule 30(2)(c) and (4) CTMIR Articles 2(16) and 8(3) CTMFR
The fee may be paid within a further period of six months following the last day of the month in which protection ends (see paragraph 5.4.2 above), provided that an additional fee is paid, which amounts to 25% of the total renewal fee, including any class fees, but which is subject to a maximum of EUR 1500.
Renewal will be effected only if payment of all fees (renewal fees and additional fees for late payment, where applicable) reaches the Office within the grace period (see paragraph 5.4.2 above).
Fees which are paid before the start of the first six-month period will not, in principle, be taken into consideration and will be refunded.
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Rule 72(1) CTMIR
Where the CTM proprietor has a current account at the Office, the renewal fee will only be debited once a request for renewal is filed and the renewal fee (including any class fees) will be debited on the last day of the time limit of six months provided for in Article 47(3) CTMR, i.e. on the last day of the month in which protection ends, unless other instructions are given.
Article 7(1)(d) of Decision No EX-96-1 of the President of the Office of 11 January 1996 concerning the conditions for opening current accounts at the Office, as amended by Decision No EX-03-1 of 20 January 2003 and by Decision No EX-06-1 of 12 January 2006
In the event of the belated filing of a request for renewal (see paragraph 5.4.2 above), and where the CTM proprietor has a current account at the Office, the renewal fee and surcharge will be debited on the last day of the further period of six months provided for in Article 47(3) CTMR, third sentence, i.e. on the last day of the further period of six months following the last day of the month in which protection ends, unless other instructions are given.
5.5.3 Payment by third parties
Payment may also be made by the other persons identified in paragraph 5.1 above.
Payment by debiting a c urrent account held by a t hird party requires an ex plicit authorisation of the holder of the current account that the account can be debited for the benefit of the particular fee. In such cases the Office will check if there is an authorisation. If there is no authorisation, a letter will be sent to the renewal applicant asking them to submit the authorisation to debit the account held by a third party. In such cases, payment is considered to be effected on the date the Office receives the authorisation.
5.5.4 Fee refund
Rule 30(6), (7) CTMIR
Renewal fees and, where applicable, the additional fee for late payment may be refunded under certain circumstances. For full information, please see Part A,, Section 3, Payment of fees, costs and charges.
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6 Procedure Before the Office
6.1 Examination of formal requirement
The examination of the request for renewal is limited to formalities and relates to the following points:
6.1.1 Observation of time limits
Article 47(3), (4) CTMR Rule 30(2), (3) CTMIR
6.1.1.1 Payment during the basic period or the grace period
Where the request for renewal is filed and the renewal fee is paid within the basic period, the Office shall record the renewal, provided that the other conditions laid down in the CTMR and CTMIR are fulfilled (see paragraph 6.1.2 below).
Article 47(3) CTMR Communication No 8/05 of the President of 21 December 2005
Where no request for renewal has been filed, but a payment of the renewal fee reaches the Office which contains the minimum indications (name and address of the person requesting the renewal and t he registration number of the renewed CTM), this constitutes a valid request and no further formalities need be complied with.
However, where no request for renewal has been filed but a renewal fee has been paid which does not contain the minimum indications (name and addr ess of the person requesting the renewal and the registration number of the renewed CTM), the Office shall invite the CTM proprietor to submit a r equest for renewal and pay , where applicable, the additional fee for late submission of the request for renewal. A letter will be sent out as early as reasonably possible after receipt of the fee, so as to enable the filing of the request before the additional fee becomes due.
Where a request has been submitted within the basic period, but the renewal fee has not been paid or has not been paid in full the Office shall invite the person requesting renewal to pay the renewal fee or the remaining part thereof and the additional fee for late payment. In the case of incomplete payment of the fee, the CTM proprietor may, instead of paying the missing amount, restrict its request for renewal to the corresponding number of classes.
If the request for renewal is filed by a person authorised by the proprietor of the CTM, the proprietor of the CTM shall receive a copy of the notification.
6.1.1.2 Payment after the expiry of the grace period
Article 47(3) CTMR, Rules 30(5), 54 CTMIR
Where a request for renewal has not been submitted or is submitted only after the expiry of the grace period, the Office shall determine that the registration has expired
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and shall issue a notification on loss of rights to the proprietor and any person recorded in the Register as having rights in the mark.
Where the fees are not paid or are paid only after expiry of the grace period, the Office shall determine that the registration has expired and shall issue a notification on loss of rights to the proprietor and any person recorded in the Register as having rights in the mark.
Where the fee paid amounts to less than the basic fee and the fee for late payment/late submission of the request for renewal, the Office shall determine that the registration has expired and s hall issue a not ification on l oss of rights to the proprietor and any person recorded in the Register as having rights in the mark.
Where the fee paid covers the basic fee and the fee for late payment, but not all class fees, the Office shall renew the registration for only some classes. The determination of which classes of goods and services shall be renewed is made according to the following criteria.
• Where the request for renewal is expressly limited to particular classes, renewal will be done only for those classes.
• Where it is otherwise clear from the request which class or classes are to be covered by the request, that class or those classes shall be renewed.
• The Office may contact the proprietor to ask for the class preferences in the event of partial payment.
• In the absence of other criteria, the Office will take the classes into account in the numerical order of classification, beginning with the class having the lowest number.
Where not all class fees are paid and the Office determines that the registration has expired for some of the classes of goods or services it shall issue, together with the renewal confirmation, a notification on l oss of rights in respect of those classes of goods or services to the proprietor and, where appropriate, the person requesting renewal and the person recorded in the Register as having rights in the mark. If the person concerned finds that the finding of the Office is inaccurate, he may, within two months of the notification of the loss of rights, apply for a decision on the matter.
6.1.1.3 Situation where the proprietor holds a current account
The Office will not debit a c urrent account unless there is an ex press request for renewal. It will debit the account of the person who has acted (CTM proprietor or third person).
Where the request is filed within the basic period, the Office will debit the renewal fees (basic renewal fee plus applicable class fees) without surcharge.
Where the request is filed within the grace period, the Office will debit the renewal fee plus the 25% surcharge (see paragraph 5.5 above).
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6.1.1.4 Continuation of proceedings
Article 82(2) CTMR Communication No°6/05 of the President of the Office of 16/09/2005.
The time limit for requesting renewal is specifically excluded from continuation of proceedings.
6.1.1.5 Restitutio in integrum
Article 81 CTMR Article 67 CDR
Restitutio in integrum is available for the time limit for requesting renewal. For more information see the Guidelines Part A, General Rules, Section 8, Restitutio in Integrum.
The incorrect functioning of renewal software is normally not a reason to justify restitutio in integrum (see judgment of 13/05/2009, T-136/08 ‘AURELIA’, judgment of 19/09/2012, T-267/11 ‘Video Research USA’, and judgment of 28/06/2012, T-314/10 ‘COOK’S’).
In the case of failure to submit a request for renewal or to pay the renewal fee, the time limit of one year starts on the day on which the protection ends, and not on the date of expiry of the grace period of six months.
6.1.2 Compliance with formal requirements of the Implementing Regulation
6.1.2.1 Renewal requested by authorised person
Communication No 8/05 of the President of the Office, 21 December 2005
Where a renewal request is filed on behalf of the trade mark proprietor there is no need to file an authorisation. However, such an authorisation should exist in favour of the person filing the request should the Office request it.
6.1.2.2 Further requirements
Rule 30(1)(b), (4) CTMIR
Where the request for renewal does not comply with other formal requirements, namely where the name and addr ess of the person requesting renewal has not been sufficiently indicated, where the registration number has not been indicated, where it has not been properly signed or, if partial renewal was requested but the goods and services to be r enewed have not been pr operly indicated, the Office will invite the person requesting renewal to remedy the deficiencies within a time limit of two months. The time limit applies even if the grace period has already expired.
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The Office will consider the request to be made for the renewal for all goods and services unless partial renewal is expressly requested. In the event of a partial renewal, please refer to paragraph 5.2.3 above.
If the request for renewal is filed by a person authorised by the proprietor of the CTM, the proprietor of the CTM shall receive a copy of the notification.
Where a request for renewal has been submitted by two different persons claiming to be authorised by the proprietor of the CTM (‘authorised person’), the Office will seek clarification on who the authorised person is by contacting the owner directly.
Rule 30(5), Rule 54 CTMIR
Where these deficiencies are not remedied before the expiry of the relevant time limit, the Office will proceed as follows.
• If the deficiency consisted of the failure to indicate the goods and services of the CTM to be renewed, the Office will renew the registration for all the classes for which the fees have been paid, and if the fees paid do not cover all the classes of the CTM registration, the determination of which classes are to be renewed will be made according to the criteria set out under paragraph 6.1.1.2 above. The Office shall issue, together with the renewal confirmation, a notification on loss of rights in respect of those classes of goods or services the Office deems expired, to the proprietor and any person recorded in the Register as having rights in the mark.
• If the deficiency consisted of the Owner’s failure to respond to a request for clarification on who the authorised person is, the Office will accept the request for renewal filed by the authorised representative on file. If neither of the requests for renewal has been filed by an authorised representative on file, the Office will accept the renewal request that was first received by the Office.
• In the case of the other deficiencies, it shall determine that the registration has expired and shall issue a notification of loss of rights to the proprietor or, where applicable, the person requesting renewal and any person recorded in the Register as having rights in the mark.
6.2 Items not to be examined
No examination will be carried out on renewal in respect of the registrability of the mark, nor will any examination be carried out as to whether the mark has been put to genuine use.
No examination will be carried out by the Office on renewal as to the correct classification of the mark, nor will a registration be reclassified that has been registered in accordance with an edition of the Nice Classification which is no longer in force at the point in time of renewal. All of this is without prejudice to the application of Article 50 CTMR.
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6.3 Alteration
Article 48 CTMR
The Community trade mark shall not be altered in the Register on renewal. Since renewal is considered a simple prolongation of the period of protection of the CTM upon payment of the necessary fees, it may not include changes in relation to the representation of the mark in its latest form, that is, at the expiry of the current period of protection.
Any other changes that do not alter the mark itself (changes of name, of address, etc.) that the owner wishes to have recorded in the Register when the registration is renewed must be communicated separately to the Office according to the applicable procedures (see Guidelines Part E, Register Operations, Section 1, Changes in a Registration). They will be included in the data recorded at renewal only if they are recorded in the CTM Register no later than the date of expiry of the CTM registration.
7 Entries in the Register
Article 47(5) CTMR Rule 84(3)(k), (5) CTMIR
Where the request for renewal complies with all the requirements, the renewal shall be registered.
The Office shall notify the CTM proprietor of the renewal of the CTM registration and its entry in the Register. The renewal will take effect from the day following the date on which the existing registration expires (see paragraph 8 below).
Where renewal has taken place only in respect of some of the goods and s ervices contained in the registration, the Office shall notify the proprietor and any person recorded in the Register as having rights in the mark of the goods and services for which the registration has been renewed and the entry of the renewal in the Register and of the date from which renewal takes effect (see paragraph 8 below). Simultaneously, the Office shall notify the expiry of the registration for the remaining goods and services and of their cancellation from the Register.
Rules 30(5), (6), 54(2) CTMIR
Where the Office has made a det ermination pursuant to Rule 30(6) CTMIR that the registration has expired, the Office shall cancel the mark from the Register and notify the proprietor accordingly. The proprietor may apply for a decision on the matter under Rule 54(2) CTMIR within two months.
Rule 84(3)(l), (5) CTMIR
The Office shall inform the proprietor and any person recorded in the Register as having rights in the mark of the expiry of the registration and its cancellation from the Register.
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8 Date of Effect of Renewal or Expiry, Conversion
8.1 Date of effect of renewal
Article 47(5) CTMR Rules 70(3), 30(6) CTMIR
Renewal shall take effect from the day following the date on w hich the existing registration expires.
For example, where the filing date of the registration is 1 April 2006, the registration will expire on 1 April 2016. Therefore, renewal takes effect from the day following 1 April 2016, namely 2 April 2016. Its new term of registration is ten years from this date, which will end on 1 April 2026. It is immaterial whether any of these days is a Saturday, Sunday or official holiday. Even in cases where the renewal fee is paid within the grace period, the renewal takes effect from the day following the date on which the existing registration expires.
Where the mark has expired and is removed from the Register, the cancellation shall take effect from the day following the date on which the existing registration expired.
For example, where the filing date of the registration is 1 April 2006, the registration will expire on 1 April 2016. Therefore, the removal from the Register takes effect from the day following 1 April 2016, namely 2 April 2016.
8.2 Conversion of lapsed CTMs
Articles 47(3), 112(5) CTMR
Where the owner wants to convert its lapsed CTM into national marks, the request must be filed within three months from the day following the last day of the period within which a request for renewal may be presented pursuant to Article 47(3) CTMR, i.e. six months after the last day of the month in which protection has expired. The time limit of three months for requesting conversion starts automatically without notification (see Guidelines Part E, Register Operations, Section 2, Conversion).
9 Renewal of International Marks Designating the EU
Article 159(1) CTMR Rule 107 CTMIR
The principle is that any changes relating to the international registration shall be filed directly at WIPO by the holder of the international registration. The Office will not deal with renewal requests or payment of renewal fees.
The procedure for renewal of international marks is managed entirely by the International Bureau. The International Bureau will send notice for renewal, receive the renewal fees and record the renewal in the International Register. The effective date of
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the renewal is the same for all designations contained in the international registration, irrespective of the date on which such designations were recorded in the International Register. Where the international registration designating the EU is renewed, the Office will be notified by the International Bureau.
If the international registration is not renewed, it can be converted into national marks or into subsequent designations of Member States under the Madrid Protocol. The three month time limit for requesting conversion starts on the day following the last day on which renewal may still be effected before WIPO pursuant to Article 7(4) of the Madrid Protocol (see the Guidelines Part E, Register Operations, Section 2, Conversion).
Inspection of Files
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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 E
REGISTER OPERATIONS
SECTION 5
INSPECTION OF FILES
Inspection of Files
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Table of Contents
1 General Principles ..................................................................................... 4
2 The Registers of Community Trade Marks and Community Designs... 5
3 Inspection of the Registers....................................................................... 5 3.1 Information contained in the Registers ....................................................5
3.1.1 The Register of Community trade marks........................................................ 5 3.1.2 The Register of Community designs .............................................................. 5
4 Inspection of files ...................................................................................... 6 4.1 Persons / Entities authorised to request access to the files...................6 4.2 Documents which constitute the files.......................................................6
4.2.1 The files relating to Community trade mark applications ............................... 7 4.2.2 The files relating to Community design applications ...................................... 8 4.2.3 The files relating to registered Community trade marks................................. 8 4.2.4 The files relating to registered Community designs ....................................... 8 4.2.5 The files relating to international registrations designating the European
Union .............................................................................................................. 9
5 Parts of the File Excluded from Inspection............................................. 9 5.1 Excluded documents .................................................................................9
5.1.1 Documents relating to exclusion or objection............................................... 10 5.1.2 Draft decisions and opinions and internal documents.................................. 10 5.1.3 Parts of the file for which the party concerned expressed a special interest in
keeping confidential ...................................................................................... 11
5.2 Access for applicant or proprietor to excluded documents.................. 12
6 Procedures Before the Office Relating to Applications for Inspection of Files...................................................................................................... 12 6.1 Certified or uncertified extracts of the registers ....................................12
6.1.1 Extracts from the Register of Community trade marks................................. 12 6.1.2 Extracts from the Register of Community Designs....................................... 13
6.2 Certified or uncertified copies of file documents...................................13 6.3 Online access to the files.........................................................................14 6.4 Downloadable certified copies ................................................................14 6.5 Online applications for inspection of files..............................................15 6.6 Written applications for inspection of files.............................................15 6.7 Languages ................................................................................................15
6.7.1 For CTM or CD applications ......................................................................... 16 6.7.2 For registered CTMs or RCDs...................................................................... 16
6.8 Representation and authorisation...........................................................16 6.9 Contents of the application for inspection of file...................................17 6.10 Deficiencies ..............................................................................................17
Inspection of Files
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6.11 Fees for inspection and communication of information contained in the files 17 6.11.1 Communication of information contained in a file......................................... 18 6.11.2 Inspection of the files.................................................................................... 18 6.11.3 Consequences of failure to pay.................................................................... 19 6.11.4 Refund of fees .............................................................................................. 19
6.12 Requirements concerning the right to obtain inspection of files concerning an unpublished CTM application, or a deferred RCD filed by a third party...............................................................................................20 6.12.1 Consent 20 6.12.2 Statement that CTM or RCD rights will be invoked ...................................... 21
6.13 Grant of inspection of files, means of inspection ..................................21 6.13.1 Communication of information contained in a file......................................... 21 6.13.2 Copies of file documents .............................................................................. 22
7 Procedures to Give Access to the Files to Courts or Authorities of the Member States ......................................................................................... 22 7.1 No fees ......................................................................................................22 7.2 No restriction as to unpublished applications .......................................23 7.3 Means of inspection .................................................................................23
Inspection of Files
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1 General Principles
Articles 87, 88 and 90 CTMR Articles 72, 74, 75 CDR Rules 84(1), 89, 90, 92 and 93 CTMIR Articles 69(1), 74, 75, 77 and 78 CDIR Article 2(27) CTMFR
The principle established under the Community trade mark and design system is that
• the ‘Register of Community Trade Marks’ and the ‘Register of Community Designs’ contain all particulars relating to Community trade mark and design applications and registered Community trade marks and designs and
• the ‘files’ contain all correspondence and decisions relating to those trade marks and designs.
Both the Registers and the files of the Office are in principle open to inspection by the public. However, before publication of a CTM application, a C ommunity Design registration or when a Registered Community Design (RCD) is subject to deferred publication, inspection of files is possible only in exceptional cases (see paragraph 4.2.1 and 4.2.2 below).
All the information in the Registers is stored in the Office’s databases and, where applicable, published in the CTM / RCD Bulletin in electronic format.
These Guidelines deal specifically with inspection of files.
Inspection of the files may involve:
• inspection of the registers
• obtaining certified or uncertified extracts of the registers
• inspection of the actual file document(s),
• the communication of information contained in the files, implying communication of specific information contained in the files without supplying the actual file document(s),
• obtaining certified or uncertified copies of documents contained in the files.
In these Guidelines, the term ‘inspection of the files’ is used to cover all of the abovementioned forms of inspection of files, unless otherwise stated.
The provisions in the CDR and CDIR dealing with the inspection of files of Community designs are almost identical to the equivalent provisions of the CTMR and CTMIR, respectively. Therefore, the following applies mutatis mutandis to Community designs. Where the procedure is different, these differences are specified under a separate sub- heading.
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2 The Registers of Community Trade Marks and Community Designs
Article 87 CTMR Article 72 CDR Rule 84 CTMIR Article 69 CDIR
The Registers are maintained in electronic form and consist of entries in the Office’s database systems. They are available on the Office website for public inspection, except, in the case of Community designs, to the extent that Article 50(2) CDR provides otherwise. Insofar as some data contained in the Registers are not yet available online, the only means of access is by a request for information or by obtaining certified or uncertified extracts from the Registers subject to the payment of a fee.
3 Inspection of the Registers
3.1 Information contained in the Registers 3.1.1 The Register of Community trade marks
Rule 84 CTMIR Decision No EX-00-1 of the President of the Office of 27 November 2000 concerning entries in the Register of Community Trade Marks Decision No EX-07-1 of the President of the Office of 16 March 2007 concerning entries in the Register of Community Trade Marks
The Register of Community Trade Marks contains the information specified in Rule 84 CTMIR and any other items determined by the President of the Office.
3.1.2 The Register of Community designs
Article 50 CDR Article 69 and 73 CDIR Decision No EX-07-2 of the President of the Office of 16 M arch 2007 concerning entries in the Register of Community Designs
The Register of Community Designs contains the information specified in Article 69 CDIR and any other items determined by the President of the Office.
In accordance with Article 73(a) CDIR, where the registered Community designs are subject to a def erment of publication pursuant to Article 50(1) CDR, access to the Register to persons other than the holder shall be limited to the name of the holder, the name of any representative, the date of filing and registration, the file number of the application and the mention that publication is deferred.
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4 Inspection of files
4.1 Persons / Entities authorised to request access to the files
The rules and degree of access to the files vary according to who requests inspection.
The Regulations and the Implementing Regulations differentiate between the following three categories:
• the applicant / proprietor of the Community trade mark or design,
• third parties,
• courts or authorities of the Member States.
Inspection of the files by courts or authorities of the Member States is covered by the system of administrative cooperation with the Office (see paragraph 7 below).
4.2 Documents which constitute the files
The files relating to a CTM or RCD consist of all correspondence between the applicant / proprietor and the Office and al l documents established in the course of examination, as well as any correspondence concerning the ensuing Community trade mark or Community design. The file does not include trade mark search reports provided by national Offices.
Documents relating to opposition, cancellation, invalidity and appeal proceedings before the Office or other proceedings, such as recordals (transfer, licence etc.), also form part of the files.
Where the parties make use of the mediation services offered by the Office in accordance with Decision No 2011-1 of the Presidium of the Boards of Appeal of 14 April 2011 on t he amicable settlement of disputes, or the conciliation services in accordance with Decision No 2014-2 of the Presidium of the Boards of Appeal of 31 January 2014, on the friendly settlement of disputes by the competent Board, all correspondence relating to that mediation or conciliation are excluded from inspection of files.
Rule 91 CTMIR Article 76 CDIR
Even where a C TM application is no longer pending or a C TM registration or CD registration cease to have effect, inspection of the respective files remains possible just as if the application or registration were still pending or effective, as long as the files are kept. A CTM application or CD application ceases to be pending when it is rejected, or when the application has been withdrawn or deemed to be withdrawn, and a C TM registration or CD registration ceases to have effect when it expires or is surrendered, declared invalid or revoked. The Office will keep the complete files for at least five years from the end of the year in which such an event occurs.
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4.2.1 The files relating to Community trade mark applications
Articles 39 and 88 CTMR Rules 12, 85 and 89(2) CTMIR
The files relating to Community trade mark applications are available for inspection of files once the application has been publ ished by the Office in the Community Trade Marks Bulletin. The day of publication is the date of issue shown in the Community Trade Marks Bulletin and is reflected under the INID code 442 in the Register. The dissemination of data relating to unpublished CTM applications by means of online access or otherwise does not constitute publication of the application within the meaning of Article 39 CTMR and Rule 12 CTMIR.
Before the publication of the application, inspection of the files is restricted and possible only if one of the following conditions is fulfilled:
• The applicant for inspection is the CTM applicant / proprietor, or
• The CTM applicant has consented to inspection of the file relating to the CTM application (see paragraph 6.12.1 below), or
• The applicant for inspection can prove that the CTM applicant has stated that it will invoke the rights under the CTM, once registered, against the applicant for inspection (see paragraph 6.12.2. below).
Article 36(3) CTMR Rule 91 CTMIR
The applicant always has access to the files relating to its own CTM application. This comprises the following:
• the CTM application, even where the Office has refused to attribute a filing date to it or where the application does not fulfil the minimum requirements for the attribution of a filing date, in which case the application will not be dealt with as a CTM application and, legally speaking, there is no CTM application;
• the files for as long as they are kept (see paragraph 3.2), even after the CTM application has been rejected or withdrawn.
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4.2.2 The files relating to Community design applications
Article 50 and 74 CDR Article 70 and 74(2) CDIR
The files relating to Community design applications or applications for a registered Community design which is subject to deferment of publication, which, being subject to such deferment, has been surrendered before or on the expiry of that period or which, pursuant to Article 50(4) CDR, is deemed from the outset not to have had the effects specified in that Regulation, are available for inspection only if one of the following conditions is fulfilled:
• The applicant for inspection is the CD applicant / proprietor, or
• The applicant for the Community design has consented to inspection of the file relating to the Community design application, or
• The applicant for inspection has established a legitimate interest in the inspection of the Community design application, in particular where the applicant for the Community design has stated that after the design has been registered he / she will invoke the rights under it against the person requesting the inspection.
In the case of an application for multiple Community designs, this inspection restriction will apply only to information relating to the Community designs subject to deferment of publication or to those which are not eventually registered either due to rejection by the Office of withdrawal by the applicant.
4.2.3 The files relating to registered Community trade marks
The files relating to Community trade marks after registration are available for inspection.
4.2.4 The files relating to registered Community designs
The files relating to registered Community designs are available for inspection once the registration has been published by the Office in the Community Designs Bulletin. The day of publication is the date of issue shown in the Community Designs Bulletin and is reflected under the INID code 45 in the Register.
Where inspection of the files relates to a registered Community design which is subject to deferment of publication under Article 50 CDR, or which, being subject to such deferment, has been s urrendered before or on the expiry of that period or which, pursuant to Article 50(4) CDR, is deemed from the outset not to have had the effects specified in that Regulation, the inspection of files of the registration is restricted and possible only if one of the following conditions is fulfilled:
• The holder of the Community design has consented to inspection of the file relating to the Community design registration.
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• The applicant for inspection has established a legitimate interest in the inspection of the files of the Community design registration, in particular where the holder of the Community design has taken steps with a view to invoking the rights under it against the person requesting the inspection.
In the case of an application for multiple Community designs, this inspection restriction will apply only to information relating to the Community designs subject to deferment of publication or to those which are not eventually registered either due to rejection by the Office of withdrawal by the applicant.
4.2.5 The files relating to international registrations designating the European Union
Articles 151 and 152 CTMR Articles 106(d) CDR Rule 89 CTMIR Article 71 CDIR
International registrations are exclusive rights administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva according to the Madrid Protocol (in the case of trade marks) and the Geneva Act (in the case of designs). WIPO processes the applications and then sends them to OHIM for examination in accordance with the conditions specified in the CTMR and in the CDR. These registrations have the same effect as applying directly for a Community trade mark or a registered Community design.
The files kept by the Office relating to international trade mark registrations designating the European Union may be inspected on r equest as from the date of publication referred to in Article 152(1) CTMR and subject to Rule 88 CTMIR.
The Office provides information on international registrations of designs designating the EU in the form of an electronic link to the searchable database maintained by the International Bureau (https://www.wipo.int/ipdl/en/hague/search-struct.jsp). The files kept by the Office may relate to refusal of international design pursuant to Article 106e CDR and the invalidation of the international design pursuant to Article 106f CDR. They may be inspected subject to the restrictions pursuant to Article 72 CDIR (see paragraph 5 Parts of the File Excluded from Inspection below).
5 Parts of the File Excluded from Inspection
5.1 Excluded documents
Article 137 CTMR Rule 88 CTMIR Article 72 CDIR
Certain documents contained in the files are excluded from inspection of files, namely:
• documents relating to the exclusion of or objection to Office staff, for example on the grounds of suspicion of partiality,
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• draft decisions and opinions and all other internal documents used for preparing decisions and opinions,
• parts of the file for which the party concerned expressed a special interest in keeping confidential.
• all documents relating to the invitation of the Office to find a friendly settlement, except those that have an immediate impact on the trade mark or design, such as limitations, transfers etc., and have been declared to the Office. (For mediation and conciliation proceedings, see paragraph 4.2)
5.1.1 Documents relating to exclusion or objection
Rule 88(a) CTMIR Article 72(a) CDIR
This exception relates to documents in which an ex aminer states that they consider themselves excluded from participating in the case, as well as documents in which such a person makes observations on an objection by a party to the proceedings on the basis of a ground for exclusion or on suspicion of partiality. However, it does not relate to letters in which a party to the proceedings raises, either separately or together with other statements, an objection based on a ground for exclusion or on suspicion of partiality, or to any decision on the action to be taken in the cases mentioned above. The decision taken by the competent instance of the Office, without the person who withdraws or has been objected to, will form part of the files.
5.1.2 Draft decisions and opinions and internal documents
Rule 88(b) CTMIR Article 72(b) CDIR
This exception relates to documents used for preparing decisions and opinions, such as reports and notes drafted by an examiner that contain considerations or suggestions for dealing with or deciding on a case, or annotations containing specific or general instructions on dealing with certain cases. Documents which contain a c ommunication, notice or final decision by the Office in relation to a pa rticular case are not included in this exception. Any document to be notified to a party to the proceedings will take the form of either the original document or a copy thereof, certified by or bearing the seal of the Office, or a computer print-out bearing that seal. Either the original communication, notice or decision or a copy thereof remains in the file.
Notes and the Guidelines of the Office relating to the general procedures and treatment of cases, such as these Guidelines, do not form part of the files. The same is true for measures and instructions concerning the allocation of duties.
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5.1.3 Parts of the file for which the party concerned expressed a special interest in keeping confidential
Rule 88(c) CTMIR Article 72(c) CDIR
Parts of the file for which the party concerned expressed a special interest in keeping confidential before the application for inspection of the files was made are excluded from inspection of files, unless inspection thereof is justified by an overriding legitimate interest of the party seeking inspection.
The party concerned must have expressly invoked, and sufficiently justified, a special interest in keeping the document confidential when they submitted it.
Where the party concerned requests confidentiality but does not justify its interest in keeping the document confidential, the Office will reject the request for confidentiality and will invite the party concerned to file observations within two months.
The party concerned may not request confidentiality for any document at a later stage.
If a s pecial interest in keeping a doc ument confidential is invoked, the Office must check whether that special interest is sufficiently demonstrated. The documents falling into this category must originate from the party concerned (e.g. CTM / RCD applicant, opponent). The special interest must be due to the confidential nature of the document or its status as a trade or business secret. This may be the case, for example, where the applicant has submitted underlying documentation as evidence in respect of a request for registration of a transfer or licence. Where the Office concludes that the requirements for keeping documents confidential are not met, it will communicate with the person who filed the documents and take a decision. The applicant may submit evidence in a form that avoids revealing parts of the document or information which the applicant considers confidential, as long as the parts of the document submitted contain the required information. For example, where contracts or other documents are submitted as evidence for a transfer or licence, certain information may be blacked out before being submitted to the Office or certain pages may be omitted.
In the event that the Office invites the parties to opposition, cancellation or invalidity proceedings to consider a friendly settlement, all corresponding documents referring to those proceedings are considered confidential and in principle not open to inspection of files.
Access to documents which the Office has accepted as being confidential and, thus, excluded from inspection, may nevertheless be granted to a person who demonstrates an overriding legitimate interest in inspecting the document. The overriding legitimate interest must be that of the person requesting inspection.
If the file contains such documents, the Office will inform the applicant for inspection of the files about the existence of such documents within the files. The applicant for inspection of files may then decide whether or not it wants to file a request invoking an overriding legitimate interest. Each request must be analysed on its own merits.
Before rejecting a request, the Office must give the party requesting inspection the opportunity to present its observations.
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The request, as well as any observations, will have to be sent to the party concerned, who has a right to be heard, before access to documents that the Office has accepted as being excluded from inspection of files is granted.
Article 59 CTMR Article 56 CDR
The Office must take a decision on whether to grant access to such documents. Such a decision will be subject to appeal by the adversely affected party.
5.2 Access for applicant or proprietor to excluded documents
Rule 88 CTMIR Article 72 CDIR
Where an applicant or proprietor requests access to their own file, this will mean all documents forming part of the file, excluding only those documents referred to in Rule 88(a) and (b) CTMIR and Article 72(a) and (b) CDIR.
In inter partes proceedings where the other party concerned (the opponent or applicant for revocation or declaration of invalidity) has shown a special interest in keeping its document confidential vis-à-vis third parties, it will be i nformed that the documents cannot be kept confidential with respect to the other party to the proceedings and it will be invited to either disclose the documents or withdraw them from the proceedings. If it confirms the confidentiality, the documents will not be sent to the other party and will not be taken into account by the Office in the decision.
If, on the other hand, it wants the documents to be taken into account but not available for third parties, the documents can be forwarded by the Office to the other party to the proceedings, but will not be av ailable for inspection by third parties (for opposition proceedings, see the Guidelines, Part C: Opposition, Part 1, Procedural Matters).
6 Procedures Before the Office Relating to Applications for Inspection of Files
6.1 Certified or uncertified extracts of the registers
6.1.1 Extracts from the Register of Community trade marks
Rule 84(6) CTMIR
The Office shall provide certified or uncertified extracts from the Register on request, on payment of a fee.
Requests for an extract from the Register of Community Trade Marks may be submitted by filing the official ‘Application for an Inspection of File’ form available in all languages of the Office or any equivalent request.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 6.7 below.
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Rules 80 and 82 CTMIR
An application for inspection of files may be submitted as a signed original by fax, by post or by electronic means (see paragraph 6.5 below).
6.1.2 Extracts from the Register of Community Designs
Article 50 CDR Article 69 and 73 CDIR
Subject to Article 73 CDIR, the Office shall provide certified or uncertified extracts from the Register on request, on payment of a fee.
Where the registration is subject to a deferment of publication pursuant to Article 50(1) CDR, certified (or uncertified) extracts from the Register shall contain only the name of the holder, the name of any representative, the date of filing and registration, the file number of the application and the mention that publication is deferred, except where the request has been made by the holder or his / her representative.
Requests for an extract from the Register of Community Designs may be submitted by filing the official ‘Application for an Inspection of File’ form available in all languages of the Office or any equivalent request.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 6.7 below.
Article 65, 66, 67 CDIR
An application for inspection of files may be submitted as a signed original by fax, by post or by electronic means (see paragraph 6.5 below).
6.2 Certified or uncertified copies of file documents
The Office shall provide certified or uncertified copies of documents constituting the files (see paragraph 4.2 above) on request, on payment of a fee.
Requests for certified or uncertified copies of documents may be submitted by filing the official ‘Application for an Inspection of File’ form available in all languages of the Office or any equivalent request.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 6.7 below.
Certified copies of the CTM application itself or the CTM registration certificate or the RCD registration certificate may also be r equested as an alternative to the downloadable certified copies available free of charge (see paragraph 6.4 below).
Certified copies of the CTM application or the RCD registration certificate will only be available when a filing date has been accorded (for CTM filing date requirements, see Part B, Section 2 Examination of Formalities; for RCD filing date requirements see the Guidelines on Examination of Applications for Registered Community Designs).
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In the case of an application for multiple designs, certified copies of the application will only be available for those designs which have been accorded a filing date.
Where the CTM application or RCD registration has not yet been published, a request for certified or uncertified copies of the file documents will be subject to the restrictions listed in paragraphs 4.2.1 to 4.2.4. above.
It should be borne in mind that the certified copy of the application or registration only reflects the data on the date of application / registration. The trade mark or design may have been the subject of a transfer, surrender, partial surrender or other act affecting its scope of protection, which will not be reflected in the certified copy of the CTM application form or CTM / RCD registration certificate. Up-to-date information is available from the electronic database or by requesting a certified extract of the Register (see paragraph 6.1 above).
6.3 Online access to the files
The contents of the files are available in the ‘Correspondence’ section of the file in eSearch plus on OHIM’s website.
Providing the CTM application or the CD registration (not subject to a deferment) has been published, registered users of the website can consult these files free of charge.
6.4 Downloadable certified copies
Decision No EX-13-2 of the President of the Office of 26 November 2013 concerning electronic communication with and b y the Office (‘Basic Decision on E lectronic Communication’), Article 6.
Certified copies of the CTM application itself or the CTM registration certificate or the RCD registration certificate can be au tomatically generated and downloaded via a direct link from the OHIM website via the eSearch plus application, from within the Inspection of Files e-filing form and from within the files for a selected CTM or RCD. In the list of documents, an i con appears next to the document for which a c ertified copy can be downloaded. Clicking on the icon will generate a certified copy of the document in PDF format.
The PDF document is composed of a c over page in the five OHIM languages, introducing the certified document and containing a unique identification code for the original document, followed by the certified document itself (CTM application form, CTM registration certificate or RCD registration certificate). Each page of the document should bear a header and footer containing important elements in order to guarantee the authenticity of the certified copy: a uni que identification code, a ‘copy’ stamp, signature of the OHIM staff member responsible for issuing certified copies, date of the certified copy, CTM / RCD number and page number. The date indicated is the date when the certified copy was automatically generated.
The automatically generated certified copies have the same value as certified copies sent on paper upon request and can either be used in electronic format or printed.
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When an authority receives a certified copy, it can verify the original document online using the unique identification code given in the certified copy. A link ‘Verify certified copies’ is available under the ‘Databases’ section of the OHIM website. Clicking on the link will bring up a s creen with a box in which the unique identification code can be entered in order to retrieve and d isplay the original document from OHIM’s online systems.
It should be borne in mind that the certified copy only reflects the data on the date of application / registration. The trade mark or design may have been the subject of a transfer, surrender, partial surrender or other act affecting its scope of protection, which will not be reflected in the certified copy of the CTM application form or CTM / RCD registration certificate. Up-to-date information is available from the electronic database or by requesting a certified extract of the Register.
6.5 Online applications for inspection of files
Applications for inspection may be filed online. Users may access the application form by clicking on the icon in the detail page of a selected CTM or RCD. They will then be re-directed to their user account where they will be invited to login and complete the application for inspection of files requesting certified or uncertified copies of specific documents.
6.6 Written applications for inspection of files
Rule 79 CTMIR Article 65 CDIR
Applications for inspection may be submitted by filing the official ‘Application for an Inspection of File’ form available in all languages of the Office or any equivalent request.
Any language version of this form may be used, provided that it is completed in one of the languages referred to in paragraph 6.7 below.
Rules 80 and 82 CTMIR Article 67 CDIR
An application for inspection of files may be submitted as a signed original by fax, by post or by electronic means (see paragraph 6.5 above).
6.7 Languages
Applications for inspection of files must be filed in one of the languages indicated below.
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6.7.1 For CTM or CD applications
Rule 95(a), 96 and 98 CTMIR Article 80, 81, 83 and 84 CDIR
Where the application for an inspection of file relates to a Community trade mark application or Community design application, whether or not already published, it must be filed in the language in which the CTM application or CD application was filed (the ‘first’ language) or in the second language indicated by the CTM applicant or CD applicant in their application (the ‘second’ language).
Where the application for inspection is filed in a language other than indicated above, the applicant for inspection must, of its own motion, submit a translation into one of the languages indicated above within one m onth. If such a translation is not submitted within the deadline, the application for inspection of files will be deemed not to have been filed.
This does not apply where the applicant for inspection could not have been aware of the languages of the CTM application or RCD application (which can be the case only where such information is not available in the online register and the application can immediately be dealt with). In this case, the application for inspection may be filed in any of the five languages of the Office.
6.7.2 For registered CTMs or RCDs
Rule 95(b), 96 and 98 CTMIR Article 80(b), 81, 83 and 84 CDIR
Where the application for inspection of files relates to a registered CTM or RCD, it must be filed in one of the five languages of the Office.
The language in which the application for inspection was filed will become the language of the inspection proceedings.
Where the application for inspection of files is made in a language other than indicated above, the party requesting inspection must, on its own motion, submit a t ranslation into one of the languages indicated above within one m onth, or the application for inspection of files will be deemed not to have been filed.
6.8 Representation and authorisation
Representation is not mandatory for filing an application for inspection of files.
Where a representative is appointed, the general rules for representation and authorisation apply. See the Guidelines Part A, Section 5, Professional Representation.
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6.9 Contents of the application for inspection of file
The application for inspection of files mentioned in paragraphs 6.5 and 6.6 above must contain the following:
• an indication of the file number or registration number for which inspection is applied for;
• the name and address of the applicant for inspection of files;
• if appropriate, an indication of the document or information for which inspection is applied for (applications may be m ade to inspect the whole file or specific documents only). In the event of an application to inspect a specific document, the nature of the document (e.g. ‘application’, ‘notice of opposition’) needs to be stated. Where communication of information from the file is applied for, the type of information needed must be specified. Where the application for inspection relates to a CTM application which has not yet been published, the application for a registered Community design which has not yet been published or a registered Community design which is subject to deferment of publication in accordance with Article 50 CDR or which, being subject to such deferment, has been surrendered before or on the expiry of that period, and inspection of the files is applied for by a third party, an indication and evidence to the effect that the third party concerned has a right to inspect the file;
• where copies are requested, an i ndication of the number of copies requested, whether or not they should be certified and, if the documents are to be presented in a t hird country requiring an authentication of the signature (legalisation), an indication of the countries for which authentication is needed;
• the applicant’s signature in accordance with Rule 79 CTMIR and Article 65 CDIR.
6.10 Deficiencies
Where an application for inspection of the files fails to comply with the requirements concerning the contents of applications, the applicant for inspection will be invited to remedy the deficiencies. If deficiencies are not remedied within the fixed time limit, the application for inspection will be refused.
6.11 Fees for inspection and communication of information contained in the files
All fees are due on the date of receipt of the application for inspection (see paragraphs 6.5 and 6.6 above).
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6.11.1 Communication of information contained in a file
Rule 90 CTMIR Article 75 CDIR Article 2(29) CTMFR Article 2 (annex para. 23) CDFR
Communication of information in a file is subject to payment of a fee of EUR 10.
6.11.2 Inspection of the files
Rule 89(1) CTMIR Article 74(1) CDIR Article 2(27) CTMFR Article 2 (annex para. 21) CDFR
A request for inspection of the files on the Office premises is subject to payment of a fee of EUR 30.
Rule 89(4) CTMIR Article 74(4) CDIR Article 2(28)(a) CTMFR Article 2 (annex para. 22) CDFR
Where inspection of a file is obtained through the issuing of uncertified copies of file documents, those copies are subject to payment of a fee of EUR 10 plus EUR 1 for every page exceeding ten.
Rules 24(2), 84(6) and 89(5) CTMIR Articles 17(2), 69(6) and 74(5) CDIR Article 2(26)(a) CTMFR Article 2 (annex para. 20) CDFR
An uncertified copy of a CTM application or RCD application, an uncertified copy of the certificate of registration, an uncertified extract from the Register or an uncertified extract of the CTM application or RCD a pplication from the database is subject to payment of a fee of EUR 10 per copy or extract.
Rule 89(4) CTMIR Article 74(4) CDIR Article 2(28)(b) CTMFR Article 2 (annex para. 22) CDFR
Where inspection of a file is obtained through the issuing of certified copies of file documents, those copies are subject to payment of a fee of EUR 30 plus EUR 1 for every page exceeding ten.
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Rules 24(2), 84(6) and 89(5) CTMIR Articles 17(2), 69(6) and 74(5) CDIR Article 2(26)(b) CTMFR Article 2 (annex para. 20) CDFR
A certified copy of a C TM application or RCD application, a certified copy of the certificate of registration, a certified extract from the Register or a certified extract of the CTM application or RCD application from the database is subject to payment of a fee of EUR 30 per copy or extract.
However, registered users of the website can obtain electronic certified copies of CTM or RCD applications or registration certificates free of charge through the website.
6.11.3 Consequences of failure to pay
Rule 89(1) CTMIR Article 74(1) CDIR
An application for inspection of files will be deemed not to have been filed until the fee has been paid. The fees apply not only where the application for inspection has been filed by a third party but also where it has been filed by the CTM or RCD applicant or proprietor. The Office will not process the inspection application until the fee has been paid.
However, if the fee is not paid or is not paid in full, the Office will notify the applicant for inspection:
• if no payment is received by the Office for a certified or uncertified copy of a CTM application or RCD application, a certificate of registration or an extract from the Register or from the database;
• if no payment is received by the Office for inspection of the files obtained through the issuing of certified or uncertified copies of file documents;
• if no payment is received by the Office for the communication of information contained in a file.
The Office will issue a letter indicating the amount of fees to be pai d. If the exact amount of the fee is not known to the applicant for inspection because it depends on the number of pages, the Office will either include that information in the standard letter or inform the applicant for inspection by other appropriate means.
6.11.4 Refund of fees
Where the application to obtain certified or uncertified copies or information contained in the files is withdrawn before the Office has dealt with it, the fee will be refunded or, in the case of a current account, the account will not be debited.
Where an application for inspection of the files is rejected, the corresponding fee is not refunded. However, where, subsequent to the payment of the fee the Office finds that
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not all the certified or uncertified copies requested may be issued, any fees is paid in excess of that which is eventually due will be refunded.
6.12 Requirements concerning the right to obtain inspection of files concerning an unpublished CTM application, or a deferred RCD filed by a third party
Article 88(1), (2) CTMR Article 74 CDR Rule 89(2) CTMIR Article 74(2) CDIR
Where an application for inspection of the files for a CTM application which has not yet been published or the files relating to an RCD subject to deferment of publication in accordance with Article 50 CDR or which, being subject to such deferment, has been surrendered before or on t he expiry of that period, (see paragraphs 4.2.1 and 4.2.2 above) is filed by a third party (that is by a person other than the CTM or RCD applicant or its representative), different situations may arise.
If the application by a third party is based on t he grounds specified in Rule 89(2) CTMIR (see paragraph 4.2.1 above), or in Article 74(2) CDIR or Article 74(2) CDR (see paragraph 4.2.2 above) it must contain an indication and evidence to the effect that the CTM applicant or RCD applicant or holder has consented to the inspection, or has stated that it will invoke the rights under the CTM or RCD, once registered, against the applicant for inspection.
6.12.1 Consent
The CTM applicant or RCD applicant or holder’s consent must be in the form of a written statement in which it consents to the inspection of the particular file(s). Consent may be limited to inspection of certain parts of the file, such as the application, etc., in which case the application for inspection of files may not exceed the scope of the consent.
Where the applicant for inspection of the files does not submit a written statement from the CTM applicant or RCD applicant or holder consenting to the inspection of the files, the applicant for inspection will be not ified and given two months from the date of notification to remedy the deficiency.
If, after expiry of the time limit, no consent has been submitted, the Office will refuse the application for inspection of the files. The applicant for inspection will be informed of the decision to refuse the application for inspection.
The decision may be a ppealed by the applicant for inspection (Articles 59 and 60 CTMR and 56 CDR).
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6.12.2 Statement that CTM or RCD rights will be invoked
Rule 89(2) CTMIR Article 74(2) CDR Article 74(2) CDIR
Where the application relies on t he allegation that the CTM or RCD proprietor will invoke the rights under the CTM or RCD, once registered, it is up to the applicant for inspection to prove this allegation. The evidence to be submitted must take the form of documents, for example, statements by the CTM applicant or RCD applicant or holder for the CTM application, RCD application or registered and deferred Community design in question, business correspondence, etc. Filing an opposition based on a C TM application against a national mark constitutes a s tatement that the CTM will be invoked. Mere assumptions on the part of the applicant for inspection of the file will not constitute sufficient proof.
The Office will first examine whether the proof is sufficient.
If so, the Office will send the application for inspection of files and the supporting documents to the CTM applicant or RCD applicant or holder and invite it to comment within two months. If the CTM applicant or RCD applicant or holder consents to inspection of the files, it will be g ranted. If the CTM applicant or RCD applicant or holder submits comments contesting inspection of the files, the Office will send the comments to the applicant for inspection. Any further statement by the applicant for inspection will be sent to the CTM applicant or RCD applicant or holder and vice versa. The Office will take into account all submissions made on time by the parties and decide accordingly. The Office’s decision will be notified to both the applicant for inspection of the files and the CTM applicant or RCD applicant or holder. It may be appealed by the adversely affected party (Articles 59 and 60 CTMR and 56 CDR).
6.13 Grant of inspection of files, means of inspection
When inspection is granted, the Office will, as appropriate, send the requested copies of file documents, or requested information, to the applicant for inspection or invite it to inspect the files at the Office’s premises.
6.13.1 Communication of information contained in a file
Rule 90 CTMIR Article 75 CDIR
The Office may, upon request, communicate information contained in any file relating to CTM or RCD applications or registrations.
Information contained in the files will be provided without an inspection application, inter alia, where the party concerned wishes to know whether a given CTM application has been filed by a given applicant, the date of such application, or whether the list of goods and services has been amended in the period between the filing of the application and publication.
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Having obtained this information, the party concerned may then decide whether or not to request copies of the relevant documents, or to apply for inspection of the actual file.
Where the party concerned wishes to know, inter alia, which arguments an opponent has brought forward in opposition proceedings, which seniority documents have been filed, or the exact wording of the list of goods and services as filed, such information will not be provided. Instead the Office will advise the party to apply for inspection of the actual file.
In such cases, the quantity and complexity of the information to be supplied would exceed reasonable limits and create an undue administrative burden.
6.13.2 Copies of file documents
Where inspection of the files is granted in the form of the provision of certified or uncertified copies of file documents, the requested documents will be sent by post.
Where inspection of files is granted on the Office premises, the applicant will be given an appointment to inspect the files.
7 Procedures to Give Access to the Files to Courts or Authorities of the Member States
Article 90 CTMR Article 75 CDR Rules 92 and 93 CTMIR Articles 77 and 78 CDIR
For the purposes of administrative co-operation, the Office will, upon request, assist courts or authorities of the Member States by communicating information or opening files for inspection.
For the purposes of administrative co-operation, the Office will also, upon r equest, communicate relevant information about the filing of CTM or RCD applications and proceedings relating to such applications and the marks or designs registered as a result thereof to the central industrial property offices of the Member States.
7.1 No fees
Rules 92(3) and 93(1), (2) CTMIR Articles 77(3) and 78(1), (2) CDIR
Inspection of files and c ommunication of information from the files requested by the courts or authorities of the Member States are not subject to the payment of fees.
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Rule 93(2) CTMIR Article 78(2) CDIR
Courts or public prosecutors’ offices of a Member State may open to inspection by third parties files or copies thereof that have been t ransmitted to them by the Office. The Office will not charge any fee for such inspection.
7.2 No restriction as to unpublished applications
Article 90 CTMR Article 75 CDR Rules 88 and 92(1) CTMIR Articles 72 and 77(1) CDIR
Inspection of files and c ommunication of information from the files requested by the courts or authorities of the Member States is not subject to the restrictions contained in Article 88 CTMR and Article 74 CDR. Consequently, these bodies may be g ranted access to files relating to unpublished CTM applications (see paragraph 4.2.1 above) and RCD’s subject to deferment of publication (see paragraph 4.2.2 above) as well as to parts of the files for which the party concerned has expressed a special interest in keeping confidential. However, documents relating to exclusion and objection, as well as the documents referred to in Rule 88(b) CTMIR and Article 72(b) CDIR, will not be made available to these bodies.
Rules 88 and 93(2) CTMIR Article 74 CDR and Articles 72 and 78(2) CDIR
Courts or public prosecutors’ offices of the Member States may open to inspection by third parties files or copies that have been transmitted to them by the Office. Such subsequent inspection shall be s ubject to the restrictions contained in Article 88 and Rule 88 CTMIR or Article 74 CDR, as if the inspection had been requested by a third party.
Rule 93(3) CTMIR Article 78(4) CDIR
When transmitting files or copies thereof to the courts or public prosecutors’ offices of the Member States, the Office will indicate the restrictions imposed on inspection of files relating on the one hand t o CTM applications or registered Community trade marks pursuant to Article 88 CTMR and Rule 88 CTMIR and on the other hand to CD applications or RCD registrations pursuant to Article 74 CDR and Article 72 CDIR.
7.3 Means of inspection
Rule 93(1) CTMIR Article 78(1) CDIR
Inspection of the files relating to CTM / RCD applications or registrations by courts or authorities of the Member States may be granted by providing copies of the original documents. As the files contain no original documents as such, the Office will provide printouts from the electronic system.
Counterclaims
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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 E
REGISTER OPERATIONS
SECTION 6
OTHER ENTRIES IN THE REGISTER
CHAPTER 1
COUNTERCLAIMS
Counterclaims
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Table of Contents
1 Introduction................................................................................................ 3
2 Application to Register the Filing of a Counterclaim Before a CTM or CD Court..................................................................................................... 3
3 Application to Register a Judgment on a Counterclaim Before a CTM or CD court................................................................................................. 4
Counterclaims
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1 Introduction
Counterclaims, as provided for in Article 100 CTMR or Article 84 CDR, are defence claims of the defendant who is sued for the infringement of a Community trade mark (CTM) or Registered Community Design (RCD). By way of such a counterclaim the defendant asks the Community trade mark court or Community design court to declare the revocation or invalidity of the CTM or the invalidity of the RCD which it is supposed to have infringed.
The purpose of recording the filing and the final judgment of the counterclaim in the Register of the Office lies in the general interest of making all the relevant information on counterclaims concerning CTMs and RCDs, in particular the final judgments thereof, publicly available. In this way the Office may implement these final judgments, in particular those which declare the total or partial revocation or invalidity of a CTM as well as those which declare the total invalidity of RCDs.
By entering such counterclaims and t heir final judgments in the Register, the Office strives to comply with the principles of conformity to truth, public faith and the legal certainty of a public Register.
2 Application to Register the Filing of a Counterclaim Before a CTM or CD Court
Article 100(4) CTMR Rule 84(3)(n) CTMIR Article 86(2) CDR Article 69(3)(p) CDIR Communication No 9/05 and No 10/05 of the President
According to Article 100(4) CTMR and Article 86(2) CDR, the Community trade mark and Community design court before which a counterclaim for revocation of a CTM or for a declaration of invalidity of the CTM or RCD has been filed shall inform the Office of the date on which the counterclaim was filed.
Communications No 9/05 and No 10/05 of 28/11/2005 concern the designation of Community trade mark and Community design courts of the Member States (hereinafter, ‘CTM or CD courts’) pursuant to Article 95(2) CTMR.
The Office also allows any party to the counterclaim proceedings to request the entry of a counterclaim in the Register, if not yet communicated by the CTM or CD court.
The recordal applicant (the CTM or CD court or one of the parties in the counterclaim proceedings) must indicate and submit:
• the date on which the counterclaim was filed, • the number of the CTM or RCD concerned, • an indication of whether the request is for revocation or for declaration of
invalidity, • if the recordal applicant is one of the parties, official confirmation from the CTM
or CD court that has the authority to take the judgment on the counterclaim including, where possible, the case or reference number from the court.
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If the recordal applicant does not submit official confirmation from the CTM or CD court, or if the information submitted by the applicant requires clarification, the Office will request confirmation in writing.
The Office will notify the CTM or RCD proprietor and t he CTM or CD court that the counterclaim has been entered in the Register. If the request was made by one of the parties to the counterclaim proceedings, the Office will also inform this party.
The entry in the relevant Register will be published in Part C.9.3. of the CTM Bulletin or Part B.3.1 of the RCD Bulletin.
3 Application to Register a Judgment on a Counterclaim Before a CTM or CD court
Article 100(6) CTMR Rule 84(3)(o) CTMIR Article 86(4) CDR Article 69(3)(q) CDIR
Where a CTM or CD court has given a j udgment, which has become final, on a counterclaim for revocation of a CTM or for invalidity of a CTM or an RCD, a copy of the judgment shall be sent to the Office.
The Office also allows any party to the counterclaim proceedings to request the entry of a judgment on the counterclaim action in the Register, if not yet communicated by the CTM or CD court.
The recordal applicant (the CTM or CD court or one of the parties in the counterclaim proceedings) must indicate and submit:
• a copy of the judgment, together with confirmation from the CTM or CD court that the judgment has become final,
• the date on which the judgment became final, • the number of the CTM or RCD concerned, • an indication of whether the request is for revocation or for declaration of
invalidity, • in the event of partial cancellation or invalidity, the list of goods and services
affected by the judgment, if relevant.
The Office needs confirmation that the judgment is final (rechtskräftig/adquirido fuerza de cosa juzgada/passée en force de c hose jugée, etc.). If the Office requires clarification, it will request confirmation in writing.
Where the final judgment partially cancels a CTM, the Office will alter the list of goods and services according to the CTM court judgment and, where necessary, will send the amended list of goods and services for translation.
The Office will notify the CTM or RCD proprietor and t he CTM or CD court that the judgment has been entered in the Register. If the request was made by one o f the parties to the counterclaim proceedings, the Office will also inform this party.
The entry in the relevant Register will be published in Part C.9.4. of the CTM Bulletin or Part B.3.2. of the RCD Bulletin.
Examination of Design Invalidity Applications
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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE
INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON REGISTERED COMMUNITY
DESIGNS
REGISTERED COMMUNITY DESIGNS
EXAMINATION OF DESIGN INVALIDITY APPLICATIONS
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Table of Contents
1 Purpose ...................................................................................................... 5
2 Introduction – General Principles Applying to Invalidity Proceedings ............................................................................................... 5 2.1 Duty to state reasons .................................................................................5 2.2 Right to be heard........................................................................................6 2.3 Scope of the examination carried out by the Invalidity Division.............6 2.4 Compliance with time limits ......................................................................7
3 Filing of an Application ............................................................................. 8 3.1 Form of the application..............................................................................8 3.2 Scope of the application ............................................................................8 3.3 Language of proceedings ..........................................................................8 3.4 Identification of the application.................................................................9 3.5 Locus Standi of the applicant....................................................................9 3.6 Representation of the application ...........................................................10
3.6.1 When representation is mandatory .............................................................. 10 3.6.2 Who may represent ...................................................................................... 10
3.7 Identification of the contested Community design ................................10 3.8 Lapsed registrations ................................................................................11 3.9 Statement of grounds, facts, evidence and arguments......................... 11
3.9.1 Statement of grounds ................................................................................... 11 3.9.2 Facts, evidence and arguments ................................................................... 12 3.9.3 Admissibility in respect of one of the grounds relied on ............................... 13
3.10 Signing the application ............................................................................13 3.11 Means of filing ..........................................................................................14 3.12 Payment of fee..........................................................................................14 3.13 Treating deficiencies................................................................................15 3.14 Communication to the holder..................................................................15 3.15 Participation of an alleged infringer........................................................15
4 Adversarial Stage of the Proceedings ................................................... 16 4.1 Exchange of communications.................................................................16
4.1.1 Observations by the holder........................................................................... 16 4.1.1.1 Generalities ...............................................................................................16 4.1.1.2 Request for proof of use of an earlier trade mark ......................................16
4.1.2 Translation of the holder’s observations....................................................... 17 4.1.3 Scope of defence.......................................................................................... 17 4.1.4 Reply by the applicant .................................................................................. 18
4.1.4.1 Generalities ...............................................................................................18 4.1.4.2 Translation of the applicant’s reply ............................................................18
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4.1.4.3 Submission of evidence of use of an earlier trade mark............................19 4.1.5 End of exchange of observations ................................................................. 19 4.1.6 Extension of time-limits and suspension ...................................................... 20
4.1.6.1 Extension of time-limits..............................................................................20 4.1.6.2 Suspension................................................................................................20
4.1.7 Taking of evidence ....................................................................................... 21 4.1.8 Oral proceedings .......................................................................................... 22
4.2 Examination..............................................................................................22 4.2.1 Commencement of examination................................................................... 22 4.2.2 Examination of the grounds for invalidity...................................................... 23
5 The Different Grounds for Invalidity ...................................................... 24 5.1 Not a design..............................................................................................24
5.1.1. Living Organisms ............................................................................................ 24 5.1.2. Ideas and methods of use .............................................................................. 24
5.2 Lack of entitlement...................................................................................24 5.3 Technical function....................................................................................25
5.3.1 Rationale....................................................................................................... 25 5.3.2 Examination .................................................................................................. 26 5.3.3 Alternative shapes ........................................................................................ 27
5.4 Designs of interconnections ...................................................................27 5.5 Lack of novelty and individual character................................................27
5.5.1 Disclosure of prior design ............................................................................. 27 5.5.1.1 General principles .....................................................................................27 5.5.1.2 Official publications ...................................................................................28 5.5.1.3 Exhibitions and use in trade ......................................................................29 5.5.1.4 Disclosures derived from the internet ........................................................30 5.5.1.5 Statements in writing, sworn or affirmed (affidavits) ..................................31 5.5.1.6 Insufficient disclosure ................................................................................31 5.5.1.7 Disclosure to a t hird person under explicit or implicit conditions of
confidentiality.............................................................................................32 5.5.1.8 Disclosure within the priority period...........................................................32 5.5.1.9 Grace period..............................................................................................33
5.5.2 Assessment of novelty and individual character .......................................... 34 5.5.2.1 Common principles....................................................................................34
5.6 Conflict with a prior design right.............................................................42 5.7 Use of an earlier distinctive sign.............................................................43
5.7.1 Distinctive sign.............................................................................................. 43 5.7.2 Use in a subsequent design ......................................................................... 43 5.7.3 Substantiation of the application under Article 25(1)(e) CDR (earlier
distinctive signs) ........................................................................................... 43 5.7.4 Examination by the Invalidity Division .......................................................... 44
5.8 Unauthorised use of a work protected under the copyright law of a Member State............................................................................................45 5.8.1 Substantiation of the application under Article 25(1)(f) CDR (earlier
copyright) ...................................................................................................... 45 5.8.2 Examination by the Invalidity Division .......................................................... 45
5.9 Partial invalidity........................................................................................46
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5.10 Grounds of invalidity which become applicable merely because of the accession of a new Member State ....................................................47
6 Termination of the Proceedings............................................................. 47 6.1 Termination of proceedings without decision on the merits................. 47 6.2 Decision on costs.....................................................................................47
6.2.1 Cases where a decision on costs must be taken ......................................... 47 6.2.2 Cases where a decision on costs is not to be taken .................................... 48
6.2.2.1 Agreement on costs ..................................................................................48 6.2.2.2 Apportionment of costs..............................................................................48 6.2.2.3 Fixing of costs ...........................................................................................48
6.3 Correction of mistakes and entry in the register....................................49 6.3.1 Correction of mistakes.................................................................................. 49 6.3.2 Entry into the register ................................................................................... 50
7 Appeal....................................................................................................... 50 7.1 Right to appeal .........................................................................................50 7.2 Revision ....................................................................................................50
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1 Purpose
The purpose of these Guidelines is to explain how, in practice, the requirements of the Community Design Regulation1 (CDR), the Community Design Implementing Regulation2 (CDIR), and the Fees Regulation3 (CDFR) are applied by the Invalidity Division of OHIM from the receipt of an application for a declaration of invalidity of a Community design (‘application’) up to the point of closure of the invalidity proceedings. Their purpose is also to ensure consistency among the decisions taken by the Invalidity Division and to ensure coherent practice in the treatment of the files. These Guidelines are not intended to, and cannot, add to or subtract from the legal contents of the Regulations.
2 Introduction – General Principles Applying to Invalidity Proceedings
2.1 Duty to state reasons
The decisions of the Invalidity Division must state the reasons on which they are based (Article 62 CDR). The reasoning must be logical and it must not disclose internal inconsistencies.
The obligation to state reasons has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the next instance to exercise their power to review the legality of the decision. Moreover, the obligation to state reasons is an essential procedural requirement, as distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure (judgment of 27/06/2013, T-608/11, ‘Instrument for writing II’, para. 67-68 and the case law cited there).
The Invalidity Division must rule on each head of claim submitted by the parties (judgment of 10/06/2008, T-85/07, para. 20). The I nvalidity Division is, however, not required to give express reasons for its assessment of the value of each argument and each piece of evidence presented to it, in particular where it considers that the argument or evidence in question is unimportant or irrelevant to the outcome of the dispute (see by analogy judgment of 15/06/2000, C-237/98 P, para. 51). It is sufficient if the Invalidity Division sets out the facts and l egal considerations having decisive importance in the context of the decision (judgment of 12/11/2008, T-7/04, para. 81).
1 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs), by Council Regulation No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2001 on Community designs, as amended by Commission Regulation (EC) No 876/2007 on 24 July 2007 amending Regulation (EC) No 2245/2002 implementing Council Regulation (EC) No 6/2002 on Community designs following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs 3 Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees, as amended by Commission Regulation (EC) No 877/2007 of 24 July 2007 amending Regulation (EC) No 2246/2002 concerning the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs
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Whether the reasoning satisfies those requirements is a question to be assessed with reference not only to its wording, but also to its context and the legal rules governing the matter in question (judgment of 07/02/2007, T-317/05, para. 57).
The Invalidity Division will apply the principles explained in the Guidelines concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A General Rules, Section 2, General principle to be respected in the proceedings, Chapter 1, Adequate Reasoning.
2.2 Right to be heard
The decisions of the Invalidity Division will be based only on reasons or evidence on which the parties concerned have had an op portunity to present their comments (second sentence of Article 62 CDR).
To that end, the Invalidity Division will invite the parties, as often as necessary, to file observations on communications from the other parties or issued by itself (Article 53(2) CDR).
The right to be heard covers all the factual and legal evidence which form the basis for the act of taking the decision, but it does not apply to the final position which the Invalidity Division intends to adopt (judgment of 20/04/2005, T-273/02, ‘CALPICO/CALYPSO’, para. 64-65).
The Invalidity Division may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are, in particular, known by the informed users of those goods; in such a c ase the Invalidity Division is not obliged to give examples or evidence of such a practical experience.
The Invalidity Division will apply the principles explained in The Guidelines concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A General Rules, Section 2, General principle to be respected in the proceedings, Chapter 2, The Right to Be Heard.
2.3 Scope of th e examination carried out b y the Invalidity Division
In invalidity proceedings, the examination carried out by the Invalidity Division is restricted to the facts, evidence and arguments provided by the parties (Article 63(1) CDR). However, the Invalidity Division must weigh the facts, evidence and arguments, adjudicate on their conclusiveness, and t hereafter draw legal inferences from them without being bound by the points of agreement between the parties. Alleged facts which are not supported by evidence are not taken into account (decision of the Invalidity Division of 22/04/2008 (ICD 4448)).
Facts, evidence and arguments are three different items not to be confused with each other. For instance, the date of disclosure of a prior design is a fact. Evidence of that fact could be the date of publication of a catalogue showing the prior design together with evidence proving that the catalogue has been made available to the public before the date of filing or the priority date of the contested Community design. The applicant’s argument could be t hat the prior design forms an obs tacle to the novelty of the
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contested Community design given the similar overall impression they produce on the informed user. Whether a Community design lacks novelty or not is not a f act but a legal question to be d ecided by the Invalidity Division on t he basis of the facts, evidence and arguments provided by the parties.
Expert reports or expert opinions and other statements in writing fall within the means of evidence referred to in Article 65(1)(c) and (f) CDR. However, the fact that they are procedurally admissible does not automatically mean that the statement is credible and will serve as proof of the facts to be proven. Rather, such statements must be critically examined as to the accuracy and correctness of the information, as well as whether they come from an independent source and/or are fettered or supported by written information (decision of the Invalidity Division of 22/04/2008 (ICD 4448)).
Moreover, the legal criteria for applying a ground for invalidity are naturally part of the matters of law submitted for examination by the Invalidity Division. A matter of law may have to be ruled on by the Invalidity Division even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of the CDR. The Invalidity Division will thus examine ex officio such matters of law which can be assessed independently of any factual background for the purpose of allowing or dismissing the parties’ arguments, even if they have not put forward a view on those matters (see by analogy judgment of 01/02/2005, T-57/03, para. 21). Such matters of law will include inter alia the definition of the informed user and the degree of freedom of the designer within the meaning of Article 6 CDR.
2.4 Compliance with time limits
The Invalidity Division may disregard facts or evidence which are not submitted in due time by the parties concerned (Article 63(2) CDR).
Parties are reminded that they must file the facts and evidence on which they rely in due time and within the time limits set by the Invalidity Division. Parties which fail to observe the time limits run the risk that the evidence may be disregarded. Parties have no unconditional right to have facts and evidence submitted out of time to be taken into consideration by the Invalidity Division.
Where the Invalidity Division exercises its discretion under Article 63(2) CDR, it must state reasons why the late facts and ev idence are admissible or not, taking into consideration whether the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the invalidity proceedings brought before it and, second, whether the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (judgment of 13/03/2007, C-29/05 P, para. 42-44)
Where a party files a submission by fax, it should indicate on the accompanying letter whether a confirmation copy (which, as the case may be, may contain documents in colours) is sent. Both the fax and the confirmation copy should reach the Office within the time-limit set. In accordance with Article 63(2) CDR, the Office may take into account a confirmation copy which was not submitted in due time by the parties concerned.
If the time limit is still running, the party may request an ex tension of the time limit pursuant to Article 57(1) CDIR.
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For general information on time limits and continuation of proceedings, see the Guidelines concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 1, Means of Communication, Time Limits.
As regards incomplete or illegible faxes, see Section 3.11 below.
However, applicants should be reminded that the one-month time limit, specified under Section 3.11 below only applies to the filing of a request for a declaration of invalidity (for which no time limit is set by the Office), and not to other procedural steps for which the Office sets a time-limit.
3 Filing of an Application
3.1 Form of the application
For filing an application (Article 52 CDR) the Office provides a form (Article 68(1)(f) CDIR) which may be downloaded from the Office’s website.
The use of the form is strongly recommended (Article 68(6) CDIR), in order to facilitate the processing of the application and to avoid errors.
The application, including the supporting documents, should be submitted in two sets, in order that one set can be kept in the archive of the Office while the other is sent to the holder without incurring a loss of quality due t o copying. If an application is submitted in one s et only, the Invalidity Division may invite the applicant to file a second set within a period of one month, or two months if the applicant does not have its domicile or its principal place of business or an establishment within the European Union (Article 57(1) CDIR).
3.2 Scope of the application
In invalidity proceedings, the relief sought by the applicant can only be the declaration of invalidity of the contested Community design, as registered (Article 25 CDR). Where contested Community designs are part of a multiple registration, each of them must be c ontested individually and i dentified by reference to their full registration number (Article 37(4) CDR). A single application (and a common statement of grounds) may concern more than one C ommunity design of a multiple registration. In such a case, the fee for the application must be paid for each contested Community design. However, for the sake of clarity the Office recommends that separate applications be lodged for each contested Community design.
3.3 Language of proceedings
The language used in filing the application for registering the contested Community design (language of filing) is the language of the invalidity proceedings (language of proceedings) provided the language of filing is one of the five languages of the Office (Article 98 CDR; Article 29 CDIR).
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If the language of filing is not one of the five languages of the Office, the language of proceedings is the second language indicated in the application for the contested Community design (Article 98(4) CDR; Article 29(1) CDIR).
The application for a declaration of invalidity must be filed in the language of proceedings. Where the application is not filed in the language of proceedings, the Invalidity Division will notify the applicant requesting it to file a t ranslation within a period of two months from the date of receipt of the notification. Where the applicant does not comply with the request, the application is rejected as inadmissible (Article 30(1) CDIR).
The parties to the invalidity proceedings may agree on a different language of proceedings provided it is an official language of the European Union. Information as regards the agreement must reach the Office within a period of two months after the holder has been notified of the application. Where the application was not filed in that language, the applicant must file a translation of the application in that language within one month from the date when the Office has been i nformed of the agreement (Article 98(5) CDR; Article 29(6) CDIR).
For the linguistic regime applicable to the supporting documents, see paragraph 3.9.2 below.
3.4 Identification of the application
The application must contain an indication of the name and address of the applicant (Article 28(1)(c) CDIR).
Where the information given in the application does not make it possible to identify the applicant unambiguously, and the deficiency is not remedied within two months of the Invalidity Division’s request in that regard, the application must be rejected as inadmissible (Article 30(1) CDIR).
3.5 Locus Standi of the applicant
Any natural or legal person, as well as a publ ic authority empowered to do s o, may submit an application for a dec laration of invalidity of a C ommunity design to the Invalidity Division based on Article 25(1)(a) and (b) CDR (Article 52(1) CDR).
However, where the ground for invalidity is the violation of an earlier right, within the meaning of Article 25(1)(c) to (f) CDR, or an improper use of official emblems, within the meaning of Article 25(1)(g) CDR, the admissibility of an application for a declaration of invalidity requires the applicant to be entitled to the earlier right or to be concerned by the use of the official emblem, as the case may be (Article 52(1) CDR). Entitlement will be e xamined on t he basis of the international, national law or the law of the European Union which governs the earlier right or official emblem in question.
For the substantiation of the applicant’s entitlement, see paragraph 3.9.2 below.
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3.6 Representation of the application
3.6.1 When representation is mandatory
As a matter of principle, the rules governing representation in Community trade mark proceedings apply mutatis mutandis to invalidity proceedings for Community designs (see The Guidelines, Part A, General Rules, Section 5, Professional Representation).
Persons having their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Union are not required to be represented in any proceedings before the Office.
Where the applicant does not have its domicile or its principal place of business or a real and effective industrial or commercial establishment in the European Union, it must be represented by a r epresentative, otherwise the applicant will be requested to appoint a representative within a t ime limit of two months. Where the applicant does not comply with the request, the application is rejected as inadmissible (Article 77(2) CDR; Articles 30(1) and 28(1)(c) CDIR).
In examining whether an applicant has a real and effective industrial or commercial establishment in the European Union, the Invalidity Division follows the guidance of the Court of Justice of 22/11/1978, C-33/78, ‘Somafer SA’, para. 12 (‘The concept of branch, agency or other establishment implies a pl ace of business which has the appearance of permanency, such as the extension of a par ent body, has a management and is materially equipped to negotiate business with third parties’). Proof that an applicant has a real and effective industrial or commercial establishment in the European Union may consist inter alia of articles of incorporation, annual reports, statements in writing, and other business documents.
3.6.2 Who may represent
Only a legal practitioner or a professional representative who fulfills the requirements of Article 78(1) CDR can represent third parties before the Office.
A natural or legal person whose domicile, principal place of business, or real and effective industrial or commercial establishment is in the Community may be represented before the Office by an employee. Employees of such a legal person may also represent another legal person having neither its domicile nor its principal place of business nor a r eal and effective industrial or commercial establishment within the European Union, provided there exist economic connections between the two legal persons (Article 77(3) CDR).
3.7 Identification of the contested Community design
An application for a declaration of invalidity must contain the registration number of the contested Community design and the name and address of its holder, as entered in the register (Article 28(1)(a) CDIR).
Where the information given by the applicant does not make it possible to identify the contested Community design unambiguously, the applicant will be requested to supply such information within a period of two months. If the applicant does not comply with this request, the application will be rejected as inadmissible (Article 30(1) CDIR).
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3.8 Lapsed registrations
A Community design may be dec lared invalid even after the Community design has lapsed or has been surrendered (Article 24(2) CDR).
Where the contested Community design has lapsed or has been s urrendered on or before the date of filing of the application, the applicant will be r equested to submit evidence, within a period of two months, that it has a legal interest in the declaration of invalidity. Where the applicant does not comply with the request, the application is rejected as inadmissible (Article 30(1) CDIR) (decision of the Invalidity Division of 16/06/2011 (ICD 8231)).
For instance, legal interest is established where the applicant proves that the holder of the contested Community design has taken steps with the view to invoke rights under the contested Community design against it.
Where the contested Community design has lapsed or has been s urrendered in the course of the invalidity proceedings, the applicant will be asked to confirm whether it maintains its application within a period of two months and, if so, to submit reasons in support of its request to obtain a decision on the merits of the case.
3.9 Statement of grounds, facts, evidence and arguments
The application must include an indication of the grounds on which the application is based (Article 52(2) CDR; Article 28(1)(b)(i) CDIR) together with a reasoned statement stating the facts, evidence and arguments in support of those grounds (Article 28(1)(b)(vi) CDIR).
3.9.1 Statement of grounds
Where the applicant uses the form provided by the Office (Article 68(1)(f) CDIR), the indication of the grounds relied on is made by ticking one or several boxes in the field ‘Grounds’. The Invalidity Division will examine an application in the light of all grounds put forward in the reasoned statement of grounds, even if the corresponding boxes in the form used to lodge the action were not ticked.
Where the applicant does not use the form provided by the Office, an indication of the relevant sub-section of Article 25(1) CDR, such as ‘ground of Article 25(1)(a) CDR’, is sufficient to establish admissibility of the application in respect to the statement of grounds.
Where the application does not make it possible to unambiguously identify the ground(s) on which the application is based, the applicant will be requested to provide further specifications in this respect within a period of two months. Where the applicant does not comply with the request, the application will be r ejected as inadmissible (Article 30(1) CDIR).
Grounds for invalidity other than those specifically relied on in the application will be considered inadmissible when subsequently put forward before the Invalidity Division.
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The Office strongly recommends that all grounds for invalidity be put forward in one single application. Where separate applications are lodged against the same contested Community design and based on different grounds, the Invalidity Division may deal with them in one set of proceedings. The Invalidity Division may subsequently decide to no longer deal with them in this way (Article 32(1) CDIR).
3.9.2 Facts, evidence and arguments
The applicant must indicate the facts, evidence and ar guments in support of the ground(s) on which the application is based (Article 28(1)(b)(vi) CDIR).
The arguments will be set out either in the corresponding box in the form provided by the Office (Article 68(1)(f) CDIR) or in the reasoned statement attached to the application.
Where the applicant claims that the contested Community design lacks novelty or individual character (Article 25(1)(b) CDR), the application must contain a representation of the prior design(s) that could form an obstacle to the novelty or individual character of the contested Community design, as well as documents proving the disclosure of the prior design(s) (Article 7 CDR; Article 28(1)(b)(v) CDIR).
Where the applicant claims that the holder is not entitled to the contested Community design (Article 25(1)(c) CDR), the application must contain particulars showing that the applicant is entitled to the contested Community design by virtue of a court decision (Article 28(1)(c)(iii) CDIR).
Where the applicant claims that the contested Community design is in conflict with a prior design (Article 25(1)(d) CDR), the application must contain a representation and particulars identifying the prior design. Furthermore, the application must contain evidence proving that the applicant is the holder of the prior design as a ground for invalidity (Article 28(1)(b)(ii) CDIR).
Where the applicant claims that the contested Community design violates an ear lier right, namely that it makes unauthorised use of a distinctive sign (Article 25(1)(e) CDR) or a work protected by copyright in a Member State (Article 25(1)(f) CDR), the application must contain a representation and particulars identifying the distinctive sign or the work protected by copyright.
Furthermore, the application must contain evidence proving that the applicant is the holder of the earlier right in question (Article 28(1)(b)(iii) CDIR). Where the earlier right is registered, a di stinction is made depending on whether the earlier design or trade mark is a RCD or a CTM. If the earlier right is a RCD or a CTM, the applicant does not have to submit any document. The examination of the substantiation will be done with respect to the data contained in the database of the Office. In all other cases, the applicant must provide the Office with evidence of the filing and r egistration of the earlier design or registered distinctive sign. The following documents will be accepted to substantiate the existence of an ear lier design: (1) certificates issued by the appropriate official body, (2) extracts from official databases (see The Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, Chapter 4.2.3.2 Extracts from official databases), (3) extracts from official bulletins of the relevant national design offices and WIPO.
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Where the earlier right is unregistered, this condition will be considered to be complied with, for the purpose of examining the admissibility of the application, where the applicant submits evidence that the earlier distinctive sign or the earlier work protected by copyright law has been used or disclosed, as the case may be, under the applicant’s name before the date of filing or the priority date of the Community design (see paragraphs 5.7.3 and 5.8.1 below for the substantiation of the proprietorship of the earlier right relied on under Article 25(1)(e) and (f) CDR).
Where the applicant claims that the contested Community design makes improper use of any of the items listed in Article 6ter of the Paris Convention or of badges, emblems and escutcheons other than those covered by Article 6ter and which are of particular interest in a M ember State (Article 25(1)(g) CDR), the application must contain a representation and par ticulars of the relevant item and par ticulars showing that the application is filed by the person or entity concerned by the improper use (Article 28(1)(b)(iv) CDIR).
Where such indications, as required above, are missing and the deficiency is not remedied by the applicant within a period of two months following a request of the Invalidity Division, the application will be rejected as inadmissible (Article 30(1) CDIR).
Where the evidence in support of the application is not filed in the language of proceedings, the applicant shall on its own motion submit a translation of that evidence into that language within two months of the filing of such evidence (Article 29(5) CDIR). The question of whether certain parts of the supporting documents may be considered irrelevant for the application, and therefore not translated, is a matter for the discretion of the applicant. In cases where a translation is not filed, the Invalidity Division will disregard the text portions of the evidence which are not translated and base its decision solely on the evidence before it which has been translated into the language of proceedings (Article 31(2) CDIR).
Documents in support of an appl ication should be l isted in a s chedule of annexes appended to the application itself. As best practice, the schedule of annexes should indicate, for each document annexed, the number of the annex (Annex A.1, A.2…), a short description of the document (e.g. ‘letter’) followed by its date, the author(s) and the number of pages, and the page reference and paragraph number in the pleading where the document is mentioned and its relevance is described.
The documents annexed to a pl eading must be paginated. This is to ensure that all pages of the annexes have been duly scanned and communicated to the other parties.
3.9.3 Admissibility in respect of one of the grounds relied on
An application based on m ore than one ground of invalidity is admissible if the requirements regarding admissibility are satisfied for at least one of these grounds.
3.10 Signing the application
The application for a de claration of invalidity must be s igned by the applicant or its representative if it has one (Article 65(1) CDIR).
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Where the signature is missing, the Invalidity Division will request the applicant to remedy the deficiency within two months. If the applicant does not comply with the request, the application will be rejected as inadmissible (Article 30(1) CDIR).
3.11 Means of filing
An application for a dec laration of invalidity may be f iled with the Office by post, personal delivery, or telecopier/fax (Article 65 CDIR). Electronic filing of applications will be allowed by a subsequent decision of the President once the technical means are available.
Where a c ommunication received by fax is incomplete or illegible, or where the Invalidity Division has reasonable doubts as to the accuracy of the transmission, the Invalidity Division will inform the sender accordingly and will call upon him/her, within a time limit to be specified by the Invalidity Division, to retransmit the original by fax or to submit the original. Where that request is complied with within the time limit specified, the date of the receipt of the retransmission or of the original shall be deemed to be the date of the receipt of the original communication. Where the request is not complied with within the time limit specified, the communication shall be dee med not to have been received (Article 66(2) CDIR).
Transmission by fax is not recommended for applications for a declaration of invalidity, in particular where lack of novelty and/or lack of individual character are claimed, because the quality of the representation of the prior design(s) may be deteriorated by fax transmission and colour information will be lost.
Where an application is transmitted by fax, the Office recommends that the applicant submits two sets of the original within one month from the date of transmission of the fax. The Invalidity Division will then forward one set to the holder. Where the applicant does not subsequently submit original documents after a fax transmission, the Invalidity Division will proceed with the documents before it.
It is the applicant’s responsibility to ensure that the features of earlier designs or other rights, as they appear in the fax received by the Invalidity Division, are sufficiently visible and i dentifiable in order for the Invalidity Division to make its decision. An application will be dismissed as unsubstantiated if the faxed evidence of the prior art, or of the earlier rights, without being totally illegible, is not of a sufficient quality allowing all the details to be discerned with a view to a c omparison with the contested Community design (decision of 10/03/2008, R 586/2007-3 – ‘Barbecues’, para. 23-26).
3.12 Payment of fee
The application for a declaration of invalidity will be deemed not to have been filed until the fee has been paid in full (Article 52(2) CDR; Articles 28(2) and 30(2) CDIR).
The methods of payment are via transfer to a bank account held by the Office (Article 5(1) CDFR) or, for current account holders, via current account. In the case of payment via a current account, the fee will be debi ted automatically from the current account of the applicant upon receipt of the application. The date on which the amount of the payment is actually entered in the bank account of the Office will be considered to be the date of payment (Article 7(1) CDFR).
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See The Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges for further reference.
Payment cannot be made by cheque.
Where the Invalidity Division finds that the fee has not been paid, it will notify the applicant requesting him/her to pay the fee within a period of two months after receipt of the notification. If the applicant does not comply with the request, the application is deemed not to have been filed and the applicant is informed accordingly. If the required fee is paid after the expiry of the time limit specified, it will be refunded to the applicant (Article 30(2) CDIR).
The date of payment of the fee determines the date of filing of the application of a declaration of invalidity (Article 52(2) CDR; Article 30(2) CDIR).
3.13 Treating deficiencies
Where the Invalidity Division finds the application inadmissible and the deficiency is not remedied within the specified time limit, the Invalidity Division will issue a decision rejecting the application as inadmissible (Article 30(1) CDIR). The fee will not be refunded.
3.14 Communication to the holder
The communication of an application for a declaration of invalidity to the RCD holder takes place only after this application was found admissible (Article 31(1) CDIR). This communication constitutes as such a decision on the admissibility, rather than a simple measure of organisation of procedure. This decision can be appealed together with the final decision (Article 55(2) CDR).
The decision on the admissibility may, however, be withdrawn, in accordance with the general principles of administrative and procedural law, if irregularities are detected ex officio by the Office, within a r easonable time, or by the RCD holder in its first observations (Article 31(1) CDIR), and if the applicant for invalidity fails to remedy such irregularities within the time limit prescribed by the Office (Article 30 CDIR) (see Article 68 CDR and, by analogy, judgment of 18/10/2012, C-402/11 P, REDTUBE / REDTUBE, para. 59).
Where the Invalidity Division does not reject the application as inadmissible, the application is communicated to the holder and a time limit of two months for submitting observations in response to the application is notified (see below under paragraph 4.1.1 Observations by the holder).
3.15 Participation of an alleged infringer
As long as no final decision has been taken by the Invalidity Division, any third party who proves that proceedings for infringement based on the contested Community design have been i nstituted against him may join as a party in the invalidity proceedings (Article 54 CDR; Article 33 CDIR).
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The alleged infringer must file its request to be joined as a party within three months of the date on which the infringement proceedings were instituted. Unless proof is submitted by the holder that another date should be retained according to the national law in question, the Invalidity Division will assume that proceedings are ‘instituted’ on the date of service of the action to the alleged infringer. The alleged infringer must submit evidence in respect of the date of service of the action.
Any third party who proves that (i) the right holder of the Community design has requested that it cease an alleged infringement of the design and that (ii) the third party in question has instituted proceedings for a c ourt ruling that it is not infringing the registered Community design (if actions for declaration of non-infringement of Community designs are permitted under national law) may also join as a party in the invalidity proceedings (Article 54 and 81(b) CDR).
The request to be joined as a party must be filed in a written reasoned statement and it will not be deemed to have been f iled until the invalidity fee has been paid. The rules explained above at paragraphs 3.1 to 3.13 will apply to the alleged infringer (Article 54(2) CDR; Article 33 CDIR).
4 Adversarial Stage of the Proceedings
4.1 Exchange of communications
4.1.1 Observations by the holder
4.1.1.1 Generalities
The holder’s observations will be c ommunicated to the applicant without delay (Article 31(3) CDIR).
Documents in support of observations should be listed in a schedule of annexes (see paragraph 3.1.9.2 above).
The holder should submit its observations (including the supporting documents) in two sets, so that one set can be kept in the archive of the Office and the other set can be sent to the applicant. This is done to avoid a loss of quality in the observations material due to copying by the Office. Where the observations are submitted in one set only, the Invalidity Division may invite the holder to file a s econd set within a period of one month, or two months if the applicant does not have its domicile or its principal place of business or an establishment within the European Union (Article 57(1) CDIR).
Where the holder files no observations within the two-month time limit, the Invalidity Division will notify the parties that the written part of the procedure is closed and that it will take a decision on the merits on the basis of the evidence before it (Article 31(2) CDIR).
4.1.1.2 Request for proof of use of an earlier trade mark
A request for proof of use of an earlier trade mark during the period of five years preceding the date of the application for a declaration of invalidity may be submitted by the holder if the following cumulative conditions are complied with:
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• the application is based on Article 25(1)(e) CDR;
• the earlier distinctive sign is a (Community, international or national) trade mark having effect in the European Union which, on the date of the application for a declaration of invalidity, has been registered for not less than five years;
• the request for proof of use is submitted together with the holder’s first submission in response to the application (judgment of 12/05/2010, T-148/08, ‘Instrument for writing’, para. 66-72; judgment of 27/06/2013, T-608/11, ‘Instrument for writing II’, para. 87. See also decision of 15/11/2013, R 1386/2012-3, ‘Cinturones’, para. 21).
‘The date of the completion of the registration procedure’ (Article 10(1) of Directive 2008/95/EC) that serves to calculate the starting point for the obligation of use for national and international registrations is determined by each Member State according to their own procedural rules (judgment of 14/06/2007, C-246/05, ‘LE CHEF DE CUISINE’, para. 26-28). As regards Community trade marks, that date is the date of registration (Article 15(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, hereafter ‘CTMR’) as published in the Community Trade Marks Bulletin (Rule 23(5) of Commission Regulation 2868/95 implementing the CTMR, hereafter ‘CTMIR’). As regards international registrations designating the European Union, the relevant date is that of the second publication pursuant to Articles 152(2) and 160 CTMR.
4.1.2 Translation of the holder’s observations
Where the language of proceedings is not the language of filing of the contested Community design, the holder may submit its observations in the language of filing (Article 98(4) CDR; Article 29(2) CDIR). The Invalidity Division will arrange to have those observations translated into the language of proceedings, free of charge, and will communicate the translation to the applicant without delay.
4.1.3 Scope of defence
The holder’s observations must include an indication regarding the extent to which it defends the contested Community design. Where the holder does not give such an indication, it is assumed that it seeks maintenance of the Community design in the form as originally registered, i.e. in its entirety.
Where the holder requests to maintain the Community design in an amended form, its request has to include the amended form. The amended form must comply with the requirements for protection, and the identity of the Community design must be retained. ‘Maintenance’ in an amended form may include registration accompanied by a partial disclaimer by the holder or entry in the register of a court decision or a decision by the Invalidity Division declaring the partial invalidity of the Community design (Article 25(6) CDR) (see paragraph 4.9).
The request to maintain the contested Community design in amended form must be submitted during the invalidity proceedings and before the end of the written procedure. The applicant will be given the opportunity to comment on whether the Community design in its amended form complies with the requirements for protection and whether the identity of the Community design is retained. The decision on the maintenance of
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the Community design in an amended form will be included in the decision on the merits terminating the invalidity proceedings.
4.1.4 Reply by the applicant
4.1.4.1 Generalities
Where the parties’ submissions allow the Invalidity Division to base its decision on the evidence before it, the Invalidity Division will notify the parties that the written phase of the proceedings is closed.
However, the applicant will be al lowed to reply to the holder’s observations within a time limit of two months (Article 53(2) CDR; Article 31(3) CDIR) in the following circumstances:
• where the holder’s observations contain new facts, evidence and arguments which are prima facie relevant for a decision on the merits; or
• where the holder requests to maintain the Community design in an a mended form; or
• where the holder requested proof of use of the earlier trade mark relied on under Article 25(1)(e) CDR.
Any reply of the applicant will be c ommunicated to the holder (Article 31(4) CDIR). Where the applicant's reply is considered admissible, the holder will be invited to submit a rejoinder (Article 53(2) CDR).
Where the applicant does not reply within the specified time limit, the Invalidity Division will notify the parties that the written phase of the proceedings is closed and that it will take a dec ision on t he merits on the basis of the evidence before it (Article 31(2) CDIR).
The subject matter of the proceedings must be defined in the application (see paragraphs 2.1.9.1 and 2.1.9.2 above). Reliance on addi tional earlier designs and/or rights is inadmissible when submitted at the belated procedural stage of the reply if the effect is to alter the subject matter of the proceedings (decision of 22/10/2009, R 690/2007-3 – ‘Chaff cutters’, para. 44 et seq.). The admissibility of additional facts, evidence and arguments relating to earlier designs and/or rights already referred to in the application is subject to the discretionary powers conferred on the Invalidity Division under Article 63(2) CDR (see paragraph 2.4 above).
The applicant should submit its reply in two sets, so that one set can be kept in the archive of the Office and the other set can be sent to the holder. This is done to avoid a loss of quality due to copying. If a reply was submitted in one set only, the Invalidity Division may invite the applicant to file a second set within a period of one month, or two months if the applicant does not have its domicile or its principal place of business or an establishment within the European Union (Article 57(1) CDIR).
4.1.4.2 Translation of the applicant’s reply
Any reply of the applicant must be in the language of proceedings. Where the applicant has been i nvited to reply and its reply is not in the language of proceedings, the applicant must submit, on its own motion, a translation of its reply within one month of
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the date of the submission of the original reply (Article 81(1) CDIR). The Invalidity Division will not remind the applicant of its duty in this respect. Where the applicant submits the translation on time, it will be c ommunicated to the holder. Where the applicant does not submit the translation on time, its reply will be deemed not to have been filed.
4.1.4.3 Submission of evidence of use of an earlier trade mark
Where the holder is requested to submit evidence of use of its earlier trade mark, it shall submit such evidence (i) in connection with the goods or services in respect of which this trade mark is registered, and which the applicant cites as justification for its application and ( ii) in respect of the period of five years preceding the date of the application for a declaration of invalidity, unless there are proper reasons for non-use. Such reasons for non-use must be substantiated.
Evidence of use of an earlier mark must fulfil all the cumulative conditions imposed by Rule 22(3) CTMIR, that is, indications concerning the place, time, extent and nature of use of the earlier trade mark for the goods and services for which it is registered and on which the application is based.
Use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered is admissible (Article 5(C)2 of the Paris Convention).
Where the language of the documents submitted by the applicant is not the language of the proceedings, the Invalidity Division may require that a translation be supplied in that language, within one month, or two months if the holder does not have its domicile or its principal place of business or an es tablishment within the European Union (Articles 81(2) and 57(1) CDIR).
In the absence of proof of genuine use of the earlier trade mark (unless there are proper reasons for non-use), or in the absence of a translation if so required by the Invalidity Division, the application for a dec laration of invalidity will be rejected to the extent that it was based on Article 25(1)(e) CDR. If the earlier trade mark has been used in relation to only a part of the goods or services for which it is registered, it will, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect of only that part of the goods or services (see by analogy Articles 57(2) and (3) CTMR).
When examining the evidence of use, the Invalidity Division will apply the principles explained in The Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C Opposition, Section 6 Proof of Use.
4.1.5 End of exchange of observations
Where the parties’ observations do not contain new facts, evidence or arguments which are prima facie relevant for a decision on the merits, the Invalidity Division will inform both parties that the written proceedings are closed and that a decision will be taken on the basis of the evidence before it (Article 53(2) CDR).
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Facts, evidence or arguments submitted after notification to the parties that the written phase of the procedure is closed will be considered inadmissible, save in exceptional circumstances, e.g. where the evidence was unavailable at an earlier stage or where a fact came to light in the course of the proceedings (Article 63(2) CDR, see paragraph 2.4 above).
4.1.6 Extension of time-limits and suspension
4.1.6.1 Extension of time-limits
Requests for an extension of a time limit by any of the parties have to be made before its expiry (Article 57(1) CDIR).
As a general rule, a first request for extension of a time limit will be granted. Further extensions will not automatically be g ranted. In particular, the Invalidity Division may make the extension of a time limit subject to the agreement of the other party or parties to the proceedings (Article 57(2) CDIR).
Reasons in support of any further request for extension must be submitted to the Invalidity Division. The request for an extension of the time limit must indicate the reasons why the parties cannot meet the deadline. The obstacles faced by the parties’ representatives do not justify an ex tension (see, by analogy, order of 05/03/2009, C-90/08 P, ‘CORPO LIVRE/LIVRE’, para. 20-23).
The extension will not result in a time limit longer than 6 months (Article 57(1) CDIR). Both parties are informed about any extension.
4.1.6.2 Suspension
The Invalidity Division will suspend the proceedings on its own motion after hearing the parties, unless there are special grounds for continuing the proceedings, where it has been brought to the attention of the Invalidity Division that the validity of the contested Community design is already in issue on account of a counterclaim before a competent national court and the national court does not stay its proceedings (Article 91(2) CDR).
The Invalidity Division may suspend the proceedings where it is appropriate in the circumstances, in particular:
• where the request for a declaration of invalidity is based on an ear lier design or trade mark for which the registration process is pending, until a f inal decision is taken in those proceedings (Article 25(1)(d) and (e) CDR);
• where the request for a declaration of invalidity is based on an ear lier design or trade mark, the validity of which is challenged in administrative or in court proceedings, until a final decision is taken in those proceedings;
• where the Invalidity Division receives a j oint request for suspension signed by both parties with a view to reaching an amicable settlement (Article 31(5) CDIR);
• where a num ber of applications for a dec laration of invalidity have been filed relating to the same Community design, and where a preliminary examination reveals that the Community design may be invalid on the basis of one of these
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applications. The Invalidity Division will deal with this application first and it may suspend the other invalidity proceedings (Article 32(2) CDIR).
The Invalidity Division has broad discretionary powers when deciding on t he appropriateness of the suspension. The decision on t he suspension must take into account the balance between the parties’ respective interests, including the applicant’s interest to obtain a decision within a reasonable period of time (see by analogy, judgment of 16/05/11, T-145/08, ‘Atlas’, para. 68-77).
The Invalidity Division will notify the parties of its decision to grant or refuse a suspension. Where a s uspension is granted for a det ermined period, the Invalidity Division will indicate in its communication the date of resumption of the proceedings. The proceedings will resume the day after the expiry of the suspension. Where the Invalidity Division decides not to grant the suspension, reasons are given in support of this decision, either at the time of refusing the suspension or in the decision terminating the proceedings.
Where a suspension is granted for an undetermined period, the invalidity proceedings will be resumed when the parties inform the invalidity Division that the event which justified the stay occurred, or cease to exist, as the case may be. The date of resumption will be indicated in the communication of the Invalidity Division or, in the absence of such indication, on the day following the date of that communication.
Where a time limit was running at the time of the suspension, the party concerned will be given two months from the date of resumption of the proceedings to submit its observations.
Where the suspension was requested jointly by the parties, the period will always be one year regardless of the period requested by the parties. Any party can bring an end to the suspension (‘opting out’). It is immaterial whether the other party disagrees with this or has consented to it.
If one o f the parties opts out, the suspension will end t wo weeks after informing the parties thereof. The proceedings will resume the day after. Where a time limit was running at the time of the suspension, the party concerned will be g iven two months from the date of resumption of the proceedings to submit its observations.
4.1.7 Taking of evidence
The parties may submit evidence in the form of documents and items of evidence, opinions by experts and witnesses, and/or statements in writing, sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up (Article 65(1) CDR).
Where a party offers evidence in the form of witness statements or expert opinions, the Invalidity Division will invite the party to provide the statement of the witness or the opinion of the expert in writing, except where a hear ing is considered expedient (Article 65 CDR; Articles 43 and 46 CDIR).
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4.1.8 Oral proceedings
Oral proceedings will be held at the request of the Invalidity Division or of any of the parties (Article 64 CDR; Articles 38(1) and 42 CDIR).
Where a par ty requests that they be hel d, the Invalidity Division enjoys broad discretionary powers as to whether oral proceedings are really necessary. A hearing will not be held when the Invalidity Division has before it all the information needed as a basis for the operative part of the decision on invalidity (decision of 13/05/2008, R 135/2007-3 – ‘Automatic machines for games’, para. 14).
Where the Invalidity Division 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.
Since the purpose of any oral proceedings is to clarify all points remaining to be settled before a decision on the merits is taken, it is appropriate that the Invalidity Division, in its summons, should draw the attention of the parties to the points which in its opinion need to be discussed. In so far as the Invalidity Division considers that certain matters require it, and to facilitate the hearing, it may invite the parties to submit written observations or to produce evidence prior to the oral hearing. The period fixed by the Invalidity Division for the receipt of such observations will take account of the fact that these must reach the Invalidity Division within a reasonable period of time to enable them to be submitted to the other parties.
The parties may likewise produce evidence in support of their arguments on their own initiative. However, should such evidence have been pr oduced at an earlier stage of the proceedings, the Invalidity Division will be the sole judge of the admissibility of these items of evidence, complying with the principle of hearing both parties where appropriate.
Oral proceedings, including delivery of the decision, are public, provided the contested Community design has been published, unless the admission of the public could entail a serious and unjustified disadvantage, in particular for a party to the proceedings. The parties are informed accordingly in the summons.
The parties shall be provided with a copy of the minutes which contain the essentials of the oral proceedings and the relevant statements made by the parties (Article 46 CDIR).
The Invalidity Division will apply the principles explained in The Guidelines concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A General Rules, Section 2 General principle to be respected in the Proceedings, Chapter 5 Oral Proceedings.
4.2 Examination
4.2.1 Commencement of examination
The Invalidity Division begins with the examination of the application as soon as the parties are informed that the written phase of the procedure is closed and that no further observations shall be submitted (Article 53 CDR).
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4.2.2 Examination of the grounds for invalidity
The grounds for declaring a C ommunity design invalid are exhaustively listed in Article 25 CDR. An application for a declaration of invalidity based on a ground other than those listed in the CDR (e.g. a claim that the holder was acting in bad faith when applying for the registered Community design) will be rejected as inadmissible as far as the ground in question is concerned (judgment of 18/03/2010, T-9/07, ‘Representation of a circular promotional item’, para. 30-31).
More than one ground may be relied on in the application without entailing additional fees. Where the applicant uses the form supplied by the Office, it must tick the box corresponding to the ground(s) on which the application is based.
Each ground must be supported by its own set of facts, evidence and arguments.
Article 25(1)(b) CDR includes several grounds, namely the ground of failure to meet the requirements of Article 4 CDR (novelty, individual character and visibility of component parts of complex products), the grounds of Article 8(1) and (2) CDR (functionality and designs of interconnections), and the ground of Article 9 CDR (contrariety to public policy or morality).
Where the ‘Grounds’ box in the application form corresponding to Article 25(1)(b) CDR is ticked, the Invalidity Division will determine which specific ground(s) are relied on by the applicant from the facts, evidence and ar guments referred to in the reasoned statement of grounds, and will limit the scope of its examination of the application accordingly (decision of 17/04/2008, R 976/2007-3 – ‘Radiators for heating’, para. 26).
The same applies to the ‘Grounds’ box in the application form corresponding to Article 25(1)(c), (d), (e), (f) or (g) CDR.
The Invalidity Division must examine an appl ication in the light of all grounds put forward in the original statement of grounds, even if the corresponding boxes in the application form were not ticked. Therefore, where the applicant indicated in the statement of grounds that the contested Community design was ‘not novel’, that indication constitutes a valid statement of grounds even if the ‘Grounds’ box concerning the requirements of Articles 4 to 9 CDR was not ticked (decision of 02/08/2007, R 1456/06-3 – ‘Saucepan handle’, para. 10).
Where an applicant expressly challenges the novelty of a Community design and provides evidence of an earlier disclosure, it is assumed that it seeks a declaration of invalidity on t he ground of Article 25(1)(b) CDR in conjunction with Article 4 CDR. Therefore, the Invalidity Division will also examine the individual character of the contested Community design (decision of 22/11/2006, R 196/2006-3 – ‘Underwater motive device’).
The applicant cannot raise new grounds for invalidity after the date of filing of the application. However, the applicant may file another application for a declaration of invalidity based on different grounds.
Where the application can be uphel d on the basis of one o f several grounds put forward by the applicant, the Invalidity Division will not take a decision on the others (decision of 15/12/2004 – ICD 321). Where an application can be upheld on account of the existence of one of the earlier designs or rights relied on by the applicant, the
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remaining earlier designs or rights will not be examined (see by analogy judgment of 16/09/2004, T-342/02, ‘MGM / M.G.M.’ and order of 11/05/2006, T-194/05, ‘TELETECH INTERNATIONAL / TELETECH ET AL’).
5 The Different Grounds for Invalidity
5.1 Not a design
According to Article 25(1)(a) CDR, a Community design may be declared invalid if the design does not correspond to the definition under Article 3(a) CDR. This would be the case where the views of the Community design are inconsistent and represent different products (other than forming a ‘set of products’, see Article 3 CDR and the Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Designs, Examination of Applications for registered Community Designs, Section 5 Additional Requirements regarding the Reproduction of the Design, Chapter 5.2.3 Sets of Articles), or where the graphical representation consists of mere representations of nature (landscapes, fruits, animals etc.) which are not products within the meaning of Article 3(1)(b) CDR.
5.1.1. Living Organisms
A design which discloses the appearance of a living organism in its natural state, in principle, has to be refused. Even if the shape at issue deviates from that of the common corresponding living organism, the design should be refused if nothing suggests prima facie that the shape is the result of a manual or industrial process (see by analogy decision of 18/02/2013, R 595/2012-3 – ‘Groente en fruit’, para. 11).
Community design No 1943283-0001 for ‘Groente en fruit’ (3rd Board of Appeal, decision of 18/02/2013, R 595/2012-3)
5.1.2. Ideas and methods of use
The law relating to designs protects the appearance of the whole or a part of a product, but does not protect the underlying idea of a design” (judgment of 06/06/2013, T-68/11, ‘Watch dials’, para. 72). Nor is the method of use or operation protected by a design (judgment of 21/11/2013, T-337/12, ‘Corkscrew’, para. 52).
5.2 Lack of entitlement
According to Article 25(1)(c) CDR, a Community design may be declared invalid if, by virtue of a court decision, the right holder is not entitled to the Community design under Article 14 CDR.
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It is clear from the words ‘by virtue of a court decision’ in Article 25(1)(c) CDR that the Invalidity Division has no jurisdiction to determine who is entitled to a C ommunity design under Article 14 CDR. Such jurisdiction belongs to any national court which is competent under Articles 27, 79(1) and (4) CDR in conjunction with Article 93 CDR. In the absence of a c ourt decision the Invalidity Division cannot declare the contested Community design invalid under Article 25(1)(c) CDR (decision of 11/02/2008, R 64/2007-3 – ‘Loudspeaker’, para. 15).
Article 15(1) CDR, which deals with claims to become recognised as the legitimate holder of the Community design, is also irrelevant in relation to the ground of Article 25(1)(c) CDR.
Such a claim falls within the category of ‘actions relating to Community designs other than those referred to in Article 81 CDR’ and therefore lies within the jurisdiction of a national court under Article 93(1) CDR rather than within the competence of the Invalidity Division. This is confirmed by the wording of Article 27(3) CDIR, which refers to such a claim being ‘brought before a court’.
5.3 Technical function
Article 8(1) CDR provides that ‘a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function’.
5.3.1 Rationale
‘Article 8(1) CDR denies protection to those features of a p roduct’s appearance that were chosen exclusively for the purpose of allowing a product to perform its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product’s visual appearance’, as was held by the 3rd Board of Appeal (decision of 22/10/2009, R 690/2007-3 – ‘Chaff cutters’, para. 35 et seq.).
The fact that a particular feature of a product’s appearance is denied protection by Article 8(1) CDR does not mean that the whole design must be declared invalid, pursuant to Article 25(1)(b) CDR. The design as a whole will be invalid only if all the essential features of the appearance of the product in question were solely dictated by its technical function (decision of 29/04/2010, R 211/2008-3 – ‘Fluid distribution equipment’, para. 36).
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Community design No 232996-0008 for ‘Fluid distribution equipment’ (3rd Board of Appeal, decision of 29/04/2010, R 211/2008-3)
Drawing taken from the earlier European patent application (EP 1 568 418 A2) in respect of a ‘method and system for supporting and/or aligning components of a liquid dispensing system’
5.3.2 Examination
In order to determine whether the essential features of the appearance of the product into which the contested Community design will be incorporated are solely dictated by the technical function of the product, it is first necessary to determine what the technical function of that product is. The relevant indication in the application for registration of the design (Article 36(2) CDR) should be t aken into account, but also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function (see by analogy, judgment of 18/03/2010, T-9/07, ‘Representation of a circular promotional item’, para. 56).
Whether Article 8(1) CDR applies must be assessed objectively, not in the perception of the informed user who may have limited knowledge of technical matters.
The technical functionality of the features of a design may be assessed, inter alia, by taking account of the documents relating to patents describing the functional elements of the shape concerned.
Depending on the case, and in particular in view of its degree of difficulty, the Invalidity Division may appoint an expert (Article 65(3) CDR and Article 44 CDIR).
The Invalidity Division will apply the principles explained in The Guidelines concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks
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and Designs), Part A General Rules, Section 2 General Principle to be respected in the Proceedings, Chapter 4.3. Commissioning of Experts.
5.3.3 Alternative shapes
Article 8(1) CDR does not require that a given feature must be the only means by which the product’s technical function can be achieved. Article 8(1) CDR applies where the need to achieve the product’s technical function was the only relevant factor when the feature in question was selected (decision of 22/10/2009, R 690/2007-3 – ‘Chaff cutters’, para. 31-32; decision of 10/06/2013, R 2466/2011-3 – ‘Blades’, para. 15-16).
The examination of Article 8(1) CDR must be carried out by analysing the Community design, and not designs consisting of other shapes.
5.4 Designs of interconnections
Features of a Community design are excluded from protection if they must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against another product so that either product may perform its function. If Article 8(2) CDR applies to all the essential features of the Community design, the latter must be declared invalid (decision of 20/11/2007, ICD 2970).
Proof that a Community design may be objected to based on Article 8(2) CDR rests on the applicant. The applicant must substantiate the existence of the product whose form and dimensions dictate those of the Community design and submit facts, evidence and arguments demonstrating the functions performed by this product and by this Community design individually and/or in combination.
As an exception, Article 8(2) CDR does not apply to a Community design which serves the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system (Article 8(3) CDR). Proof that the Community design serves such a purpose rests on the holder.
5.5 Lack of novelty and individual character
5.5.1 Disclosure of prior design
5.5.1.1 General principles
Challenging the validity of a Community design on account of its lack of novelty or of individual character requires proof that an earlier design which is identical or which produces a similar overall impression has been made available to the public before the date of filing the application for registration or, if a priority is claimed, the date of priority (Articles 5 and 6 CDR).
The public in question is made up of the members of the circles specialised in the sector concerned, operating within the European Union (Article 7(1) CDR).
The term circles specialised in the sector concerned in the meaning of Article 7(1) CDR is not limited to persons that are involved in creating designs and developing or manufacturing products based on those designs within the sector concerned.
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Article 7(1) CDR lays down no restrictions relating to the nature of the activity of natural or legal persons who may be considered to form part of the circles specialised in the sector concerned. Consequently, traders may also form part of the ‘specialised circles’ in the meaning of Article 7(1) CDR (see, by way of analogy, judgment of 13/02/2014, C-479/12, ‘gazebo’, para. 27).
For the purpose of Article 7 CDR, a ‘design’ means the appearance of the whole or a part of a p roduct resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation (Article 3(a) CDR). Whether or not an earlier ‘design’ within the meaning of Article 3(a) CDR enjoys legal protection (as a design, as a trade mark, as a copyrighted work, as a utility model or otherwise) is immaterial.
The applicant must substantiate the disclosure of an earlier design.
It is assumed that a design which has been made available to the public anywhere in the world and at any point in time, as a r esult of publication following registration or otherwise, exhibition, use in trade or otherwise, has been disclosed for the purpose of applying Articles 5 and 6 CDR (Article 7(1) CDR).
However, acts of disclosure of an ear lier design will not be t aken into consideration where the holder submits convincing facts, evidence and arguments in support of the view that these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union (Article 7(1) CDR; Article 63(1) CDR) (decision of 22/03/2012, R 1482/2009-3 – ‘Insulation blocks’, para. 38).
Other exceptions will be addressed at paragraphs 5.5.1.7 to 5.5.1.8 below.
5.5.1.2 Official publications
Publication of an earlier design in the bulletin of any industrial property office worldwide constitutes disclosure and it is only (‘except’) where this publication cannot reasonably become known to the professionals of the sector concerned within the European Union that the said rule is affected by an exception. Therefore, once proof of publication has been provided by the applicant, disclosure is assumed to have taken place and, considering the globalisation of the markets, it is incumbent on the holder to provide facts, arguments or evidence to the contrary, namely that publication of the earlier design could not reasonably have become known to the circles specialised in the sector concerned, operating within the European Union (decision of 27/10/2009, R 1267/2008-3 – ‘Watches’, para. 35 et seq; decision of 07/07/2008, R 1516/2007-3 – ‘Cans’, para. 9).
Publications in trademark and patent bulletins could equally have become known in the normal course of business to the circles in the sector concerned operating within the European Union. Therefore, where the appearance of a product has been applied for and published as a trademark, it is to be considered as a disclosure of a ‘design’ for the purpose of Article 7 CDR (judgment of 16/12/2010, T-513/09, ‘Seated figure’, para. 20). The same applies where the representations contained in a patent application show the appearance of an industrial or handicraft item (decision of 22/03/2010, R 417/2009-3 – ‘Drinking straws’, para. 21). However, the presence of a document kept by a patent and trade mark office, which is available to the public only by means of an application for inspection of files, cannot be considered to have become known in the normal course
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of business to the specialised circles in the sector concerned and therefore does not prove the disclosure a prior design in the meaning of Article 7 CDR ( decision of 22/03/2012, R 1482/2009-3 – ‘Insulation blocks’, paras. 39, 43; decision of 15/04/2013, R 442/2011-3 – ‘Skirting Boards’, para. 26).
In order to substantiate the disclosure, a registration certificate must specify the date of publication independently of the date of filing or the date of registration. The publication in the Official Bulletin of a national Patent Office must be considered as having been disclosed and made available to the public in accordance with Article 7(1) CDR (judgment of 07/11/2013, T-666/11, ‘feline’, para. 25). Whether or not the publication takes place before or after registration is irrelevant (decision of 15/04/2013, R 442/2011-3 – ‘Skirting Boards’, para. 24).
Moreover, it is enough that the date of publication can be identified by the mention of an INID code (‘Internationally agreed Numbers for the Identification of (bibliographic) Data’ as standardised by WIPO Standard ST.9. See decision of the Invalidity Division of 14/11/2006 (ICD 2061)).
5.5.1.3 Exhibitions and use in trade
Disclosure of a design at an international exhibition anywhere in the world is an event which may become known in the normal course of business to the circles in the sector concerned, operating within the European Union, except where evidence to the contrary is provided (decision of 26/03/2010, R 9/2008-3 – ‘Footwear’, para. 73-82; decision of 01/06/2012, R 1622/2010-3 – ‘Lamps’, para. 24). The question whether events taking place outside the European Union could reasonably have become known to persons forming part of those circles is a ques tion of fact. The answer to that question has to be assessed by OHIM on the basis of the particular circumstances of each individual case (judgment of 13/02/2014, C-479/12, ‘gazebo’, para. 34).
Use in trade is another example given in Article 7(1) CDR as a means for disclosure of a design, irrespective of whether this use is made within or outside the EU (decision of 26/03/2010, R 9/2008-3 – ‘Footwear’, para. 63-71).
Disclosure of a design can be the result of use in trade even where there is no proof on file that the products in which the earlier design is incorporated have actually been put on the market in Europe. It suffices that the goods have been o ffered for sale in distributed catalogues (decision of 22/10/2007, R 1401/2006-3 – ‘Ornamentation’, para. 25) or imported from a third country to the European Union (judgment of 14/06/2011, T-68/10, ‘Watch attached to a lanyard’, para. 31-32) or have been t he object of an ac t of purchase between two European operators (judgment of 09/03/2012, T-450/08, ‘Bottle’, para. 30-45).
As regards the submission of catalogues, their evidential value does not depend o n their being distributed to the public at large. Catalogues which are made available to professionals only can also be valid means of evidence, bearing in mind that the relevant public for assessing disclosure is the ‘circles specialised in the sector concerned’ (Article 7(1) CDR).
The extent of, or the circumstances surrounding the distribution of the catalogues can be relevant factors (judgment of 13/02/2014, C-479/12, ‘gazebo’, para. 35-36). However, what matters, in the context of Article 7 C DR, is whether the European professionals in the sector concerned, taken as a whole, have had a reasonable opportunity to have access to the design irrespective of the actual number of these
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professionals who seized this opportunity and were eventually confronted with the disclosed design.
The Office makes an overall assessment of all the documents submitted by the invalidity applicant for the purpose of assessing whether disclosure has been m ade, and including whether a catalogue is genuine and has been disseminated in the interested circles.
It is enough that the disclosure took place at a point in time which can be identified with reasonable certainty prior to the filing date or priority date of the contested Community design even if the exact date of disclosure is unknown (judgment of 14/06/2011, T-68/10, ‘Watch attached to a lanyard’, para. 31-32).
5.5.1.4 Disclosures derived from the internet
As a matter of principle, disclosures derived from the internet form part of the prior art. Information disclosed on the internet or in online databases is considered to be publicly available as of the date the information was posted. Internet websites often contain highly relevant information. Certain information may even be a vailable only on t he internet from such websites. This includes, for example, online publications of design registrations by industrial property offices.
The nature of the internet can make it difficult to establish the actual date on which information was in fact made available to the public. For instance, not all web pages mention when they were published. In addition, websites are easily updated, yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public to establish precisely what was published and when.
In this context, the date of disclosure on the internet will be c onsidered reliable in particular where:
• the web site provides timestamp information relating to the history of modifications applied to a file or web page (for example, as available for Wikipedia or as automatically appended to content, e.g. forum messages and blogs); or
• indexing dates are given to the web page by search engines (e.g. from the Google cache); or
• a screenshot of a webpage bears a given date; or
• information relating to the updates of a web page i s available from an internet archiving service.
Neither restricting access to a limited circle of people (e.g. by password protection) nor requiring payment for access (analogous to purchasing a boo k or subscribing to a journal) prevent a web page from forming part of the state of the art. It is sufficient if the web page is available without any bar of confidentiality and t he accessibility requirements can reasonably be m et by the European professionals of the circles concerned.
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5.5.1.5 Statements in writing, sworn or affirmed (affidavits)
As a matter of principle, affidavits in themselves are not sufficient to prove a fact such as the disclosure of an earlier design. They may, however, corroborate and/or clarify the accuracy of additional documents (decision of 14/10/2009, R 316/2008-3 – ‘Fireplaces’, para. 22. See by analogy judgment of 13/05/2009, T-183/08, ‘SCHUHPARK / SCHUHPARK’, para. 43).
In order to assess the evidential value of an affidavit, regard should be had first and foremost to the credibility of the account it contains. 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, on i ts face, the document appears sound and reliable (judgment of 09/03/2012, T-450/08, ‘Bottle’, para. 39-40).
Affidavits and other documentary evidence originating from parties having an interest in having the Community design being declared invalid have a lower probative value compared to documents having a neutral source (judgment of 14/06/2011, T-68/10, ‘Watch attached to a lanyard’, para. 33-36).
The Invalidity Division will apply the principles explained in The Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C Opposition, Section 6 Proof of Use, Chapter 3.3.2.3. Declarations.
5.5.1.6 Insufficient disclosure
The issue of the disclosure of the prior design is preliminary to that of whether the two designs produce the same overall impression on the informed user If the prior design has not been made available to the public or it has been made so but in an manner inconsistent with the requirements of Article 7(1) CDR, then there is sufficient reason for rejecting the application to the extent that it is based on Articles 5 and 6 C DR (decision of 10/03/2008, R 586/2007-3 – ‘Barbecues’, para. 22 et seq).
Neither the CDR nor the CDIR provides for any specific form of evidence required for establishing disclosure, Article 28(1)(b)(v) CDIR only provides that ‘documents proving the existence of those earlier designs’ must be submitted. Likewise, there are no provisions as to any compulsory form of evidence that must be furnished. Article 65 CDR lists possible means of giving evidence before the Office, but it is clear from its wording that this list is not exhaustive (‘shall include the following’). Accordingly, the evidence in support of disclosure is a matter for the discretion of the applicant and, in principle, any evidence able to prove disclosure can be accepted.
The Invalidity Division will carry out an overall assessment of such evidence by taking account of all the relevant factors in the particular case. Disclosure cannot be proven by means of probabilities or suppositions, but must be dem onstrated by solid and objective evidence of effective and sufficient disclosure of the earlier design (judgment of 09/03/2012, T-450/08, ‘Bottle’, para. 21-24).
A global examination of the items of evidence implies that these items must be assessed in the light of each other. Even if some items of evidence are not conclusive of disclosure in themselves, they may contribute to establishing the disclosure when
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examined in combination with other items (judgment of 09/03/2012, T-450/08, ‘Bottle’, para. 25 and 30-45).
The Invalidity Division is not required to determine through assumptions and deductions which earlier designs among those represented in the applicant’s documentary evidence may be relevant where the applicant does not provide further specifications in this respect (see paragraph 3.1.9.2 above). Earlier designs other than those specifically cited as relevant prior art by the applicant will therefore be disregarded (decision of 04/10/2006 (ICD 2228)).
Where the representation of the prior design fails to adequately represent it, thereby rendering any comparison with the contested design impossible, this does not amount to disclosure for the purpose of Article 7(1) CDR (decision of 10/03/2008, ‘Barbecues’, R 586/2007-3, para. 22 et seq.).
It is possible that, in certain circumstances, a disclosure to only one undertaking may be sufficient for considering that the design could reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union (judgment of 13/02/2014, C-479/12, ‘gazebo’, para. 35-36). This question has to be assessed by OHIM on a case by case basis.
5.5.1.7 Disclosure to a third person under explicit or implicit conditions of confidentiality
Disclosure of the Community design to a third person under explicit or implicit conditions of confidentiality shall not be deemed to have been made available to the public (Article 7(1) CDR).
Therefore, disclosure of a design to a third party in the context of commercial negotiations is ineffective if the parties concerned agreed that the information exchanged should remain secret (decision of 20/06/05 (ICD 172) para. 22).
The burden of proof for facts establishing confidentiality lies with the holder of the contested Community design.
5.5.1.8 Disclosure within the priority period
An application for a Community design may claim the priority of one or more previous applications for the same design or utility model in or for any State party to the Paris Convention, or to the Agreement establishing the World Trade Organisation (Article 41 CDR; Article 8 CDIR). The right of priority is six months from the date of filing of the first application.
The effect of the right of priority shall be that the date of priority will count as the date of filing of the application for a registered Community design for the purpose of Articles 5, 6, 7, 22, 25(1)(d) and 50(1) CDR (Article 43 CDR).
A priority claim relating to the ‘same design or utility model’ requires identity with the corresponding Community design without addition or suppression of features. A priority claim is however valid if the Community design and t he previous application for a design right or a utility model differ only in immaterial details.
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When examining an application for a Community design, the Office does not verify whether this application concerns the ‘same design or utility model’ whose priority is claimed.
The examination of a pr iority claim will, however, be carried out by the Office if the applicant challenges its validity or if the holder challenges the effects of the disclosure of a design, for the purpose of Articles 5, 6 and 7 CDR, where this disclosure occurred within the priority period.
Where the validity of the priority claim is determinative of the outcome of the application, the Office may either take position on t he validity of this claim in the decision on the merits of the case, or stay the proceedings on its own motion to allow the holder to remedy possible deficiencies within a g iven time limit (Article 45(2)(d) CDR; Article 1(1)(f), 10(3)(c)(7) and (8) CDIR).
The invalidity proceedings are resumed once the deficiencies are remedied or a final decision is taken on the loss of the right of priority (Article 46(1)(4) CDR) (see paragraph 4.1.6.2 above for the resumption of the proceedings).
5.5.1.9 Grace period
Article 7(2) CDR provides for a ‘grace period’ of 12 months preceding the date of filing or the priority date of the contested Community design. Disclosure of the Community design within such period will not be taken into consideration if it was made by the designer or its successor in title.
As a m atter of principle, the holder must establish that it is either the creator of the design upon w hich the application is based or the successor in title to that creator, failing which Article 7(2) CDR cannot apply (judgment of 14/06/2011, T-68/10, ‘Watch attached to a lanyard’, para. 26-29).
However, acts of disclosure made by a third person as a result of information provided or action taken by the designer or its successor in title are also covered by Article 7(2) CDR. This can be so where a third party made public a design copied from a design which was previously disclosed within the grace period by the holder itself (decision of 02/05/2011, R 658/2010-3 – ‘Lighting devices’, para. 37-39).
The exception provided at Article 7(2) CDR may apply even where the previously disclosed design is not strictly identical to the contested Community design, within the meaning of Article 5 CDR. This is so because the Article 7(2) CDR also provides for immunity against the loss of individual character pursuant to Article 6 CDR (decision of 02/05/2011, R 658/2010-3 – ‘Lighting devices’, para. 40).
The ‘grace period’ also applies where the disclosure of a des ign is the result of an abuse in relation to the designer or its successor in title (Article 7(3) CDR). Whether the disclosure is the result of fraudulent or dishonest behaviour will be assessed on a case- by-case basis on the basis of the facts, arguments and ev idence submitted by the parties (decision of 25/07/2009, R 0552/2008-3 – ‘MP3 player recorder’, para. 24 to 27).
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5.5.2 Assessment of novelty and individual character
A design will be protected as a Community design to the extent that it is new and has individual character (Article 4(1), 5 and 6 CDR). The novelty and individual character of a Community design must be examined on its date of filing or, as the case may be, on its date of priority, in the light of the relevant prior art. The relevant prior art is made up of the earlier designs whose disclosure, according to Article 7 CDR, was substantiated by the applicant (Article 63 CDR).
5.5.2.1 Common principles
Global comparison
The Community design must be compared with each and every earlier design relied on by the applicant, individually. Novelty and individual character of a Community design cannot be defeated by combining earlier designs or parts of earlier designs (judgment of 22/06/2010, T-153/08, ‘Communication equipment’, para. 23-24).
A combination of already disclosed features is, therefore, eligible to protection as a Community design provided this combination, as a whole, is novel and has individual character.
As a m atter of principle, all the features of a C ommunity design must be taken into consideration when examining its novelty and individual character. There are, however, a number of exceptions to this general principle.
Features dictated by a function and features of interconnection
Features which are solely dictated by a technical function and features which must necessarily be r eproduced in their exact form and di mensions in order to allow interconnection with another product cannot contribute to the novelty and individual character of a Community design. Such features must therefore be disregarded when comparing the Community design with the relevant prior art (Article 8 CDR, see paragraph 5.3.1 above).
The visibility requirement
Features of a Community design applied to, or incorporated in a ‘component part of a complex product’, will be disregarded if they are invisible during normal use of the complex product in question (Article 4(2) CDR).
‘Complex product’ means a product which is composed of multiple components which can be r eplaced, permitting disassembly and r e-assembly of the product (Article 3(c) CDR). For instance, the visibility requirement does not apply to a Community design representing the appearance of a garbage container as a whole since garbage containers may be complex products as such, but not component parts of complex products (decision of 23/06/2008 (ICD 4919)).
‘Normal use’ means use by the end user, excluding maintenance, servicing or repair work (Article 4(3) CDR). ‘Normal use’ is the use made in accordance with the purpose for which the complex product is intended.
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For instance, for safety reasons, an electrical connector is a component part which is normally incorporated in a casing in order to be shielded from any contact with potential users when a complex product, such as a train or electric vehicle, is in operation. The fact that such a component part of a complex product can theoretically be made visible when inserted in a t ransparent casing or cover constitutes a purely hypothetical and random criterion which must be disregarded (decision of 03/08/2009, R 1052/2008-3 – ‘Electrical contactors’, paras 42-53).
Where none of the features of a Community design applied to a component part (e.g. a sealing ring) is visible during normal use of the complex product (e.g. a heat pump system), this Community design will be i nvalidated as a w hole (decisions of 10/09/2013, R 293/2012-3 and R 688/2012-3 – ‘Heat exchanger inserts’)
However, Article 4(2) CDR does not require a component part to be clearly visible in its entirety at every moment of the use of the complex product. It is sufficient if the whole of the component can be seen some of the time in such a way that all its essential features can be apprehended (decision of 22/10/2009, R 0690/2007-3 – ‘Chaff cutters’, para. 21).
Where the features of a Community design applied to a c omponent part (e.g. an internal combustion engine) are only partially visible during normal use of the complex product (e.g. a lawnmower), the comparison with the relevant prior art must be limited to the visible parts. ‘During the normal use of a lawnmower, it is placed on the ground and the user stands behind the lawnmower. Thus, the user, standing behind the lawnmower sees the engine from the top and therefore sees principally the upper side of the engine. It follows that the upper side of the engine determines the overall impression produced by the engine’ (judgment of 09/09/2011, T-10/08, ‘Engine’, para. 20-22).
Clearly discernible features
Features of the Community design which are not clearly discernible in its graphical representation cannot contribute to its novelty or its individual character (Directive 98/71/EC of the European Parliament and the Council of 13 October 1998 on the legal protection of designs, Recital 11). Likewise, features of the prior design which are not of a sufficient quality allowing all the details to be discerned in the representation of the prior design cannot be taken in consideration for the purpose of Articles 5 and 6 CDR (decision of 10/03/2008, R 586/2007-3, ‘Barbecues’, para. 23-26).
Features of a prior design can be supplemented by additional features which were made available to the public in different ways, for instance, first, by the publication of a registration and, second, by the presentation to the public of a pr oduct incorporating the registered design in catalogues. These representations must however relate to one and the same earlier design (judgment of 22/06/2010, T-153/08, ‘Communication equipment’, para. 25-30).
Disclaimed features
Features of a C ommunity design which are disclaimed are disregarded for the purposes of comparing the designs. This applies to the features of a Community design represented with dotted lines, boundaries or colouring or in any other manner making
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clear that protection is not sought in respect of such features (judgment of 14/06/2011, T-68/10, ‘Watch attached to a lanyard’, para. 59-64).
In contrast, disclaimed features of an earlier registered design are taken into account when assessing the novelty and individual character of a contested Community design. In the context of Articles 5 and 6 CDR, it is immaterial whether the holder of the earlier registered design can claim protection in respect of such disclaimed features, provided they have been disclosed together with the earlier design as a whole.
5.5.2.2 Novelty
A Community design will be considered to be new if it is not predated by an identical design disclosed pursuant to Article 7 CDR. Designs shall be deemed to be identical if their features differ only in immaterial details (Article 5(2) CDR).
There is identity between the Community design and an earlier design where the latter discloses each and ev ery element constituting the former. The framework of the comparison is limited to the features making up the Community design. It is therefore irrelevant whether the earlier design discloses additional features. A Community design cannot be new if it is included in a more complex earlier design (decision of 25/10/11, R 978/2010-3 – ‘Part of a sanitary napkin’, para. 20-21).
However, the additional or differentiating features of the Community design may be relevant to decide whether this Community design is new, unless such elements are so insignificant that they may pass unnoticed.
An example of an i mmaterial detail is a slight variation in the shade of the colour pattern of the compared designs (decision of 28/07/09, R 0921/2008-3 – ‘Nail files’, para. 25). Another illustration is the display, in one of the two compared designs, of a label which is so small in size that it is not perceived as a relevant feature (decision of 08/11/2006, R 0216/2005-3 – ‘Cafetera’, para. 23-26), as in the following example:
Contested RCD No 5269-0001 (view No 2), courtesy of ISOGONA, S.L.
Earlier design
5.5.2.3 Individual character
A design will be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been m ade available to the public before the date of
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filing the application for registration or, if a p riority is claimed, the date of priority (Article 6(1) CDR).
The dissimilar or similar impression produced in the informed user can be defined as the absence or presence of a ‘déjà vu’ (see, by analogy, judgment of 7/11/2013, T-666/11, ‘Gatto domestico’, para. 29).
In assessing individual character, the degree of freedom of the designer in developing the design will be taken into consideration (Article 6(2) CDR).
The informed user
The status of ‘user’ implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended (judgment of 22/06/2010, T-153/08, ‘Communications equipment’, para. 46; judgment of 09/09/2011, T-10/08, ‘Internal combustion engine’, para. 24; judgment of 06/06/2013, T-68/11, ‘Watch dials’, para. 58).
The concept of ‘informed user’ lies somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge, and the sectorial expert, who is an expert with detailed technical expertise. Without being a designer or a technical expert (and therefore without necessarily knowing which aspects of the product concerned are dictated by technical function, as found in judgment of 22/06/2010, T-153/08, ‘Communication equipment’, para. 48) informed users are aware of the various designs which exist in the sector concerned, they possess a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of their interest in the products concerned, they show a relatively high degree of attention when they use them (judgment of 20/10/2011, C-281/10 P, ‘Representation of a circular promotional item’, para. 53 and 59; judgment of 22/06/2010, T-153/08, ‘Communications equipment’, para. 47; judgment of 20/10/2011, C-281/10 P, ‘Metal rappers’, para. 59; judgment of 06/06/2013, T-68/11, ‘Watch dials’, para. 59).
In other words, the informed user is neither a designer nor a technical expert. Therefore, an i nformed user is a pe rson having some awareness of the existing designs in the sector concerned, without necessarily knowing which aspects of that product are dictated by technical function.
The informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be i ncorporated (judgment of 09/09/2011, T-10/08, ‘Engine’, para. 25-27).
However, depending on t he nature of the product in which the Community design is incorporated (e.g. promotional items), the concept of informed user may include, firstly, a professional who acquires such products in order to distribute them to the final users and, secondly, those final users themselves (judgment of 20/10/2011, C-281/10 P, ‘Representation of a circular promotional item’, para. 54). The fact that one of the two groups of informed users perceives the designs at issue as producing the same overall impression is sufficient for a finding that the contested design lacks individual character (judgment of 14/06/2011, T-68/10, ‘Watch attached to a lanyard’, para. 56).
When the nature of the product in which the compared designs makes it possible, the overall impression left by these designs will be assessed on the assumption that the
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informed user can make a direct comparison between them (judgment of 18/10/2012, joint cases C-101/11P and C-102/11P, ‘Lutins’, paras. 54 and 55).
The overall impression
Unless the compared designs include functional or invisible or disclaimed features (see paragraph 5.5.2.1 above), the two designs must be compared globally. That does not mean, however, that the same weight should be g iven to all the features of the compared designs.
First, the informed user uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended. The relative weight to give to the features of the compared designs may therefore depend on how that product is used. In particular, the role played by some features may be less important depending on their reduced visibility when the product is in use (judgment of 22/06/2010, T-153/08, ‘Communication equipment’, para. 64-66 and 72; judgment of 21/11/2013, T-337/12, ‘corkscrew’, Paras 45-46; judgment of 04/02/2014, T-339/12, ‘Armchairs’, para. 30; judgment of 04/02/2014, T-357/12, ‘Armchairs’, para. 57).
Second, when appraising the overall impression caused by two designs, the informed user will only give minor importance to features that are totally banal and common to the type of product in issue and w ill concentrate on features that are arbitrary or different from the norm (judgment of 18/03/2010, T-9/07, ‘Representation of a circular promotional item’, para. 77; decision of 28/11/06, R 1310/2005-3 – ‘Galletas’, para. 13; decision of 30/07/2009, R 1734/2008-3 – ‘Forks’, para. 26 et seq.).
Third, similarities affecting features in respect of which the designer enjoyed a limited degree of freedom will have only minor importance in the overall impression produced by those designs on the informed user (judgment of 18/03/2010, T-9/07, ‘Representation of a circular promotional item’, para. 72).
As illustration, it was held that the RCD No 1512633-0001 created an ov erall impression which is different from that produced by the earlier design (RCD No 52113-0001). In an area in which the designer’s degree of freedom in developing his design is not limited by any technical or legal restraints, the General Court upheld the decision of the Board of Appeal which found that the differentiating features of the two below designs prevailed over their common points. In particular, the fact that the armchair of the prior design has a rectangular rather than square shape, that its seat is placed lower and that the arms are broader, was considered decisive in support of the conclusion that the contested RCD had individual character (judgment of 04/02/2014, T-339/12, ‘Armchairs’, paras 23-37).
According to the GC, account must be taken of the difference between the designs at issue as regards the angle of the backrest and the seat of the armchair represented in the contested design, bearing in mind that the overall impression produced on t he informed user must necessarily be determined in the light of the manner in which the product in question is used. Since an inclined backrest and seat will give rise to a different level of comfort from that of a straight back and seat, the use that will be made of that armchair by the circumspect user is liable to be affected thereby (judgment of 04/02/2014, T-339/12, ‘Armchairs’, para. 30).
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Contested RCD No 1512633-0001, courtesy of Sachi Premium – Outdoor Furniture, Lda.
Earlier RCD No 52113-0001, courtesy of Mr Esteve Cambra (Designer: Mr Jose Ramón Esteve Cambra)
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By contrast, the GC found that the RCD No 1512633-0003 lacked individual character in respect of the same earlier design. It was held that the differentiating features between the designs, including the presence in the contested RCD of three cushions, were outweighed by their common characteristics (the rectangular shape, the flat back and seat, the seats are positioned below the mid-section of the armchairs’ structure etc.)(judgment of 04/02/2014, T-357/12, ‘Armchairs’, paras 44-60).
The GC confirmed the view taken by the Board of Appeal (decision of 27/04/12, R 969/2011-3 – ‘Armchairs’) that the cushions are less important than the structure of the armchairs when assessing the overall impression caused by the designs because the cushions are not a fixed element but can be easily separated from the main product and because they are often sold and purchased separately, at a relatively low cost compared to that of the structure of an ar mchair. The informed user perceives the cushions as a mere optional accessory. They can hardly be considered to be ‘a significant part of the design’. Consequently the overall impression produced by the designs at issue is dominated by the structure of the armchairs itself and not by the cushions, which could be regarded as secondary elements (judgment of 04/02/2014, T-357/12, ‘Armchairs’, paras 37-38).
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Contested RCD No 1512633-0003, courtesy of Sachi Premium – Outdoor Furniture, Lda.
Earlier RCD No 52113-0001, courtesy of Mr Esteve Cambra (Designer: Mr Jose Ramón Esteve Cambra)
The degree of freedom of the designer
The designer’s degree of freedom depends on the nature and intended purpose of the product in which the design will be incorporated, as well as on the industrial sector to which this product belongs. The Invalidity Division will take into account the indication of the products in which the design is intended to be i ncorporated or to which it is intended to be applied (Article 36(2) CDR), but also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function (judgment of 18/03/2010, T-9/07, ‘Representation of a circular promotional item’, para. 56).
The designer’s degree of freedom in developing its design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned.
The greater the designer’s freedom in developing the challenged design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer’s freedom in developing the Community design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on the informed user (judgment of 18/03/2010, T-9/07, ‘Representation of a
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circular promotional item’, para. 67 and 72 ). Therefore, if the designer enjoys a hi gh degree of freedom in developing a des ign, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user (Judgment of 09/09/2011, T-10/08, ‘Engine’, para. 33).
The fact that the intended purpose of a given product requires the presence of certain features may not imply a restricted degree of freedom of the designer where the parties submit evidence that there are possibilities of variations in the positioning of such features and in the general appearance of the product itself (judgment of 14/06/2011, T-68/10, ‘Watch attached to a l anyard’, para. 69; judgment of 06/10/2011, T-246/10, ‘Brake’, para. 21-22; judgment of 09/09/2011, T-10/08, ‘Engine’, para. 37).
The degree of freedom of the design is not affected by the fact that similar designs co- exist on the market and form a ‘general trend’ or co-exist on the registers of Industrial Property Offices (judgment of 22/06/2010, T-153/08, ‘Communications Equipment’, para. 58; decision of 01/06/2012, R 0089/2011-3 – ‘Corkscrews’, para. 27).
5.6 Conflict with a prior design right
Pursuant to Article 25(1)(d) CDR, a Community design will be declared invalid if it is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date:
1. by a registered Community design or an application for such a design; or
2. by a registered design right of a Member State or by an appl ication for such a right; or
3. by a des ign right registered under the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, adopted in Geneva on 02/07/1999, hereinafter referred to as ‘the Geneva Act’, which was approved by Council Decision 954/2006 and which has effect in the Community, or by an application for such a right.
Article 25(1)(d) CDR must be i nterpreted as meaning that a Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design relied on (judgment of 18/03/2010, T-9/07, ‘Representation of a circular promotional item’, para. 52).
When dealing with an application based on Article 25(1)(d) CDR, the Invalidity Division will therefore apply the same test as for the assessment of individual character under Article 25(1)(b) read in combination with Article 6 CDR.
The Invalidity Division will assume that the prior design is valid unless the holder submits proof that a decision that has become final declared the prior design invalid before the adoption of the decision (see by analogy, judgment of 29/03/2011, C-96/09P, ‘BUD / bud’, para. 94-95) (see above under paragraph 4.1.6.2 Suspension).
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5.7 Use of an earlier distinctive sign
A Community design will be dec lared invalid if a di stinctive sign is used in a subsequent design, and the law of the Union or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use (Article 25(1)(e) CDR).
5.7.1 Distinctive sign
The notion of ‘distinctive sign’ encompasses registered trade marks as well as all signs which could be relied on in the context of Article 8(4) CTMR (see The Manual, Part C, Opposition, Section 4, ‘Article 8(4) CTMR’, paragraph 3.1 Types of rights falling under Article 8(4) CTMR).
5.7.2 Use in a subsequent design
The notion of ‘use in a subsequent design’ does not necessarily presuppose a full and detailed reproduction of the earlier distinctive sign in a subsequent Community design. Even though the Community design may lack certain features of the earlier distinctive sign or may have different additional features, this may constitute ‘use’ of that sign, particularly where the omitted or added features are of secondary importance and are unlikely to be noticed by the relevant public. It is enough that the Community design and the earlier distinctive sign be s imilar (judgment of 12/05/2010, T-148/08, ‘Instrument for writing’, para. 50-52; judgment of 25/04/2013, T-55/12, ‘Cleaning device’, para. 23; decision of 09/08/11, R 1838/2010-3 – ‘Instrument for writing’, para. 43).
Where a Community design includes a distinctive sign without any disclaimer making clear that protection is not sought in respect of such feature, it will be considered that the Community design makes use of the earlier distinctive sign even if the latter is represented in only one of the views (decision of 18/09/07, R 137/2007-3 – ‘Containers’, para. 20).
5.7.3 Substantiation of the application under Article 25(1)(e) CDR (earlier distinctive signs)
Apart from the elements required under Article 28 CDIR for admissibility purposes (see paragraph 3.9.2 above), an application must contain:
• particulars establishing the content of the law of the national law of which the applicant is seeking application including, where necessary, court decisions and/or academic writings (the principles established in The Guidelines, Part C, Opposition, Section 4, ‘Article 8(4) CTMR’, paragraph 4 Evidence and Standard of Proof will apply). Where an application for invalidity is based on the rights held on an earlier Community trade mark, the submission of the law and case-law relating to Community trade marks is not a requirement for the substantiation of this earlier right; and
• where the earlier distinctive sign is unregistered, particulars showing that rights have been ac quired on t his unregistered distinctive sign pursuant to the law
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relied on, as a result of use or otherwise, before the filing date or the priority date of the Community design (see, by analogy, judgment of 18/01/12, T-304/09, ‘BASMALI’ para. 22); and
• particulars showing that the applicant satisfies the necessary conditions, in accordance with that law, in order to be able to have the use of a Community design prohibited by virtue of its earlier right (see by analogy, judgment of 05/07/11, C-263/09 P, ‘ELIO FIORUCCI’, para. 50).
The applicant must establish only that it has available a right to prohibit use of the subsequent Community design and that it cannot be required to establish that that right has been used, in other words that the applicant has actually been able to prohibit such use (see by analogy, judgment of 05/07/11, C-263/09 P, ‘ELIO FIORUCCI’ para. 191).
5.7.4 Examination by the Invalidity Division
Where the national provision relied on by the applicant represents the transposition of a corresponding provision of Directive 2008/95/EC of 22 O ctober 2008 t o approximate the laws of the Member States relating to trade marks (codified version), the former will be interpreted in the light of the case-law relating to the interpretation of the latter (judgment of 12/05/2010, T-148/08, ‘Instrument for writing’, para. 96).
Furthermore, where the national provision relied on r epresents the transposition of Article 5(1) and (2) of Directive 2008/95/EC, the Invalidity Division will apply the principles established in The Guidelines concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part C Opposition, Section 2 Identity and Likelihood of Confusion and Section 5 Trade Marks with Reputation, since Article 5(1) and (2) of Directive 2008/95/EC is identical in substance to Article 8(1) and (5) CTMR.
For the purpose of applying these provisions, the Invalidity Division will assume that the contested Community design will be perceived by the relevant public as a sign capable of being used ‘for’ or ‘in relation to’ goods or services (judgment of 12/05/2010, T-148/08, ‘Instrument for writing’, para. 107; judgment of 25/04/2013, T-55/12, ‘Cleaning device’, para. 39 and 42).
The Invalidity Division will also assume that the earlier distinctive sign is valid unless the holder submits proof that a decision that has become final declared this earlier distinctive sign invalid before the adoption of the decision (judgment of 25/04/2013, T-55/12, ‘Cleaning device’, para. 34) (see above under paragraph 4.1.6.2 Suspension).
As distinctive signs are protected in respect of certain goods or services, the Invalidity Division will examine in respect of which goods the contested Community design is intended to be used (judgment of 12/05/2010, T-148/08, ‘Instrument for writing’, para. 108). For the purpose of determining whether these goods and services are identical or similar, the Invalidity Division will take into account the indication of the products in which the design is intended to be incorporated or to which it is intended to be applied (Article 36(2) CDR), and also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function (judgment of 18/03/2010, T-9/07, ’Representation of a circular promotional item’, para. 56; decision of 07/11/11, R 1148/2010-3 – ‘Packaging’, para. 34-37). The assessment of the similarity of the goods will be made on the basis of the principles defined in The Guidelines concerning Proceedings before the Office for Harmonization
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in the Internal Market (Trade Marks and Designs), Part C Opposition, Section 2 Identity and Likelihood of Confusion, Chapter 2 Comparison of Goods and Services).
Where the Community design is intended to be incorporated in two-dimensional ‘logos’, the Invalidity Division will consider that such logos may be applied to an infinite range of products and services, including the products and services in respect of which the earlier distinctive sign is protected (decision of 03/05/07, R 609/2006-3 – ‘logo MIDAS’, para. 27).
5.8 Unauthorised use of a work protected under the c opyright law of a Member State
A Community design will be declared invalid if it constitutes an unauthorised use of a work protected under the copyright law of a Member State.
5.8.1 Substantiation of the application under Article 25(1)(f) CDR (earlier copyright)
Apart from the elements required under Article 28 CDIR for admissibility purposes (see paragraph 3.9.2 above), an application must contain:
• particulars establishing the content of the national law of which the applicant is seeking application including, where necessary, court decisions and/or academic writings (see, by analogy, judgment of 05/07/2011, C-263/09 P, ‘ELIO FIORUCCI’, para. 50; decision of 11/02/08, R 64/2007-3 – ‘Loudspeakers’, para. 20); and
• particulars showing that rights have been acquired on the work pursuant to the copyright law relied on, to the benefit of the author or its successors in title, before the filing date or the priority date of the Community design (see, by analogy, judgment of 18/01/12, T-304/09, ‘BASMALI’, para. 22); and
• particulars showing that the applicant satisfies the necessary conditions, in accordance with that law, in order to be abl e to have the Community design invalidated or its use prohibited by virtue of its earlier right.
An invalidity applicant relying on copyright infringement has to prove its entitlement to the right to invoke copyright against the RCD as well as the existence and scope of the copyright under national law (decision of 17/10/2013, R 951/2012-3 – children’s chairs).
5.8.2 Examination by the Invalidity Division
Given that copyright protection may not, according to the national law relied on, depend on the publication or disclosure of the work, the Invalidity Division will only declare a Community design invalid under Article 25(1)(f) CDR in the clearest of cases.
In particular, it would not be appr opriate to use Article 25(1)(f) CDR when the applicant’s essential argument is that the Community design was created, not by the registered holder, but by the applicant or by an employee of the applicant (decision of 11/02/08, R 64/2007-3 – ‘Loudspeakers’, para. 20). Article 25(1)(f) CDR cannot be
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used as a means to circumvent the exclusive competence of national courts regarding the entitlement to the Community design (Article 15 and 25(1)(c) CDR).
The object of the examination is to ascertain whether an unauthorised use of a work protected by the copyright legislation of a member state has occurred and not to establish whether the design possesses novelty or individual character in the sense of Article 5 and 6 CDR (see by analogy judgment of 23/10/2013, T-566/11 and T-67/11, ‘Vajilla’, para. 73)
5.9 Partial invalidity
According to Article 25(6) CDR, a r egistered Community design which has been declared invalid pursuant to any of the grounds under Article 25(1)(b), (e), (f) or (g) CDR may be m aintained in an am ended form, if in that form it complies with the requirements for protection and the identity of the design is retained.
The request for maintenance in an amended form of a registered Community design must be made by the holder before the end of the written procedure. The request must include the amended form. The proposed amended form may consist of an amended representation of the Community design from which some features are removed or making clear by means inter alia of dotted lines or colouring that protection is not sought in respect of such features. The amended representation may include a partial disclaimer not exceeding 100 words (Article 25(6) CDR; Article 18(2) CDIR).
The applicant will be g iven an oppor tunity to comment on w hether the Community design in its amended form complies with the requirements for protection and whether the identity of the design is retained (see paragraph 4.1.4.1 above).
The identity of the Community design must be retained. Maintenance in an amended form will therefore be limited to cases in which the features removed or disclaimed do not contribute to the novelty or individual character of a C ommunity design, in particular:
• where the Community design is incorporated in a product which constitutes a component part of a complex product and the removed or disclaimed features are invisible during normal use of this complex product (Article 4(2) CDR); or
• where the removed or disclaimed features are dictated by a f unction or by interconnection purposes (Article 8(1) and (2) CDR; or
• where the removed or disclaimed features are so insignificant in view of their size or importance that they are likely to pass unnoticed in the perception of the informed user.
The decision to maintain the Community design in an amended form will be included in the decision on the merits terminating the invalidity proceedings.
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5.10 Grounds of invalidity which become applicable merely because of the accession of a new Member State
See the Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Designs, Examination of Applications for Registered Community Designs, Section 13 Enlargement and t he Registered Community Design.
6 Termination of the Proceedings
6.1 Termination of proceedings without decision on the merits
The invalidity proceedings are terminated without a decision on the merits, where:
1. the applicant withdraws its application as a result of amicable settlement or otherwise; or
2. the holder surrenders the Community design in its entirety and the applicant did not request the Office to adopt a decision on the merits of the case (Article 24(2) CDR; see paragraph 3.8); or
3. the contested Community design has lapsed and the applicant did not request the Office to adopt a decision on the merits of the case (Article 24(2) CDR; see paragraph 3.8); or
4. the Invalidity Division suspended a num ber of applications for a declaration of invalidity, relating to the same registered Community design. These applications shall be deemed to be disposed of once a decision declaring the invalidity of the Community design has become final (Article 32(3) CDIR).
The Invalidity Division informs the parties that the proceedings are terminated without decision on the merits.
6.2 Decision on costs
6.2.1 Cases where a decision on costs must be taken
If a decision on the merits of the case is taken, the decision on apportionment of costs is given at the end of the decision (Article 79(1) CDIR).
In all other cases where the Invalidity Division closes the case without a decision on the merits, a separate decision on costs is issued on request of any of the parties. In such a case, the Invalidity Division informs both parties when it will render a decision on costs. The parties may submit arguments on the apportionment of the costs.
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6.2.2 Cases where a decision on costs is not to be taken
6.2.2.1 Agreement on costs
Whenever the parties inform the Invalidity Division that they have settled the invalidity proceedings with an agreement that includes the costs, the Invalidity Division will not issue a decision on costs (Article 70(5) CDR).
If no i ndication is given as to whether the parties have agreed on the costs, the Invalidity Division will take a dec ision on c osts, together with the confirmation of the withdrawal of the application. If the parties inform the Invalidity Division that they had reached an agreement on costs after the withdrawal of the application, the already issued decision on costs will not be revised by the Invalidity Division. It is, however, left to the parties to respect the agreement and n ot to enforce the Invalidity Division’s decision on costs.
6.2.2.2 Apportionment of costs
The general rule is that the losing party, or the party who terminates the proceedings by surrendering the Community design or by maintaining it in an amended form or by withdrawing the application, shall bear the fees incurred by the other party as well as all costs incurred by it essential to the proceedings (Article 70(1) and (3) CDR).
If both parties lose in part, a ‘different apportionment’ has to be decided (Article 70(2) CDR). As a general rule, it is equitable that each party bears its own costs.
Where a number of applications for a declaration of invalidity, relating to the same registered Community design, have been suspended, they are deemed to be disposed of once a decision declaring the invalidity of the Community design has become final. Each applicant whose application is deemed to have been disposed of will bear its own costs (Article 70(4) CDR). In addition, the Office will refund 50% of the invalidity fee (Article 32(4) CDIR).
6.2.2.3 Fixing of costs
Recoverable costs regarding representation and fees
Where the costs are limited to representation costs and the application fee, the decision fixing the amount of costs will be included in the decision on t he apportionment of the costs.
The amount to which the winning party is entitled to claim is mentioned at Article 70(1) CDR and Article 79(6) and (7) CDIR.
As regards fees, the recoverable amount is limited to the invalidity fee of EUR 350 if the applicant wins.
As regards representation costs, the recoverable amount is limited to EUR 400. This applies both to the applicant and the holder, under the condition that it was represented in the invalidity proceedings by a pr ofessional representative within the meaning of Article 77 CDR. The winning party who is no longer represented by a pr ofessional representative at the time of taking a decision is also entitled to an award of costs
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regardless of the stage of the proceedings when professional representation ceased. This is without prejudice to the need to appoint a professional representative where it is mandatory. The amount to be borne by the losing party is always fixed in Euro, regardless of the currency in which the winning party had to pay its representative.
Representation costs for employees, even from another company with economic connections, are not recoverable.
Other recoverable costs
Where the costs include expenses in relation to an oral hearing or the taking of evidence, the registry of the Invalidity Division will, on r equest, fix the amount of the costs to be paid (Article 70(6) CDR). A bill of costs, with supporting evidence, shall be attached to the request for the fixing of costs (Article 79(3) CDIR).
The amount of recoverable costs may be r eviewed by a dec ision of the Invalidity Division on a reasoned request filed within one month of the date of notification of the awarding of costs (Article 70(6) CDR; Article 79(4) CDIR).
Fixing of costs after remittance of the case to the Invalidity Division for further prosecution
When the invalidity decision has been annul led, wholly or partly, and the case is remitted by the Boards of Appeal, the situation will be as follows:
• the first decision (which was appealed) has not become final, even not as regards apportionment or fixing of costs;
• as regards the costs of the invalidity proceedings, one single decision on the apportionment and on t he fixing of costs must be t aken for the invalidity procedure as a whole;
• as regards the costs of the appeal procedure, it has to be ascertained whether the Boards adjudicated on them. The notion of ‘winning party’ has to be applied to the outcome of the appeal proceedings with the result that the decision can be different for the two instances. The amount of reimbursable representation costs for the appeal procedure is EUR 500, which apply in addition to the representation costs for the invalidity proceedings.
6.3 Correction of mistakes and entry in the register
In decisions of the Invalidity Division, only linguistic errors, errors of transcription and obvious mistakes may be corrected. They will be corrected by the Invalidity Division, acting of its own motion or at the request of an interested party (Article 39 CDIR).
6.3.1 Correction of mistakes
In decisions of the Invalidity Division, only linguistic errors, errors of transcription and obvious mistakes may be corrected. They will be corrected by the Invalidity Division, acting of its own motion or at the request of an interested party (Article 39 CDIR).
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6.3.2 Entry into the register
The date and c ontent of the decision on t he application or any other termination of proceedings will be ent ered into the Register once it is final (Article 53(3) CDR, Article 69(3)(q) CDIR).
7 Appeal
7.1 Right to appeal
Any party to invalidity proceedings has the right to appeal against a d ecision which affects this party adversely. A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows separate appeal. Any written communication of such a decision will include a notice that the decision may be appealed within two months from the date of receipt of the notification of the decision. Appeals have suspensive effect (Article 55 CDR).
7.2 Revision
Revision can be g ranted where an appeal has been l odged against a dec ision for which the Boards of Appeal are competent pursuant to Article 55 CDR.
If the division or instance of the Office whose decision is appealed considers the appeal to be admissible and w ell founded, it shall rectify its decision. This shall not apply where the appellant is opposed by other parties to the proceedings (Article 58(1) CDR).
If the decision is not rectified within one month after receipt of the statement of grounds of the appeal, the appeal will be remitted to the Boards of Appeal without delay, and without comment as to its merits (Article 58(2) CDR).
The purpose of revision is to avoid that the Boards of Appeal are seized with appeals against decisions with regard to which the need of rectification has been recognised by the Invalidity Division. However, the purpose of revision is not to remove mistakes in decisions of the Invalidity Division without changing the outcome of a case, but to grant the appellant the relief it seeks.
The principles applying to revision in respect of decisions adopted by the Opposition Division apply mutatis mutandis to the decisions adopted by the Invalidity Division (see The Guidelines concerning Proceedings before the Office in the Internal Market (Trade Marks and Designs), Part A General Rules, Section 7 Revision).
OFICINA DE ARMONIZACIÓN DEL MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS)
El Presidente
DECISIÓN Nº EX-14-4 DEL PRESIDENTE DE LA OFICINA de 2 de diciembre de 2014
por la que se adoptan las Directrices relativas al examen que la Oficina de Armonización del Mercado Interior (Marcas, Dibujos y Modelos) habrá de llevar a
cabo sobre las Marcas Comunitarias y los Dibujos y Modelos Comunitarios Registrados
EL PRESIDENTE DE LA OFICINA DE ARMONIZACIÓN DEL MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS)
Visto el Reglamento (CE) nº 207/2009 del Consejo, de 26 de febrero de 2009, sobre la marca comunitaria (en lo sucesivo, «RMC») y, en particular, su artículo 138, apartado 2, letra a), y el Reglamento (CE) nº 6/2002 del Consejo, de 12 de diciembre de 2001, sobre los dibujos y modelos comunitarios (en lo sucesivo, «RDC») y, en particular, su artículo 100,
Previa consulta al Consejo de Administración, de conformidad con el artículo 126, apartado 4, del RMC y el artículo 101, letra b), del RDC.
HA ADOPTADO LA SIGUIENTE DECISIÓN:
Artículo 1
Quedan adoptadas las Directrices relativas al examen que la Oficina de Armonización del Mercado Interior (Marcas, Dibujos y Modelos) habrá de llevar a cabo sobre las Marcas Comunitarias y los Dibujos y Modelos Comunitarios Registrados que figuran en anexo a la presente Decisión.
Nuevas partes de las Directrices:
A) MARCA COMUNITARIA:
Parte A: Disposiciones generales Sección 3: Pago de tasas y costas Sección 5: Representación profesional
Parte B: Examen Sección 2: Examen de formalidades Sección 4: Motivos de denegación absolutos [artículo 7, apartado 1, letras a), b), c), d), e) y artículo 7, apartado 3]
Parte C: Oposición Sección 0: Introducción Sección 1: Aspectos procesales Sección 2: Doble identidad y riesgo de confusión
Capítulo 1: Metodología y principios generales Capítulo 2: Comparación de productos y servicios
Capítulo 3: Comparación de signos Capítulo 4: Carácter distintivo Capítulo 5: Carácter dominante Capítulo 6: Público destinatario y grado de atención Capítulo 7: Otros factores Capítulo 8: Apreciación global
Sección 6: Prueba del uso
Parte D: Anulación Sección 1: Procedimientos de anulación
Parte E: Operaciones de registro Sección 2: Transformación Sección 4: Renovación Sección 5: Consulta pública Sección 6: Otras inscripciones en el Registro
Capítulo 1: Reconvención
B) DIBUJOS O MODELOS COMUNITARIOS REGISTRADOS
Examen de solicitudes de nulidad de los Dibujos y Modelos Comunitarios Registrados
Artículo 2
Las prácticas de la Oficina recogidas en las Directrices anteriores de la OAMI en materia de marcas así como de dibujos y modelos, en la medida en que correspondan a las Partes mencionadas en el artículo 1, quedan derogadas.
Artículo 3
Las Directrices mencionadas en el artículo 1, apartado 1, se publicarán en el Diario Oficial de la Oficina.
Artículo 4
La presente Decisión se publicará en el Diario Oficial de la Oficina y entrará en vigor el 1 de febrero de 2015.
Hecho en Alicante, el 2 de diciembre de 2014
António Campinos Presidente
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS Y
LOS DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS
NOTA EDITORIAL E INTRODUCCIÓN GENERAL
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Índice
1 Objeto ......................................................................................................... 3
2 Objetivo de las directrices ........................................................................ 3
3 Proceso de revisión de las directrices .................................................... 4
4 Estructura de las directrices .................................................................... 5
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1 Objeto
El Reglamento (CE) nº 40/94 del Consejo, de 20 de diciembre de 1993, en su versión modificada y codificada por el Reglamento (CE) nº 207/2009 del Consejo, de 26 de febrero de 2009, (RMC), estableció, paralelamente a los sistemas nacionales, un sistema comunitario de marca destinado a hacer desaparecer uno de los principales obstáculos con los que tropieza el desarrollo del mercado único europeo. El Reglamento (CE) nº 6/02 del Consejo, de 12 de diciembre de 2001, (RDC), hizo lo mismo con los dibujos y modelos comunitarios. Hasta entonces el derecho que reglamentaba el registro y el uso de las marcas o dibujos y modelos había sido únicamente nacional y hacía difícil el uso de la misma marca o dibujo y modelo en toda la Unión Europea.
La Oficina de Armonización del Mercado Interior (Marcas, Dibujos y Modelos) (la OAMI o la Oficina), con sede en Alicante, es la encargada del registro de las marcas comunitarias (MC) y de los dibujos y modelos comunitarios registrados (DMC). Estos registros confieren a las marcas, dibujos y modelos una protección uniforme en toda la Unión Europea.
La Oficina aplica los procedimientos de registro (incluido el examen de las solicitudes de motivos de denegación absolutos y, cuando se haya presentado un escrito de oposición contra una solicitud de marca comunitaria, los motivos de denegación relativos), mantiene los registros públicos de estos derechos y resuelve sobre las solicitudes de declaración de nulidad de los mismos después de su registro. Las directrices de la Oficina abarcan la totalidad de las prácticas en todas estas áreas.
2 Objetivo de las directrices
El objetivo de las directrices sobre la marca comunitaria y de las directrices sobre dibujos y modelos comunitarios consiste en mejorar la coherencia, la previsibilidad y la calidad de las decisiones de la Oficina. Las directrices están diseñadas para aunar de forma sistemática los principios de las prácticas derivadas de la jurisprudencia del Tribunal de Justicia de la Unión Europea, de la jurisprudencia de las Salas de Recurso de la Oficina, de las resoluciones del Departamento de Operaciones de la Oficina y del resultado de los Programas de Convergencia de la Oficina con las oficinas de PI de la Unión Europea. Ofrecen una fuente única de referencia sobre las prácticas de la Oficina con respecto a las marcas comunitarias y los dibujos y modelos comunitarios y se han redactado con criterio pragmático para que sirvan al personal de la Oficina encargado de los diferentes procedimientos y a los usuarios de los servicios de la Oficina.
Las directrices se han formulado con la intención de reflejar las prácticas de la Oficina en las situaciones más frecuentes. Solo contienen instrucciones generales que se deben adaptar a las particularidades de cada caso. Así pues, no son textos de carácter legislativo y, por tanto, no son vinculantes. En caso necesario, las partes, igual que la Oficina, deben remitirse al RMC, al RCD y a sus respectivos Reglamentos de ejecución, al Reglamento de tasas, al Reglamento (CE) nº 216/96 de la Comisión, de 5 de febrero de 1996, por el que se establece el reglamento de procedimiento de las salas de recurso y, por último, a la interpretación que de ellos han dado las salas de recurso y el Tribunal de Justicia de la Unión Europea, incluido el Tribunal General.
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Puesto que la jurisprudencia está en constante evolución, las directrices deberán evolucionar también. Se deberán adaptar anualmente en función de la evolución de la práctica de la Oficina por medio de un ejercicio continuo de revisión (véase infra el apartado 3).
3 Proceso de revisión de las directrices
En tanto que fuente única de referencia sobre las prácticas de la Oficina relativas a las marcas comunitarias y a los dibujos y modelos comunitarios, las directrices están disponibles en todas las lenguas oficiales de la Unión Europea. Se revisan en los Círculos de conocimiento de los distintos departamentos de la Oficina mediante un proceso cíclico y abierto: «cíclico», porque las prácticas se actualizan anualmente examinando la jurisprudencia del año anterior, teniendo en cuenta las necesidades operativas y el resultado de las iniciativas de convergencia, y «abierto», porque las partes interesadas externas participan en la definición de las prácticas.
La participación de las oficinas nacionales y de las asociaciones de usuarios no solo beneficia a la calidad de las directrices, sino que también se espera que facilite la convergencia, es decir, el proceso de exploración de los aspectos comunes en aquellos temas en los que divergen las prácticas. Gracias a la publicación de las directrices en todas las lenguas de la Unión Europea, mejorará el conocimiento sobre las prácticas de la Oficina entre los Estados miembros y los usuarios y se facilitará la identificación de las diferencias en cuanto a las prácticas.
El trabajo anual se divide en dos «paquetes de trabajo»: el Paquete de trabajo 1 (PT1) se desarrolla en un período de doce meses cada año, de enero a diciembre, y el Paquete de trabajo 2 (PT2) en un período de doce meses cada año, de julio a junio.
Este proceso consta de las siguientes fases:
a. Iniciación de actualización por las partes interesadas
Siendo conocedores de los planes de revisión de la Oficina, en particular qué se va a revisar y cuándo, se invita a las oficinas nacionales y a las asociaciones de usuarios a presentar sus comentarios antes de enero (para el PT1) y antes de julio (para el PT2). Los comentarios que no se reciban a tiempo se tendrán en cuenta durante el siguiente ciclo o se podrán presentar durante la fase c.
b. Preparación del borrador de las directrices por parte de la Oficina
Durante esta fase, los Círculos de conocimiento de la Oficina crean el borrador de las directrices. El proceso comienza cada año en enero (para el PT1) y en julio (para el PT2). Se tienen en cuenta los comentarios e información presentados anteriormente por los usuarios. Deben completarse los tres pasos del proceso- análisis, redacción y debate- a su debido tiempo. Para el análisis, los Círculos de conocimiento extraen tendencias de la jurisprudencia del año anterior, estudian las conclusiones de los proyectos de convergencia y tienen en cuenta los comentarios de los usuarios de la Oficina, así como de las partes interesadas internas. En el siguiente paso, los Círculos de conocimiento redactan las directrices. Por último, las diferentes unidades y departamentos de la Oficina debaten sobre los textos.
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c. Aprobación de las directrices
En esta última fase, el borrador de las directrices se envía para su traducción a las lenguas de la Oficina. Los textos y las traducciones se envían a las asociaciones de usuarios y a las oficinas de PI de la Unión Europea con el objeto de recibir comentarios antes de la siguiente reunión del Consejo de Administración (CA) de la Oficina. Después de consultar al CA, de acuerdo con el artículo 126, apartado 4, del RMC y el artículo 101, letra b), del RCD, el Presidente aprueba la actualización de las directrices. Se pretende que el texto oficial, compuesto por las versiones en las cinco lenguas de la Oficina, se publique en enero (PT1) y en julio (PT2) de cada año. En caso de discrepancias entre las versiones de las diferentes lenguas, prevalece la versión de la lengua de redacción (inglés). Una vez aprobadas, las directrices se traducirán al resto de lenguas oficiales de la Unión Europea por cortesía y transparencia. Estas traducciones adicionales se publicarán en el sitio web de la Oficina. Las partes interesadas externas, ya sean oficinas nacionales o asociaciones de usuarios, podrán realizar comentarios sobre su calidad; las modificaciones lingüísticas efectuadas como resultado de estos comentarios informales se incorporarán a los textos sin llevar a cabo ningún procedimiento formal.
d. Procedimiento por la vía rápida
Cuando un evento externo importante tiene un efecto inmediato sobre las prácticas de la Oficina (por ejemplo, algunas sentencias del Tribunal de Justicia), la Oficina puede modificar las directrices mediante un procedimiento por la vía rápida fuera de los plazos normales indicados anteriormente. Sin embargo, este procedimiento es excepcional. Como el proceso es cíclico, estos cambios estarán siempre abiertos a comentarios y a revisiones en el siguiente ciclo.
4 Estructura de las directrices
A continuación se indican los temas tratados en el PT1 y en el PT2, respectivamente. En circunstancias excepcionales, algunos elementos de las prácticas pueden cambiar de un PT al otro. En caso de que suceda tal cambio, se comunicará a las partes interesadas.
MARCA COMUNITARIA:
PT1 PT2
Parte A: Disposiciones generales Parte A: Disposiciones generales
Sección 3, Pago de las tasas, costas y gastos Sección 1, Medios de comunicación, plazos
Sección 5, Representación profesional Sección 2, Principios generales que han de respetarse en el procedimiento
Sección 4, Lengua de procedimiento
Sección 6, Revocación de resoluciones, anulación de inscripciones en el registro y corrección de errores
Sección 7, Revisión
Sección 8, Restitutio in Integrum
Sección 9, Ampliación
Nota editorial e introducción general
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Parte B: Examen Parte B: Examen
Sección 2, Formalidades Sección 1, Procedimientos
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra a)
Sección 3, Clasificación
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra b)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra f)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra c)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra g)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra d)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1), letras h) e i)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letra e)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 1, letras j) y k)
Sección 4, Motivos de denegación absolutos artículo 7, apartado 3
Sección 4, Marcas colectivas
Parte C: Oposición Parte C: Oposición
Sección 0, Introducción
Sección 1, Aspectos procesales
Sección 3, Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC)
Sección 2, Doble identidad y riesgo de confusión.
Capítulo 1, Principios generales y metodología
Sección 4, Derechos contemplados en el artículo 8, apartado 4, del RMC
Sección 5, Marcas renombradas artículo 8, apartado 5, del RMC
Capítulo 2, Comparación de productos y servicios
Capítulo 3, Comparación de los signos
Capítulo 4, Carácter distintivo
Capítulo 5, Carácter dominante
Capítulo 6, Público destinatario y grado de atención
Capítulo 7, Otros factores
Capítulo 8, Apreciación global
Sección 6, Prueba del uso
Parte D: Anulación Parte D: Anulación
Sección 1, Procedimientos de anulación Sección 2, Normas sustantivas
Parte E: Operaciones de registro Parte E: Operaciones de registro
Sección 2, Transformación Sección 1, Cambios en un registro
Sección 4, Renovación Sección 3, Las marca comunitaria como objeto de propiedad
Sección 5, Consulta pública Capítulo 1, Cesión
Sección 6, Otras inscripciones en el Registro Capítulo 2, Licencias
Capítulo 1, Reconvención Capítulo 3, Derechos reales
Capítulo 4, Ejecución forzosa
Capítulo 5, Procedimientos de insolvencia o
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similares
Parte M: Marcas internacionales
DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS:
PT1 PT2
Examen de Solicitudes de Nulidad de Dibujos y Modelos Examen de las solicitudes de Dibujos y Modelos Comunitarios Registrados
Renovación de Dibujos y Modelos Comunitarios Registrados
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE A
DISPOSICIONES GENERALES
SECCIÓN 3
PAGO DE LAS TASAS, COSTAS Y GASTOS
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Índice
1 Introducción............................................................................................... 3
2 Modalidades de pago ................................................................................ 4 2.1 Pago mediante transferencia bancaria ..................................................... 4
2.1.1 Cuenta bancaria ............................................................................................. 4 2.1.2 Datos que deberán acompañar al pago ......................................................... 5
2.2 Pago mediante tarjeta de débito o de crédito...........................................7
3 Momento del pago..................................................................................... 9
4 Fecha en la que se considerará efectuado el pago .............................. 10 4.1 Pago mediante transferencia bancaria ................................................... 10
4.1.1 Retraso en el pago con o sin recargo .......................................................... 10 4.1.2 Prueba y fecha del pago............................................................................... 11
4.2 Pago mediante tarjeta de débito o de crédito......................................... 12 4.3 Pago a través de la cuenta corriente....................................................... 12
5 Reembolso de las tasas.......................................................................... 12 5.1 Reembolso de la tasa de solicitud .......................................................... 13 5.2 Reembolso de la tasa de oposición ........................................................ 13 5.3 Reembolso de las tasas de marcas internacionales que designan a la
UE .............................................................................................................. 14 5.4 Reembolso de las tasas de recurso........................................................ 14 5.5 Reembolso de las tasas de renovación .................................................. 14 5.6 Reembolso de importes insignificantes ................................................. 15
6 Resolución sobre costas ........................................................................ 15 6.1 Reparto de las costas .............................................................................. 15 6.2 Fijación de las costas .............................................................................. 15 6.3. Ejecución de las resoluciones sobre costas ............................................ 16
6.3.1 Condiciones .................................................................................................. 16 6.3.2 Autoridad nacional ........................................................................................ 16 6.3.3 Procedimiento............................................................................................... 16
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1 Introducción
Artículo 2, del RTMC
Para las marcas comunitarias (MC), además de las disposiciones incluidas en el RMC de base y en el REMC, existe un reglamento específico relativo a las tasas que se han de abonar a la OAMI (RTMC). Dicho Reglamento fue modificado una vez en 2004, una segunda vez en 2005 y otra en 2009. Está disponible en línea un texto refundido no oficial del RTMC, incluidas las referencias al RMC codificado. La lista completa de tasas puede encontrarse en el sitio web de la OAMI.
De manera similar para los dibujos y modelos comunitarios (DMC), además de las disposiciones incluidas en el RDC de base y en el REDC, existe un reglamento específico relativo a las tasas que se han de abonar a la OAMI (RTDC). Este Reglamento se modificó en 2007 después de la adhesión de la Unión Europea al Acta de Ginebra del Arreglo de la Haya relativo al Registro Internacional de Dibujos y Modelos Industriales.
Por último, el Presidente de la Oficina está autorizado para establecer costas que pueden abonarse a la Oficina por los servicios que pueda prestar, así como autorizar métodos de pago distintos de los explícitamente incluidos en el RTMC y en el RTDC.
Las diferencias entre tasas, costas y gastos se exponen a continuación.
Las tasas deben ser abonadas por los usuarios a la Oficina al presentar y tramitar los procedimientos relativos a las marcas y dibujos y modelos; los reglamentos de tasas determinan los importes de las mismas y los modos en que pueden abonarse. La mayoría de procedimientos ante la Oficina están sujetos al pago de tasas, como la tasa de solicitud de MC o DMC, una tasa de renovación, etc. Algunas tasas se han reducido a cero (por ejemplo, las tasas de registro de las MC y las cesiones de MC).
La cuantía de las tasas deberá fijarse de tal manera que los ingresos correspondientes permitan asegurar, en principio, el equilibrio del presupuesto de la Oficina (véase el artículo 144 del RMC) para garantizar su plena autonomía e independencia. Los ingresos de la Oficina proceden principalmente de las tasas que abonan los usuarios del sistema (véase el considerando 18 del RMC).
Las costas hacen referencia a los gastos de las partes en los procedimientos inter partes ante la Oficina, en particular, a efectos de la representación profesional (para las marcas véanse el artículo 85 del RMC y la regla 94 del REMC, para los dibujos y modelos véanse los artículos 70-71 del RDC y el artículo 79 del REDC). Las resoluciones en los asuntos inter partes deben incluir una decisión sobre las tasas y las costas del representante profesional y fijar la cuantía de las mismas. La resolución sobre las costas podrá ejecutarse cuando sea definitiva, con arreglo a lo dispuesto en el artículo 86 del RMC.
Los gastos son fijados por el Presidente de la Oficina por cualquier servicio prestado por la Oficina, distinto de los especificados en el artículo 2 del RTMC (véase la regla 87, apartado 2, del REMC; y el artículo 3, apartados 1 y 2, del RTMC). Las cuantías de los gastos establecidos por el Presidente se publicarán en el Diario Oficial de la Oficina y pueden encontrarse en el sitio web en forma
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de decisiones del Presidente. Algunos ejemplos de gastos son los gastos de la mediación en Bruselas y para determinadas publicaciones emitidas por la Oficina.
2 Modalidades de pago
Artículo 5, del RTMC Artículo 5, del RTDC Comunicación nº 2/97 del Presidente de la Oficina de 3 de julio de 1997
Todas las tasas y gastos se pagarán en euros, no siendo válidos los pagos en otras monedas, que no crean derechos y serán reembolsados.
Las tasas que se han de abonar a la Oficina no podrán pagarse en las oficinas nacionales ni a través de las mismas.
Las modalidades de pago admitidas son, en la mayoría de los casos, las transferencias bancarias, los cargos en las cuentas corrientes con la Oficina y (únicamente para ciertos servicios en línea) mediante tarjetas de débito o de crédito. Ya no se aceptan los pagos en efectivo en los locales de la Oficina ni los cheques (resolución de 3 de septiembre de 2008, en el asunto R-524/2008-1, «TEAMSTAR».
La Oficina no puede emitir facturas, aunque facilitará un recibo cuando así lo solicite el usuario.
2.1 Pago mediante transferencia bancaria
El dinero puede enviarse a la Oficina mediante transferencia. La tasa no se considerará abonada si la orden de transferencia se da después de que haya finalizado el plazo. Si la tasa se envía antes del plazo pero llega después de que éste finalice, la Oficina podrá considerar, en condiciones específicas, que aquélla ha sido debidamente abonada (véase el punto 4.1).
2.1.1 Cuenta bancaria
El pago mediante transferencia bancaria sólo puede efectuarse en una de las dos cuentas bancarias siguientes de la Oficina:
Banco Banco Bilbao Vizcaya Argentaria La Caixa
Dirección Explanada de España, 11 E-03002 Alicante ESPAÑA
Calle Capitán Segarra, 6 E-03004 Alicante ESPAÑA
Código Swift* BBVAESMMXXX CAIXESBBXXX
IBAN ES8801825596900092222222 ES0321002353010700000888
Gastos bancarios** >OUR >OUR
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* Código Swift: Algunos programas informáticos no aceptan las tres XXX al final del código Swift/BIC. En estos casos, los usuarios deberán indicar BBVAESMM o CAIXESBB.
** Gastos bancarios: Es importante asegurarse que la Oficina recibe el importe en su totalidad, sin deducciones. Por tanto, en caso de una transferencia deberá indicarse «OUR» como modalidad de pago de los gastos bancarios, con el fin de permitir la recepción integral del importe debido. No obstante, si usted realiza un pago SEPA, deberá indicar las letras «SHA», que es la especificación de SEPA por defecto. SEPA es un sistema común europeo de pagos, utilizado en los Estados miembros de la UE y en otros cinco países europeos.
2.1.2 Datos que deberán acompañar al pago
Artículo 7, del RTMC Artículo 6, del RTDC
El pago de una tasa y la indicación de la naturaleza de la misma y del procedimiento al que hace referencia no sustituyen el cumplimiento del resto de requisitos formales de los actos de procedimiento afectados. Por ejemplo, el pago de una tasa de recurso y la indicación del número de la resolución impugnada no resulta suficiente para presentar un escrito de recurso válido (sentencia de 31 de mayo de 2005, en el asunto T-373/03, «PARMITALIA», apartado 58; sentencia de 9 de septiembre de 2010, en el asunto T– 70/08, «ETRAX», apartados 23-25).
Cuando los datos aportados no permitan la asignación del pago, la Oficina concederá un plazo para que se facilite la información que falta, y en caso de no facilitarse, el pago se considerará no realizado y se devolverá la suma. La OAMI recibe miles de pagos al día y una identificación incorrecta o insuficiente del expediente puede provocar considerables retrasos en el tratamiento de los actos de procedimiento.
En el formulario de transferencia del pago deben incluirse los siguientes datos:
número de la MC/ del DMC; número y dirección del pagador y número de identificación de la Oficina; naturaleza de la tasa, preferiblemente en forma abreviada.
Con objeto de tramitar los pagos con celeridad por lo que a las transferencias bancarias se refiere, y teniendo en cuenta que sólo podrá utilizarse un número limitado de caracteres en los campos «remitente» y «descripción», se recomienda encarecidamente rellenar estos campos del modo que se indica a continuación.
CAMPO DE DESCRIPCIÓN
Utilice los códigos enumerados en las tablas que siguen, por ejemplo: CTM en lugar de: TASA DE SOLICITUD DE UNA MARCA COMUNITARIA.
Suprima los ceros delante de los números y no utilice espacios ni guiones puesto que ocupan espacio innecesariamente.
Comience siempre con el número de MC o DMC, por ejemplo CTM 3558961.
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Si el pago corresponde a más de una marca o dibujo o modelo, especifique sólo el primero y el último, por ejemplo CTM 3558961-3558969, y después remita un fax con todos los detalles de las marcas o dibujos y modelos a los que se refiere.
Códigos de descripción
Descripción Código Ejemplo
Pago a la cuenta corriente CC + número de cuenta CC 1361
Si el titular o el representante tiene un número de identificación
OWN + número de identificación, número REP + identificación REP 10711
Número de la marca o dibujo y modelo CTM, RCD + número
CTM 5104422 RCD 1698
Un breve sobrenombre de la MC o DMC
«XYZABC» o «forma de botella»
Código de la operación: Tasa de solicitud de MC o DMC Tasa de solicitud internacional Tasa de renovación Tasa de oposición Tasa de anulación Recurso Inscripción Cesión Transformación Consulta pública de los expedientes Copias certificadas
CTM, RCD INT RENEW OPP CANC APP REC TRANSF CONV INSP COPIES
OPP, REC, RENEW, INSP, INT, TRANSF, CANC, CONV, COPIES, APP
Ejemplos:
Objeto de pago Ejemplo de descripción de pago
Tasa de solicitud (CTM = Community Trade Mark, marca comunitaria) CTM 5104422 XYZABC.
Tasa de solicitud (RCD = Registered Community Design, dibujo o modelo comunitario) RCD 1234567 forma de botella.
Oposición + pagador CTM 4325047 OPP XYZABC-REP 10711
Solicitud internacional CTM 4325047 INT XYZABC
Renovación (MC) CTM 509936 RENEW
Pago a la cuenta corriente nº 1361 CC 1361
Copias certificadas CTM 1820061 COPIES
Cesión de dibujos y modelos múltiples (primero 1420061 y último 1420065) + pagador RCD 14200611420065 TRANSF REP 10711
Registro de una licencia para una MC CTM 4325047 REC LICENCE OWN 10711
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CAMPO DE REMITENTE
Ejemplos de dirección
Dirección Ejemplo
Nombre del pagador Dirección del pagador Ciudad y código postal del pagador
John Smith 58 Long Drive London, ED5 6V8.
Utilice un nombre que puede ser identificado como pagador, solicitante (titular o representante) u oponente.
Para el nombre del pagador, utilice sólo el nombre, sin abreviaturas del tipo DIPL.-ING. PHYS., DR, etc.
Utilice la misma forma de identificación para pagos futuros.
2.2 Pago mediante tarjeta de débito o de crédito
Decisión nº EX-13-2 del Presidente de la Oficina de 26 de noviembre de 2013 relativa a la comunicación electrónica con la Oficina: artículo 7, Pago electrónico de tasas mediante tarjeta de crédito Artículo 2, apartado 1, letra b); artículo 2, apartado 4; artículo 2, apartados 12 a 15, del RTMC; y artículo 5, apartado 2, del RTDC
El pago con tarjeta de débito o de crédito aún no es posible para todas las tasas de la OAMI. Únicamente ciertos servicios en línea pueden abonarse mediante dichas tarjetas.
Pueden utilizarse las siguientes tarjetas de débito o de crédito: Visa, Mastercard y Discover.
Para las solicitudes y renovaciones por medios electrónicos, el pago mediante tarjeta de débito o de crédito es el método más recomendable. Los pagos con tarjeta de débito o de crédito permiten a la OAMI hacer un uso óptimo de sus sistemas automáticos internos, a fin de agilizar la tramitación de la solicitud.
Los pagos con tarjeta de débito o de crédito son inmediatos (véase el punto 4.2) y, por tanto, no se permiten para pagos aplazados (realizados en el plazo de un mes desde la fecha de presentación).
Para las demás tasas, el pago mediante tarjeta de débito o de crédito no se encuentra disponible actualmente. En particular, las tarjetas de débito o de crédito no pueden utilizarse para efectuar el pago de los gastos mencionados en el artículo 3 del RTMC y el artículo 3 del RTDC o para reponer los fondos de una cuenta corriente.
Para pagar con tarjeta de débito o de crédito, deben comunicarse algunos datos básicos. La información facilitada no se almacenará en ninguna de las bases de datos permanentes de la OAMI. Sólo se conservará hasta el momento de su transmisión al banco. En cualquier registro del formulario figurará únicamente el nombre de la tarjeta de débito o de crédito (VISA, MasterCard o Discover) y las últimas cuatro cifras de la misma. El número completo de la tarjeta puede introducirse en su totalidad y sin riesgo alguno a través de nuestro servidor seguro, que cifra toda la información facilitada.
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2.3 Pago mediante la cuenta corriente con la OAMI
Decisión nº Ex-96-1 del Presidente de la Oficina de 11 de enero de 1996 relativa a las modalidades de apertura de cuentas corrientes en la Oficina, tal como fue modificada en 1996, 2003 y 2006 Comunicación nº 5/01 del Presidente de la Oficina de 29 de junio de 2001 relativa a la disponibilidad de extractos de las cuentas corrientes en la página de Internet de la Oficina Comunicación nº 11/02 del Presidente de la Oficina de 11 de octubre de 2002 relativa a la apertura de otra cuenta bancaria
Se recomienda abrir una cuenta corriente con la OAMI ya que para todas las solicitudes que están sujetas a plazos, como las oposiciones o los recursos, el pago se considerará efectuado dentro de plazo incluso si la documentación pertinente relativa al pago que se realiza se presenta en el último día del plazo, siempre que la cuenta corriente tenga suficientes fondos (véase el punto 4.3) (resolución de 7 de septiembre de 2012, en el asunto R 2596/2011-3, «STAIR GATES», apartados 13-14). El cobro efectivo en la cuenta corriente se efectuará en una fecha posterior, pero el pago se considerará realizado en la fecha en la que la Oficina recibió la solicitud del acto de procedimiento, o de cualquier otro modo que resulte conveniente para la parte del procedimiento, de acuerdo con el artículo 6 de la Decisión nº Ex-96-1 del Presidente de la Oficina, modificada en 2006.
Si la persona (ya sea la parte en el procedimiento o su representante) que ha presentado la solicitud o el correspondiente acto de procedimiento es la titular de la cuenta corriente con la Oficina, ésta imputará automáticamente la tasa en dicha cuenta, salvo que reciba instrucciones en sentido contrario en un caso concreto. Para identificar correctamente la cuenta, la Oficina recomienda indicar de forma clara el número de identificación de la OAMI del titular de la cuenta corriente con la Oficina.
El sistema de cuentas corrientes es un sistema de cargo automático. Ello significa que la Oficina cargará a la cuenta todas las tasas y gastos, tras identificar una cuenta, a medida que se vayan desarrollando los procedimientos de que se trate - en la medida en que la cuenta tenga fondos suficientes – y atribuirá cada vez una fecha de pago sin que sea necesario recibir más instrucciones. Sólo se hará una excepción a esta regla cuando el titular de una cuenta corriente que no desee que se utilice esta cuenta para el pago de una tasa o gasto en particular lo comunique a la Oficina por escrito. En ese caso, sin embargo, el titular de la cuenta podrá cambiar el método de pago al pago mediante cuenta corriente en cualquier momento antes de la finalización del plazo de pago.
La ausencia de indicación o la indicación incorrecta del importe de la tasa no tiene efectos negativos, ya que se realizará el cargo automático en la cuenta corriente respecto del correspondiente acto de procedimiento para el que se efectúa el pago.
Si una cuenta corriente no dispone de fondos suficientes, la Oficina lo notificará al titular y le dará la oportunidad de dotarla de fondos y abonar el 20 % para cubrir los gastos administrativos en que se ha incurrido debido a la falta de fondos. Si el titular así lo hace, el pago de la tasa se considerará recibido en la fecha en que la Oficina recibe el documento correspondiente respecto del cual se efectuó el pago (por ejemplo
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un escrito de oposición). Si el pago hace referencia a la dotación de fondos de una cuenta corriente, será suficiente indicar el número de dicha cuenta. Si se ha dotado de fondos a la cuenta, el titular garantizará que existen fondos suficientes para todos los pagos debidos y deberá indicar como mínimo las prioridades para las que se utilizará el dinero (resolución de 3 de septiembre de 2008, en el asunto R- 1350/2007—1, «SCHNEIDER»). Cuando no se indiquen las prioridades, la Oficina cubrirá los pagos en el orden cronológico de su respectivo vencimiento.
La OAMI permite el acceso de los titulares de una cuenta corriente en la Oficina a los datos de su cuenta corriente correspondientes, al menos, al año transcurrido, a través de una conexión a Internet protegida con su sitio web. El servicio incluye el saldo de la cuenta, la lista de todas las transacciones, los extractos mensuales, así como una herramienta de búsqueda para buscar transacciones concretas.
El pago de una tasa mediante cargo en la cuenta corriente de un tercero requiere que este último autorice expresamente el cargo en su cuenta. El pago se considerará efectuado en la fecha en que la Oficina recibe la autorización. El titular de la cuenta corriente debe conceder la autorización e indicar que puede cargarse en su cuenta una tasa concreta. Si el titular no es ni una parte ni un representante, la Oficina comprobará si existe autorización. De no ser así, la Oficina invitará a la parte de que se trate a que presente una autorización que permita a la Oficina efectuar el cargo en la cuenta del tercero antes de que expire el plazo del pago, cuando la Oficina tiene dudas acerca de la existencia de dicha autorización. La parte que solicita el pago de una tasa mediante el cargo en la cuenta corriente de un tercero deberá presentar la autorización a la Oficina que permita dicho cargo.
Puede abrirse una cuenta corriente en la OAMI enviando una solicitud al fax general nº: +34-965.131.344 o un mensaje al correo electrónico: fee.information@oami.europa.eu
El importe mínimo necesario para abrir una cuenta corriente es de 3 000 EUR.
3 Momento del pago
Artículo 4, del RTMC Artículo 4, del RTDC
Las tasas deben abonarse en o antes de la fecha de su vencimiento.
Si se ha especificado un plazo para efectuar un pago, éste deberá realizarse dentro de dicho plazo.
Las tasas y los gastos para los que los reglamentos no especifican una fecha determinada vencerán en la fecha en que se recibe la solicitud del servicio para el que se ha incurrido en la tasa o gasto, por ejemplo, una solicitud de registro.
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4 Fecha en la que se considerará efectuado el pago
Artículo 8, apartados 1 y 3, del RTMC Artículo 7, del RTDC Artículo 7 de la Decisión nº Ex-96-1 del Presidente de la Oficina de 11 de enero de 1996 relativa a las modalidades de apertura de cuentas corrientes en la Oficina, tal como fue modificada en 1996, 2003 y 2006 Decisión nº EX-13-2 del Presidente de la Oficina de 26 de noviembre de 2013 relativa a la comunicación electrónica con la Oficina: artículo 7, Pago electrónico de tasas mediante tarjeta de crédito
La fecha en la que se considerará efectuado un pago dependerá de la modalidad de pago utilizada.
4.1 Pago mediante transferencia bancaria
Cuando el pago se efectúe mediante transferencia o ingreso en una cuenta bancaria de la Oficina, la fecha en la que se considerará efectuado el pago será aquella en la que se abone la suma en una cuenta bancaria de la Oficina.
4.1.1 Retraso en el pago con o sin recargo
Los pagos recibidos por la Oficina después del vencimiento del plazo se considerarán efectuados respetando dicho plazo si se aportan pruebas de que la persona que efectuó el pago a) expidió debidamente una orden dentro del plazo, a una entidad bancaria para la transferencia del importe del pago, y b) abonó un recargo del diez por ciento sobre la tasa correspondiente (hasta un máximo de 200 EUR) (ambas condiciones deberán cumplirse con arreglo a la sentencia de 12 de mayo de 2011, en el asunto T-488/09, «REDTUBE», apartado 38, y a la resolución de 10 de octubre de 2006, en el asunto R 0203/2005-1, «BLUE CROSS»).
No sucede lo mismo para el retraso en el pago de un recargo. Si se produce un retraso, todo el pago se retrasa y esta circunstancia no podrá subsanarse mediante el pago de un «recargo del recargo» (resolución de 7 de septiembre de 2012, en el asunto R 1774/2011-1, «LAGUIOLE», apartados 12-15).
El recargo no será exigible si la persona presenta pruebas de que el pago se inició diez días antes de que expirara el correspondiente plazo.
La Oficina podrá establecer un plazo para la persona que realizó el pago después de que expirara el plazo para presentar pruebas de que se cumplió una de las condiciones anteriores.
Para más información sobre las consecuencias del retraso en el pago, especialmente aquellos relativos a procedimientos, véanse las partes pertinentes de las Directrices. Por ejemplo, en la Parte B, Sección 2, Examen de formalidades, se tratan las consecuencias del retraso en el pago de las tasas de solicitud, mientras que en la Parte C, Sección 1, Aspectos procesales, se abordan las consecuencias del retraso en el pago de las tasas de oposición.
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4.1.2 Prueba y fecha del pago
Artículo 76, del RMC Artículo 8, apartado 4, del RTMC Artículo 63, del RDC Artículo 7, apartado 4, del RTDC
Podrá presentarse cualquier medio de prueba como:
una orden de transferencia bancaria (por ejemplo una orden SWIFT) que incluya los sellos y la fecha de recepción por parte de la entidad bancaria de que se trate;
una orden de pago electrónico enviada a través de Internet o una impresión de la transferencia electrónica siempre que incluya información sobre la fecha de la transferencia, la entidad bancaria a la que se envió, así como la indicación de «transferencia realizada».
Además, podrán presentarse las siguientes pruebas:
acuse de recibo de las instrucciones de pago por parte de la entidad bancaria; cartas de la entidad bancaria mediante la que se efectuó el pago, que justifique
el día en que se ha dado una orden o se realizó el pago, indicando el procedimiento de que se trate;
declaraciones escritas prestadas bajo juramento, o declaraciones solemnes o que, con arreglo a la legislación del Estado en que se realicen, produzcan efectos equivalentes.
Dichas pruebas adicionales sólo se considerarán suficientes si las pruebas iniciales están sustentadas.
La lista no es exhaustiva.
Si las pruebas no son claras, la Oficina enviará una solicitud para que se presenten más pruebas.
En caso de no presentarse pruebas, se considerará que el procedimiento para el que se realizó el pago no se ha iniciado.
En caso de que las pruebas no sean suficientes, si el pagador no cumple el requerimiento de la Oficina de facilitar más información, ésta considerará que no se ha respetado el plazo de pago.
La Oficina podrá asimismo, dentro del mismo plazo, solicitar a la persona que pague el recargo. Si no se paga el recargo, se considerará que no se ha observado el plazo para el pago. Las tasas o los gastos o la parte de los mismos que hubiera sido pagada serán reembolsados puesto que el pago no se considerará válido.
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Regla 96, apartado 2, del REMC Artículo 81, apartado 2, del REDC
Lengua de las pruebas: los documentos deben presentarse en cualquiera de las lenguas oficiales de la UE. Cuando la lengua de los documentos no sea la lengua del procedimiento, la Oficina podrá solicitar que presente una traducción en cualquiera de las lenguas de la Oficina.
4.2 Pago mediante tarjeta de débito o de crédito
El pago mediante tarjeta de débito o de crédito se considerará efectuado en la fecha en la que se haya presentado satisfactoriamente a través de Internet la solicitud electrónica.
4.3 Pago a través de la cuenta corriente
Decisión nº Ex-96-1 del Presidente de la Oficina de 11 de enero de 1996 relativa a las modalidades de apertura de cuentas corrientes en la Oficina, tal como modificada en 1996, 2003 y 2006
Si el pago se realiza mediante una cuenta corriente con la Oficina, la Decisión nº EX-96-1 del Presidente, modificada, garantiza que la fecha en que se considera efectuado el pago se determina de forma conveniente para la parte en el procedimiento. Por ejemplo, para la tasa de solicitud de una MC, por norma general, las tasas se cargarán en la cuenta corriente en el último día del plazo de un mes concedido fijado para el pago. Sin embargo, el solicitante/representante podrá dar instrucciones a la Oficina para que se cargue en su cuenta tras recibir la solicitud de MC. Del mismo modo, en el momento de la renovación, el titular de la cuenta podrá elegir entre «Cargar ahora» o «Cargar a la fecha de expiración». Si una de las partes retira su acción (oposición, solicitud de anulación, recurso, solicitud de renovación) antes de que finalice el plazo para el pago, las tasas que deban cargarse a la expiración del plazo para su abono no se cargarán en la cuenta corriente y la acción se considerará no presentada.
5 Reembolso de las tasas
Artículo 7, apartado 2; y artículos 9 y 13, del RTMC Artículo 84, 154 y 156, del RMC Artículo 6, apartado 2; y artículo 8, apartado 1, del RDC Artículo 30, apartado 2, del REDC
El reembolso de las tasas está expresamente previsto en los reglamentos. Los reembolsos se realizan mediante transferencias bancarias o través de cuentas corrientes con la OAMI, incluso si las tasas fueron pagadas mediante tarjeta de débito o de crédito.
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5.1 Reembolso de la tasa de solicitud
Regla 9, apartados 1 y 2, del REMC Artículos 10, 13 y 22, del REDC Artículo 44, apartado 6, del RMC
En caso de retirada de una solicitud de MC, las tasas no serán reembolsadas salvo si la declaración de la retirada llega a la Oficina:
cuando el pago haya sido realizado mediante transferencia bancaria, antes de la fecha en la que la cantidad se ingrese efectivamente en la cuenta bancaria de la Oficina;
cuando el pago haya sido realizado mediante tarjeta de débito o de crédito, en el mismo día en que lo haga la solicitud que incluya las instrucciones/información de la tarjeta de débito o de crédito;
cuando el pago haya sido realizado a través de una cuenta corriente, dentro del plazo de un mes para el pago de la tasa de base de solicitud o cuando se hayan dado instrucciones por escrito de efectuar inmediatamente el cargo en la cuenta corriente, antes o a más tardar el mismo día en que se reciban dichas instrucciones
Cuando se reembolse la tasa de base por la solicitud, también se reembolsará cualquier tasa abonada por clase adicional.
La Oficina reembolsará exclusivamente las tasas adicionales por clase por su cuenta cuando las tasas abonadas excedan las clases indicadas por el solicitante en la solicitud de MC y la Oficina no haya solicitado tal pago, o cuando tras el examen de la clasificación la Oficina concluya que se han incluido clases adicionales que no se requerían para cubrir los productos y servicios contenidos en la solicitud original.
Por lo que a los dibujos y modelos se refiere, si existen irregularidades que afectan a la fecha de presentación, esto es, si no se ha concedido la fecha de presentación debido a dichas irregularidades, que no se subsanan en el plazo concedido por la Oficina, el dibujo o modelo no tendrá la consideración de dibujo o modelo comunitario y las tasas serán reembolsadas. Por el contrario, las tasas no se reembolsarán en ninguna circunstancia si el dibujo o modelo solicitado ha sido registrado.
5.2 Reembolso de la tasa de oposición
Regla 17, apartado 1; regla 18, apartado 5; y regla 19, apartado 1, del REMC
Cuando una oposición se considere no presentada (porque se presentó fuera del plazo de tres meses) o si no se ha abonado la totalidad de la tasa de oposición o se abona después de que expire el plazo de oposición, la Oficina deberá devolver la tasa, incluido el recargo.
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5.3 Reembolso de las tasas de marcas internacionales que designan a la UE
Decisión nº ADM-11-98 del Presidente de la Oficina relativa a la regularización de determinados reembolsos de tasas
Véase el Manual, Parte M, Marcas Internacionales, punto 3.13.
5.4 Reembolso de las tasas de recurso
Las disposiciones relativas al reembolso de las tasas de recurso se incluyen en la regla 51 del REMC y en el artículo 35, apartado 3, y el artículo 37, del REDC.
5.5 Reembolso de las tasas de renovación
Regla 30, apartados 6 y 7, del REMC
Las tasas abonadas antes de que dé comienzo el plazo de seis meses para la renovación no se tendrán en cuenta y se reembolsarán.
Se procederá al reembolso de las tasas de renovación en caso de que éstas se hayan abonado sin renovar el registro (es decir, si la tasa se abona únicamente tras la expiración del plazo adicional o la cuantía de la tasa abonada es insuficiente para cubrir la tasa de base y el recargo aplicado en caso de retraso en el pago o en la presentación de la solicitud de renovación, o si no se subsanan algunas otras deficiencias).
Cuando el titular haya dado instrucciones a la Oficina para que renueve la marca, y posteriormente retire parcial (en relación con algunas clases) o totalmente dicha instrucción de renovación, sólo se reembolsará la tasa de renovación :
en el caso del pago por transferencia bancaria, si la Oficina recibió la retirada antes de percibir el pago;
en el caso del pago mediante tarjeta de débito o de crédito, si la Oficina recibió la retirada antes o el mismo día de cobro del pago con tales tarjetas;
en el caso del pago mediante cuenta corriente, si ya se ha cargado, si la Oficina recibió la retirada dentro del plazo de seis meses para la renovación o, cuando se haya emitido una instrucción por escrito para cargar la cuenta corriente de inmediato, antes o, a más tardar, el mismo día en que la Oficina recibió tal instrucción.
Para más información, véanse las Directrices, Parte E, Operaciones de registro, Sección 4, Renovación.
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5.6 Reembolso de importes insignificantes
Artículo 10, apartado 1, del RTMC Artículo 9, apartado 1, del RTDC Decisión nº EX-03-6 del Presidente de la Oficina de 20 de enero de 2003 por la que se determina lo que constituye un importe insignificante de tasas o costes
Las tasas no se considerarán liquidadas hasta que no hayan sido pagadas completamente. De no ser así, el importe que ya se haya abonado será reembolsado después de que expire el plazo concedido para el pago, puesto que en este caso la tasa ya no tiene objeto.
Sin embargo, en la medida de lo posible, la Oficina podrá invitar a la persona a que complete el pago dentro del plazo.
Cuando se abone una suma excesiva para cubrir una tasa o un gasto, el exceso no será reembolsado si el importe es insignificante y la parte afectada no ha solicitado expresamente dicha devolución. La Decisión nº EX-03-6 del Presidente de la Oficina de 20 de enero de 2003 fija los importes insignificantes en 15 EUR.
6 Resolución sobre costas
Artículo 85, del RMC Regla 94, del REMC
6.1 Reparto de las costas
En los procedimientos inter partes, la División de Oposición, la División de Anulación y las Salas de Recurso deben adoptar una decisión sobre el reparto de las costas. Dichas costas incluyen en concreto los gastos del representante profesional, en su caso, y las correspondientes tasas. Para más información sobre el reparto de costas en los procedimientos de oposición, véanse las Directrices, Parte C, Oposición, Parte 1: Aspectos procesales. Cuando una resolución incluya errores obvios respecto de las costas, las partes podrán solicitar una corrección de errores (regla 53 del REMC) o la revocación (artículo 80 del RMC), según las circunstancias (véase Parte A, Sección 6, Revocación de decisiones, cancelación de inscripciones en el registro y rectificaciones de errores).
6.2 Fijación de las costas
La decisión que determina el importe de las costas incluye la suma a tanto alzado que se establece en la regla 94 del REMC para la representación profesional y las tasas (véase arriba) en que haya incurrido la parte vencedora, con independencia de si se ha incurrido realmente en ellas. La fijación de las costas podrá ser revisada en un procedimiento específico con arreglo al artículo 85, apartado 6, del RMC.
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6.3. Ejecución de las resoluciones sobre costas
Artículo 86, del RMC
La Oficina no tiene competencias respecto de los procedimientos de ejecución, ya que estos están a cargo de las autoridades nacionales competentes.
6.3.1 Condiciones
La parte vencedora podrá ejecutar la resolución sobre las costas, siempre que:
la resolución incluya una decisión por la que se fijan las costas a su favor; la resolución sea definitiva; la parte podrá aportar pruebas de que la decisión es
definitiva presentando los extractos apropiados de las bases de datos de la Oficina o la confirmación individual por parte de la Oficina;
la resolución lleva una orden de la autoridad nacional competente.
6.3.2 Autoridad nacional
Cada Estado miembro designará a una autoridad nacional a fin de consignar la orden de la ejecución de las resoluciones de la Oficina que fijan las costas. El Estado miembro dará conocimiento de dicha designación a la Oficina y al Tribunal de Justicia (artículo 86, apartado 2, del RMC).
La Oficina pública dichos nombramientos en su Diario Oficial.
Las referencias pueden encontrarse para: Austria (DO OAMI 4/2004, p. 559 y 561) Bélgica (DO OAMI 4/2007) República Checa (pendiente de publicación) Dinamarca (DO OAMI 10/2002, p. 1883) Estonia (DO OAMI 10/2009) Francia (DO OAMI 5/2002, p. 886) Alemania (DO OAMI 6/2005, p. 853 y 855) Irlanda (DO OAMI 3/2007) Países Bajos (DO OAMI 12/1999, p. 1517) Eslovaquia (DO OAMI 11/2004, p. 1273) Reino Unido (DO OAMI, 12/1998, p. 1381)
Ciertos Estados miembros han asignado jurisdicción a una autoridad nacional (p. ej., en el caso de España, a la Secretaría General Técnica del Ministerio de Justicia, según Real Decreto 1523/1997), pero no lo han notificado aún a la OAMI ni al TJUE.
6.3.3 Procedimiento
a) La parte interesada deberá solicitar a la autoridad nacional competente que consigne la orden de ejecución a la resolución. Por el momento, las condiciones sobre las lenguas de las solicitudes, las traducciones de las partes relevantes de la resolución, las tasas y la necesidad de representante dependen de las
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prácticas de los Estados miembros, que no están armonizadas y que se considerarán caso a caso.
La autoridad competente consignará la orden a la decisión sin otra formalidad más allá de la de verificar la autenticidad de la decisión. Para las decisiones sobre costas o sobre la fijación de costas que contengan errores, véanse los puntos 6.1 y 6.2.
b) Si se han cumplido las formalidades, la parte de que se trate podrá proceder a ejecutar la decisión. La ejecución forzosa se regirá por las normas de enjuiciamiento civil vigentes en el Estado en cuyo territorio tenga lugar. Sólo podrá suspenderse en virtud de resolución del Tribunal de Justicia de la Unión Europea. Sin embargo, el control de la validez de las medidas de ejecución será competencia de los tribunales del país de que se trate (artículo 86, apartado 4, del RMC).
Representación Profesional
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE A
DISPOSICIONES GENERALES
SECCIÓN 5
REPRESENTACIÓN PROFESIONAL
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Índice
1 Introducción – Principio de representación............................................ 4
2 Quién puede representar .......................................................................... 4 2.1 Base de datos de representantes.............................................................. 5 2.2 Representación profesional por abogados .............................................. 6
2.2.1 El término «abogado» .................................................................................... 6 2.2.2 Cualificación ................................................................................................... 6 2.2.3 Nacionalidad y domicilio profesional .............................................................. 6 2.2.4 Facultad para actuar en materia de marcas y/o dibujos y modelos............... 7
2.3 Representantes autorizados admitidos e inscritos en las listas de la Oficina.........................................................................................................7 2.3.1 Facultad para ejercer la representación con arreglo a la legislación
nacional .......................................................................................................... 8 2.3.2 Nacionalidad y domicilio profesional .............................................................. 9 2.3.3 Certificación .................................................................................................. 10 2.3.4 Excepciones ................................................................................................. 10 2.3.5 Procedimiento de inscripción en la lista ....................................................... 10 2.3.6 Modificación de la lista de representantes autorizados ............................... 11
2.3.6.1 Cancelación...............................................................................................11 2.3.6.2 Suspensión de la inscripción en la lista .....................................................12
2.3.7 Reinscripción en la lista de representantes autorizados .............................. 12
2.4 Representación por medio de un empleado........................................... 13 2.4.1 Empleados que actúan en nombre de su empresa ..................................... 13 2.4.2 Representación por medio de empleados de una persona jurídica con
vínculos económicos .................................................................................... 14
2.5 Representación legal ............................................................................... 15
3 Nombramiento de un representante autorizado ................................... 15 3.1 Circunstancias en que el nombramiento es obligatorio........................ 15
3.1.1 Domicilio y sede ........................................................................................... 15 3.1.2 El concepto «en la Comunidad»................................................................... 16
3.2 Consecuencias del incumplimiento cuando el nombramiento es obligatorio................................................................................................. 16 3.2.1 Durante el registro ........................................................................................ 16 3.2.2 Durante la oposición..................................................................................... 17 3.2.3 Anulación ...................................................................................................... 17
3.3 Nombramiento de un representante no obligatorio............................... 18 3.4 Nombramiento de un representante ....................................................... 18
3.4.1 Nombramiento expreso ................................................................................ 18 3.4.2 Nombramiento implícito................................................................................ 18 3.4.3 Asociaciones de representantes .................................................................. 19 3.4.4 Números de identificación ............................................................................ 20
4 Comunicación con los representantes.................................................. 20
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5. Poder ........................................................................................................ 21 5.1 Poderes especiales .................................................................................. 22 5.2 Poderes generales.................................................................................... 22
5.2.1 Registro de poderes generales .................................................................... 22
5.3 Consecuencias de la falta de poder cuando la Oficina lo exige de forma expresa........................................................................................... 22
6 Anulación de la designación de un representante o de un poder ...... 23 6.1 Iniciativa de la persona representada ..................................................... 23 6.2 Desistimiento del representante ............................................................. 23
7 Fallecimiento o incapacidad legal de la parte representada o del representante........................................................................................... 23 7.1 Fallecimiento o incapacidad legal de la parte representada o del
representante............................................................................................ 23 7.2 Fallecimiento o incapacidad legal del representante............................. 24
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1 Introducción – Principio de representación
Artículo 92, apartados 1 y 2 y artículo 93, apartado 1 del RMC, regla 76 del REMC, artículo 77 del RDC
Las personas que tengan su domicilio o su sede o un establecimiento industrial o comercial efectivo y serio en la Unión Europea no precisan nombrar un representante para los procedimientos ante la Oficina (véase el punto 3.1.1 infra).
Las personas físicas que no tengan su domicilio o las personas jurídicas que no tengan su sede o un establecimiento industrial o comercial efectivo y serio en la Unión Europea deben designar un representante que tenga su sede en la Unión Europea. Esta obligación existe en cualquiera de los procedimientos ante la Oficina, salvo para el acto de presentación de una solicitud de marca comunitaria. Véase el punto 3.2.1 infra en relación con las consecuencias de no designar un representante, cuando la representación es obligatoria, una vez que se ha presentado la solicitud de marca comunitaria.
No se exige la representación para las solicitudes de renovación de marcas comunitarias o dibujos y modelos comunitarios o para presentar una solicitud de consulta pública.
En principio, no es necesario que los representantes presenten una autorización para actuar ante la Oficina, salvo si así lo exige expresamente la Oficina, o cuando, en los procedimientos inter partes, así lo exija expresamente la otra parte. Sin embargo, los empleados que actúan en nombre de personas físicas o jurídicas deberán presentar un poder firmado que se incluirá en los expedientes.
Cuando se ha nombrado a un representante, la Oficina se comunicará únicamente con dicho representante.
Para más información sobre los aspectos específicos de la representación profesional durante los procedimientos ante la Oficina relativos a las marcas internacionales, véanse el Manual, Parte M.
La primera parte de esta sección (punto 2) define los distintos tipos de representantes.
La segunda parte de esta sección (puntos 3 a 6) versa sobre la designación de representantes o la falta de designación, así como la autorización de representantes.
2 Quién puede representar
Artículo 92, apartado 3 y artículo 93, apartado 1, letra a) y b) del RMC; regla 76 del REMC, artículo 77, apartado 3 y artículo 78, apartado 1, letras a) y b), del RDC
En todos los Estados miembros, la representación en los procedimientos jurídicos es una profesión regulada y sólo puede ejercerse en determinadas condiciones. La terminología del artículo 93 del RMC abarca a distintas categorías de representantes bajo el título de «Representantes profesionales». En los procedimientos ante la Oficina, se distinguen las siguientes categorías de representantes:
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Los abogados (artículo 93, apartado 1, letra a) del RMC; artículo 78, apartado 1), letra a) del RDC) son representantes profesionales que, según la legislación nacional, siempre están facultados para representar a terceros antes las oficinas nacionales. (Véase el punto 2.2).
El resto de profesionales (artículo 93, apartado 1, letra b) del RMC; artículo 78, apartado 1, letra b) del RDC) deben cumplir otras condiciones y deben figurar en una lista específica de la Oficina para tal efecto (en adelante, la lista de «representantes autorizados ante la OAMI»). Entre ellos, es necesario distinguir otros dos grupos: aquellos que pueden representar sólo en los procedimientos de dibujos y modelos comunitarios (DC) («lista de dibujos y modelos») y los que pueden ejercer la representación tanto en los procedimientos de MC como en los de DC (véase el punto 2.3). La Oficina se refiere colectivamente a estos otros profesionales como «representantes profesionales».
Algunos abogados y representantes profesionales pueden organizarse en entidades denominadas «asociaciones de representantes» (Regla 76, apartado 9 del REMC) (véase el punto 3.4.3).
La categoría final de representantes son los empleados que actúan en calidad de representantes de la parte (artículo 92, apartado 3, primera alternativa, RMC) (véase el punto 2.4.1) o los empleados de las personas jurídicas económicamente vinculadas (artículo 92, apartado 3, segunda alternativa, RMC) (véase el punto 2.4.2)
Los empleados deben diferenciarse de los representantes legales con arreglo a la legislación nacional (véase el punto 2.5).
2.1 Base de datos de representantes
Todas las personas que se identifiquen como representantes o empleados de partes individuales en los procedimientos ante la Oficina y que cumplan los requisitos establecidos en los reglamentos serán inscritos en la base de datos y obtendrán un número de identificación. La base de datos tiene una doble función, facilitando todos los datos de contacto relevantes bajo el número de identificación específico para cada tipo de representante así como la información pública de la lista de representantes autorizados ante la OAMI o la lista de dibujos y modelos.
Todos los representantes, incluidas las asociaciones de representantes, deben indicar la categoría de representante a la que pertenecen, su nombre y su dirección, con arreglo a la regla 1 del REMC.
Los representantes pueden tener varias identificaciones. Por ejemplo, las asociaciones de representantes pueden tener distintas identificaciones para las distintas direcciones oficiales (que deben diferenciarse de las direcciones de correspondencia, que pueden identificarse con una única identificación; véase la Parte E. Sección 1). Los representantes individuales podrán tener una identificación como representante del empleado y otra identificación distinta como abogado de propio derecho.
En principio, un abogado no puede aparecer en la base de datos como un «representante autorizado ante la OAMI» ya que no precisa ser admitido por la OAMI. Así pues, en la mayoría de los casos, la Oficina deniega las solicitudes de abogados que piden ser inscritos en la lista de representantes profesionales de la OAMI. La
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única excepción se da en el caso de que un representante profesional inscrito en la lista sea, además, abogado y la ley nacional permita esa doble cualificación.
La base de datos de representantes profesionales está disponible en Internet. En la base de datos los representantes se identifican como: asociación, empleado, abogado y representante profesional. De forma interna, la última categoría se divide en dos subcategorías: el tipo 1 está compuesto por los agentes de dibujos y modelos autorizados exclusivamente para representar las cuestiones relativas a los dibujos y modelos comunitarios (DCM) con arreglo al artículo 78 del RDC y el tipo 2 de agentes de marcas y dibujos y modelos con arreglo al artículo 93 del RMC.
2.2 Representación profesional por abogados
Artículo 93, apartado 1, letra a), del RMC
Un abogado es un representante profesional que está automáticamente autorizado, sin que sea necesario un mayor reconocimiento formal, para representar a terceros ante la Oficina si cumple las tres condiciones siguientes:
a) deberá estar facultado para ejercer en el territorio de uno de los Estados miembros;
b) deberá poseer su domicilio profesional en la Unión Europea;
c) habrá de poder actuar en dicho Estado en calidad de representante en materia de marcas.
2.2.1 El término «abogado»
La Directiva 98/5/CE del Parlamento Europeo y del Consejo, de 16 de febrero de 1998, DO CE L 77 de 14.3.1998, define el término «abogado». Los títulos profesionales se identifican en la columna «Terminología de abogado» en el Anexo 1 de la presente Sección.
2.2.2 Cualificación
El requisito de estar facultado para ejercer en el territorio de uno de los Estados miembros implica que la persona afectada deberá estar inscrita en el colegio de abogados o habrá de ser miembro de las profesiones identificadas en el Anexo 1 de acuerdo con la normativa nacional aplicable. La Oficina no comprobará este extremo a menos que existan serias dudas al respecto.
2.2.3 Nacionalidad y domicilio profesional No se establecen requisitos de nacionalidad. Por ello, el abogado podrá ser ciudadano de un Estado que no sea un Estado miembro.
El domicilio profesional deberá estar ubicado en la Unión Europea (para la definición de lo que constituye la Unión Europea, véase el punto 3.1.2, infra). Un apartado de correos no constituye un domicilio profesional. El domicilio profesional no ha de ser
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forzosamente el único que posea el representante. Además, el domicilio profesional podrá estar situado en un Estado miembro diferente a aquél en cuyo colegio de abogados esté inscrito. Sin embargo, los abogados que tengan su único domicilio profesional fuera de la Unión Europea no podrán actuar como representantes ante la Oficina, aun cuando estén inscritos en el colegio de abogados de uno de los Estados miembros.
Si una asociación de representantes, por ejemplo un bufete de abogados, posee varios domicilios profesionales, únicamente podrá realizar actos de representación en relación con un domicilio profesional situado en la Unión Europea, y la Oficina sólo establecerá contacto con el abogado en una dirección ubicada en la Unión Europea.
2.2.4 Facultad para actuar en materia de marcas y/o dibujos y modelos
La facultad para actuar en calidad de representante en materia de marcas y/o dibujos y modelos en un Estado debe incluir la facultad para representar a clientes ante el servicio central de la propiedad industrial correspondiente. Esta condición se cumple en todos los Estados miembros.
Los abogados mencionados en el artículo 93, apartado 1, letra a), del RMC que cumplan las condiciones establecidas en dicho artículo estarán facultados automáticamente y de pleno derecho para actuar como representantes de sus clientes ante la Oficina. Esto significa básicamente que si un abogado está autorizado para actuar en materia de marcas y/o dibujos y modelos ante el servicio central de la propiedad industrial del Estado miembro en que está facultado, también lo estará para actuar ante la OAMI. No se inscribirán en la lista de representantes autorizados a que hace referencia el artículo 93, apartado 2 del RMC, porque dicha facultad y la cualificación profesional específica mencionadas en esta disposición se refieren a personas pertenecientes a categorías de representantes especializados en propiedad industrial y marcas, mientras que los abogados por definición están facultados para representar en todo tipo de asuntos jurídicos.
Si un abogado al que ya se le ha atribuido un número de identificación en dicha calidad, solicita su inscripción en la lista, el número se mantendrá pero la situación cambiará de «abogado» a «representante profesional». La única excepción se da en el caso de que un representante autorizado inscrito en la lista sea, además, abogado y la ley nacional permita que actúe en ambos contextos.
El Anexo 1 ofrece una explicación detallada de las normas específicas de cada país.
2.3 Representantes autorizados admitidos e inscritos en las listas de la Oficina
Artículo 93, apartado 1, letra b) y artículo 93, apartado 2 del RMC; artículo 78, apartado 1, letra b) del RDC
El segundo grupo de personas facultadas para representar profesionalmente a terceros ante la Oficina son aquellas cuyos nombres figuran en una de las dos listas de representantes autorizados de la Oficina, la lista de representantes autorizados ante la OAMI y la lista de dibujos y modelos.
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Por lo que respecta a esta categoría de representantes profesionales, la inscripción en la lista de representantes autorizados ante la OAMI o en la lista de dibujos y modelos les faculta para representar a terceros ante la Oficina. Un representante que esté inscrito en la lista de responsables autorizados ante la OAMI mencionada en el artículo 93, apartado 1, letra b), está automáticamente facultado para representar a terceros en materia de dibujos y modelos de acuerdo con lo dispuesto en el artículo 78, apartado 1, letra b) del RDC y no estará inscrito en la lista especial de representantes autorizados en materia de dibujos y modelos (en adelante, « lista de dibujos y modelos»).
Si una persona de la lista contemplada en el artículo 93 del RMC solicita la inscripción en la lista de dibujos y modelos para representantes profesionales autorizados para actuar exclusivamente en materia de dibujos y modelos de acuerdo con el artículo 78, apartado 4, del RDC, se denegará dicha solicitud.
La lista de dibujos y modelos está destinada únicamente a representantes profesionales que están facultados para representar a clientes ante la Oficina en materia de dibujos y modelos pero no en materia de marcas.
El Anexo 2 ofrece una explicación detallada de las normas específicas de cada país.
La inscripción en la lista está sujeta a la presentación de una solicitud redactada y firmada por la persona interesada en el impreso emitido por la Oficina en: http://oami.europa.eu/pdf/forms/prorep_form93_es.pdf
Para la inscripción en la lista deben cumplir tres requisitos:
a) el representante debe ser nacional de uno de los Estados miembros;
b) deberá poseer su domicilio profesional en la Unión Europea;
c) debe estar autorizado en virtud de la legislación nacional para representar a terceros en materia de marcas ante el servicio central de la propiedad industrial correspondiente. Para ello deberá aportar un certificado acreditativo expedido por el servicio central de la propiedad industrial de un Estado miembro.
2.3.1 Facultad para ejercer la representación con arreglo a la legislación nacional
Las condiciones de inscripción en la lista de representantes autorizados ante la OAMI y en la lista de dibujos y modelos dependerán de la situación legal en los Estados miembros afectados.
Artículo 93, apartado 2, letra c) del RMC y artículo 78, apartado 1, letra b) del RDC
En un gran número de Estados miembros, la facultad para representar en materia de marcas ante la oficina nacional está subordinada a la posesión de una cualificación profesional específica (artículo 93, apartado 2), letra c), primera alternativa, del RMC). Por lo tanto, para estar autorizado a actuar como representante, la persona debe poseer la cualificación necesaria. En otros Estados miembros no se exige la posesión de una cualificación específica, es decir, la representación en materia de marcas está abierta a cualquier persona. En este caso, la persona interesada deberá haber ejercido la representación en materia de marcas ante el servicio correspondiente con carácter
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habitual durante al menos cinco años (artículo 93, apartado 2, letra c), segunda alternativa, del RMC). Una subcategoría de esta categoría de Estados miembros son los que poseen un sistema de reconocimiento oficial de la cualificación profesional para ejercer la representación ante la oficina nacional respectiva, aunque dicho reconocimiento no es un requisito previo para el ejercicio de la representación profesional. En este caso, las personas a quienes se reconozca dicha cualificación no estarán sujetas al requisito de haber ejercido la representación con carácter habitual durante al menos cinco años.
Primera alternativa – Cualificaciones profesionales específicas
Si, en el Estado miembro de que se trate, la facultad está subordinada a la posesión de una cualificación profesional específica, las personas que soliciten la inscripción en la lista deberán obtener dicha cualificación profesional específica.
Esta cualificación profesional específica (con frecuencia obtenida a través de un examen) se exige en Austria, Bulgaria, Croacia, Eslovaquia, Eslovenia, España, Estonia, Francia, Alemania, Hungría, Irlanda, Italia, Letonia, Lituania, Polonia, Portugal, Reino Unido, República Checa y Rumanía.
Sin embargo, si la persona confirma que trabaja para dos asociaciones de representantes diferentes o desde dos domicilios distintos, entonces podrá tener atribuidos dos números distintos. También es posible tener dos números distintos, uno como abogado y otro como representante profesional de la OAMI cuando la ley nacional permita esa doble cualificación (por ejemplo, en Bélgica y Francia no es posible la compatibilidad).
Segunda alternativa – Cinco años de experiencia
Si, en el Estado miembro de que se trate, la autorización no está subordinada a la posesión de cualificaciones profesionales específicas, las personas que solicitan la inscripción en la lista deben actuar regularmente como representantes profesionales durante al menos cinco años ante el servicio central de la propiedad industrial de un Estado miembro.
El Presidente puede conceder una exención para este requisito (véase el punto 2.3.4)
Este es el caso del Benelux, Dinamarca, Malta, Finlandia y Suecia.
Tercera alternativa – Reconocimiento por parte de un Estado miembro
Las personas cuya cualificación profesional para representar a personas físicas o jurídicas en materia de marcas y/o dibujos y modelos ante el servicio central de la propiedad industrial de uno de los Estados miembros esté reconocida con arreglo a los reglamentos establecidos por dicho Estado no están sujetas a la condición de haber ejercido la profesión durante al menos cinco años.
Esta alternativa se aplica en raros casos, como en Luxemburgo y los Países Bajos.
2.3.2 Nacionalidad y domicilio profesional
Artículo 93, apartado 2, letra a) y b) y artículo 93, apartado 4 del RMC
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El representante profesional que solicite su inscripción en la lista deberá poseer la nacionalidad de alguno de los Estados miembros y tener su domicilio profesional o lugar de empleo en la Unión Europea. La facultad para ejercer la representación en otros Estados miembros y la experiencia profesional adquirida en ellos podrán tenerse en cuenta únicamente en el contexto del artículo 93, apartado 4 del RMC. El Presidente podrá conceder una excepción al cumplimiento de este requisito (véase el punto 2.3.4)
2.3.3 Certificación
Artículo 93, apartado 3 del RMC
El cumplimiento de las condiciones antes mencionadas y previstas en el artículo 93, apartado 2 del RMC deberá acreditarse mediante una certificación expedida por la oficina nacional correspondiente. Algunas oficinas nacionales han facilitado a la Oficina certificaciones individuales mientras que otras facilitan a la Oficina certificaciones en bloque. Las oficinas envían periódicamente listas actualizadas de representantes profesionales autorizados para representar clientes ante sus oficinas (véase la Comunicación nº 1/95 del Presidente de la Oficina del 18 de septiembre de 1995; DO OAMI 1995, p. 16). En caso contrario, la persona interesada deberá acompañar su instancia de una certificación individual (véase http://oami.europa.eu/pdf/forms/prorep_form93_certificate_es.pdf).
2.3.4 Excepciones
Artículo 93, apartado 4 del RMC
El Presidente de la Oficina podrá conceder, en circunstancias especiales, una excepción al cumplimiento del requisito relativo a la posesión de la nacionalidad de un Estado miembro, así como al requisito de haber ejercido la representación en materia de marcas con carácter habitual durante al menos cinco años, si el solicitante presenta la prueba de que ha adquirido de otro modo la cualificación requerida. Esta facultad es de carácter discrecional.
Los casos que hasta la fecha se le han presentado han permitido al Presidente de la Oficina conceder excepciones respecto al requisito de la nacionalidad. Las excepciones al cumplimiento del requisito relativo a la posesión de una experiencia de cinco años se limitan a los casos en que se haya adquirido de otro modo una cualificación para ejercer la representación en materia de marcas durante un período equivalente de cinco años.
Entre estos se incluyen los casos en que el solicitante, antes de ser agente de la propiedad industrial, era responsable de operaciones relacionadas con marcas en una empresa sin haber actuado a título personal ante la oficina nacional correspondiente. Es preciso que la experiencia se haya adquirido en un Estado miembro.
2.3.5 Procedimiento de inscripción en la lista
Artículo 93, apartado 3 y artículo 88 del RMC
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La inscripción en la lista se realiza mediante notificación de una resolución acogiendo su solicitud, que contiene el número de identificación atribuido al representante autorizado. Las inscripciones en la lista de representantes autorizados ante la OAMI se publican en el Diario Oficial de la Oficina.
Si no se cumple alguno de los requisitos de inscripción en la lista, después de haberle dado la oportunidad al solicitante de responder a la correspondiente notificación de la irregularidad, se adoptará una resolución denegatoria salvo si el solicitante subsana la irregularidad. La parte afectada podrá interponer un recurso contra la resolución (artículo 58, apartado 1 y artículo 133 del RMC).
Los representantes autorizados podrán obtener gratuitamente una copia adicional de la resolución. Los expedientes relativos a las instancias de inscripción en la lista de representantes autorizados o en la lista especial de dibujos y modelos ante la OAMI no son susceptibles de consulta pública.
2.3.6 Modificación de la lista de representantes autorizados
2.3.6.1 Cancelación
Primera alternativa, a petición propia
Regla 78, apartados1 y 6 del REMC
La inscripción del representante autorizado en la lista de representantes autorizados ante la OAMI será cancelada a petición del mismo.
La cancelación se registrará en los expedientes que gestiona la Oficina, se notificará al representante y se publicará en el Diario Oficial de la Oficina.
Segunda alternativa, cancelación automática de la lista de representantes autorizados
Artículo 78, apartados 2 y 5 del REMC; artículo 64, apartado 2 del RDC
La inscripción del representante autorizado en la lista de representantes autorizados ante la OAMI o en la lista de dibujos y modelos se cancelará automáticamente,
a) en caso de fallecimiento o de incapacidad legal del representante autorizado;
b) cuando el representante autorizado deje de tener la nacionalidad de un Estado miembro; sin embargo, el Presidente de la Oficina podrá conceder una excepción en virtud de lo dispuesto en el artículo 93, apartado 4, letra b) del RMC;
c) cuando el representante autorizado deje de tener su domicilio profesional o su lugar de empleo en la Unión Europea; o
d) cuando el representante autorizado deje de estar facultado para representar a terceros ante el servicio central de la propiedad industrial del Estado miembro.
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Cuando el representante autorizado pase de ser un agente de dibujos y modelos a ser un agente de marcas será eliminado de la lista de dibujos y modelos y será inscrito en la lista de representantes autorizados ante la OAMI.
Estas circunstancias podrán notificarse a la Oficina de varias formas. En caso de duda, la Oficina, antes de la cancelación de la lista, recabará información de la oficina nacional correspondiente. También oirá al representante autorizado, en particular cuando exista una posibilidad de mantener en la lista al representante autorizado sobre otra base jurídica o fáctica.
La cancelación se registrará en los expedientes que gestiona la Oficina y se notificará al representante la resolución por la que se acuerda su cancelación. Esta se publicará en el Diario Oficial de la Oficina. La parte afectada podrá interponer un recurso contra la resolución. (Véase la Decisión 2009-1 de 16 de junio de 2009 del Presidium de las Salas de Recurso relativa a las Instrucciones para las partes en los procedimientos impuestos ante las Salas de Recurso).
2.3.6.2 Suspensión de la inscripción en la lista
Artículo 78(3) y (5) del REMC
La inscripción del representante autorizado o en la lista especial de dibujos y modelos será suspendida a instancias de la propia Oficina en el caso de que se hubiese suspendido su facultad para representar a personas físicas o jurídicas ante el servicio central de la propiedad industrial del Estado miembro.
Las oficinas nacionales informarán a la Oficina de cualquier hecho relevante cuando tengan conocimiento del mismo. Antes de adoptar una resolución de suspender la inscripción, que será susceptible de recurso, la Oficina informará al representante y le dará la oportunidad de hacer observaciones. (Véase la Decisión 2009-1 de 16 de junio de 2009 del Presidium de las Salas de Recurso relativa a las Instrucciones para las partes en los procedimientos impuestos ante las Salas de Recurso).
2.3.7 Reinscripción en la lista de representantes autorizados
Artículo 78, apartado 4 del REMC
Toda persona cuya inscripción en la lista de representantes autorizados haya sido cancelada o suspendida volverá a ser inscrita en ella, previa petición, si desaparecieren las circunstancias que dieron lugar a la cancelación o a la suspensión.
Para la reinscripción en la lista de representantes autorizados se presentará una nueva petición con arreglo al procedimiento normal (véase el punto 2.2, supra).
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2.4 Representación por medio de un empleado
Artículo 92, apartado 3 del RMC
Las personas físicas y jurídicas que tengan su domicilio o su sede o un establecimiento industrial o comercial efectivo y serio en la Comunidad podrán actuar ante la Oficina a través de una persona física contratada por ellas («empleado»).
Los empleados que actúen por cuenta de alguna de las personas jurídicas arriba mencionadas también podrá actuar en nombre de otras personas jurídicas que estén económicamente vinculadas con la primera (decisión de 25 de enero de 2012, R 0466/2011-4 «FEMME LIBRE», apdo. 10) (véase el punto 2.4.2) . Esto es aplicable aun cuando estas últimas no tuvieren ni domicilio, ni sede, ni establecimiento industrial o comercial efectivo y serio en la Unión Europea (véase el punto 2.4.2). Cuando una persona jurídica de fuera de la UE esté representada de esta forma, no estará obligada a designar a un representante autorizado con arreglo al artículo 93, apartado 1 del RMC, como excepción a la regla de que las partes en los procedimientos con domicilio fuera de la UE están obligadas a designar a un representante autorizado.
Regla 83, apartado 1, letra h) del REMC
En los impresos puestos a disposición por la Oficina en aplicación de la regla 83, apartado 1 del REMC, los empleados que firmen la solicitud o petición deberán indicar su nombre y marcar las casillas relativas a los empleados y a los poderes, y rellenar las casillas reservadas a los representantes autorizados de la página 1 del impreso o la página de datos relativos a los representantes autorizados.
Regla 12, letra b) y regla 84, apartado 2, letra e) del REMC
El nombre del empleado, o los nombres si hubiera más de uno, no se publicarán en la sección de «representantes» del Boletín de Marcas Comunitarias.
2.4.1 Empleados que actúan en nombre de su empresa
Artículo 92, apartado 3 del RMC; regla 76, apartado 2 del REMC
La actuación de los empleados en nombre de su empresa no constituye un caso de representación profesional con arreglo al artículo 93, apartado 1, del RMC, por lo que no resulta aplicable lo dispuesto en la regla 94, apartado 7, letra d) para el reparto y determinación de las costas en los procedimientos inter partes (decisión de 3 de febrero de 2011, R 0898/2010-1 «MYBEAUTY», apdos. 11 y 12.
Toda persona física o jurídica que sea parte en un procedimiento ante la Oficina podrá actuar a través de un empleado con la única condición de que el empleado presente un poder (decisión de 25 de enero de 2012, R 0466/2011-4 «FEMME LIBRE», apdo. 9). No son necesarios más requisitos, por ejemplo que los empleados estén cualificados para representar a terceros ante las oficinas nacionales.
Por regla general, la Oficina no investigará si realmente existe una relación laboral entre el empleado y la parte en el procedimiento. Sin embargo, la Oficina podrá hacerlo cuando existan motivos para dudar de la existencia de una relación laboral,
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por ejemplo, si se indican diferentes domicilios o si la misma persona es designada como empleado de diferentes personas jurídicas.
2.4.2 Representación por medio de empleados de una persona jurídica con vínculos económicos
Artículo 92, apartado 3 del RMC
Los empleados de personas jurídicas podrán actuar en representación de otras personas jurídicas con la condición de que ambas personas jurídicas estén económicamente vinculadas. En este sentido, existen vínculos económicos cuando hay dependencia económica entre ambas personas jurídicas, tanto si la parte en el procedimiento ante la Oficina depende de la empresa del empleado como si ocurre a la inversa. Dicha dependencia económica podrá existir
- porque ambas personas jurídicas son miembros del mismo grupo, o - porque existen mecanismos de control de la gestión.
De acuerdo con el artículo 2 de la Directiva 80/723/CEE de la Comisión de 25 de junio de 1980 (DO CE L 195 p. 35) relativa a la transparencia de las relaciones financieras entre los Estados miembros y las empresas públicas, y el artículo 10 del Reglamento (CE) nº 240/96 de la Comisión de 31 de enero de 1996 relativo a la aplicación del apartado 3 del artículo 85 del Tratado a determinadas categorías de acuerdos de transferencia de tecnología (DO CE L 31, p. 2), una empresa está económicamente vinculada a otra
- si posee la mayoría del capital de la otra empresa, o - si posee la mayoría de las acciones de la otra empresa, o - si puede nombrar a más de la mitad de los miembros del órgano de dirección, o - si tiene derecho a gestionar los asuntos de la empresa.
De conformidad con la jurisprudencia relativa al artículo 106 TFUE, apartado 1 del Tratado CE, los vínculos económicos también se dan cuando ambas empresas forman una unidad económica en la cual la filial o sucursal no goza de verdadera autonomía para determinar su estrategia en el mercado.
Por otro lado, los siguientes elementos no bastan para establecer vínculos económicos:
- un vínculo en virtud de un contrato de licencia de marca, - una relación contractual entre dos empresas cuyo objetivo es la representación o
la asistencia letrada mutua, - una mera relación de proveedor/cliente, por ejemplo sobre la base de un
contrato de distribución exclusiva o de franquicia.
Cuando un representante empleado desee basarse en los vínculos económicos, marcará la sección pertinente en el impreso oficial e indicará su nombre y el nombre y la dirección de su empresa. Es preciso indicar el tipo de vínculos económicos, a menos que éstos resulten evidentes de los documentos presentados. Por regla general, la Oficina no hará investigaciones al respecto, a menos que tenga motivos para dudar de la existencia de vínculos económicos. En este caso, la Oficina podrá recabar más información y, si fuera necesario, pruebas documentales.
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2.5 Representación legal
La representación legal hace referencia a la representación de personas físicas o jurídicas a través de otras personas en virtud de la legislación nacional. Por ejemplo, el presidente de una empresa es el representante legal de dicha empresa.
Las personas jurídicas sólo pueden actuar a través de personas físicas. Si la persona física, además de empleado, es una persona que, en virtud de la legislación aplicable a la persona jurídica, tiene derecho a representarla en todos los actos jurídicos, no es necesario referirse a dicha persona como «empleado» ni presentar un poder escrito en su favor. En tal caso basta indicar, debajo de la(s) firma(s), el(los) nombre(s) del(de los) particular(es) firmante(s), su cargo en la empresa, por ejemplo, «presidente», «director general», «gérant», «procuriste», «Geschäftsführer» o «Prokurist».
Además, no existe representación con arreglo al RMC cuando, de acuerdo con la legislación nacional aplicable, una persona física o jurídica actúa, en circunstancias particulares, por medio de un representante legal, por ejemplo cuando los menores están representados por sus padres o por un tutor, o una empresa está representada por un liquidador. En estos casos, la persona que realmente firma deberá demostrar que está autorizada para firmar, pero no se le exigirá la presentación de un poder.
Debe tenerse en cuenta, sin embargo, que una persona jurídica que contacte a la OAMI desde fuera de la Unión Europea deberá estar representada por un representante autorizado en la Unión Europea. Esta obligación existe en cualquiera de los procedimientos ante la Oficina, salvo para el acto de presentación de una marca comunitaria (no se exige la representación para las solicitudes de renovación de marcas comunitarias o dibujos y modelos comunitarios o para presentar una solicitud de consulta pública). Véase el punto 3.2.1 infra en relación con las consecuencias de no designar un representante, cuando la representación es obligatoria, una vez que se ha presentado la solicitud de marca comunitaria.
3 Nombramiento de un representante autorizado
3.1 Circunstancias en que el nombramiento es obligatorio
Sin perjuicio de la excepción expuesta en el punto 2.4 supra, el nombramiento de un representante autorizado es obligatorio para las partes en los procedimientos ante la Oficina que no tengan ni domicilio, ni sede, ni establecimiento industrial o comercial efectivo y serio en la UE. Esta obligación existe en cualquiera de los procedimientos ante la Oficina, salvo para la presentación de marca comunitaria.
Lo mismo resulta aplicable para los registros internacionales que designan a la UE. Para más información al respecto, véase el Manual, Parte M, Marcas internacionales.
3.1.1 Domicilio y sede
El criterio para la representación obligatoria es el domicilio, la sede o el establecimiento profesional o comercial, no la nacionalidad. Así, por ejemplo, una persona francesa domiciliada en Japón deberá estar registrada, pero una persona australiana domiciliada en Bélgica no. La Oficina determinará este criterio en relación con el domicilio indicado. Si la parte en el procedimiento indica una dirección situada
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fuera de la UE, pero se basa en la sede o en un establecimiento ubicado en la UE, deberá facilitar las indicaciones y explicaciones pertinentes, y toda correspondencia con dicha parte se remitirá a la dirección situada en la UE. Los criterios de sede o de establecimiento industrial o comercial efectivo y serio no se cumplen si la parte en el procedimiento solo cuenta con un buzón o una dirección para notificaciones en la UE, ni si el solicitante indica la dirección de un agente con domicilio profesional en la UE (decisión de 1 de abril de 2014, R 1969/2013-4 «DYNATRACE», apdos. 17 a 19). Si la parte en el procedimiento indica una dirección ubicada en la UE como su propia dirección, la Oficina no investigará más al respecto a menos que existan motivos excepcionales para albergar dudas.
El domicilio de las personas jurídicas se determina de acuerdo con el artículo 65 TFUE. La sede real o el domicilio principal deberán estar ubicados en la UE. No basta con que la legislación por la que se rige la empresa sea la legislación de un Estado miembro.
3.1.2 El concepto «en la Comunidad»
Artículo 92, apartado 2 del RMC
Al aplicar el artículo 92, apartado 2 del RMC, el territorio en cuestión es el territorio de la Unión Europea, que se refiere a los Estados miembros en los que se aplica el TFUE en virtud de su artículo 355. Debe tenerse en cuenta que no se considera que cumplan este requisito los miembros del Espacio Económico Europeo que no forman parte de la UE (es decir los Estados miembros de la AELC) (decisión de 22 de junio de 2011, R 2020/2010-4 «GRAND PRIX», apdos. 13 a 14).
3.2 Consecuencias del incumplimiento cuando el nombramiento es obligatorio
Artículo 93, apartado 1 del RMC
Cuando una parte en el procedimiento ante la Oficina (solicitante, titular, oponente, solicitante de una anulación) se encuentra en una de las situaciones descritas en el punto 3.1 pero no ha designado un representante profesional con arreglo al artículo 93, apartado 1 del RMC en la solicitud o petición, o cuando deja de cumplirse el requisito de hacerse representar en una fase posterior (por ejemplo, si el representante desiste), las consecuencias jurídicas dependerán de la naturaleza del procedimiento correspondiente.
3.2.1 Durante el registro
Artículo 92, apartado 2 del RMC; regla 9, apartado 3 del REMC
Si la representación es obligatoria y el solicitante de la MC no designa a un representante autorizado en el impreso de solicitud, el examinador, en una fase inicial del procedimiento y como parte del examen formal previsto en la regla 9, apartado 3 del REMC, le invitará a designarlo en un plazo de dos meses. Si el solicitante no cumple lo ordenado en esta comunicación, se denegará la solicitud de la MC.
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Se adoptará la misma medida cuando el nombramiento de un representante deje de existir en un momento posterior del procedimiento de registro, hasta antes de que el registro se haya llevado a efecto, es decir, incluso en el período que media entre la publicación de la solicitud y el registro de la MC.
Si se presenta una petición específica («colateral») en nombre del solicitante de la MC durante el procedimiento de registro, por ejemplo una petición de consulta pública, una petición de inscripción de una licencia o una petición de restitutio in integrum, no es preciso repetir el nombramiento de un representante. En este caso, la Oficina se pondrá en contacto con el representante del expediente y el representante del solicitante de la inscripción, cuando sean distintos.
3.2.2 Durante la oposición
Los puntos anteriores son aplicables con respecto al solicitante de una MC. El procedimiento para subsanar las irregularidades relativas a la representación tendrá lugar fuera del marco del procedimiento de oposición, que finaliza con la denegación de la solicitud de la MC si el solicitante no cumple lo ordenado en esta comunicación.
Regla 15, apartado 2, letra h), inciso ii) y regla 17, apartado 4 del REMC
Respecto del oponente, toda irregularidad relacionada con la representación constituye un motivo de inadmisibilidad de la oposición. Si el escrito de oposición no incluye el nombramiento de un representante, el examinador, en aplicación de la regla 93, apartado 1 del REMC, invitará al oponente a que designe a un representante en un plazo de dos meses. Se declarará la inadmisibilidad de la oposición a menos que se cumplan ambos requisitos en el plazo de tiempo fijado. (Véase el punto 2.4.2.6 de las Directrices Parte B, Sección 1).
En caso de renuncia de un representante, el procedimiento continuará directamente con el oponente, si éste estuviere establecido en la UE. Se informará a la otra parte de la renuncia del representante. Si la parte cuyo representante ha renunciado está fuera de la UE, se enviará una carta a la parte afectada informándole de que, en virtud del artículo 92, apartado 2 del RMC, las partes que no tengan su domicilio o su sede o un establecimiento industrial o comercial efectivo y serio en la Comunidad deben estar representados ante la Oficina, con arreglo a lo dispuesto en el artículo 93, apartado 1 del RMC en todos los procedimientos distintos de la presentación de una solicitud y de que debe nombrar un nuevo representante en un plazo de dos meses.
Si no se cumple lo anterior, la oposición se denegará por inadmisible.
Cuando se produzca el cambio de representante durante el procedimiento de oposición, la Oficina informará a la otra parte de dicho cambio, enviándole una copia de la carta y del poder (si se ha presentado).
3.2.3 Anulación
Regla 37, letra c), inciso ii) y regla 39, apartado 3 del REMC
En el procedimiento de anulación, el punto anterior relativo a la oposición es aplicable mutatis mutandis al solicitante de caducidad o nulidad de una MC.
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Si el titular de la MC deja de estar representado, el examinador le invitará a designar un representante. Si no lo cumple, no se tendrá en cuenta ninguno de los escritos procesales presentados y la solicitud se tramitará sobre la base de las pruebas que obren en poder de la Oficina. Sin embargo, la MC no será anulada simplemente porque el titular de la MC ya no esté representado después del registro.
3.3 Nombramiento de un representante no obligatorio
Aunque la parte en el procedimiento ante la Oficina no esté obligada a hacerse representar, podrá designar en cualquier momento a un representante profesional con arreglo al artículo 92 o 93 del RMC. Si así lo hiciera se aplicará lo dispuesto en el punto 3.4, ya que son los requisitos relativos al poder (véase el punto 5 infra).
Cuando se ha nombrado a un representante, la Oficina se comunicará únicamente con dicho representante (véase lo dispuesto en el punto 4 infra).
3.4 Nombramiento de un representante
3.4.1 Nombramiento expreso
Normalmente, el representante se designará en el impreso oficial de la Oficina que inicia el procedimiento correspondiente, por ejemplo el impreso de solicitud o el impreso de oposición. Se podrá designar a más de un representante marcando la casilla de «representantes múltiples» e indicando los datos necesarios en relación con cada uno de los representantes adicionales.
El representante también podrá ser designado en una comunicación posterior, firmada por la parte en el procedimiento o por el representante (autonombramiento). La designación deberá ser inequívoca.
El hecho de que la comunicación relacionada con un procedimiento específico (por ejemplo, registro u oposición) vaya acompañada de un poder firmado por la parte en el procedimiento implicará el nombramiento del representante. Esto también es aplicable si se presenta de este modo un poder general. Para más información sobre los poderes generales, véase el punto 5.2 infra.
3.4.2 Nombramiento implícito
En principio, se aceptarán las alegaciones, peticiones, etc. presentadas en nombre de las partes por un representante (en adelante, el «nuevo» representante) distinto de la persona que aparece en nuestro registro (en adelante, el representante «anterior»).
La Oficina enviará una carta al nuevo representante invitándole a confirmar su nombramiento en el plazo de un mes. En dicha carta se incluirá una advertencia de que si el representante no responde en el plazo indicado, la Oficina considerará que no ha sido designado como tal.
Si el nuevo representante confirma su nombramiento, se tendrá en cuenta la presentación y la Oficina se comunicará a partir de entonces con dicho representante.
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Si el nuevo representante no responde en el plazo de un mes o si confirma que no es el representante nuevo, el procedimiento proseguirá con el representante anterior. La presentación y la respuesta del nuevo representante no se tendrán en cuenta y se remitirán al representante anterior a título informativo exclusivamente.
En particular, cuando la presentación implique el cierre del procedimiento (renuncias/limitaciones) el nuevo representante deberá confirmar su nombramiento como representante para que pueda aceptarse dicho cierre del procedimiento o la limitación. En ningún caso se suspenderá el procedimiento.
3.4.3 Asociaciones de representantes
Regla 76, apartado 9 del REMC
Podrá designarse a una asociación de representantes (como bufetes o sociedades de abogados o de representantes profesionales o de ambos) en lugar de designar a los representantes individuales que trabajan en dicha asociación.
Ello deberá indicarse de la forma correspondiente y bastará indicar el nombre de la asociación de representantes sin añadir los nombres de los representantes particulares que trabajan en dicha asociación. La experiencia ha demostrado que muy a menudo se hacen indicaciones equívocas. En estos casos, la Oficina, en la medida de lo posible, interpretará dichas indicaciones como el nombramiento y apoderamiento de una asociación de representantes, pero, si procede, advertirá al representante para casos futuros.
El nombramiento de una asociación de representantes se extiende automáticamente a cualquier representante autorizado que, tras el nombramiento inicial, se incorpore a la asociación de representantes. Por el contrario, todo representante que abandone la asociación de representantes dejará automáticamente de estar apoderado. No se exige ni se recomienda facilitar a la Oficina información sobre los nombres de los representantes que constituyen la asociación. Sin embargo, se recomienda encarecidamente que se notifique a la Oficina todo cambio o información relativa al abandono de la asociación por parte de los representantes. La Oficina se reserva el derecho de comprobar si un representante determinado trabaja realmente en la asociación cuando las circunstancias del caso lo justifiquen.
Artículo 93, apartado 1 del RMC; regla 79 del REMC
El nombramiento de una asociación de representantes no supondrá una desviación de la regla general de que solamente los representantes profesionales con arreglo al artículo 93, apartado 1 del RMC podrán llevar a cabo actos jurídicos ante la Oficina en nombre de terceros. Por ello, toda solicitud, petición o comunicación deberán llevar la firma de una persona física que posea esta cualificación. El representante tendrá que indicar su nombre debajo de la firma, así como su número de identificación personal, si la Oficina se lo ha atribuido, aunque no es necesario obtenerlo, ya que prima el número de identificación de la asociación.
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3.4.4 Números de identificación
En todo impreso y comunicación enviados a la Oficina, la dirección y los datos de telecomunicación podrán, y así se recomienda, sustituirse por la indicación del número de identificación atribuido por la Oficina junto con el nombre del representante. Poseerán un número de identificación no sólo los representantes autorizados inscritos en la lista de la Oficina (véase el punto 2.2, supra), sino también los abogados y las asociaciones de representantes. Además, si los representantes o las asociaciones de representantes tienen varias direcciones, dispondrán de un número de identificación diferente para cada una de estas direcciones.
El número de identificación puede encontrarse consultando cualquier expediente de los representantes de que se trate a través del sitio web de la Oficina: www.oami.europa.eu
4 Comunicación con los representantes
Regla 77 del REMC
Toda notificación u otra comunicación que remita la Oficina al representante debidamente autorizado tendrá el mismo efecto que si se hubiera enviado a la persona representada, y toda comunicación remitida a la Oficina por el representante debidamente autorizado tendrá el mismo efecto que si procediese de la persona representada (decisión de 24 de noviembre de 2011, R 1729/2010-1 «WENDY’S OLD FASHIONED HAMBURGERS», apdo. 21).
Regla 1, apartado 1, letra e), regla 67, apartado 2 y regla 76, apartado 8 del REMC
Una parte en un procedimiento ante la Oficina podrá designar a varios representantes, en cuyo caso estos podrán actuar conjunta o separadamente, a menos que el poder presentado en la Oficina estipule lo contrario. Sin embargo, la Oficina, por norma, sólo se pondrá en contacto con el representante nombrado en primer lugar, excepto en los siguientes casos:
- si el solicitante indica una dirección diferente como domicilio para notificaciones de conformidad con la regla 1, apartado 1, letra e);
- si el representante adicional es designado para un procedimiento específico colateral (como la consulta pública o la oposición), en cuyo caso la Oficina obrará en consecuencia.
Regla 75, apartado 1 del REMC
Si hubiere más de un solicitante de MC, oponente o cualquier otra parte en los procedimientos ante la Oficina, el representante designado por el solicitante de una MC, etc., nombrado en primer lugar, se considerará el representante común de todas estas personas. Si la persona mencionada en primer lugar no ha designado a un representante autorizado y una de dichas personas está obligada a hacerlo y así lo ha hecho, este representante será considerado el representante común de todas estas personas.
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Cuando uno de los cotitulares está obligado a estar representado ante la Oficina, pero no ha designado a un representante profesional, la Oficina se comunicará con la persona nombrada en primer lugar en el impreso oficial que tenga su sede en la UE.
Artículos 92 y 93 del RMC; regla 67 del REMC
Cuando se ha nombrado a un representante con arreglo a los Artículos 92 y 93 del RMC, la Oficina se comunicará únicamente con dicho representante.
5. Poder
Artículo 92, apartado 3 y artículo 93, apartado 1 del RMC; regla 76, apartado 3 del REMC
En principio, no es necesario que los representantes profesionales presenten un poder para actuar ante la Oficina. Sin embargo, todo representante profesional (abogado o representante autorizado ante la OAMI inscrito en la lista, incluidas las asociaciones de representantes) que actúe ante la Oficina deberá presentar un poder para su inclusión en los expedientes si la Oficina así lo exige expresamente o si, en caso de que haya varias partes del procedimiento en que el representante actúa ante la Oficina, la otra parte lo solicita expresamente.
En dichos casos, la Oficina invitará al representante a presentar el poder en un plazo determinado (véase el Manual Parte A, Sección 1) . La carta incluirá una advertencia de que si el representante no responde en el plazo indicado, la Oficina considerará que no ha sido designado como representante y que el procedimiento proseguirá directamente con la parte representada. Si el poder es obligatorio, la parte representada será invitada a nombrar a un representante nuevo y se aplicará lo dispuesto en el punto 3.2, supra. Los actos de procedimiento, con excepción de la presentación de la solicitud, efectuados por el representante, no se considerarán realizados a menos que el representado los apruebe en el plazo que la Oficina especifique.
Los empleados que actúan en nombre de personas físicas o jurídicas deberán presentar un poder firmado que se incluirá en los expedientes.
El poder deberá estar firmado por la parte en el procedimiento. Si se trata de personas jurídicas, bastará con la firma de una persona facultada en virtud de la legislación nacional para actuar en nombre de dicha persona jurídica. La Oficina no verificará la existencia de esta facultad.
Podrán presentarse simples fotocopias del original firmado, incluso por telefax. Los documentos originales formarán parte del expediente y, por lo tanto, no serán devueltos a la persona que los presentó.
Los poderes podrán revestir la forma de poderes especiales o de poderes generales.
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5.1 Poderes especiales
Regla 76, apartado 1 y regla 83, apartado 1, letra h) del REMC
Podrán otorgarse poderes especiales en el impreso emitido por la Oficina en aplicación de la regla 83, apartado 1, letra h) del REMC. Se indicará el procedimiento con el cual esté relacionado el poder (por ejemplo, «relativo a la solicitud de MC nº 12345»), en cuyo caso el poder abarcará todos los actos realizados durante el período de vigencia del registro de la MC resultante. Podrán indicarse varios procedimientos.
Los poderes especiales, ya se hayan presentado en el impreso facilitado por la Oficina, ya en el del representante, podrán limitar su alcance.
5.2 Poderes generales
Regla 76, apartado 1 y regla 83, apartado 1, letra h) del REMC
Un poder general autoriza al representante, a la asociación de representantes o al empleado a llevar a cabo todos los actos en todos los procedimientos ante la Oficina, inclusive, pero no únicamente, la presentación y tramitación de una solicitud de MC, la presentación de oposiciones y de solicitudes de caducidad y de nulidad, así como, en el futuro, de todos los procedimientos relacionados con los dibujos y modelos comunitarios registrados. El poder deberá otorgarse en el impreso emitido por la Oficina, o en un impreso de idéntico contenido. El poder abarcará todos los procedimientos ante la Oficina y no podrá contener limitaciones. Por ejemplo, si el texto del poder se refiere a la «presentación y tramitación de las solicitudes de MC y su defensa», no será aceptable porque no abarca la facultad de presentar oposiciones y solicitudes de caducidad o de nulidad. Si el poder contiene tales restricciones, será considerado un poder especial.
5.2.1 Registro de poderes generales
A partir de abril de 2002, y de conformidad con la Comunicación nº 2/03 del Presidente de la Oficina de 10 de febrero de 2003, la Oficina no notificará a los representantes un número de poder ni les comunicará ninguna información relativa a la tramitación interna de los poderes desde el momento de su recepción. No obstante, el hecho de que la Oficina no asigne un número de poder no incide sobre la atribución del número de identificación del representante asignado en la base de datos de representantes.
5.3 Consecuencias de la falta de poder cuando la Oficina lo exige de forma expresa
a) Si la representación no es obligatoria, el procedimiento proseguirá con la persona representada.
b) Si la representación es obligatoria, se aplicará lo dispuesto en el punto 3.2 supra.
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6 Anulación de la designación de un representante o de un poder
El cambio o la anulación de la designación de un representante podrán efectuarse por iniciativa de la persona representada, del representante anterior o del nuevo representante.
6.1 Iniciativa de la persona representada
Regla 79 del REMC
La persona representada podrá revocar en cualquier momento, mediante comunicación escrita y firmada dirigida a la Oficina, la designación de un representante o el poder a él otorgado. La revocación de un poder implicará la revocación de la designación del representante.
Regla 76, apartado 6 del REMC
Si la persona representada comunica la revocación a su representante y no a la Oficina, dicha revocación no tendrá efecto alguno en los procedimientos ante la Oficina hasta que sea comunicada a la Oficina. Si la parte en el procedimiento está obligada a hacerse representar, se aplicará lo previsto en el punto 3.2 supra.
6.2 Desistimiento del representante
El representante, mediante comunicación firmada dirigida a la Oficina, podrá declarar en todo momento que cesa como representante y que desiste de su representación. Si declara que a partir de entonces otro representante asumirá la representación, la Oficina registrará el cambio y mantendrá correspondencia con el nuevo representante. Si la parte en el procedimiento está obligada a hacerse representar, se aplicará lo previsto en el punto 3.2 supra.
7 Fallecimiento o incapacidad legal de la parte representada o del representante
7.1 Fallecimiento o incapacidad legal de la parte representada o del representante
Regla 76, apartado 7 del REMC
En caso de fallecimiento o incapacidad legal de la parte que autoriza, el procedimiento continuará con el representante, a menos que el poder disponga lo contrario.
Regla 73, apartado 1, letra a) del REMC
Según el procedimiento, el representante deberá solicitar el registro de la transferencia al sucesor legal. No obstante, el representante podrá solicitar la suspensión del
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procedimiento. Para más información sobre la suspensión del procedimiento de oposición tras el fallecimiento o incapacidad legal, véase la Parte C, Sección 1, Aspectos procesales.
En los casos de insolvencia, cuando se haya nombrado un liquidador, éste asumirá la facultad de actuar en nombre de la persona en quiebra y podrá, o en caso de representación obligatoria, deberá nombrar a un nuevo representante, o confirmar el nombramiento del representante existente.
Para más información sobre los procedimientos de insolvencia, véanse las Directivas, Parte E, Operaciones de registro, Sección 3, Capítulo 5, Insolvencia.
7.2 Fallecimiento o incapacidad legal del representante
Regla 73, apartado 1, letra c) y apartado 3, letras a) y b) del REMC
En caso de fallecimiento o incapacidad legal de un representante se suspenderá el procedimiento ante la Oficina. Si no se informa a la Oficina del nombramiento de un nuevo representante en el plazo de tres meses a partir del inicio de la suspensión, la Oficina,
- en caso de que la representación no sea obligatoria, informará a la parte que autoriza que el procedimiento se reanudará con él;
- en el caso de que la representación sea obligatoria, informará a la parte que autoriza que las consecuencias jurídicas serán de aplicación dependiendo de la naturaleza del procedimiento correspondiente (por ejemplo, la solicitud se considerará retirada, o la oposición se denegará) si no se informa de dicho nombramiento en los dos meses siguientes a la fecha de notificación de dicha comunicación (decisión de 28 de septiembre de 2007, R 0048/2004-4 «PORTICO», apdos. 13 y 15.
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FINAL VERSION 1.0 01/02/2015
Anexo 1
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
Alemania Rechtsanwalt Los abogados están plenamente facultados
Patentanwalt / Patentassessor
Un «Patentassessor» es la persona que trabaja mediante contrato para un empleador; cuando dimite o no se le prolonga el contrato, será eliminado de la lista «Patentanwälte» en Alemania) Dado que el «Patentassesor» posee la misma cualificación que el «Patentanwälte», podrá seguir apareciendo en la lista de representantes autorizados ante la OAMI.
Austria Rechtsanwalt Los abogados están plenamente facultados
Patentanwalt Los notarios pueden representar a terceros ante el servicio central de la propiedad industrial de Austria debido a su cualificación profesional específica. Por lo tanto, los notarios pueden solicitar la inscripción en la lista de representantes autorizados.
Bélgica Avocat, Advocaat, Rechtsanwalt
Los abogados están plenamente facultados aunque una persona no puede ser abogado o representante autorizado al mismo tiempo
En neerlandés: Merkengemachtigde En francés: Conseil en Marques / Conseils en propriété industrielle En alemán: Patentanwalt
Se sujeta a lo dispuesto en la Convención del Benelux sobre Propiedad Intelectual (artículo 4.1.). Cualquier persona domiciliada en el territorio del Benelux puede representar a clientes en materia de PI. La facultad no está subordinada a la necesidad de contar con cualificaciones profesionales específicas; las personas que solicitan la inscripción en la lista deben actuar habitualmente como representantes profesionales durante al menos cinco años ante el servicio central de la propiedad industrial de un Estado miembro.
Representación Profesional
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 26
FINAL VERSION 1.0 01/02/2015
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
Bulgaria Адвокат / Практикуващ Право Advokat / Praktikuvasht Pravo
Los abogados no están facultados
Spetsialist po targovski marki / Spetsialist po dizayni Специалист по търговски марки / Специалист по дизайни
Es necesaria una cualificación profesional específica. La Oficina búlgara de patentes puede certificar que alguien ha actuado como representante durante cinco años.
Chipre Δικηγόρος Dikigoros
SÓLO están facultados los abogados
ninguna No pertinente
Croacia Odvjetnik Los abogados están plenamente facultados
Zastupnik Za Žigove Es necesaria una cualificación profesional específica. El «representante autorizado» es la persona que ha superado un examen para representantes de marcas en la Oficina croata.
Dinamarca Advokat Los abogados están plenamente facultados
Varemaerkefuldmaegtig La facultad no está subordinada a la necesidad de contar con una cualificación profesional específica; las personas que solicitan la inscripción en la lista deben actuar habitualmente como representantes profesionales durante al menos cinco años ante el servicio central de la propiedad industrial de un Estado miembro.
Eslovaquia Advokát, Komerčný Pravnik
Los abogados están plenamente facultados
Patentový zástupca En Eslovaquia, los abogados («advokáts») incluidos en la lista del Colegio de Abogados de Eslovaquia podrán actuar como representantes ante la Oficina de la Propiedad Industrial de la República Eslovaca.
Eslovenia Odvetniki Los abogados están plenamente facultados
Patentni zastopnik Los abogados que no estén inscritos en el registro esloveno como agentes de marcas/patentes no pueden representar a las partes ante la Oficina. Los notarios no están facultados por derecho.
Representación Profesional
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 27
FINAL VERSION 1.0 01/02/2015
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
España Abogado Los abogados están plenamente facultados.
Agente Oficial de la Propiedad Industrial
La inscripción en la lista está subordinada a un examen.
Estonia Jurist, Advokaat Los abogados no están facultados salvo si está doblemente cualificado como agente de PI
Patendivolinik El examen está compuesto por dos partes independientes: por un lado, las patentes y los modelos de utilidad y, por otro, las marcas, los dibujos y modelos y las indicaciones geográficas. Ambos tipos de representantes son «patendivolinik». Las personas que sólo han superado la parte de patentes del examen no podrán ser inscritas en la lista del artículo 93 del RMC. La inscripción en la lista está abierta a quienes han superado la parte de marcas, dibujos y modelos industriales e indicaciones geográficas.
Finlandia Asianajaja, Advokat Los abogados están plenamente facultados
En finlandés: Tavaramerkkiasiamies En sueco: Varumaerkesombud
La facultad no está subordinada a la necesidad de contar con una cualificación profesional específica; las personas que solicitan la inscripción en la lista deben actuar habitualmente como representantes profesionales durante al menos cinco años ante el servicio central de la propiedad industrial de un Estado miembro.
Representación Profesional
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 28
FINAL VERSION 1.0 01/02/2015
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
Francia Avocat Los abogados están facultados aunque una persona no puede ser abogado y representante autorizado al mismo tiempo
Conseil en Propriété Industrielle marques et modèles ou juriste.
El INPI mantiene dos listas distintas: La Liste des Conseils en propriété industrielle y la Liste des Personnes qualifiées en Propriété industrielle.
Sólo las personas incluidas en la «Liste des Conseils en propriété industrielle» están facultadas para representar a terceros ante la Oficina Francesa de Patentes. Por lo tanto, sólo estas personas están facultadas para ser incluidas en la lista de representantes autorizados ante la OAMI. Estas personas aparecerán en el certificado en bloque.
Un «Conseil en PI» es la persona que trabaja para una Asociación (Gabinete). La «Personne qualifiée en PI» es la persona que trabaja para una empresa privada (por ejemplo, en el departamento de marcas). En Francia, pasan automáticamente de una a otra lista.
Dado que la «personne qualifiée» posee la misma cualificación profesional que los «Conseils», están facultados para solicitar la inscripción en nuestra lista aunque deben aportar un certificado individual firmado por el Directeur des Affaires Juridiques et Internationales
Representación Profesional
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 29
FINAL VERSION 1.0 01/02/2015
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
Grecia Δικηγόρος - Dikigoros
SÓLO los abogados están facultados
ninguna No pertinente
Hungría Ügyvéd No se permite a los asesores legales actuar como abogados en los procedimientos relativos a las cuestiones en materia de propiedad industrial. Por lo tanto, no podrán solicitar la inscripción en la lista de representantes autorizados ante la OAMI.
Szabadalmi ügyvivő Se exige una cualificación profesional específica para ser agente de patentes. Los agentes de patentes están facultados para representar clientes en todos los procedimientos ante la Oficina. No se permite a los notarios actuar como abogados en los procedimientos relativos a las cuestiones en materia de propiedad industrial. Por lo tanto, podrán solicitar la inscripción en la lista de representantes autorizados ante la OAMI.
Irlanda Barrister, Solicitor Los abogados están plenamente facultados
Trade Mark Agent La persona debe inscribirse en el Registro de agentes de marcas (Register of TM Agents)
Italia Avvocato Los abogados están plenamente facultados
Consulenti abilitati / Consulenti in Proprietà Industriale
La persona debe inscribirse en el Registro de «Consulenti in Proprietà Industriale» («Albo») que gestiona el Colegio de Abogados («Consiglio dell’Ordine») y el registro se comunicará a la Oficina Italiana de Marcas y Patentes («UIBM»).
Representación Profesional
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 30
FINAL VERSION 1.0 01/02/2015
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
Letonia Advokāts Los abogados sólo pueden representar clientes cuya residencia permanente está ubicada en la Unión Europea. Los clientes cuya residencia permanente no esté en la UE deben hacerse representar por un representante profesional
Patentu pilnvarotais / Preču zīmju aģents / Profesionâls patentpilnvarotais
Existe un examen de la marca. Los clientes cuya residencia permanente no esté en la UE deberán estar representados por un representante profesional. Los notarios no pueden actuar como representantes por derecho.
Lituania Advokatas Los abogados sólo pueden representar a clientes cuya residencia permanente está ubicada en la Unión Europea. Los clientes cuya residencia permanente no esté en la UE deben hacerse representar por un representante profesional
Patentinis patikėtinis. Los clientes cuya residencia permanente no esté en la UE deberán estar representados por un representante profesional. Los notarios no pueden actuar como representantes por derecho.
Representación Profesional
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 31
FINAL VERSION 1.0 01/02/2015
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
Luxemburg o
Avocat / Rechtsanwalt
Los abogados están plenamente facultados aunque una persona no puede ser abogado o representante autorizado al mismo tiempo
En francés: Conseil en Marques / Conseils en propriété industrielle En alemán: Patentanwalt
Se sujeta a lo dispuesto en la Convención del Benelux sobre Propiedad Intelectual (artículo 4.1). Cualquier persona domiciliada en el territorio del Benelux puede representar a clientes en materia de PI. La facultad no está subordinada a la necesidad de contar con cualificaciones profesionales específicas; las personas que solicitan la inscripción en la lista deben actuar habitualmente como representantes profesionales durante al menos cinco años ante el servicio central de la propiedad industrial de un Estado miembro.
Malta Avukat, Prokuratur Legali
Los abogados están plenamente facultados
Cualquier persona con experiencia legal, incluidos los notarios, puede actuar como agente de marcas. No es necesaria una prueba documental de la cualificación del abogado que actúa como agente de marcas.
Países Bajos
Advocaat Los abogados están plenamente facultados, sin embargo, una persona no podrá actuar como abogado y representante autorizado al mismo tiempo.
Merkengemachtigde Se sujeta a lo dispuesto en la Convención del Benelux sobre Propiedad Intelectual (artículo 4.1). Cualquier persona domiciliada en el territorio del Benelux puede representar a clientes en materia de PI. La facultad no está subordinada a la necesidad de contar con cualificaciones profesionales específicas; las personas que solicitan la inscripción en la lista deben actuar habitualmente como representantes profesionales durante al menos cinco años ante el servicio central de la propiedad industrial de un Estado miembro.
Representación Profesional
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 32
FINAL VERSION 1.0 01/02/2015
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
Polonia Adwokat, radca prawny
Los abogados no están plenamente facultados. Los abogados sólo pueden representar en los procedimientos de oposición y anulación (nulidad)
Rzecznik Patentowy El representante debe estar en la lista de agentes de patentes que gestiona la Oficina Polaca de Patentes. En Polonia, debe nombrarse un agente de marcas para cualquier procedimiento distinto de la oposición y la anulación. Los agentes de marcas deben superar los correspondientes exámenes.
Portugal Avogado Los abogados están plenamente facultados
Agente Oficial da Propriedade Industrial
5 años de experiencia o una cualificación específica Un notario no es un abogado y, por lo tanto, puede solicitar la inscripción en la lista
Reino Unido
Advocate, Barrister, Solicitor
Los abogados están plenamente facultados.
Registered Trade Mark Agent Sometidos a un examen.
República Checa
Advokát Los abogados están plenamente facultados
Patentový zástupce La República Checa dispone de un examen con dos partes. Las personas que han superado la parte B (marcas y denominación de origen) pueden actuar como representantes en este ámbito y, por lo tanto, ser inscritos en la lista del artículo 93 del RMC. Los agentes de patentes, que han superado las dos partes del examen, están facultados para representar a los solicitantes en todos los procedimientos ante la Oficina.
Representación Profesional
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 33
FINAL VERSION 1.0 01/02/2015
PAÍS Terminología nacional para abogado
Facultades/ normas específicas para representar clientes en materia de marcas y dibujos y modelos
Terminología nacional para la persona con cualificación específica – Agente de Patentes/marcas/ dibujos y modelos (el representante autorizado ante la OAMI)
Facultades / Normas específicas para representar clientes en materia de marcas y dibujos y modelos
Rumanía Avocat Los abogados no están plenamente facultados
Consilier în proprietate industrialǎ
En Rumanía existen tres listas. Se exige a los representantes que posean una cualificación específica o cinco años de experiencia y sean miembros de una cámara nacional. Se exige una cualificación profesional específica para ser representante profesional.
Suecia Advokat Los abogados están plenamente facultados.
Varumaerkesombud La facultad no está subordinada a la necesidad de contar con una cualificación profesional específica; las personas que solicitan la inscripción en la lista deben actuar habitualmente como representantes profesionales durante al menos cinco años ante el servicio central de la propiedad industrial de un Estado miembro.
Representación Profesional
Directrices relativas a los procedimientos ante la Oficina, Part A, Disposiciones generalesPágina 34
FINAL VERSION 1.0 01/02/2015
Anexo 2
La siguiente lista muestra los países en que existe un título para la única persona que está facultada para representar en materia de dibujos y modelos. Si el país no está en la lista esto significa que la correspondiente facultad también abarca a las cuestiones de marcas y, por lo tanto, dicha persona no estará incluida en la lista especial de dibujos y modelos.
PAIS Agente de dibujos y modelos
Bélgica Modellengemachtigde, Conseil en modèles
Dinamarca Varemaerkefuldmaegtig Estonia Patendivolinik Finlandia Tavaramerkkiasiamies,
Varumaerkesombud Irlanda Registered Patent Agent Italia Consulente in brevetti Letonia Patentpilnvarotais
dizainparaugu lietas Luxemburgo Conseil en Propriété
Industrielle Países Bajos Modellengemachtigde Reino Unido Registered Patent Agent República Checa Patentový zástupce (la
misma denominación que como agente de marcas)
Rumanía Consilier de proprietate industriala
Suecia Varumaerkesombud
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 1
FINAL VERSION 1.0 DATE 01/02/2015
DIRECTRICES RELATIVAS A LOS PROCEDIMIENTOS ANTE LA OFICINA DE
ARMONIZACIÓN DEL MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS)
PARTE B
EXAMEN
SECCIÓN 2
FORMALIDADES
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 2
FINAL VERSION 1.0 DATE 01/02/2015
Índice
1 Introducción............................................................................................... 5
2 Presentación de las solicitudes ............................................................... 5 2.1 Solicitantes .................................................................................................5 2.2 Presentación de una solicitud de marca comunitaria.............................. 5
3 Las tasas .................................................................................................... 5 3.1 Tasas en general ........................................................................................ 5 3.2 Irregularidad de la tasa de base ................................................................ 6 3.3 Irregularidad de la tasa de clase ............................................................... 6 3.4 Reembolsos de la tasa después de la retirada.........................................7
4 Fecha de presentación.............................................................................. 7 4.1 Requisitos relativos a la fecha de presentación ......................................7 4.2 Solicitudes presentadas por vía electrónica ............................................7 4.3 Solicitudes presentadas a través de las oficinas nacionales (oficina
de propiedad intelectual del Estado miembro o de la oficina del Benelux) ......................................................................................................8
4.4 Solicitudes recibidas directamente en la OAMI .......................................8 4.5 Lista de los productos y servicios ............................................................ 8
5 Firma........................................................................................................... 8
6 Lenguas/Traducciones.............................................................................. 9 6.1 Primera y segunda lenguas .......................................................................9 6.2 La lengua de correspondencia ..................................................................9 6.3 Lengua de referencia para las traducciones .......................................... 10 6.4 Traducción de elementos multilingües................................................... 10 6.5 Limitación de los productos y servicios................................................. 12
7 Titular, representante y dirección de correspondencia ....................... 12 7.1 Solicitante ................................................................................................. 12 7.2 Representante .......................................................................................... 13 7.3 Cambio de nombre/dirección .................................................................. 13 7.4 Cesión de la titularidad ............................................................................ 13
8 Tipo de marca .......................................................................................... 14 8.1 Marcas individuales ................................................................................. 14 8.2 Marcas colectivas..................................................................................... 14
8.2.1 Carácter de las marcas colectivas................................................................ 14 8.2.2 Solicitantes de marcas colectivas................................................................. 14
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 3
FINAL VERSION 1.0 DATE 01/02/2015
8.2.3 Documentos que deben presentarse ........................................................... 15 8.2.4 Examen de las formalidades relativas a las marcas colectivas ................... 15
8.2.4.1 No presentación del reglamento de uso....................................................15 8.2.4.2 Presentación del reglamento de uso aunque con irregularidades.............15
8.2.5 Cambios del tipo de marca (de colectiva a individual) ................................. 15
9 Tipo de marca .......................................................................................... 16 9.1 Marcas denominativas ............................................................................. 17 9.2 Marcas figurativas .................................................................................... 17 9.3 Marcas tridimensionales.......................................................................... 19 9.4 Marcas sonoras ........................................................................................ 21
9.4.1 Archivo de sonido electrónico....................................................................... 22 9.4.2 Notas musicales ........................................................................................... 22 9.4.3 Sonografías .................................................................................................. 22
9.5 Marcas de color per se............................................................................. 23 9.6 Hologramas............................................................................................... 25 9.7 Marcas olfativas ....................................................................................... 25 9.8 Otras marcas ............................................................................................ 26
9.8.1 Marcas de movimiento ................................................................................ 26 9.8.2 Marcas de posición....................................................................................... 27 9.8.3 Marcas de trazado........................................................................................ 30
9.9 Corrección del tipo de marca .................................................................. 31 9.9.1 Normas generales ........................................................................................ 31 9.9.2 Ejemplos de irregularidades recurrentes en el tipo de marca...................... 31
9.9.2.1 Marcas denominativas...............................................................................31 9.9.2.2 Marcas figurativas .....................................................................................31
10 Serie de marcas ....................................................................................... 33 10.1 Representaciones figurativas múltiples ................................................. 33
11 Indicación de color.................................................................................. 34
12 Descripciones de la marca ..................................................................... 37
13 Renuncias a reivindicar derechos exclusivos («disclaimers») ........... 41
14 Prioridad (de convenio)........................................................................... 42 14.1 Principio de primera presentación.......................................................... 44 14.2 Triple identidad......................................................................................... 45
14.2.1 Identidad de las marcas ............................................................................... 45 14.2.2 Identidad de los productos y servicios ......................................................... 45 14.2.3 Identidad del titular ....................................................................................... 46
14.3 Incumplimiento de los requisitos de prioridad....................................... 46 14.4 No se han facilitado los documentos de prioridad ................................ 46 14.5 Lengua de la solicitud anterior................................................................ 47
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 4
FINAL VERSION 1.0 DATE 01/02/2015
14.6 Comprobación de la fecha de prioridad tras cambiar la fecha de la presentación............................................................................................. 47
14.7 Tratamiento de las irregularidades del examen de la prioridad............ 47 14.8 Ejemplos de reivindicaciones de prioridad ............................................ 48
14.8.1 Primera presentación ................................................................................... 48 14.8.2 Comparación de las marcas......................................................................... 48 14.8.3 Comparación de los productos y servicios................................................... 53 14.8.4 Reivindicaciones de prioridad basadas en series de marcas ...................... 54 14.8.5 Reivindicación de prioridad para marcas tridimensionales u «otras»
marcas .......................................................................................................... 55 14.8.6 Reivindicaciones de prioridad que implican a marcas colectivas ................ 55
15 Prioridad de exposición .......................................................................... 55
16 Antigüedad............................................................................................... 56 16.1 Información armonizada sobre la antigüedad........................................ 57 16.2 Examen de la antigüedad......................................................................... 57 16.3 Identidad de las marcas........................................................................... 59 16.4 Productos y servicios .............................................................................. 59 16.5 Tratamiento de las irregularidades del examen de la antigüedad ........ 59 16.6 Ejemplos de reivindicaciones de antigüedad......................................... 60
17 Transformación ....................................................................................... 61
18 Modificaciones de la solicitud de MC .................................................... 61 18.1 Modificaciones de la representación de la marca.................................. 61
19 Transformación/conversión ................................................................... 63
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 5
FINAL VERSION 1.0 DATE 01/02/2015
1 Introducción
Todas las solicitudes de marca comunitaria (MC) deben cumplir determinadas normas formales. El objeto de estas directrices es establecer la práctica de la Oficina respecto de aquellas normas de formalidad.
2 Presentación de las solicitudes
2.1 Solicitantes
Artículo 5, del RMC
Podrán presentar una solicitud de marca comunitaria las personas físicas o jurídicas, incluidas las entidades de derecho público, con independencia de su nacionalidad o domicilio.
2.2 Presentación de una solicitud de marca comunitaria
Artículo 25, apartado 1, del RMC Regla 82, del REMC Decisiones nº EX-05-3 y nº EX-11-3 del Presidente de la Oficina
El solicitante podrá presentar la solicitud de marca comunitaria directamente en la OAMI, en el servicio central de la propiedad industrial de un Estado miembro o en la Oficina del Benelux.
Las solicitudes de marcas comunitarias podrán enviarse por vía electrónica (a través de e-filing), por fax, correo ordinario o servicios de mensajería privada o entregarse personalmente en el mostrador de la Oficina.
3 Las tasas
Artículos 2, 7 y 8, del RTMC Artículo 27, del RMC Regla 4 y regla 9, apartado 5, del REMC Decisión nº EX-96-1, modificada en 1996, 2003 y 2006; Decisión nº EX-11-3 del Presidente de la Oficina
3.1 Tasas en general
Respecto de la solicitud de una marca comunitaria son aplicables las siguientes tasas:
Marcas Tasa de base hasta 3 clases Tasa por cada clase adicional
Presentación electrónica 900 EUR 150 EUR
Presentación en papel 1 050 EUR 150 EUR
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 6
FINAL VERSION 1.0 DATE 01/02/2015
Colectivas 1 800 EUR 300 EUR
La tasa deberá abonarse en euros. Los pagos efectuados en otra moneda se considerarán nulos y conllevarán una pérdida de derechos. No existe reducción en la tasa de presentación electrónica de una marca colectiva.
Para más información sobre las tasas, véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos.
3.2 Irregularidad de la tasa de base
Si no se abona la tasa de base en el plazo de un mes desde la fecha en que la Oficina recibe la solicitud, se perderá la fecha de presentación provisional (véase infra el apartado 4, Fecha de presentación).
Sin embargo, la fecha de presentación podrá mantenerse si el solicitante aporta pruebas de que ha efectuado en un Estado miembro y dentro del plazo de un mes el pago en un banco o ha dado una orden de transferencia y abona un recargo del diez por ciento.
Sin embargo, el recargo no deberá pagarse si el solicitante presenta pruebas de que el pago se inició diez días antes de que expirara el plazo de un mes.
3.3 Irregularidad de la tasa de clase
Cuando la solicitud comprende más de tres clases de productos y/o servicios, se pagará una tasa de clase adicional por cada clase adicional.
Cuando las tasas pagadas o el importe cubierto por la cuenta actual sea menor que las cantidades debidas totales para las clases seleccionadas en el formulario de solicitud, se emitirá una notificación de irregularidad que establecerá un plazo de dos meses para el pago. Si el pago no se recibe en el plazo especificado, la solicitud se considerará retirada para las clases no comprendidas por la tasa abonada. A falta de otros criterios para determinar qué clases se pretende cubrir mediante el importe abonado, la Oficina considerará las clases en el orden de la clasificación (comenzando con la menor); la solicitud se considerará retirada respecto de aquellas clases para las que no se ha pagado (completamente) la tasa.
Cuando las tasas por clases adicionales se pagan tras rectificar la irregularidad de clasificación, se emitirá una notificación de irregularidad que establecerá un periodo de dos meses para el pago. Si el pago no se recibe en el plazo especificado, la solicitud se considerará retirada para las clases resultantes de la reclasificación no comprendidas por la tasa efectivamente abonada. A falta de otros criterios para determinar qué clases se pretende cubrir mediante el importe abonado, la Oficina considerará las clases en el orden de la clasificación (comenzando con la menor); la solicitud se considerará retirada respecto de aquellas clases para las que no se ha pagado (completamente) la tasa.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 7
FINAL VERSION 1.0 DATE 01/02/2015
3.4 Reembolsos de la tasa después de la retirada
Cuando se retire la solicitud de MC, la tasa de solicitud y las tasas de clase sólo se reembolsarán en determinadas circunstancias. Para más información sobre esta cuestión, véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos.
4 Fecha de presentación
Artículo 25, apartado 3; artículos 26 y 27, del RMC Regla 9, apartado 1, del REMC
4.1 Requisitos relativos a la fecha de presentación
Cuando se recibe una solicitud en la Oficina por cualquier medio distinto a la presentación electrónica, se concede una fecha de presentación provisional y la Oficina emitirá de forma inmediata un recibo con dicha fecha. Transcurrido un mes y tras el pago de la tasa, se determinará una fecha de presentación, siempre que la solicitud cumpla con los siguientes requisitos:
la solicitud es una instancia para el registro como marca comunitaria; la solicitud incluye las indicaciones que identifican al solicitante; la solicitud incluye una reproducción de la marca; la solicitud incluye una lista de productos o de servicios.
Si no se cumple alguno de los requisitos citados, se enviará una notificación de irregularidad exigiendo al solicitante que aporte el elemento que falta dentro del plazo de dos meses desde el envío de la notificación de irregularidad. El plazo no es prorrogable. Si no se subsana la irregularidad, la solicitud de la marca comunitaria se «considerará no presentada» y se reembolsarán todas las tasas ya abonadas y se cerrará el asunto. Si la información que falta se aporta en el plazo establecido en la notificación de irregularidad, se modificará la fecha de presentación adaptándola a la fecha en que se completa toda la información obligatoria, incluido el pago.
En algunos casos, los solicitantes presentan más de una representación de la marca (en este contexto, véase infra el apartado 9.3, Marcas tridimensionales y el apartado 10, Serie de marcas). Como la solicitud no incluye una representación de la marca, esto no se considerará una irregularidad relativa a la fecha de presentación. En su lugar, se exigirá que el solicitante indique cuál de las representaciones presentadas debe utilizarse como la representación de la solicitud de la marca comunitaria. Esto deberá hacerse a través de una notificación de irregularidad y la Oficina establecerá un plazo de dos meses para que el solicitante especifique la representación correcta.
4.2 Solicitudes presentadas por vía electrónica
Respecto de las solicitudes de marcas comunitarias presentadas por vía electrónica, el sistema emite un recibo de presentación automático de forma inmediata que aparece en la pantalla del ordenador desde el que se envíe la solicitud. Dicho recibo incluirá la fecha de presentación provisional y el solicitante deberá guardarlo o imprimirlo, ya que la Oficina normalmente no enviará un recibo adicional.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 8
FINAL VERSION 1.0 DATE 01/02/2015
4.3 Solicitudes presentadas a través de las oficinas nacionales (oficina de propiedad intelectual del Estado miembro o de la oficina del Benelux)
Si se presenta una solicitud de marca comunitaria en la Oficina central de la propiedad intelectual del Estado miembro o en la Oficina del Benelux de Propiedad Intelectual, surtirá los mismos efectos que si se hubieran presentado ese mismo día en la OAMI, siempre que se reciba en la OAMI dentro del plazo de dos meses desde la fecha en que se presentó en la Oficina nacional.
Si la solicitud de la marca comunitaria no llega a la OAMI dentro del plazo de dos meses, se considerará presentada en la fecha en que la OAMI la recibe.
4.4 Solicitudes recibidas directamente en la OAMI
Si el solicitante presenta una solicitud de marca comunitaria en la OAMI, la fecha de presentación será la fecha de recepción siempre que la solicitud esté completa.
4.5 Lista de los productos y servicios
Artículo 26 y artículo 43, apartado 2, del RMC
La presencia de una lista de productos y servicios es un requisito para designar una fecha de presentación. Podrá utilizarse una referencia en el correspondiente campo del formulario de la solicitud de marca comunitaria a una marca comunitaria anterior para indicar la lista de productos y servicios.
El alcance de la protección definido por la lista original de productos y servicios no puede ampliarse. Si un solicitante desea proteger productos o servicios adicionales después de la presentación, deberá presentar una nueva solicitud. Para más información sobre la clasificación de los productos y servicios, consúltense las Directrices, Parte B, Examen, Sección 3, Clasificación.
5 Firma
Regla 80, apartado 3; y regla 82, apartado 3, del REMC
Los formularios de solicitud presentados por telefax, correo ordinario, servicio de reparto especial o en persona deberán ir firmados tanto en el propio formulario como en la carta de acompañamiento. Podrá ir firmado por el solicitante o por el representante. Si una solicitud que se comunica a la Oficina no está firmada, la Oficina invitará a la parte implicada a que corrija la irregularidad en el plazo de dos meses. En caso de no subsanarse dicha irregularidad en el plazo, se denegará la solicitud.
Si la solicitud se presenta por vía electrónica, la mención del nombre del remitente equivale a su firma.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 9
FINAL VERSION 1.0 DATE 01/02/2015
6 Lenguas/Traducciones
Artículos 119, 120 y artículo 43, apartado 2, del RMC Comunicación nº 4/04 del Presidente de la Oficina
La solicitud de marca comunitaria podrá presentarse en cualquiera de las lenguas oficiales de la Unión Europea. En el formulario de solicitud deberá indicarse una segunda lengua, que deberá ser una de las cinco lenguas de la Oficina, a saber, inglés, francés, alemán, italiano o español.
Podrá utilizarse una versión del formulario de solicitud en lengua distinta a la escogida como primera lengua. No obstante, dicho formulario deberá rellenarse en la primera lengua, incluida la lista de productos y servicios, la indicación del color (o colores), la descripción de la marca y la renuncia a invocar derechos exclusivos, si procede.
6.1 Primera y segunda lenguas
Toda la información incluida en el formulario de solicitud deberá hacerse constar en la primera lengua, de lo contrario, podrá enviarse una notificación de irregularidad. En caso de no subsanarse dicha irregularidad en el plazo de dos meses, se denegará la solicitud.
La segunda lengua se utiliza como lengua posible para los procedimientos de oposición y anulación. La segunda lengua ha de ser distinta de la lengua seleccionada como primera. Bajo ninguna circunstancia podrá cambiarse la opción de la primera y la segunda lengua una vez que se haya presentado la solicitud.
En el momento de presentar la solicitud, el solicitante puede facilitar una traducción en la segunda lengua de la lista de productos y servicios y, en su caso, de la descripción de la marca, renuncia e indicación de color. Si facilita dicha traducción por propia iniciativa, el solicitante es responsable de garantizar que la traducción corresponda al primer idioma, lo que la Oficina ne verificará. Es muy importante que el solicitante garantice la exactitud de la traducción, puesto que, en particular, la traducción que proporciona el solicitante puede ser utilizada como base para la traducción de la solicitud al resto de lenguas de la Unión Europea (véase infra el apartado 6.3, Lenguas de referencia para las traducciones).
6.2 La lengua de correspondencia
La lengua de correspondencia es la lengua utilizada en la correspondencia entre la Oficina y el solicitante en el procedimiento de examen hasta el registro de la marca.
Si la lengua que el solicitante ha seleccionado como primera lengua es una de las cinco lenguas de la Oficina, será ésta la que se utilice como lengua de correspondencia.
El solicitante solo podrá indicar que desea que la lengua de correspondencia sea la segunda lengua cuando la lengua seleccionada como primera lengua no sea una de las cinco lenguas de la Oficina. Dicha solicitud puede realizarse en el formulario de solicitud, marcando la correspondiente casilla o puede solicitarse posteriormente, ya sea enviando una solicitud expresa o implícita al enviar una comunicación a la Oficina
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 10
FINAL VERSION 1.0 DATE 01/02/2015
en la segunda lengua. Sin embargo, dicha solicitud será denegada cuando la Oficina ya haya emitido una notificación de irregularidad o de objeción en la primera lengua.
En los casos en que el solicitante seleccione una de las cinco lenguas de la Oficina como primera lengua, pero indique una segunda lengua como lengua de correspondencia, la Oficina cambiará la lengua de correspondencia a la primera e informará de ello al solicitante.
Ejemplo
Primera lengua seleccionada Segunda lengua seleccionada Lengua de correspondenciaseleccionada
Francés Inglés Inglés
La lengua de correspondencia se cambiará al francés.
Para más información sobre las lenguas, consúltense las Directrices, Parte A, Disposiciones generales, Sección 4, Lengua del procedimiento.
6.3 Lengua de referencia para las traducciones
La lista de productos y servicios se traduce a las lenguas oficiales de la UE. La lengua fuente de las traducciones se define como lengua de referencia. Si la primera lengua de la solicitud es una de las cinco lenguas de la Oficina, dicha lengua será siempre la lengua de referencia.
Si la primera lengua de la solicitud no es una de las cinco lenguas de la Oficina y el solicitante ha facilitado una traducción de los productos y servicios en la segunda lengua, esta última será la lengua de referencia. Si no se facilita una traducción, la lengua de referencia será la primera lengua.
6.4 Traducción de elementos multilingües
Los elementos multilingües incluyen información sobre la solicitud que precisa, en principio, ser traducida. Estos elementos son las descripciones de la marca, las indicaciones de color y las renuncias a reivindicar derechos exclusivos.
Si se proporciona la traducción en la segunda lengua, la Oficina comprobará que todos los elementos multilingües (descripción de la marca, indicación del color, renuncia a reivindicar derechos exclusivos) también hayan sido traducidos. Sin embargo, la Oficina no comprobará la exactitud de la traducción. Si el solicitante únicamente ha proporcionado una traducción parcial, se le enviará una notificación de irregularidad, solicitándole que aporte las traducciones adicionales en el plazo de dos meses desde la notificación de la irregularidad. Si el solicitante no aporta las traducciones omitidas, el resto de traducciones aportadas por el solicitante no se tendrán en cuenta y la Oficina procederá como si no se hubiera aportado ninguna traducción. La Oficina añadirá las traducciones de los colores simples.
Antes de enviar una solicitud de traducción, la Oficina garantizará que la información incluida en los elementos multilingües es correcta y aceptable. Los detalles pueden consultarse más abajo en los correspondientes apartados sobre indicaciones de color, descripciones de marcas y renuncias a reivindicar derechos exclusivos
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 11
FINAL VERSION 1.0 DATE 01/02/2015
(apartados 11, 12 y 13, respectivamente). Asimismo, antes de solicitar la traducción de una solicitud, se identificarán los «elementos no traducibles» poniéndolos entre comillas (“”), tal como se ha acordado como norma de formato con el Centro de Traducción de los Órganos de la Unión Europea (CdT).
Los siguientes elementos no se traducirán y se colocarán entre comillas:
1. descripciones de la marca: cuando una descripción de la marca aceptable hace referencia a un elemento denominativo de la marca, no debe traducirse dicho elemento:
Descripción de la marca Marca
CTM 10 003 317
La palabra “Rishta” con letras estilizadas dentro de un fondo en forma de rombo con un efecto sombra y las palabras “Premium Quality” en una fuente más pequeña en un bloque rectangular colocado encima de la palabra “Rishta” y debajo de la punta superior de la forma de rombo.
(Para más información sobre el examen de las descripciones de marca, véase infra el apartado 12.)
2. indicaciones de color: cuando la indicación de color incluye una referencia a un sistema de codificación internacional (p. ej., «Pantone»), esto deberá identificarse con comillas, ya que no han de traducirse:
Indicación de color Marca
CTM 10 171 452
Blå (”Pantone 3115”), Grå (”Cool Grey 9”).
(Para más información sobre el examen de las indicaciones de color, véase infra el apartado 11.)
3. renuncias a reivindicar derechos exclusivos («disclaimers»): si se declara que no se alegarán derechos exclusivos respecto de un elemento denominativo de la marca, dicho elemento deberá identificarse con comillas, ya que no se traducirá:
Renuncia a reivindicar derechos exclusivos Marca
“socks” DOODAH SOCKS
(Para más información sobre el examen de las renuncias a reivindicar derechos exclusivos, véase infra el apartado 13.)
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 12
FINAL VERSION 1.0 DATE 01/02/2015
6.5 Limitación de los productos y servicios
Regla 95, letra a), del REMC
Si la primera lengua de la solicitud de la marca comunitaria es una de las cinco lenguas de la Oficina, solo se aceptará una restricción en el procedimiento de examen en la primera lengua de la solicitud.
En los casos en que la primera lengua de la solicitud no sea una de las cinco lenguas de la Oficina, solo se aceptará una restricción en el procedimiento de examen en la segunda lengua si dicha lengua se ha indicado como lengua de correspondencia.
Ejemplo de petición de limitación aceptable
1ª lengua NL 2ª lengua EN
Sería aceptable una limitación que se envíe a la Oficina en inglés siempre que esta última lengua se haya indicado como lengua de correspondencia de la solicitud.
Ejemplo de petición de limitación no aceptable
1ª lengua IT 2ª lengua EN
No sería aceptable una limitación enviada a la Oficina en inglés, ya que en este caso el italiano es una de las cinco lenguas de la Oficina, por lo tanto, es la única lengua en que se aceptará la limitación.
7 Titular, representante y dirección de correspondencia
7.1 Solicitante
Artículos 3, 5 y 92, del RMC Regla 1, apartado 1, letra b) y reglas 26 y 76, del REMC
Podrán ser titulares de una marca comunitaria las personas físicas o jurídicas, incluidas las entidades de derecho público (p. ej., una universidad). Se aceptarán las presentaciones en nombre de una persona jurídica en el proceso de constitución.
En una solicitud de marca comunitaria, el solicitante deberá indicar su nombre, dirección, nacionalidad y Estado donde tiene su domicilio o su sede o establecimiento. La Oficina recomienda encarecidamente que se indique el Estado de constitución de las empresas estadounidenses, en su caso, para distinguir claramente los diferentes titulares en su base de datos. Las personas físicas se designarán por su nombre y apellidos. Los nombres de las personas jurídicas se harán constar íntegramente y solo se utilizarán las abreviaturas de sus formas jurídicas de la manera usual, p. ej., PLC, S.A. Si el formulario legal no se especifica o se designa incorrectamente, se emitirá una notificación de irregularidad para pedir dicha información. En caso de omitir la forma jurídica o de que ésta no sea correcta, la solicitud será desestimada.
En la indicación del domicilio se harán constar, si es posible, la calle, el número, la ciudad o municipio, el estado o condado, el código postal y el país. Conviene que el solicitante indique una sola dirección, pero si indica varias, se registrará la primera que
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 13
FINAL VERSION 1.0 DATE 01/02/2015
se mencione como la dirección para notificaciones, a no ser que el solicitante designe específicamente otra dirección a este efecto.
Si la Oficina ha atribuido un número de identificación al solicitante en un asunto previo, será suficiente indicar dicho número, junto con el nombre del solicitante.
Para más información sobre la comunicación con la Oficina, consúltense las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, Plazos.
7.2 Representante
Si el solicitante tiene su domicilio, sede o establecimiento industrial o comercial efectivo en la UE, no estará obligado a estar representado.
Si el solicitante no tiene su domicilio, sede o establecimiento industrial o comercial efectivo y serio en la UE, con independencia de su nacionalidad, debe buscarse una representación para actuar en cualquiera de los procedimientos ante la Oficina, salvo para la presentación de una solicitud de marca comunitaria y el pago de la tasa de solicitud. Cada representante en el sentido del artículo 93 del RMC, que presenta una solicitud a la OAMI es añadido a la base de datos de representantes y se le asigna un número de identificación. Si la OAMI le ha asignado un número de identificación al representante, bastará con indicar únicamente el número de identificación y el nombre.
Para más información sobre la representación, consúltense las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
7.3 Cambio de nombre/dirección
El nombre y la dirección del solicitante pueden modificarse. El cambio de nombre del solicitante es un cambio que no afecta a la identidad del solicitante, mientras que una cesión es un cambio de identidad del solicitante.
7.4 Cesión de la titularidad
Artículo 17, apartado 5,; artículos 24 y 87, del RMC Regla 31, apartado 8; y regla 84, apartado 3, letra g), del REMC
El registro y la solicitud de marca comunitaria pueden ser transmitidos a un nuevo titular por parte del titular anterior, principalmente mediante cesión/licencia o por sucesión legal. La cesión/licencia puede limitarse a algunos de los productos y/o servicios para los cuales se haya registrado la marca o solicitado su registro (cesión parcial).Previa solicitud, la cesión de las marcas comunitarias registradas se inscribirá en el Registro y la cesión de las solicitudes de marca comunitaria se anotará en los expedientes.
Para más información sobre la inscripción de las cesiones de titularidad, véanse las Directrices, Parte E, Operaciones de registro, Sección 3, Marcas comunitarias como objetos de propiedad, Capítulo 1, Cesión.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 14
FINAL VERSION 1.0 DATE 01/02/2015
8 Tipo de marca
El Reglamento sobre la marca comunitaria diferencia entre dos tipos de marcas: individual y colectiva.
8.1 Marcas individuales
Artículo 5, del RMC
Podrán presentar una solicitud de marca comunitaria individual las personas físicas o jurídicas, o las personas equivalentes a éstas de conformidad con la legislación nacional que les sea aplicable, incluidas las entidades de derecho público, con independencia de su nacionalidad.
8.2 Marcas colectivas
Artículos 66 a 68, del RMC Reglas 3 y 43, del REMC
8.2.1 Carácter de las marcas colectivas
Una marca colectiva es un tipo específico de marca que indica que los productos o servicios que llevan la marca proceden de miembros de una asociación, en lugar de un único comerciante. Por colectivas no se entiende que la marca pertenezca a varias personas (cosolicitantes y cotitulares) ni que designe o cubra a más de un país.
Las marcas colectivas pueden utilizarse para hacer publicidad de los productos que son característicos de una región particular y pueden utilizarse junto con la marca individual del productor de un determinado producto. Esto permite a los miembros de una asociación distinguir sus propios productos de los de los competidores.
Para más información sobre los requisitos sustantivos de las marcas comunitarias colectivas, véanse las Directrices, Parte B, Examen, Sección 4, Motivos de denegación absolutos y marcas comunitarias colectivas.
8.2.2 Solicitantes de marcas colectivas
Podrán solicitar marcas comunitarias colectivas las asociaciones de fabricantes, productores, prestadores de servicios o comerciantes que, a tenor de la legislación que les sea aplicable, tengan capacidad, en su propio nombre, para ser titulares de derechos y obligaciones de cualquier tipo, de celebrar contratos o de realizar otros actos jurídicos y tengan capacidad procesal, así como las personas jurídicas de derecho público. Básicamente, deben satisfacerse dos criterios. En primer lugar, el solicitante debe ser una asociación y, en segundo lugar, debe existir jurídicamente como entidad.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 15
FINAL VERSION 1.0 DATE 01/02/2015
Para más información sobre los requisitos sustantivos de las marcas comunitarias colectivas, véanse las Directrices, Parte B, Examen, Sección 4, Motivos de denegación absolutos y marcas comunitarias colectivas.
8.2.3 Documentos que deben presentarse
Además de la información que debe presentarse al solicitar una marca individual, las solicitudes de una marca comunitaria colectiva exigen la presentación de un reglamento que regule el uso de la marca. El reglamento debe especificar:
1. el nombre del solicitante y el domicilio social; 2. el objeto de la asociación y el objeto para el que se haya creado la persona
jurídica de derecho público; 3. los organismos autorizados para representar a la asociación o a la persona
jurídica mencionada; 4. las condiciones de afiliación; 5. las personas autorizadas para utilizar la marca; 6. si procede, las condiciones de uso de la marca, incluidas las sanciones; 7. si la marca designa la procedencia geográfica de los productos o los servicios, la
autorización a cualquier persona cuyos productos o servicios procedan de la zona geográfica de que se trate para hacerse miembro de la asociación titular de la marca.
8.2.4 Examen de las formalidades relativas a las marcas colectivas
8.2.4.1 No presentación del reglamento de uso
Si el reglamento no se presenta junto con la solicitud, se emitirá una notificación de irregularidad, que establecerá un plazo de dos meses para proporcionar dicho reglamento.
Si el reglamento no se presenta en el plazo de dos meses, se denegará la solicitud.
8.2.4.2 Presentación del reglamento de uso aunque con irregularidades
Si el reglamento se ha presentado sin especificar la información necesaria tal como se indica supra en el apartado 8.2.3, se enviará una notificación de irregularidad que establecerá un plazo de dos meses para proporcionar la información que falta.
Si la irregularidad no se subsana en el plazo de dos meses, se denegará la solicitud.
8.2.5 Cambios del tipo de marca (de colectiva a individual)
Si una persona física ha solicitado una marca colectiva por error, es decir, ha seleccionado o introducido por error el tipo de marca como «colectiva» en el formulario de solicitud, podrá cambiar la marca de colectiva a individual, ya que las marcas colectivas no pueden concederse a las personas físicas. También se reembolsará el recargo de la tasa.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 16
FINAL VERSION 1.0 DATE 01/02/2015
Cuando una persona jurídica alega que ha solicitado una marca colectiva por error, también se permitirá la modificación y se devolverá el recargo de la tasa. Sin embargo, la presentación de una marca colectiva no se considerará un error obvio y se denegará la petición de modificación cuando existan indicios de que el solicitante tenía la intención de solicitar este tipo de marca, por ejemplo:
la representación de la marca incluye las palabras «marca colectiva»; el nombre del solicitante indica que es una asociación; o se presenta el reglamento de uso de la marca colectiva.
9 Tipo de marca
Artículos 4 y 26; y artículo 7, apartado 1, letra a), del RMC Regla 3, del REMC
La clasificación de las marcas en categorías cumple una serie de funciones. En primer lugar, establece el requisito legal de que la marca esté representada; en segundo lugar, ayuda a la Oficina a entender qué pretende registrar el solicitante, y por último, facilita la búsqueda en la base de datos de la OAMI.
Podrán constituir marcas todos los signos que puedan ser objeto de una representación gráfica. Es un requisito de la presentación que exista una representación de la marca en el formulario de solicitud. La marca ha de estar representada de forma gráfica y su representación no puede ser sustituida por la descripción de la marca. Si el solicitante no incluye una representación gráfica de su marca, se le enviará una notificación de irregularidad y no se inscribirá una fecha de presentación (véase supra el apartado 4, Fecha de presentación).
Cuando la solicitud incluya una representación de la marca sin especificar el tipo de marca deseado la Oficina asignará, basándose en la representación proporcionada y en la descripción de la marca, el tipo de marca adecuado e informará al solicitante por escrito, estableciendo un plazo de dos meses para presentar observaciones.
Cuando el solicitante haya seleccionado un tipo de marca que no se corresponda con la representación de la marca, junto con la descripción de la marca que se ha proporcionado, se corregirá el tipo de marca siguiendo las indicaciones descritas en el apartado 9.9, Corrección del tipo de marca.
Los ejemplos indicados de los tipos de marca en las presentes Directrices se refieren únicamente al examen de formalidades, sin perjuicio del resultado final del procedimiento de examen de la marca.
Los elementos verbales están compuestos por las letras del alfabeto y por signos del teclado. Cuando una marca, distinta de una marca denominativa, incluya un elemento verbal que sea visible en la representación, deberá estar incluida en el correspondiente campo. Esto permite que se pueda buscar la marca en la base de datos y también constituye la base de la comprobación lingüística que se lleva a cabo en todas las lenguas oficiales de la UE.
Formalidades
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9.1 Marcas denominativas
Una marca denominativa es una marca mecanografiada con elementos que pueden ser letras (minúsculas o mayúsculas), palabras (en minúsculas o en mayúsculas), cifras, signos del teclado o signos de puntuación escritos en una sola línea. La Oficina acepta el alfabeto de cualquier lengua oficial de la UE como marca denominativa. Las marcas que estén compuestas de texto en más de una línea no se considerarán marcas denominativas, puesto que estas marcas se consideran figurativas.
Ejemplos de marcas denominativas aceptables
CTM 6 892 351 europadruck24
CTM 6 892 806 TS 840
CTM 6 907 539 4 you
CTM 2 221 497 ESSENTIALFLOSS
CTM 0 631 457 DON’T DREAM IT, DRIVE IT
CTM 1 587 450 ?WHAT IF!
CTM 8 355 521 ΕΙΔ ΕΛΛΗΝΙΚΟ ΙΝΣΤΙΤΟΥΤΟ ΔΙΑΤΡΟΦΗΣ (griego)
CTM 8 296 832 Долината на тракийските царе (cirílico)
9.2 Marcas figurativas
Una marca figurativa es una marca que consiste en:
exclusivamente elementos figurativos, combinaciones de elementos verbales y figurativos u otros elementos gráficos, elementos verbales en fuentes no estándar, elementos verbales en color, elementos verbales en más de una línea, letras en un alfabeto extracomunitario, signos que no pueden reproducirse con un teclado, cualquier combinación de los elementos citados.
Las marcas que contienen un motivo son marcas «figurativas», con arreglo a la práctica de la Oficina.
Ejemplos de marcas figurativas
CTM 1 414 366
Elemento puramente gráfico sin color
CTM 9 685 256
Elemento puramente gráfico en color
Formalidades
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Ejemplos de marcas figurativas
CTM 4 705 414
Combinación de un elemento gráfico y texto en una fuente estándar, sin color
CTM 9 687 336
Combinación de una fuente estilizada y elementos figurativos, sin color
CTM 4 731 725
Combinación de una fuente estilizada y elementos figurativos en color
CTM 9 696 543
Elemento verbal en fuente estilizada sin color
CTM 2 992 105
Elementos verbales en fuente estilizada sin color
CTM 9 679 358
Elementos verbales en distintas fuentes en color
CTM 9 368 457
Solo elementos verbales, en más de una línea
CTM 9 355 918
Eslogan con dos fuentes distintas, letras con dos tamaños diferentes, en más de una línea, en color
CTM 9 681 917
Elemento verbal en un alfabeto extracomunitario (chino)
Formalidades
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Ejemplos de marcas figurativas
CTM 0 015 602
CTM 7 190 929
9.3 Marcas tridimensionales
Artículo 43, apartado 2, del RMC Regla 3, apartado 4, del REMC Comunicación nº 2/98 del Presidente de la Oficina
Una marca tridimensional es una marca consistente en una forma tridimensional (incluidos recipientes, envases y el propio producto). La representación fotográfica o gráfica puede consistir en hasta seis perspectivas de la misma forma que han de presentarse en un solo archivo JPEG en el caso de solicitudes presentadas electrónicamente o en una sola hoja A4 en el caso de las solicitudes presentadas en papel. Aunque pueden presentarse hasta seis perspectivas, será suficiente una sola perspectiva cuando la forma que debe protegerse puede determinarse desde esa única perspectiva.
En algunos casos, los solicitantes presentan diferentes perspectivas de un objeto tridimensional en varias hojas de papel (p. ej., una página por fotografía/perspectiva). En tal supuesto, se planteará una irregularidad y se establecerá un plazo de dos meses para que el solicitante indique cuál de las representaciones presentadas debe utilizarse como representación de la solicitud de marca comunitaria.
Los solicitantes que soliciten el registro de una marca tridimensional deben hacer la correspondiente mención en la solicitud. Si no se indica un tipo de marca y solo se ha facilitado una vista del objeto y la descripción de la marca – en su caso – no indica que la marca presentada es tridimensional, la Oficina la tratará como si fuera una marca figurativa.
Ejemplo
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No se seleccionó un tipo de marca para este signo ni se facilitó una descripción de la marca, por lo que la Oficina la tratará como marca figurativa.
Ejemplos de representaciones de marcas tridimensionales aceptables
CTM 4 883 096
Cuatro dibujos diferentes del mismo objeto
CTM 4 787 693
Seis fotografías del mismo objeto desde perspectivas diferentes, con texto
CTM 30 957
Dos fotografías a color que muestran distintas perspectivas del mismo objeto
CTM 8 532 475
Seis vistas a color que muestran distintas perspectivas del mismo objeto
Ejemplos de marcas que no son aceptables como marcas tridimensionales
CTM 6 910 021
Cinco vistas que no muestran el mismo objeto
Formalidades
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Ejemplos de marcas que no son aceptables como marcas tridimensionales
CTM 7 469 661
No se permite añadir un texto a la representación de la marca (texto al pie de la foto de la botella)
CTM 9 739 731
La primera y la tercera botella muestran dos perspectivas diferentes de la misma botella, ambas con un tapón gris. La segunda botella tiene un tapón azul y, por lo tanto, es un objeto distinto de los indicados en la primera y la tercera botella. La cuarta imagen es totalmente distinta y muestra dos tapones de botella y una etiqueta. De las cuatro perspectivas, solo la primera y la tercera son vistas del mismo objeto.
Cuando se presentan vistas de objetos distintos en una hoja A4 o en un archivo JPEG para la solicitud de una marca tridimensional, la irregularidad no es subsanable porque la supresión de uno o más de estos objetos distintos se consideraría una variación considerable de la representación de la marca (véase infra el apartado 18, Modificaciones a la solicitud de marca comunitaria). En tal caso, debe denegarse la solicitud, ya que la representación no muestra una única forma tridimensional.
9.4 Marcas sonoras
Artículo 4, del RMC; Decisión nº EX-05-3 del Presidente de la Oficina
Las marcas sonoras deben representarse de forma gráfica utilizando los métodos normales de reproducción gráfica de sonidos, en particular, la notación musical. La descripción del sonido en palabras no resulta suficiente (véase la resolución de 27/09/2007, R 708/2006-4, «TARZAN YELL»). Será aceptable la combinación de la letra de una canción con notas musicales y el ritmo. No es una representación gráfica aceptable de una marca sonora una única sonografía si no va acompañada de un archivo electrónico que incluya el sonido. Cuando no se pueda describir el sonido que se solicita con notas musicales convencionales, por ejemplo, el gruñido de un león, el único medio de representar la marca será una sonografía junto con un archivo sonoro.
Formalidades
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9.4.1 Archivo de sonido electrónico
Es opcional adjuntar un archivo de sonido MP3 cuando se haya presentado una notación musical, aunque únicamente en caso de que la presentación sea electrónica (e-filing). La Oficina no aceptará la presentación de un archivo de sonido electrónico por sí solo, ya que también se exige una representación gráfica. Cuando una solicitud no incluya una representación gráfica de la marca, se planteará una irregularidad en la fecha de presentación (para más información sobre las fechas de presentación, consúltese el apartado 4 de las Directrices).
El archivo de sonido debe tener formato MP3 y su tamaño no puede superar los dos megabytes. Los requisitos de la Oficina no permiten que el sonido se reproduzca en flujo continuo (streaming) o en bucle. Cualquier archivo o cualquier archivo adjunto que incumpla estos criterios se considerará no presentado.
9.4.2 Notas musicales
El solicitante podrá presentar una sola nota musical, lo cual cumplirá el requisito de representación gráfica de la marca. En dichos casos, podrá adjuntarse un archivo de sonido electrónico, aunque no es obligatorio.
9.4.3 Sonografías
El solicitante no puede presentar solo una sonografía (véase la resolución de 27/09/2007, R 708/2006-4, «TARZAN YELL»). En estos casos, es obligatorio presentar un archivo de sonido electrónico, porque ni la Oficina ni terceros pueden deducir un sonido solo con la sonografía. Todos los colores utilizados en una sonografía no forman parte de la marca, dado que el solicitante solicita una marca sonora. Por lo tanto, no se registra ningún color y, en caso de proporcionar esta indicación, la Oficina la suprimirá.
Ejemplos de marcas sonoras aceptables
CTM 8 116 337
Sonografía acompañada de un archivo de sonido
CTM 9 199 134
Sonografía acompañada de un archivo de sonido
CTM 1 637 859
Notación musical
Formalidades
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Ejemplos de marcas sonoras aceptables
CTM 6 596 258
Notación musical que incluye instrucciones musicales
9.5 Marcas de color per se
Una marca de color per se es una marca compuesta por uno o varios colores, independientemente de su forma o configuración específica. Lo que será objeto de protección es el tono del color o colores y, en el caso de más de un color, también se protege la proporción en que están distribuidos los colores.
Los colores deben indicarse en palabras en el campo «Indicación de color(es)». La representación de una marca de color per se debe consistir en una representación del color o colores sin contorno. Si hay más de un color, la proporción de cada color debe especificarse en el campo de descripción de la marca. En caso de que la solicitud no lo indique, la Oficina notificará la irregularidad, concediendo un plazo de dos meses para que se envíe la información
Si la representación incluye otros elementos, como palabras o imágenes, no estaremos ante una marca de color per se, sino ante una marca figurativa. Para más información sobre la corrección del tipo de marca, véase el apartado 9.9 de las Directrices.
Cuando se solicita una marca de color per se no resulta suficiente la aportación de una simple muestra de un color, sino que el color o colores deben describirse verbalmente en el campo «Indicación de color». Además, se recomienda encarecidamente aportar un código de identificación internacionalmente reconocido (véase la sentencia de 06/05/2003, C-104/01, «Libertel», apartados 31 a 38). Para más información sobre la indicación de color, véase el apartado 11 de las presentes Directrices.
Una solicitud de una marca de color podrá representarse mostrando el color o colores, tal como se solicitará, en algún objeto, A continuación, puede verse un ejemplo de lo anterior (véase asimismo la sentencia de 12/11/2013, T-245/12, «Dégradé de verts», apartados 38 a 39). En dichos casos, se exige una descripción de la marca para aclarar la naturaleza de la marca.
Formalidades
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Ejemplos de marcas de color per se aceptables
CTM 962 076
Color indicado: marrón
CTM 31 336
Color indicado: Lila/violeta
Descripción: Lila/violeta, color único tal y como figura en la representación. Los valores (coordenadas específicas del espacio del color) de esta marca son: L => 53,58 /- 08; A => 15,78 /- 05; B => 31,04 /- 05. La marca puede situarse en el Pantone´s Process Book entre los tonos con número E 176-4 y E 176-3.
CTM 8 298 499
Colores indicados: verde, Pantone 368 C, antracita, Pantone 425 C, naranja, Pantone 021 C
Descripción: La marca es de color verde: Pantone 368C; antracita: Pantone 425C; naranja: Pantone 021C, como se muestra en la representación; los colores se aplican en una parte considerable de la superficie exterior de las estaciones de servicio (gasolineras) en la proporción verde 60 %, antracita 30 % y naranja 10 %, con lo que se crea la impresión general de una gasolinera verde y antracita (con una proporción dominante de verde) y pequeños toques naranjas.
CTM 4 381 471
Colores indicados: Azul (Pantone 2747 C) y plata (Pantone 877 C)
Descripción: Se reivindica protección para los colores azul (Pantone 2747 C) y plateado (Pantone 877 C) yuxtapuestos tal y como se muestra en la representación de la marca de color. La proporción de los colores es aproximadamente del 50%-50%.
Formalidades
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Ejemplos de marcas de color per se aceptables
CTM 2 346 542
Colores indicados:
RAL 9018 NCS S 5040G5OY + RAL 9018 1: 4 NCS S 5040G5OY + RAL 9018 2: 3 NCS S 5040G50Y + RAL 9018 3: 2 NCS S 504050Y + RAL 9018 4: 1
NCS S 5040G50Y.
CTMA 9 869 256
Colores indicados: Azul RGB 46-122-184
Descripción: La marca está compuesta por el color azul, definido como RGB: 46-122-184, tal y como se aplica en un sello de una válvula neumática, tal y como está dibujada en la representación ilustrativa que se adjunta a la solicitud.
9.6 Hologramas
Los hologramas son especialmente difíciles de representar de forma gráfica porque una representación en papel no permite que la imagen «cambie» como lo haría naturalmente en un papel holográfico. Sin embargo, podrá representarse gráficamente un holograma con una clara descripción de la marca y las vistas suficientes de la misma. Por lo tanto, cuando se solicita un holograma como marca comunitaria, podrá presentarse más de una representación de la marca que proporcione todas las vistas diferentes en una hoja normal A4 en el caso de las presentaciones en papel y en un único archivo JPEG en el caso de una presentación electrónica.
9.7 Marcas olfativas
Actualmente las marcas olfativas no son aceptables, porque una representación gráfica debe ser clara, precisa, completa en sí misma, fácilmente accesible, inteligible, duradera y objetiva (véase la sentencia de 12/12/2002, C-273/00, «Sieckmann»). Tal como ocurre en el resto de tipos de marcas, las descripciones de la marca no sustituirán a las representaciones gráficas. Aunque puede ser gráfica, la descripción de un olor no es clara, ni precisa ni objetiva y, por lo tanto, no se atribuirá ninguna fecha de presentación, porque la marca no puede representarse de forma gráfica. Dichos casos (véase asimismo la resolución de 04/08/2003, R 0120/2001-2, «The taste of artificial strawberry flavour») no serán desestimados, aunque se considerarán no presentados.
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9.8 Otras marcas
Otras marcas deben incluir una indicación en la descripción de la marca de lo que significa «otras». Pueden ser «otras» marcas, por ejemplo, las marcas animadas (marcas animadas), las marcas de posición o las marcas de trazado (rayas de colores o hilos aplicados a determinados productos).
9.8.1 Marcas de movimiento
El número de representaciones de marca es prácticamente ilimitado siempre que se indiquen todos en una única hoja A4 normal en el caso de las presentaciones en papel o en un único documento JPEG en el caso de una presentación electrónica. La representación de marca deberá ir acompañada por una descripción de marca que explique la animación.
Las representaciones junto con la descripción de la marca debe explicar de forma clara el movimiento que será objeto de protección. Cuando el movimiento sea imperceptible (p. ej., las representaciones están fuera de la secuencia), o la descripción de la marca no se corresponde con la secuencia de las representaciones, la Oficina emitirá una irregularidad que permitirá que en el plazo de dos meses se aclaren las representaciones y/o la descripción. En caso de no subsanarse dicha irregularidad en el plazo, se denegará la solicitud.
Cuando las representaciones incluyan colores, deberá indicarse el/los color(es) utilizado(s) en palabras.
Ejemplos de marcas de movimiento aceptables
CTM 5 338 629
Descripción: La marca es una secuencia animada con dos segmentos llameantes que se unen en la parte superior derecha de la marca. Durante la secuencia animada, un objeto geométrico se eleva junto al primer segmento y después desciende junto al segundo segmento, mientras unas cuerdas individuales dentro de cada segmento pasan de oscuras a iluminadas. El punteado que se muestra en la marca es solamente para el sombreado. La secuencia animada completa tiene una duración de entre uno y dos segundos.
Representaciones: Representación de la marca en blanco y negro y sombras solo en gris; sin indicación de color.
Formalidades
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Ejemplos de marcas de movimiento aceptables
CTM 9 742 974
Descripción: La marca contiene una imagen en movimiento que consiste en un cepillo de dientes que se mueve hacia un tomate, presionando el tomate sin romperle la piel, y alejándose del mismo.
Representaciones
Ejemplo de una marca de movimiento inaceptable
CTM 7 227 218
Descripción: La marca consiste en una imagen de marca en movimiento, compuesta por una secuencia animada que muestra una serie de pantallas de video rectangulares de varios tamaños, con o sin imágenes discernibles incluidas, que vuelan hacia dentro como un remolino, como si desde la ubicación del espectador, se movieran hacia el centro de la pantalla, donde forman una palabra.
No puede captarse el movimiento de la marca con las imágenes y la descripción no cambia este hecho.
9.8.2 Marcas de posición
Las marcas de posición son signos colocados en una parte determinada de un producto de tamaño constante o de una proporción particular con respecto al producto. El signo ha de estar representado de forma gráfica. Como el solicitante tiene por objeto proteger la colocación o «posición» de la marca, la descripción de la marca que detalla su colocación es un requisito formal. La descripción de la marca también debe incluir una indicación de que es una «marca de posición» y, si se presenta una representación en color, el/los color(es) utilizado(s) deben indicarse en palabras.
En la medida en que una marca de posición comprende algunos productos cuya colocación está clara y otros cuya colocación no lo está, deberá notificarse la irregularidad formal respecto de aquellos productos para los que la marca no pueda colocarse (de forma clara) de la manera que se especifica en la descripción de la marca. Se concede un plazo de dos meses al solicitante para que modifique la solicitud. Si la solicitud no se limita a los productos para los que está clara la colocación, deberá denegarse la solicitud para aquellos productos y/o servicios para los que la colocación es dudosa o imposible.
Formalidades
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Ejemplos de marcas de posición aceptables
CTM 4 717 914
Indicación de color: Rojo
Descripción: Ribete rojo de 2 mm de ancho que transcurre a lo largo del borde de la entrada del zapato y la parte del cordón.
CTM 3 799 574
Indicación de color: Verde (Pantone 347 C)
Descripción: Anillo verde colocado entre las conexiones eléctricas del portalámparas.
CTM 9 045 907
Colores indicados: Rojo, negro y gris
Descripción: La marca consiste en la combinación de los colores rojo, negro y gris tal y como se han aplicado en las superficies exteriores de un tractor, en concreto rojo, tal y como se ha aplicado al capó, al techo y a los arcos de las ruedas, gris claro y oscuro, tal y como se ha aplicado al capó en una banda horizontal y negro, tal y como se ha aplicado a la parrilla del capó frontal, al chasis y al reborde vertical, tal y como figura en la representación ilustrativa adjunta a la solicitud.
Formalidades
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Ejemplos de marcas de posición aceptables
CTM 6 900 898
Descripción: Dos líneas curvas cruzadas en un punto del diseño insertado en un bolsillo; la marca está compuesta por una costura decorativa compuesta de dos líneas curvas cruzadas en un punto del diseño insertado en un bolsillo; una de las curvas se caracteriza por su forma de arco, está dibujada con un trazo fino, mientras que la segunda se caracteriza por su forma sinusoidal, dibujada por un trazo grueso; las líneas discontinuas no uniformes representan el perímetro del bolsillo sobre el que el solicitante no ha presentado ninguna reivindicación y que solo sirve para indicar la posición de la marca en el bolsillo.
CTM 8 586 489
Descripción: La marca es una marca de posición. La marca consiste en dos líneas paralelas colocadas en la superficie exterior de la parte superior de un zapato. La primera línea sale del centro del borde de la suela de un zapato y se inclina hacia atrás hacia la el empeine de un zapato. La segunda línea sale paralela a la primera línea y continúa en una curva hacia atrás a lo largo del talón de un zapato hasta el tacón de un zapato y termina en el borde la suela de un zapato. La línea de puntos marca la posición de la marca y no forma parte de la marca.
Las marcas de posición no son aceptables si la descripción muestra que la posición puede variar, por ejemplo: «la marca está compuesta de la [descripción del dispositivo] aplicado en la parte exterior de los productos». La posición de la marca debe quedar claramente definida y ser evidente de la representación y la descripción.
Ejemplos de marcas de posición/descripciones inaceptables
CTM 8 682 213
Descripción: Se reivindica la protección de la marca para una banda colocada en la carcasa de un martillo de desplazamiento de suelo (llamado perforadora de desplazamiento), que se muestra en la vista general isométrica del martillo como una banda negra, circular, que resalta de las otras partes de la carcasa mediante un diseño visible en la vista adicional, la cual muestra un detalle ampliado (semicircular) de la banda en una vista lateral del martillo. El diseño está formado por muchos surcos circulares. La banda está colocada en una sección de la carcasa que, vista desde la punta cónica del martillo es igual al segundo cuarto de la longitud total del mismo. Otras formas visibles de la representación y/o modalidades no forman parte de la marca.
El dibujo junto con la descripción no definen de forma clara qué signo es ni cómo está colocado en los productos:
(No queda claro en la representación desde qué perspectiva será visible el detalle semicircular.)
Formalidades
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Ejemplos de marcas de posición/descripciones inaceptables
CTM 8 316 184
Descripción: La marca es una marca de posición en la que un aro estrecho de cobre está colocado y es visible entre capas metálicas en el extremo superior del cuerpo de un cazo o de una sartén.
Signo que se define en relación con productos específicos; el signo es controvertido para otros productos, si su colocación en dichos productos no queda clara.
(Signo controvertido para «utensilios de cocina», ya que su forma puede variar y la colocación no quedaría clara en utensilios distintos a un cazo o una sartén)
9.8.3 Marcas de trazado
Las marcas de trazado son líneas de colores o hilos aplicados a determinados productos. Estas marcas son populares en el sector textil. Otros ejemplos son las líneas de colores en mangueras o cables. La descripción de la marca debe indicar en palabras que la marca es una «marca de trazado» y todos los colores.
Ejemplos de marcas de trazado aceptables
CTM 7 332 315
Descripción: La marca distingue tubos, mangueras o perfiles mediante líneas perpendiculares finas y negras continuas, colocadas a distancias regulares en el lado exterior del tubo, manguera o perfil, situadas entre dos líneas rojas longitudinales paralelas continuas, situadas a lo largo del tubo, manguera o perfil.
CTM 3 001 203
Colores indicados: Dorado sobre fondo claro
Descripción: En un fleje funcional de color claro, en particular un fleje de plomo, para visillos, cortinas, manteles y similares, fleje dorado integrado en forma de distintivo.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 31
FINAL VERSION 1.0 DATE 01/02/2015
9.9 Corrección del tipo de marca
9.9.1 Normas generales
Cuando la indicación del tipo de marca en la solicitud sea claramente errónea o cuando exista una contradicción manifiesta entre el tipo de marca seleccionado y la representación, incluida cualquier descripción de la marca, la Oficina corregirá el tipo de marca e informará al solicitante, estableciendo un plazo de dos meses para presentar observaciones. En caso de no responder, se considerará que el solicitante acepta la corrección realizada por la Oficina. Si el solicitante no acepta la modificación, la Oficina restablecerá la indicación general del tipo de marca. No obstante, la solicitud podrá ser desestimada, puesto que la naturaleza de la marca no está clara.
9.9.2 Ejemplos de irregularidades recurrentes en el tipo de marca
9.9.2.1 Marcas denominativas
Cuando el tipo de marca elegido sea una «palabra», pero la marca sea en realidad una marca «figurativa» como ocurre en los ejemplos del apartado 9.2 (representación en forma de varias líneas, fuentes estilizadas, etc.), la Oficina corregirá el tipo de marca y actualizará la imagen figurativa en el sistema. La Oficina enviará una notificación al solicitante informándole de la modificación y estableciendo un plazo de dos meses para presentar observaciones. Si el solicitante no responde dentro del plazo, la modificación se considerará aceptada. Si el solicitante presenta observaciones que cuestionan la modificación y la Oficina no está de acuerdo con las observaciones, se cambiará de nuevo el tipo de marca a marca «denominativa», pero se denegará la solicitud.
9.9.2.2 Marcas figurativas
Si no se ha indicado ningún tipo de marca y la marca es claramente figurativa según los ejemplos anteriores, la Oficina indicará el tipo de marca y enviará una notificación explicativa.
Algunas veces las marcas «figurativas» en color se presentan erróneamente como «marcas de color». Asimismo, las diferencias tipológicas de las marcas varias en los Estados miembros de la UE puede provocar irregularidades en el tipo de marca, en particular respecto de las marcas que combinan una palabra y un elemento figurativo que se suelen presentar incorrectamente como «otras» en lugar de como marcas «figurativas». En dichos casos, la Oficina corregirá el tipo de marca a «figurativa» e informará de ello al solicitante, estableciendo un plazo de dos meses para presentar observaciones.
Ejemplo 1
Una marca figurativa solicitada como marca de color per se.
La Oficina cambiará el tipo de marca de color per se a figurativa y enviar una notificación que confirme la modificación. Si el solicitante no está de acuerdo, podrá presentar observaciones. Si la Oficina no está de acuerdo con las observaciones, restablecerá la indicación original del tipo de marca, aunque se denegará la solicitud.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 32
FINAL VERSION 1.0 DATE 01/02/2015
Si, en cambio, no hay una respuesta dentro del plazo, el cambio del tipo de marca se considerará aceptado y la solicitud continuará.
Ejemplo 2
Las marcas siguientes se solicitaron como tipo de marca «otras»:
CTM 9 328 121
CTM 9 323 346
Cuando el solicitante elige el tipo de marca «otras», en lugar de marcar «figurativa» y añade en el campo explicativo de los términos «otras marcas» palabras como «texto y logotipo» «marque semi-figurative», «marca mixta», «Wort-Bild-Marke», o incluso «colour per se» (porque su marca incluye elementos de color), pero ha solicitado de forma clara una marca figurativa, tal como se ha definido anteriormente, la Oficina cambiará el tipo de marca de otras a figurativa y enviará una notificación al solicitante informándole de la modificación y concediéndole dos meses para que presente observaciones. Si el solicitante no responde en el plazo de dos meses, el cambio del tipo de marca se considerará aceptado y la solicitud continuará. Si el solicitante presenta observaciones oponiéndose a la modificación y la Oficina no está de acuerdo con las mismas, ésta podrá restablecer la indicación original del tipo de marca, pero se denegará la solicitud.
Ejemplo 3
En algunos casos, las marcas pueden presentarse como, por ejemplo, «figurativas», aunque la representación y/o la descripción de la marca demuestren que lo que se pretendía era una marca tridimensional.
Solicitud de MC 10 318 897
Tipo de marca seleccionado: Figurativa
Descripción: La marca consiste en la forma de un estante para los productos. Sus extremos tienen forma elíptica y el extremo frontal del mismo tiene forma cónica. La parte de la marca que se muestra con líneas de puntos no forma parte de la misma y sirve solo para mostrar la posición o la colocación de la marca.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 33
FINAL VERSION 1.0 DATE 01/02/2015
En este caso, la descripción de la marca que hace referencia a «forma de un estante» entra en contradicción con el tipo de marca «figurativa», por lo que se pidió al solicitante que modificara el tipo de marca a «tridimensional» o que suprimiera la descripción de la marca.
10 Serie de marcas
En todas las solicitudes para cualquier tipo de marca, solo puede solicitarse protección para una única marca. A diferencia de lo que ocurre en algunos sistemas nacionales, el Reglamento de marcas comunitarias no permite la serie de marcas. Cuando se necesitan diferentes versiones de una marca, deberá presentarse por separado una solicitud de marca comunitaria para cada una de esas versiones.
Ejemplo 1
Una marca denominativa presentada como «BRIGITTE brigitte Brigitte» no se «interpretará» como «la palabra “Brigitte”», escrita en letras mayúsculas o minúsculas o en letras «normales»; se considerará como una marca denominativa que incluye tres veces el nombre femenino «Brigitte».
Ejemplo 2
Una marca denominativa presentada como «Línea Directa/ Direct Line/Ligne Directe» no se «interpretará» como el «término "direct line" en español, en inglés o en francés»; se considerará una marca denominativa que incluye las versiones en las tres lenguas en la misma secuencia tal como se ha solicitado. No se enviará ninguna notificación de irregularidad y no se aceptarán cambios en la marca.
10.1 Representaciones figurativas múltiples
En una solicitud presentada por vía electrónica deberá cargarse la reproducción de la marca como un único archivo JPEG. Cuando se utilice un formulario de solicitud en papel, la reproducción de la marca deberá adjuntarse en una única hoja A4.
La hoja A4 o el archivo JPEG solo incluirán una única representación de la marca tal como se solicita, sin ningún texto adicional.
Cuando una solicitud presentada en papel incluye más de una hoja A4 con diferentes marcas, aunque sean muy similares, la Oficina emite una notificación de irregularidad en la que pide al solicitante que elija una marca de entre las distintas variaciones. Si el solicitante desea proteger también el resto de variaciones, deberá presentar una nueva solicitud para cada una de las otras marcas que desea registrar. Cuando no hay respuesta a la notificación de irregularidad en el plazo establecido en la misma, se denegará la solicitud.
Cuando una solicitud, presentada tanto en papel como por vía electrónica, incluye un archivo JPEG o una hoja A4 indicando que lo que puede considerarse como más de una representación de la marca, se considerará como marca, para la que se busca protección, la combinación de todas las variaciones, tal como aparecen en esa única página. No están permitidos los cambios en la representación de la marca.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 34
FINAL VERSION 1.0 DATE 01/02/2015
CTM 8 975 286
Dado que el documento JPEG adjunto a la solicitud anterior incluía todas las imágenes en una única página, todas las variaciones de los logotipos y los colores y textos se consideran una única marca.
11 Indicación de color
Regla 3, apartado 5; y regla 80, del REMC
Las marcas denominativas y las marcas sonoras no pueden ser de color, ya que las palabras y los sonidos están protegidos incluso si la sonografía se representa en color.
Las marcas figurativas, tridimensionales, hologramas y otras marcas pueden solicitarse en color o sin color.
Cuando una marca se registra en color, deberá presentarse una representación de la marca en color junto con la solicitud, así como los colores utilizados indicados en palabras. Podrá añadirse un código internacional de color como el número Pantone a la indicación de color, aunque no podrá sustituir la indicación en palabras (p. ej., verde, azul, rojo).
Cuando se proporcione una representación del color, la Oficina considera que el solicitante reivindica de manera implícita el color y, por lo tanto, debe considerarse que se trata de la solicitud de registro de una marca de color. No es posible cambiar la solicitud a una marca en blanco y negro (véase la resolución de 25/08/2010, R 1270/2010-4, «Form von Prüfköpfen (3D MARKE)»). La única opción que tiene el solicitante es presentar una nueva solicitud con una representación en blanco y negro.
Si en una solicitud de una marca de color se utilizan los colores gris, negro y blanco utilizados con fines distintos a los de contrastar o delimitar, esto también deberá reivindicarse.
No son aceptables expresiones como «multicolor», «de varios colores», «en cualquier combinación posible» o «en cualquier proporción» (véase la resolución de 25/08/2010, R 1270/2010-4, «Form von Prüfköpfen (3D MARKE)»).
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 35
FINAL VERSION 1.0 DATE 01/02/2015
Cuando se ha omitido la indicación de color(es), la Oficina propondrá los colores al solicitante, estableciendo un plazo de dos meses para responder. Si no se recibe una respuesta antes de que expire el plazo, se considerarán aceptados el color o los colores que ha propuesto la Oficina. Si el solicitante no está de acuerdo con la introducción de los colores, la Oficina suprimirá la indicación. No obstante, en dichos casos, si el solicitante no indica los colores aceptables, se denegará la solicitud.
Si no es posible establecer el/los color/es, la Oficina pedirá al solicitante que proporcione los colores. Si el solicitante no presenta una indicación de color aceptable en el plazo de dos meses, la solicitud será denegada (reglas 9, apartado 4, y regla 3, apartado 5, del REMC).
Si la solicitud incluye una reclamación de color pero se ha recibido una representación en color de la marca, existirá una discrepancia formal entre la marca en blanco y negro solicitada y el/los color/es reivindicados. La Oficina corregirá cualquier indicación de color (por ejemplo, a negro, blanco y/o gris) e informará al solicitante de ello.
La única excepción a esta regla se da cuando la solicitud se presenta por telefax, en cuyo caso el solicitante puede (por iniciativa propia) enviar una representación en color por correo postal en el plazo de un mes desde que envía la solicitud. Este plazo de un mes no podrá prorrogarse. Cuando se recibe la representación en color dentro de este plazo, la representación original en blanco y negro se sustituirá por la nueva representación en color. Si el solicitante no envía la representación de la marca de color, la Oficina no la solicitará. Si no se presenta la representación en color en el plazo de un mes, se corregirá cualquier indicación de color a negro, blanco y/o gris, según corresponda, y se informará al solicitante de ello. La reivindicación de color no se eliminará si el solicitante ha proporcionado una reivindicación de color que haya sido corregida por la Oficina.
El negro, el gris y el blanco se consideran «colores». La indicación de los colores que ha hecho el solicitante («blanco y negro» o «negro, gris y blanco», etc.) estará sujeta a las mismas reglas que se aplican al resto de indicaciones de color que se han descrito anteriormente.
Cuando la representación de la marca se presente por medios distintos al fax en blanco y negro, incluido el gris, no podrá modificarse con una marca de color incluso si la marca en blanco y negro se presentó junto con una reivindicación de color, una indicación de color y/o una descripción que haga referencia a los colores.
Cabe señalar que las indicaciones como «transparente», «sin color» o «incoloro» no son indicaciones de colores y no podrán utilizarse. Cuando una representación de marca muestra, por ejemplo, un objeto «incoloro» hecho de vidrio o de un material similar delante de un fondo con color, la descripción de la marca será el lugar adecuado para explicar que el objeto de que se trate es incoloro y que se muestra delante de un fondo con color que no forma parte de la marca. Un objeto transparente puede incluso ser de color, como una botella de vino estándar que suele ser verde y normalmente transparente. Cuando el solicitante considera que una característica importante de su marca es «transparente», deberá añadir una descripción de la marca en este sentido.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 36
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos de indicaciones de color
CTM 10 275 519
Sin indicación de color
No es necesaria la indicación de color. No obstante, el solicitante podría reivindicar el blanco y negro, ya que estos colores se consideran una característica de la marca.
CTM 8 401 572
Indicación de color: Crema, azul, naranja, marrón, rojo, rosa, amarillo, negro, verde, marrón.
Debe indicarse el negro porque la solicitud es para una marca de color y el negro no solo se utiliza para realizar un contraste y delimitación, es decir, el negro también se utiliza para la cola, los ojos, la nariz y las orejas.
CTM 10 456 762
Sin indicación de color
No es necesaria la indicación de color. No obstante, el solicitante puede reivindicar el negro, blanco y gris, ya que estos colores se consideran una característica de la marca.
CTM 9 732 793
Indicación de color: Rojo, naranja, amarillo, verde menta, verde mar, azul, púrpura, rosa.
Debe reivindicarse el negro en esta solicitud, ya que se trata de una marca de color y el negro se utiliza con fines distintos del contraste y la delimitación, por ejemplo, para las letras.
CTM 10 336 493
Indicación de color: Morado, azul, amarillo, blanco, naranja, rojo y negro,
Se reivindica el negro, aunque la Oficina aceptaría la indicación de color sin negro, ya que éste se utiliza para delimitar (alrededor de las palabras «POP-UP!»)
En los casos en que la indicación de color incluye información que no es relevante para este campo, pero sí para otro campo de la solicitud, la Oficina trasladará el texto al campo que corresponda e informará de ello al solicitante. Algunos ejemplos de esto son los casos en que la indicación de color incluye una descripción de la marca, una renuncia a reivindicar derechos exclusivos o una lista de productos y servicios.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 37
FINAL VERSION 1.0 DATE 01/02/2015
12 Descripciones de la marca
Regla 3, apartado 3, del REMC
Las descripciones de la marca son obligatorias para las solicitudes de marcas comunitarias del tipo de marca «otras», porque se exige una explicación de lo que significa «otras» para aclarar el alcance de la protección (definir la naturaleza de lo que se protege). Si falta la descripción o ésta no es clara, se planteará una irregularidad. En caso de no subsanarse, la marca se denegará.
De igual modo, cuando se solicitan combinaciones de color per se, deberá indicarse la proporción de los colores. Las marcas denominativas no pueden tener una descripción de la marca; en caso de incluirla, la Oficina la suprimirá y se informará de ello al solicitante. No se establecerá un plazo para presentar observaciones, ya que la descripción de la marca no está prevista para las marcas denominativas.
Para el resto de tipos de marca, no es obligatoria la descripción de la marca, pero puede ser útil para ayudar a la Oficina a determinar la naturaleza de la marca o aclarar la representación. Si la descripción no corresponde con la representación de la marca, se pedirá al solicitante que la suprima o la modifique. La representación no puede cambiarse para que corresponda con la descripción de la marca.
Cuando se pretenda utilizar la solicitud de la marca comunitaria como base de una solicitud internacional, el solicitante deberá considerar si incluye una descripción de la marca en su solicitud de marca comunitaria, ya que la descripción es un requisito formal en algunos países. Para más información, véanse las Directrices, Parte M, Marcas internacionales.
Una descripción de la marca solo puede definir lo que puede verse en la representación de la marca u oírse en una marca sonora. No deberá incluir una interpretación de lo que significa una determinada combinación de letras o de elementos gráficos o lo que el diseñador tenía en mente o una indicación de que la marca solo se utilizará en determinados Estados miembros, etc. Tampoco es posible establecer en una descripción de la marca que la marca puede contener, por ejemplo, los colores azul y verde o rojo y amarillo; la descripción debe establecer si es la combinación azul/verde o rojo/amarillo, en concreto, lo que puede verse en la representación de la marca de color.
La representación de la marca junto con una descripción, en su caso, debe ser suficiente para que la Oficina vea y entienda lo que se pretende registrar.
Será aceptable que una marca esté compuesta por letras o incluya letras de un alfabeto extracomunitario y el solicitante facilite una transliteración o una traducción junto con una transliteración del término en la descripción de la marca.
Cuando se elimine una descripción de la marca, se informará de ello al solicitante. En ningún caso, podrá cambiarse la representación de la marca para que se corresponda con la descripción de la marca.
Si la descripción de la marca no se corresponde con la representación de la marca, la Oficina planteará una irregularidad y el solicitante tendrá dos meses para subsanarla. En caso de no subsanarse dicha irregularidad:
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 38
FINAL VERSION 1.0 DATE 01/02/2015
1. la Oficina denegará la solicitud de MC para «combinaciones de color per se» y «otras» marcas que exigen una descripción de la marca que explique el alcance de la protección;
2. en el resto de casos, dado que la descripción no es obligatoria, la Oficina la suprimirá.
Si la descripción de la marca incluye información que no es una descripción relevante y la información no es relevante para ningún otro campo del formulario de solicitud (p. ej., el texto interpreta el significado o simbolismo de la marca o indica en qué Estados miembros se utilizará la marca), la Oficina suprimirá la descripción de la marca e informará al solicitante, sin establecer un plazo para presentar observaciones.
En los casos en que la descripción de la marca incluye información que no es una descripción relevante para este campo, pero sí para otro campo de la solicitud, la Oficina trasladará el texto al campo que corresponda e informará de ello al solicitante, sin establecer un plazo para presentar observaciones.
Algunos ejemplos de esto se dan cuando los colores se mencionan en el campo de la descripción de la marca; éstos serán válidos como indicación de color y se incluirán en el campo relevante para la indicación de colores. Si los productos y servicios se mencionan en el campo de descripción de la marca en lugar de en el campo para los productos y servicios, la Oficina las suprimirá de la descripción de la marca y si los productos y servicios ya no están comprendidos en la lista, la Oficina informará al solicitante de que podrá añadir los productos y servicios.
Este principio se aplicará mutatis mutandis en todos los casos en que la información necesaria sobre la marca se incluya en un campo incorrecto de la solicitud.
La descripción de la marca podrá modificarse o añadirse después de la presentación de la marca para describir de forma más clara el contenido de la marca, por ejemplo, la descripción del movimiento. Sin embargo, esta modificación no debe alterar de forma sustancial la naturaleza de la marca. Después del registro, no podrá modificarse la descripción.
Ejemplos de descripciones de la marca aceptables
CTM 1 915 248
Tipo de marca: Figurativa
Descripción: La marca está compuesta por la palabra «ALBALUNA» escrita con una caligrafía especial, donde la letra «L» está superpuesta sobre el perfil de una luna menguante.
CTM 2 023 950
Tipo de marca: Figurativa
Descripción: La marca está constituida por la palabra «AIA» en color rojo, en mayúsculas estilizadas, con la letra I bajo un círculo de color rojo, dentro de un óvalo blanco delimitado por un marco rectangular verde, todo ello perfilado por un borde de color oro.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 39
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos de descripciones de la marca aceptables
CTM 8 837 502
Tipo de marca: Otras (posición)
Descripción: Esta marca de posición está compuesta por un logotipo, formado por un rectángulo redondeado en las esquinas con un borde claro y las letras «PP» situadas una junto a otra de color claro sobre fondo blanco; el logotipo aparece sobre una pantalla, mientras que la emisión de un programa de televisión u otro programa aparece en la esquina superior derecha de la pantalla.
CTM 6 453 104
Tipo de marca: Tridimensional
Descripción: Marca tridimensional que consiste en una forma de botella, cuyo cuerpo es más estrecho en la base y se alarga en el centro. Dicha botella presenta una decoración especial en forma de espiral realizada por una línea punteada dorada, interrumpida por una mariposa dorada; al final de la línea, en la parte frontal, se ven dos figuras de mariposa, una grande y una más pequeña, de color rojo con un doble perfil negro y dorado. Debajo de las figuras se ve la expresión «BELLAGIO» en letra mayúscula de color blanco con el perfil rojo; debajo, también de color dorado, se ve la expresión «The Beautiful Life». La botella está cerrada con una cápsula de color rojo burdeos, sobre la cual se alinean algunas mariposas doradas.
CTM 1 027 747
Tipo de marca: Otras (posición)
Descripción: Tira roja colocada longitudinalmente sobre un artículo de calzado que cubre parcialmente la parte posterior de la suela y parcialmente la parte trasera de dicho calzado. Cualquier moldura que se vea en la suela o en la parte de atrás del artículo de calzado y/o las características de producción no forman parte de la marca.
CTM 7 332 315
Tipo de marca: Otras (marca de indicador)
Descripción: La marca distingue tubos, mangueras o perfiles mediante líneas perpendiculares finas y negras continuas, colocadas a distancias regulares en el lado exterior del tubo, manguera o perfil, situadas entre dos líneas rojas longitudinales paralelas continuas, situadas a lo largo del tubo, manguera o perfil.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 40
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos de descripciones de la marca aceptables
CTM 2 818 334
Tipo de marca: Otras (móvil)
Descripción: La «T» se forma con dos manos; desde la posición del espectador, la mano derecha que se extiende plana con las puntas de los dedos apuntando hacia arriba (de forma que solo se ve el extremo estrecho de la mano) se mueve desde la parte superior izquierda de la imagen hacia el centro, mientras que la mano izquierda también está extendida con las puntas de los dedos hacia arriba y que si se ve desde el lateral, se mueve de la parte superior derecha de la imagen hacia el centro; ambas manos se encuentran, de este modo, en el centro de la imagen con las puntas de los dedos de la mano derecha tocando la superficie de la mano izquierda en el centro; el espectador entonces ve una vista lateral de la mano izquierda descendiendo hacia el resto de los dedos de la mano derecha que va hacia arriba, como resultado de este movimiento, el espectador puede reconocer en ese momento la letra «T».
CTM 5 090 055
Tipo de marca: Sonora
Descripción: La marca consiste en el aullido del personaje de ficción TARZÁN, aullido pautado conforme a cinco fases diferentes, a saber, sostenido, seguido por ululación, y a continuación sostenido, pero a una frecuencia más elevada, seguido de ululación, y a continuación sostenido en la frecuencia de inicio, y representado por las representaciones establecidas a continuación, siendo la representación superior una trama, en el momento del aullido, del sobre normalizado de la forma de onda de la presión del aire y la representación inferior un espectograma normalizado del aullido consistente en una descripción tridimensional del contenido de la frecuencia (los colores tal como aparecen) contra la frecuencia (eje vertical) durante el tiempo del aullido (eje horizontal) reproduciéndose también la marca en el archivo electrónico anexo que contiene el sonido.
Tipo de marca: Figurativa
Descripción: La marca consiste en tres formas azules y tres formas rojas, enfrentadas en direcciones opuestas.
Ejemplo de una descripción de la marca que no sería aceptable
Tipo de marca: Figurativa
Descripción de la marca: La marca está compuesta por dos manos que atrapan el aire.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 41
FINAL VERSION 1.0 DATE 01/02/2015
13 Renuncias a reivindicar derechos exclusivos («disclaimers»)
Artículo 37, del RMC Regla 1, apartado 3, del REMC
Una renuncia a reivindicar derechos exclusivos es una declaración por parte del solicitante de que se compromete a no alegar derecho de exclusividad sobre un elemento de la representación de la marca que no posea carácter distintivo.
Un solicitante no puede renunciar al uso de su marca sobre un producto o servicio en especial de su lista. Si el solicitante desea reducir el alcance de los productos y servicios que la solicitud de la marca comunitaria protege, será necesario que pida una limitación de la lista de los productos y servicios.
En general, no es necesario declarar que no se alegarán derechos de exclusividad sobre los elementos que designan la especie, la calidad, la cantidad, el valor o la procedencia geográfica de productos o servicios. Lo mismo ocurre en el caso de las palabras corrientes que son comunes a muchas marcas (el/la/los/las, de, etc.) o en el de otros elementos no distintivos (márgenes, formas habituales de recipientes, etc.) Si una marca consiste en una combinación de elementos que por separado carecen inequívocamente de carácter distintivo, no es necesario declarar que no se alegarán derechos sobre cada uno de ellos. Por ejemplo, si la marca de una publicación periódica es «Noticias locales e internacionales de Alicante», no es necesario que los elementos individuales que la componen sean objeto de declaración.
Este no es un campo obligatorio en el formulario de solicitud. La Oficina introduce el texto solicitado como declaración de no alegación de derechos exclusivos y no se añadirá a este campo ninguna otra información que se haya solicitado.
Ejemplo de una declaración de no alegación de derechos exclusivos aceptable
Marca
DOODAH SOCKS
Productos
Clase 25
Renuncia a reivindicar derechos exclusivos
«socks»
Ejemplos de declaraciones de no alegación de derechos exclusivos inaceptables
Marca
DOODAH SOCKS
Productos y servicios
Clases 1 a 45
Renuncia a reivindicar derechos exclusivos
La marca no se utilizará en Alemania
No se trata de una declaración de no alegación de derechos exclusivos y el texto se suprimirá.
Marca
DOODAH SOCKS
Productos
Calcetines de la clase 25.
Renuncia a reivindicar derechos exclusivos
El solicitante renuncia a cualquier uso de la marca para calcetines
para hombre.
No se trata de una renuncia a reivindicar derechos exclusivos, sino que es una limitación de los productos y el texto se suprimirá.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 42
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos de declaraciones de no alegación de derechos exclusivos inaceptables
Marca
Gelamondo
Productos de la clase 30: helados cremosos; productos de helado;
bebidas de helado; tartas de helado; mezclas de helado;
preparados instantáneos para hacer helados; hielo; agentes
aglutinantes para hielo.
Renuncia a reivindicar derechos exclusivos
Softeis (helado suave)
No se trata de una declaración de no alegación de derechos exclusivos y el texto se suprimirá.
Las declaraciones de no alegación de derechos exclusivos pueden añadirse a la solicitud de marca en una fase posterior, en su caso (p. ej., si la solicitud es objeto de oposición y las partes acuerdan una renuncia para llegar a un acuerdo amistoso).
Para más información sobre las renuncias a reivindicar derechos exclusivos, véanse las Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo.
En caso de que la declaración de no alegación de derechos exclusivos pueda objetarse por motivos formales, se enviará una notificación de irregularidad al solicitante para que la subsane. En caso de no subsanarse, la declaración se eliminará.
14 Prioridad (de convenio)
Artículos 29 y 31, del RMC Reglas 6 y 9, del REMC Decisión nº EX-03-5 y Decisión nº EX-05-05 del Presidente de la Oficina
En virtud del derecho de prioridad, a efectos de la determinación de la anterioridad de los derechos, la fecha de prioridad tendrá la consideración de fecha de presentación de la solicitud de marca comunitaria.
Los principios de prioridad se establecieron por primera vez en el Convenio de París para la Protección de la Propiedad Industrial de 20 de marzo de 1883, varias veces revisado y modificado por última vez en 1979 y ratificado por muchos Estados contratantes. El artículo 4 del Convenio, por lo que a las marcas se refiere, se corresponde con el artículo 29 del RMC.
El derecho de «prioridad de convenio» es un derecho limitado en el tiempo, que se genera con la primera presentación de la marca. Podrá reivindicarse durante un periodo de seis meses tras la primera presentación, siempre que el país de la primera presentación fuera parte del Convenio de París o de la OMC, o se tratara de un país con un acuerdo de reciprocidad (véase la regla 101, del REMC – conclusión de reciprocidad por parte de la Comisión).
Los Estados que se indican a continuación y otras entidades no son miembros de cualquiera de los convenios relevantes ni se benefician de las conclusiones de reciprocidad. Por lo tanto, las reivindicaciones de prioridad basadas en las presentaciones en estos países serán desestimadas.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 43
FINAL VERSION 1.0 DATE 01/02/2015
Estados independientes (no miembros del CP, la OMC o el acuerdo de reciprocidad):
Afganistán (AF) Aruba (AW) Cabo Verde (CV) Islas Cook (CK) Eritrea (ER) Etiopía (ET) Kiribati (KI) Islas Marshall (MH) Micronésia (Estados Federados de) (FM) Nauru (NR) Palau (PW) Somalia (SO) Tuvalu (TV). Otras entidades (no miembros del CP, la OMC o el acuerdo de reciprocidad):
Abjasia Samoa Americana (AS) Anguila (AI) Bermuda (BM) Islas Caimán (MH) Islas Malvinas (FK) Guernsey (Isla del Canal) (GC) Isla de Man (IM) Jersey (Isla del Canal) (JE) Montserrat (MS) Isla Pitcairn (PN) Saint Helena (SH) Somalia (SO) Islas Turcas y Caicos (TC) Islas Vírgenes (Británicas) (VG).
La reivindicación de prioridad de una marca comunitaria previa es aceptable si a dicha marca comunitaria se le concedió una fecha de presentación. Las reivindicaciones de prioridad de un registro internacional no son aceptables, ya que se aplica el principio de primera presentación (artículo 29, apartado 4, del RMC, véase infra el apartado 14.1) y la reivindicación de prioridad únicamente estará basada en la correspondiente marca de base.
El solicitante puede reivindicar la prioridad de una o más solicitudes de marca previas, en particular una solicitud nacional (o del Benelux) presentada en o para un Estado que sea parte del Convenio de París, un miembro del Acuerdo sobre los ADPIC, un Estado para el que la Comisión haya confirmado la relación de reciprocidad, o una solicitud de marca comunitaria. Véase el apartado 14.1 «Principio de primera presentación» para más información sobre las solicitudes que reivindican la prioridad de más de una solicitud previa.
Se reconoce que da origen al derecho de prioridad todo depósito que sea equivalente a una presentación nacional regular en virtud de la legislación nacional aplicable. Por depósito nacional regular se entiende todo depósito que sea adecuado para
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 44
FINAL VERSION 1.0 DATE 01/02/2015
determinar la fecha en la cual la solicitud fue depositada en el país de que se trate, cualquiera que sea la suerte posterior de esta solicitud.
El derecho de prioridad reivindicado siempre debe ser una solicitud anterior y no puede llevar la misma fecha que la solicitud de marca comunitaria.
Las reivindicaciones de prioridad pueden presentarse o en la solicitud de marca comunitaria o con posterioridad a la presentación, en cuyo caso la solicitud deberá presentar la declaración de prioridad, indicando la fecha en la que se realizó la solicitud previa y el país en que se presentó, en el plazo de dos meses a partir de la fecha de presentación.
La reivindicación puede ser implícita, por lo que la presentación de los documentos de prioridad (dentro del plazo de dos meses) se entenderá como declaración de prioridad. Se aceptarán las notificaciones de presentación simples que incluyan el país y la fecha de la solicitud anterior.
Si la marca de que se trate es un logotipo en color, es obligatorio presentar fotocopias en color relacionadas con la presentación anterior.
En un plazo de tres meses a partir de la recepción de la declaración de prioridad en la OAMI, el solicitante debe suministrar a la Oficina el número o números de expediente de la solicitud o solicitudes anteriores.
Se concederá prioridad si se cumplen los siguientes requisitos:
1. la marca de la solicitud anterior y la marca comunitaria solicitada son iguales; 2. los productos y servicios son idénticos a aquellos para los que se presentó la
solicitud anterior (bastará que uno de los productos o servicios sea iguan( � 3. el titular es el mismo; 4. la fecha de presentación de la marca comunitaria está dentro del plazo de seis
meses contados desde la fecha de presentación de la solicitud de la marca anterior;
5. la prioridad debe reivindicarse en la solicitud o en el plazo de dos meses desde la fecha de presentación.
Es posible reivindicar tanto la prioridad como la antigüedad sobre la base de la misma solicitud/registro anterior si la primera presentación se registró dentro del plazo señalado.
14.1 Principio de primera presentación
La solicitud previa deberá ser una primera presentación. Por lo tanto, la Oficina comprobará en el certificado que no existió ni una reivindicación de prioridad antes de la solicitud anterior ni una reivindicación de antigüedad antes de la solicitud de marca comunitaria para la marca que tenga una fecha de presentación anterior a la de la marca de prioridad. La Oficina comprobará asimismo que la solicitud de marca comunitaria se presenta en un plazo no superior a seis meses a partir de la fecha de presentación de la solicitud anterior.
Si se reivindica la prioridad de más de una solicitud anterior, los productos y/o servicios comprendidos por cada una de dichas solicitudes deberán ser diferentes para
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 45
FINAL VERSION 1.0 DATE 01/02/2015
que se cumpla el principio de primera presentación. Para conocer ejemplos, véase infra el apartado 14.8.1.
14.2 Triple identidad
La Oficina comprobará que la solicitud de marca comunitaria y los documentos de la prioridad incluyen la misma marca, que se refieren al mismo solicitante y que tienen al menos un producto o servicio en común.
14.2.1 Identidad de las marcas
La Oficina y una serie de oficinas de marcas de la Unión Europea han acordado una práctica común en la red europea de marcas, dibujos y modelos relacionada con la identidad de las marcas presentadas en blanco y negro y/o en escala de grises, en comparación con las marcas presentadas en color. Las oficinas piensan que la Nota sobre la práctica común refleja la jurisprudencia actual de que una marca presentada en blanco y negro y/o en escala de grises, a efectos de apreciar la prioridad, no es idéntica a la misma marca presentada en color, salvo si las diferencias de color o de tonos de gris son tan insignificantes que podrían pasar desapercibidas a los ojos de un consumidor medio (véanse la sentencia de 19/01/2012, T-103/11, «justing», apartado 24; la sentencia de 20/02/2013, T-378/11, «Medinet»; y la sentencia de 09/04/2014, T-623/11, «Sobieraj (MILANÓWEK CREAM FUDGE)». Una diferencia insignificante entre dos marcas es aquella que el consumidor razonablemente atento percibiría solo si comparasen las marcas una al lado de la otra.
El principio descrito anteriormente se aplica a todos los casos en que las marcas se comparan a efectos de las reivindicaciones de la prioridad. Respecto de las marcas denominativas, en la mayoría de los casos se considerará que la marca solicitada es igual a la marca anterior cuando solo existe una diferencia de carácter tipográfico o cuando una marca se presente en letras mayúsculas y la otra en minúsculas. Asimismo, una diferencia en la puntuación o el añadir un espacio para separar dos palabras normalmente no evita que exista identidad en las marcas (véase la resolución de 09/10/2012, R 797/2012-2, «WATER JEL; y la resolución de 15/07/1998, R 10/1998-2 «THINKPAD»).
La Oficina comprobará asimismo el tipo de marca de la solicitud anterior, porque un tipo de marca distinto podría implicar que la solicitud de marca comunitaria es distinta de la marca anterior. Por ejemplo, una marca figurativa no es igual a una marca tridimensional ni a una marca de posición. En cambio, una marca denominativa puede considerarse igual a una marca figurativa si se utiliza el tipo estándar en la marca figurativa (véanse los ejemplos infra en el apartado 14.8.2).
Al realizar la apreciación de las marcas, la Oficina también considerará cualquier indicación de color de la solicitud anterior.
14.2.2 Identidad de los productos y servicios
La Oficina comprobará que al menos uno de los productos o servicios se corresponde en las listas comprendidas en la primera presentación y la solicitud de marca comunitaria. El examen no se ampliará a todos los productos y servicios cubiertos por las listas ni se limitará únicamente a los números de clase.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 46
FINAL VERSION 1.0 DATE 01/02/2015
14.2.3 Identidad del titular
La prioridad puede ser reivindicada por el solicitante de la primera solicitud o por su sucesor. En este último caso, la cesión ha de producirse antes de la fecha de presentación de la solicitud de la marca comunitaria y deberá aportarse la documentación adecuada. El derecho de prioridad como tal podrá cederse, con independencia de si se ha cedido o no la primera solicitud en su totalidad. Por tanto, se aceptará la prioridad incluso si los titulares de la solicitud de marca comunitaria y del derecho anterior son distintos, siempre que se aporte pruebas de la cesión del derecho de prioridad. En tal caso, la fecha de ejecución de la cesión debe ser anterior a la fecha de presentación de la solicitud de la marca comunitaria.
Las empresas subsidiarias o asociadas del solicitante no se consideran iguales que las del solicitante de la marca comunitaria.
Si el solicitante de la primera solicitud afirma que ha cambiado su denominación desde la primera presentación y presenta la solicitud de marca comunitaria con su nuevo nombre, se considerará que existe identidad del solicitante.
Para más información sobre la distinción entre un cambio de nombre y una cesión, véanse las Directrices, Parte E, Operaciones de registro, Sección 3, Marcas comunitarias como objetos de propiedad, Capítulo 1, Cesión.
14.3 Incumplimiento de los requisitos de prioridad
Si la reivindicación de prioridad no cumple algunos de los requisitos citados, se invitará al solicitante a que subsane la irregularidad o haga observaciones en el plazo de dos meses. Si la irregularidad no se subsana, la Oficina informará al solicitante de la pérdida del derecho de prioridad y de que podrá pedir que se dicte una resolución sobre esta pérdida de derechos (para más información véase infra el apartado 14.7, Tratamiento de las irregularidades del examen de la prioridad).
14.4 No se han facilitado los documentos de prioridad
Si los documentos de prioridad no se presentan junto con la solicitud, la Oficina comprobará en la página web de la oficina nacional si la información correspondiente está disponible en Internet. Si la información para conceder la reivindicación de prioridad no está disponible en línea, la Oficina enviará una notificación al solicitante pidiéndole dicha información. Se concederá un plazo de dos meses para que el solicitante subsane la deficiencia, plazo que, por regla general, no será prorrogable. Por lo general, la notificación de la irregularidad se emitirá antes de que expire el plazo original para presentar los documentos de prioridad (tres meses desde la fecha en que se recibe la reivindicación de prioridad). En tal caso, el plazo de dos meses se calculará a partir de la fecha en que expira el plazo original para presentar los documentos de prioridad. Con arreglo a lo dispuesto en la Decisión nº EX-03-5, no serán necesarias las copias certificadas. No serán aceptables los recibos de presentación simples que no incluyan toda la información necesaria para examinar la reivindicación de prioridad (p. ej., solo incluyen los números de clase para los productos y servicios de la solicitud anterior y no la versión con texto completo que indica todos los productos y servicios).
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 47
FINAL VERSION 1.0 DATE 01/02/2015
14.5 Lengua de la solicitud anterior
Si la lengua de la solicitud anterior no es una de las lenguas oficiales de la UE, la Oficina invitará al solicitante a presentar una traducción en el plazo de tres meses. El plazo para presentar la traducción podrá prorrogarse a petición del solicitante. En este caso, la prórroga podrá ser de hasta dos meses.
14.6 Comprobación de la fecha de prioridad tras cambiar la fecha de la presentación
Si la solicitud de marca comunitaria ha experimentado un cambio en la fecha de presentación, la Oficina deberá comprobar que la nueva fecha de presentación esté todavía dentro del plazo de seis meses de la reivindicación de prioridad.
14.7 Tratamiento de las irregularidades del examen de la prioridad
En el caso de que la primera solicitud no sea idéntica a la solicitud de la marca comunitaria, el número de presentación de la primera presentación no se haya indicado, la prioridad se haya reivindicado fuera de plazo (es decir, después del periodo de seis meses o transcurridos dos meses desde la presentación de la solicitud de marca comunitaria) o los documentos de prioridad no sean aceptables (es decir, respecto del país de primera presentación y los requisitos de triple identidad), se enviará al solicitante una notificación de irregularidad y se le concederá un plazo de dos meses para presentar observaciones o subsanar la irregularidad.
Si debe solicitarse una traducción, la Oficina notificará al solicitante enviándole una notificación de irregularidad y estableciendo un plazo de tres meses.
Si no se obtiene respuesta o si no se subsanan las irregularidades dentro del plazo, la Oficina notificará al solicitante la pérdida del derecho y establecerá un plazo de dos meses durante el cual el solicitante podrá pedir una resolución formal sobre la pérdida del derecho, que será susceptible de recurso.
Si el solicitante pide formalmente una resolución en el plazo, la Oficina emitirá una resolución formal sobre la pérdida del derecho.
Si la prioridad se reivindica después del plazo de dos meses desde la fecha de presentación de la solicitud de marca comunitaria o si la solicitud de marca comunitaria se presenta después del periodo de prioridad de seis meses, se enviará una notificación al solicitante y se establecerá un plazo para presentar observaciones. Si no se obtiene respuesta y no se subsanan las irregularidades, la Oficina informará al solicitante de la pérdida del derecho de prioridad y de la posibilidad de solicitar una resolución formal (es decir, susceptible de ser recurrida) relativa a la pérdida del derecho de prioridad.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 48
FINAL VERSION 1.0 DATE 01/02/2015
14.8 Ejemplos de reivindicaciones de prioridad
14.8.1 Primera presentación
En el siguiente ejemplo, no se puede reivindicar la prioridad de una primera presentación en Somalia, ya que este país no es un Estado miembro del Convenio de París o de la Organización Mundial del Comercio ni tiene un acuerdo de reciprocidad confirmado por la Comisión Europea. Por lo tanto, la primera presentación en Italia es la que se considerará para la reivindicación de prioridad, no teniéndose en cuenta la otra presentación.
Primera presentación País
Productos/ servicios MC presentada
Productos/ servicios
5 de abril Somalia Automóviles,camisetas Automóviles,
camisetas
7 de julio Italia Automóviles,camisetas 2 de octubre Automóviles,
camisetas
En el siguiente ejemplo, las dos solicitudes de marca anterior se presentaron para exactamente los mismos productos. Debe desestimarse la reivindicación de prioridad basada en la solicitud griega, porque la marca se solicitó primero en España, por lo tanto, la solicitud griega ya no es la primera presentación.
Primera presentación País
Productos/ servicios MC presentada
Productos/ servicios
6 de abril España Queso, vino Queso, vino
7 de abril Grecia Queso, vino 4 de octubre Queso, vino
14.8.2 Comparación de las marcas
Ejemplos de reivindicaciones de prioridad aceptables
Solicitud de MC (marca denominativa)
EVAL
Reivindicación de prioridad (marca denominativa)
EVAL
Solicitud de MC (marca denominativa)
Luna
Reivindicación de prioridad (marca denominativa)
Luna
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 49
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos de reivindicaciones de prioridad aceptables
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 50
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos de reivindicaciones de prioridad inaceptables
Solicitud de MC (color per se) Reivindicación de prioridad (color per se)
Solicitud de MC (marca denominativa)
Chocolate Dream
Reivindicación de prioridad (marca denominativa)
Chocalate Dream
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 51
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos de reivindicaciones de prioridad inaceptables
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Solicitud de MC (marca figurativa) Reivindicación de prioridad (marca figurativa)
Ejemplos adicionales relacionados con las marcas denominativas
Primera marca Solicitud de MC la misma no es la misma
Marca denominativa
Percy & Reed
Marca denominativa
Percy + Reed X
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 52
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos adicionales relacionados con las marcas denominativas
Primera marca Solicitud de MC la misma no es la misma
Marca denominativa
Percy & Reed
Marca denominativa
Percy and Reed X
Marca denominativa
Percy & Reed
Marca denominativa
Percy & Reed X
Marca denominativa
Percy & Reed
Marca denominativa
Percy & REED X
Marca denominativa
Percy & Reed
Marca denominativa
PERCY & REED X
Marca denominativa
Percy & Reed
Marca denominativa
Percy & Reed
X
Marca denominativa
POPEYE
Marca denominativa
POPeye X
Marca denominativa
POPEYE
Marca denominativa
PopEye X
Marca denominativa
POPEYE
Marca denominativa
POP-EYE X
Marca denominativa:
POPEYE
Marca denominativa:
POP EYE X
Marca denominativa
POPEYE®
Marca denominativa
POPEYE X*
Marca denominativa
POPEYE
Marca denominativa
POPEYE!? X
Marca denominativa
POPEYE
Marca denominativa
POPEYE· X
* Los símbolos ™ y ® no se consideran partes de la marca.
Ejemplos relativos a la identidad entre signos figurativos en comparación con marcas denominativas
Primera marca Solicitud de MC la misma no es la misma
Marca denominativa
Percy & Reed
Marca figurativa
Percy & Reed
(marca figurativa en caracteres tipográficos
estándar)
X
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 53
FINAL VERSION 1.0 DATE 01/02/2015
Ejemplos relativos a la identidad entre signos figurativos en comparación con marcas denominativas
Primera marca Solicitud de MC la misma no es la misma
Marca denominativa
Percy & Reed
Marca figurativa
Percy &
Reed
(palabras distribuidas en varias líneas)
X
Marca denominativa
Percy & Reed
Marca figurativa
Percy & Reed
(reivindicación de color)
X
Ejemplos adicionales relacionados con las marcas figurativas
Primera marca Solicitud de MC la misma no es la misma
X
X
®
X*
* Los símbolos ™ y ® no se consideran partes de la marca.
14.8.3 Comparación de los productos y servicios
El primer ejemplo que se muestra a continuación es la situación más estándar: la solicitud anterior se corresponde totalmente con la solicitud de MC.
Primera presentación País
Productos y servicios MC presentada
Productos y servicios de la MC
5 de abril Reino Unido Sombreros,zapatos 1 de octubre Sombreros,
zapatos
En el siguiente ejemplo pueden aceptarse ambas reivindicaciones de prioridad, porque el número de solicitud XY 1234 constituye la primera presentación respecto de los «automóviles» y el número de solicitud XY 1235 lo es respecto de «aviones».
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 54
FINAL VERSION 1.0 DATE 01/02/2015
Primera presentación País Solicitud JP nº
Productos y servicios
MC presentada
Productos y servicios de
la MC
5 de abril Japón XY 1234 Automóviles
5 de abril Japón XY 1235 Aviones 2 de octubre Automóviles,aviones
En el siguiente ejemplo la reivindicación de prioridad afecta a «sombreros» y «zapatos», que son comunes a la primera presentación y la solicitud de MC. No es aplicable la prioridad respecto de «bolsos».
Primera presentación País
Productos y servicios MC presentada
Productos y servicios de la MC
5 de abril EE.UU. Automóviles, sombreros,
zapatos 1 de octubre Sombreros,zapatos, bolsos
En el último ejemplo se reivindicó prioridad para las primeras presentaciones en Francia, Canadá y China. La solicitud de MC se ha presentado en el plazo de seis meses de cada una de las primeras presentaciones y se aceptaron las reivindicaciones de prioridad, aunque respecto de los «sombreros», la solicitud de Canadá no constituya una primera presentación («sombreros» aparece en la solicitud francesa que se había presentado con anterioridad). Al comparar las fechas y las listas de productos y servicios de las tres prioridades, se aceptarán las reivindicaciones de prioridad.
Primera presentación País
Productos y servicios MC presentada
Productos y servicios de la MC
5 de abril Francia Sombreros,zapatos
6 de abril Canadá Automóviles, sombreros,
cerveza 5 de octubre
7 de abril China Vino, servicios detelecomunicación
Sombreros, zapatos,
automóviles, cerveza, vino, servicios de
telecomunicación
14.8.4 Reivindicaciones de prioridad basadas en series de marcas
Por serie de marcas se entiende varias marcas que se parecen entre sí, por lo que a sus detalles materiales se refiere y solo se diferencian respecto de los elementos de carácter no distintivo. Mientras que el Reglamento comunitario de marcas no permite la presentación de una serie de marcas, algunas oficinas nacionales (p. ej., Reino Unido, Australia, etc.) sí lo permiten, por lo que dicha serie de marcas presentada en una única solicitud puede incluir muchas marcas muy similares. Si la primera presentación está compuesta por una serie de marcas, se observarán dos o más representaciones de marcas ligeramente distintas. La reivindicación de prioridad es
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 55
FINAL VERSION 1.0 DATE 01/02/2015
aceptable respecto de una reproducción que sea idéntica a la que muestra la marca que se solicita como MC.
Ejemplos de reivindicaciones de prioridad basadas en series de marcas
Primera presentación MC Reivindicación de prioridadaceptable
Serie de marcas
Sí
Serie de marcas
Café@Home CAFÉ@HOME Café@Home
CAFÉ@HOME
CAFÉ@HOME Sí
14.8.5 Reivindicación de prioridad para marcas tridimensionales u «otras» marcas
Algunas oficinas nacionales de PI no permiten la presentación de más de cuatro representaciones en el caso de marcas tridimensionales u otras marcas.
Si una solicitud de MC reivindica la prioridad de dicha primera presentación, y se presentan seis (o más, en el caso de «otras» marcas) dibujos/perspectivas de la marca en la solicitud de MC, las marcas en cuestión se considerarán idénticas si las presentaciones de la primera presentación coinciden con una parte de lo que se envió para la solicitud de MC y si el objeto es inequívocamente idéntico.
14.8.6 Reivindicaciones de prioridad que implican a marcas colectivas
Al solicitar una marca comunitaria individual podrá reivindicarse la prioridad de una marca colectiva, y viceversa.
15 Prioridad de exposición
Artículo 33, del RMC; regla 7, del REMC
La prioridad de exposición implica reivindicar como fecha de prioridad de la solicitud de MC la fecha en que los productos y servicios amparados por la solicitud de MC se exhibieron en una exposición reconocida internacionalmente de acuerdo con la marca tal como fue presentada. El solicitante puede invocar la prioridad de exposición en el plazo de seis meses desde la primera vez que se exhibió. Deben presentarse las pruebas de la exposición.
Como ocurre con la «prioridad de convenio», la prioridad de exposición debe reivindicarse tanto en la solicitud como posteriormente a la presentación de la solicitud de MC. Si el solicitante desea reivindicar la prioridad de exposición después de la presentación de la solicitud, la declaración de prioridad que indica el nombre de la
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 56
FINAL VERSION 1.0 DATE 01/02/2015
exposición y la fecha de la primera exhibición de los productos o servicios deberá presentarse en el plazo de dos meses desde la fecha de solicitud.
En un plazo de tres meses a partir de la recepción de la declaración de prioridad, el solicitante debe suministrar a la Oficina el certificado emitido en la exposición por parte de la autoridad responsable. Dicho certificado debe indicar que la marca se utilizó efectivamente para los productos o servicios, la fecha de apertura de la exposición y, si el primer uso público no coincide con la fecha de apertura de la exposición, la fecha del primer uso público. El certificado deberá ir acompañado por una identificación del uso efectivo de la marca, debidamente certificado por la autoridad.
La prioridad solo podrá concederse si la solicitud de MC se presenta en el plazo de seis meses desde la primera exhibición en una exposición reconocida a tal efecto, en concreto una exposición mundial en el sentido del Convenio de 22 de noviembre de 1928. Estas exposiciones son muy raras y el artículo 33 no protege la exhibición en otras exposiciones nacionales. Las exposiciones pueden encontrarse en la página web de la Oficina Internacional de Exposiciones de París: http://www.bie-paris.org/site/en/.
Respecto de la triple identidad de la marca, el solicitante y la lista de productos y servicios, se aplicarán los mismos criterios válidos para las «prioridades de convenio» que se mencionan en el apartado 14 supra.
Si la Oficina no presenta ninguna objeción, la reivindicación de prioridad se indicará en el expediente y aparecerá en la base de datos en línea. No se enviará una confirmación expresa al solicitante.
La reivindicación puede ser implícita. Cuando no exista una indicación de la reivindicación en la solicitud, la presentación de los documentos de prioridad de exposición (dentro del plazo de dos meses) se entenderá como declaración de prioridad.
16 Antigüedad
Artículo 34, del RMC Reglas 8, 28 y regla 96, apartado 2, del REMC Comunicación nº 2/00, Decisión nº EX-03-5 y Decisión nº EX-05-05 del Presidente de la Oficina
El titular de una marca registrada anterior en un Estado miembro, incluidas las marcas registradas en el territorio del Benelux, o de una marca anterior que haya sido objeto de un registro internacional con efecto en un Estado miembro, que presente una solicitud de marca idéntica para registrarla como marca comunitaria para productos o servicios idénticos a aquellos para los que está registrada la marca anterior o que estén incluidos en estos productos o servicios, podrá prevalerse, para la solicitud de marca comunitaria, de la antigüedad de la marca anterior en lo que respecta al Estado miembro en el cual o para el cual esté registrada.
El único efecto de la antigüedad, será que, en caso de que el titular de la marca comunitaria renuncie a la marca anterior o la deje extinguirse, se considerará que continúa disfrutando de los mismos derechos que tendría si la marca anterior hubiera continuado registrada.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 57
FINAL VERSION 1.0 DATE 01/02/2015
Esto significa que la solicitud de MC representa la consolidación de los registros nacionales anteriores. Si el solicitante reivindica la antigüedad para una o varias marcas nacionales registradas anteriores y dicha reivindicación es aceptada, el solicitante podrá optar por no renovar los registros nacionales anteriores, pero todavía estar en la misma posición que si la marca anterior hubiera seguido estando registrada en aquellos Estados miembros donde se registraron las marcas anteriores.
La antigüedad conforme al artículo 34, del RMC debe reivindicarse en la solicitud o en el plazo de dos meses desde la fecha de presentación de la marca comunitaria. Los documentos que justifiquen la reivindicación deben aportarse dentro del plazo de tres meses desde la reivindicación. La reivindicación de antigüedad puede ser implícita. Si el solicitante envía solo los documentos relativos a los registros anteriores en el plazo de dos meses desde la fecha de presentación de la solicitud de MC, la Oficina tratará dicha solicitud como una reivindicación de antigüedad relacionada con estos registros anteriores.
La antigüedad no solo podrá reivindicarse para registros nacionales anteriores, sino también para un registro internacional que surtirá efectos en un país de la UE. No será posible, en cambio, presentar una reivindicación de antigüedad para un registro de marca comunitaria anterior o registros locales, incluso si el territorio forma parte de la Unión Europea (p. ej., Gibraltar).
16.1 Información armonizada sobre la antigüedad
Para poder gestionar adecuadamente las antigüedades, todas las entradas de antigüedad en el sistema deben tener el mismo formato, que será el formato que se utiliza en las bases de datos de las oficinas nacionales.
Para mejorar la armonización entre la OAMI y las oficinas de la propiedad intelectual participantes, se ha establecido una lista sobre antigüedad con el formato exigido. Dicha lista proporciona una descripción del formato o formatos utilizados en cada oficina nacional en la medida en que esto haya sido establecido.
Por lo tanto, al comprobar la antigüedad, la Oficina deberá verificar si el formato de la antigüedad en el sistema se corresponde con el formato utilizado a escala nacional.
16.2 Examen de la antigüedad
Una reivindicación válida debe incluir lo siguiente:
1. el Estado miembro o los Estados miembros de la UE en el/los que o para el/los que está registrada la marca anterior para la que se reivindica la antigüedad;
2. la fecha de presentación del correspondiente registro; 3. el número del correspondiente registro; 4. los productos y servicios para los cuales está registrada la marca.
Con arreglo a la Decisión nº EX-05-5, de 1 de junio de 2005, no es necesario que el titular presente una copia del registro si la información exigida está disponible en el sitio web de las correspondientes oficinas nacionales. Si no se presenta la copia del registro, la Oficina buscará primero la información necesaria en el correspondiente sitio web y, solo en el caso de que la información no esté disponible, pedirá una copia al titular mediante una notificación de irregularidad. Con arreglo al artículo 3 de la
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 58
FINAL VERSION 1.0 DATE 01/02/2015
Decisión nº EX-03-5, la copia del correspondiente registro debe incluir una copia (bastan fotocopias simples) del registro y/o certificado de renovación o extracto del Registro, o un extracto del correspondiente diario oficial nacional, o un extracto o impresión de la base de datos oficial. No se aceptarán los extractos e impresiones de las bases de datos privadas. Constituyen ejemplos de extractos no admitidos DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK o COMPUMARK, SAEGIS.
La antigüedad solo podrá reivindicarse para un registro anterior, no para una solicitud anterior.
La Oficina deberá comprobar tanto que la marca anterior se registró en el momento en que se presentó la solicitud de MC y que el registro anterior no se ha extinguido en el momento en que se realizó la reivindicación, (en lo relativo a la duración de la protección de las marcas nacionales, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales).
Si el registro anterior se ha extinguido en el momento en que se realizó la reclamación, no podrá reivindicarse la antigüedad, incluso si la correspondiente legislación nacional establece un periodo de gracia de seis meses para su renovación. Mientras que algunas legislaciones nacionales permiten un periodo «de gracia», si no se ha pagado la renovación, se considerará que la marca no ha quedado registrada desde el día en que debe efectuarse dicha renovación. Por lo tanto, la reivindicación no es aceptable, salvo si el solicitante demuestra que renovó el registro anterior.
La antigüedad reivindicada para la marca comunitaria se extinguirá cuando se declare la caducidad de los derechos del titular de la marca anterior cuya antigüedad se haya reivindicado, o la nulidad de dicha marca, o cuando se renuncie a la misma antes de que la marca comunitaria sea registrada (artículo 34, párrafo 3, del RMC.
En el contexto de la ampliación de la UE, se han tenido en cuenta los siguientes detalles. Si una marca nacional de un nuevo Estado miembro o un registro internacional con efectos en dicho país fue registrada antes de que se efectúe la reivindicación de antigüedad, la antigüedad podrá reivindicarse incluso si la fecha de prioridad, presentación o registro de la MC a la que hace referencia la antigüedad es anterior a la fecha de prioridad, presentación o registro de la marca nacional/el registro internacional con efectos en el nuevo Estado miembro. Esto es porque la MC de que se trate solo surtirá efectos en el nuevo Estado miembro desde la fecha de adhesión. La marca nacional /el registro internacional con efectos en el nuevo Estado miembro para la que/el que se reivindica la antigüedad es, por lo tanto, «anterior» a la MC conforme al artículo 35, del RMC, siempre que la marca nacional/el registro internacional con efectos en el nuevo Estado miembro tenga una fecha de prioridad, presentación o registro anterior a la fecha de la adhesión.
Ejemplos de las reivindicaciones de antigüedad aceptables para nuevos Estados miembros
MC Fecha depresentación País de reivindicación de
la antigüedad Fecha de presentación
del derecho anterior
2 094 860 TESTOCAPS 20/02/2001 Chipre 28/02/2001
2 417 723 PEGINTRON 19/10/2001 Hungría 08/11/2001
352 039 REDIPEN 02/04/1996 Bulgaria 30/04/1996
7 037 307 HydroTac 17/07/2008 Croacia 13/10/2009
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 59
FINAL VERSION 1.0 DATE 01/02/2015
Explicación: En todos los casos, aunque la fecha de presentación de la solicitud de MC sea anterior a la fecha de registro de la marca para la que se reivindica la antigüedad, teniendo en cuenta que todos los países afectados se adhirieron a la Unión Europea después de la fecha de presentación de la solicitud de MC (es decir, el 1 de mayo de 2004 para Chipre y Hungría y el 1 de enero de 2007 para Bulgaria y Rumanía) y que será a partir de dicha fecha que la solicitud de MC tiene protección en esos Estados miembros, podrá reivindicarse la antigüedad para cualquier marca nacional presentada antes de la fecha de adhesión.
Si la reivindicación de antigüedad es correcta, la Oficina la admitirá y - una vez que se haya registrado la solicitud de MC - informará al/a los servicio(s) central(es) de la propiedad industrial del/de los Estado(s) miembro(s) de que se trate (regla 8, apartado 3, del REMC).
También se podrá reivindicar la antigüedad después de registrar la MC conforme al artículo 35. Para más información, véanse las Directrices, Parte E, Operaciones de registro, Sección 1, Cambios en el registro.
16.3 Identidad de las marcas
El examen de las reivindicaciones de antigüedad se limita a los requisitos formales y a la identidad de las marcas (véase la Comunicación del Presidente nº 2/00 de 25 de febrero de 2000).
Por lo que atañe al requisito de triple identidad (mismo titular, misma marca y mismos productos y servicios), corresponde al solicitante garantizar que se cumplen estos requisitos. No obstante, la Oficina examinará únicamente si las marcas son las mismas.
La comparación de las representaciones de la marca a efectos de las reivindicaciones de antigüedad es la misma que la que se ha facilitado en el apartado 14.2.1 en relación con las reivindicaciones de prioridad.
16.4 Productos y servicios
Los solicitantes pueden reivindicar la antigüedad para parte de los productos y servicios del registro anterior. Efectivamente, la reivindicación de la antigüedad será válida en la medida en que exista un solapamiento entre los productos y servicios de la solicitud de MC y el registro en que se basan. No se exige que el solicitante especifique dichos productos y servicios, sino que simplemente pueda reivindicar la «antigüedad para todos los productos comprendidos en la marca anterior que figuren también en la solicitud» (reivindicación de antigüedad genérica).
16.5 Tratamiento de las irregularidades del examen de la antigüedad
Si la reivindicación no es válida, si el registro anterior no es idéntico al de la solicitud de MC, si la antigüedad se reivindica fuera de plazo (es decir, después del plazo de dos meses tras la presentación de la solicitud de MC), o si los documentos de antigüedad no son admitidos y la correspondiente información no puede encontrarse en línea, la Oficina emitirá una notificación de irregularidad.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 60
FINAL VERSION 1.0 DATE 01/02/2015
Si no se subsanan las irregularidades dentro del plazo establecido por la Oficina, se notificará por escrito al solicitante la pérdida del derecho. Al mismo tiempo, se informará al solicitante de que podrá solicitar una resolución formal en el plazo de dos meses desde la notificación.
Si el solicitante pide formalmente una resolución en el plazo, la Oficina emitirá una resolución formal sobre la denegación de la reivindicación de antigüedad.
16.6 Ejemplos de reivindicaciones de antigüedad
Ejemplo de reivindicación de antigüedad aceptable
Solicitud de MC (marca denominativa)
CELOTAPE
Reivindicación de antigüedad (marca denominativa)
Celotape
Solicitud de MC (marca denominativa)
Daisys Gingerbread
Reivindicación de antigüedad (marca denominativa)
Daisy’s Gingerbread
Ejemplos de reivindicaciones de antigüedad inaceptables
Solicitud de MC: 9 817 735 (marca figurativa)
Reivindicación de antigüedad (marca figurativa)
Solicitud de MC (marca denominativa)
Great changes in education PLC
Reivindicación de antigüedad (marca denominativa)
Grate changes in education PLC
Solicitud de MC 8 786 485 (marca figurativa)
Reivindicación de antigüedad (marca figurativa)
Para más ejemplos de reivindicaciones de antigüedad aceptables y no aceptables, véase supra el apartado 14.8.2.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 61
FINAL VERSION 1.0 DATE 01/02/2015
17 Transformación
La transformación es una característica legal introducida por el Protocolo de Madrid para atenuar las consecuencias del periodo de dependencia de cinco años entre el registro internacional y la marca de base. En el caso de que se cancele el registro internacional que designa a la UE a petición de la oficina de origen respecto de algunos o de todos los productos y servicios, el titular del registro internacional podrá presentar una solicitud de MC para el registro de la misma marca respecto de los productos y servicios que han sido cancelados. La solicitud deberá tratarse como si hubiera sido presentada en la fecha de la designación de la UE en el registro internacional y gozará de la misma prioridad, en su caso. Para más información, véanse las Directrices, Parte M, Marcas internacionales.
18 Modificaciones de la solicitud de MC
Artículos 43 y 44, del RMC Regla 3 y regla 13, letra a), del REMC
El solicitante podrá retirar, en cualquier momento, su solicitud de MC o limitar la lista de productos y servicios cubiertos por la misma. El resto de cambios solo están previstos para corregir determinados errores.
Se admitirá cualquier cambio solicitado el mismo día en que se presente la solicitud de MC.
Esta parte de las Directrices solo describirán la práctica de la Oficina relativa a las modificaciones de la representación de la marca. Para más información sobre la retirada o las limitaciones, véanse las Directrices, Parte B, Examen, Sección 1, Procedimiento.
18.1 Modificaciones de la representación de la marca
La práctica de la Oficina en relación con las modificaciones de la representación de la marca es muy estricta. Las dos condiciones que permiten un cambio en la marca una vez que ha sido presentada son acumulativas:
el error debe ser manifiesto, Y la modificación no afecta sustancialmente a la marca tal como fue presentada.
Incluso si no se trata de una modificación sustancial, si el error no es manifiesto, la Oficina no la aceptará.
En los casos en que la ubicación deseada de la marca no sea obvia, la representación de la marca indicará la posición correcta añadiendo la palabra «arriba» a la reproducción del signo. En caso de que la solicitud se presente por medios electrónicos, la ubicación poco habitual podrá indicarse en la descripción de la marca.
En los casos en que la ubicación deseada de la marca no sea obvia (p. ej., una marca que incluya un elemento verbal se presenta en posición vertical) y que la solicitud no la indique, el solicitante podrá modificar la ubicación de la marca, previa petición, porque la ubicación poco habitual de la marca se considerará un error manifiesto.
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 62
FINAL VERSION 1.0 DATE 01/02/2015
Si la reivindicación de prioridad o de antigüedad se presenta al mismo tiempo que la solicitud de MC, podrá demostrarse que existe un error manifiesto comparando la marca «correcta» en la reivindicación con la marca de la solicitud de MC. Sin embargo, si la reivindicación de prioridad o antigüedad se presenta después de la solicitud de MC, no podrá tenerse en cuenta ninguna de estas reivindicaciones.
Si el error es manifiesto, la marca deberá evaluarse con arreglo al siguiente criterio, en concreto si el cambio solicitado afecta sustancialmente a la marca tal como fue presentada.
Ejemplo de una modificación aceptable
CTM 546 010
Marca presentada como «TOPFLOW»
Cambio propuesto
«TOP FLOW»
En el formulario de solicitud, el solicitante reivindicó la prioridad para la marca «TOP FLOW», lo cual significa que era obvio que se había cometido un error tipográfico. No se consideró que la modificación constituyera una alteración sustancial de la marca, porque el añadido de un espacio entre las palabras «TOP» y «FLOW» no altera ni el significado ni la pronunciación de la marca y el impacto visual de la modificación es reducido (resolución de 05/082002, R 0851/1999-2, «TOP FLOW»).
Ejemplos de modificaciones inaceptables
CTM 321 109
Marca presentada como «RANIER»
Cambio propuesto
«RAINIER»
No se admitirá este cambio, porque la corrección muestra que el añadido de otra letra «I» cambiaría sustancialmente la marca tal como fue presentada. «RANIER» y «RAINIER» son dos palabras distintas.
CTM 6 013 668
Marca presentada como «ELECTROLITIC BOLUS»
Cambio propuesto
«ELECTROLITYC BOLUS»
No se admitirá este cambio porque la ortografía correcta en inglés de esta palabra es «ELECTROLYTIC». Por consiguiente, la marca tal como fue presentada contenía una letra errónea mientras que la propuesta de modificación contendría 2 letras erróneas. Esto alteraría sustancialmente la marca y, por lo tanto, sería inaceptable.
En el caso de elementos figurativos, solo podrán modificarse los elementos de escasa importancia y esto se tratará caso a caso. No se admitirá una modificación para dotar una «nueva apariencia» a una marca figurativa, que es una práctica frecuente en la industria para adaptar de vez en cuando la apariencia a las tendencias actuales del diseño y la moda).
Formalidades
Directrices relativas a los procedimientos ante la Oficina, Parte B, Examen Página 63
FINAL VERSION 1.0 DATE 01/02/2015
CTM 6 538 524
MC tal como fue presentada Cambio propuesto
El solicitante presentó una reivindicación de prioridad con la solicitud de MC que mostraba que la primera presentación consistió en una única representación de la marca. Además, la solicitud de MC incluía una descripción de la marca que describía la única representación y no las dos imágenes que se habían presentado. Por lo tanto, se consideró que era un error manifiesto. La petición de modificación fue, sin embargo, denegada, porque la modificación cambiaría sustancialmente la marca respecto de la que fue presentada.
No obstante los principios y ejemplos antes mencionados, cualquier modificación de la marca que sería admisible después del registro se admitirá en relación con la solicitud de MC.
En cuanto a las alteraciones de una MC registrada, consúltense las Directrices, Parte E, Operaciones de registro, Sección 1, Cambios en el Registro.
19 Transformación/conversión
Artículo 112, apartado 1; y artículo 113, apartado 1, del RMC Regla 44, apartado 1, letra f), del REMC
El solicitante de una solicitud de MC o el titular de una MC registrada podrá pedir la transformación de su solicitud de MC o MC registrada. Para más información sobre la transformación, véanse las Directrices, Parte E, Operaciones de registro, Sección 2, Transformación.
Motivos de denegación absolutos
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 1
FINAL VERSION 1.0 DATE 02/01/2015
DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE B
EXAMEN
SECCIÓN 4
MOTIVOS DE DENEGACIÓN ABSOLUTOS
Motivos de denegación absolutos
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Índice
1 Principios generales.................................................................................. 4 1.1 Objeción motivada ..................................................................................... 4 1.2 Diálogo con el solicitante ..........................................................................4 1.3 Criterios europeos...................................................................................... 5 1.4 Criterios no pertinentes ............................................................................. 6
1.4.1 Término no utilizado ....................................................................................... 6 1.4.2 Imperativo de disponibilidad ........................................................................... 6 1.4.3 Monopolio de hecho ....................................................................................... 6 1.4.4 Doble significado ............................................................................................ 7
1.5 Alcance de las objeciones a los productos y servicios........................... 7 1.6 Plazo para formular objeciones.................................................................8 1.7 Declaraciones de renuncia a reivindicar derechos exclusivos
(«disclaimers») ........................................................................................... 8 1.8 Relación entre los diferentes motivos de denegación............................. 9
2 Motivos absolutos (artículo 7, del RMC).................................................. 9 2.1 Artículo 7, apartado 1, letra a), del RMC ................................................... 9
2.1.1 Observaciones generales............................................................................... 9 2.1.2 Ejemplos de solicitudes de marca denegadas o aceptadas con arreglo al
artículo 7, apartado 1, letra a) ...................................................................... 11 2.1.3 Relación con otras disposiciones del RMC .................................................. 15
2.2 Carácter distintivo (artículo 7, apartado 1, letra b), del RMC) ............... 15 2.2.1 Observaciones generales............................................................................. 15 2.2.2 Elementos verbales ...................................................................................... 16 2.2.3 Títulos de libros ............................................................................................ 17 2.2.4 Colores ......................................................................................................... 18 2.2.5 Letras únicas ................................................................................................ 20 2.2.6 Eslóganes: apreciación del carácter distintivo ............................................. 22 2.2.7 Elementos figurativos simples ...................................................................... 25 2.2.8 Elementos figurativos comunes.................................................................... 26 2.2.9 Signos tipográficos ....................................................................................... 27 2.2.10 Pictogramas.................................................................................................. 27 2.2.11 Etiquetas comunes o no distintivas .............................................................. 28 2.2.12 Marcas tridimensionales............................................................................... 30 2.2.13 Marcas de motivo ......................................................................................... 35 2.2.14 Marcas de posición....................................................................................... 39
2.3 Carácter descriptivo (artículo 7, apartado 1, letra c), del RMC) ............ 40 2.3.1 Observaciones generales............................................................................. 40 2.3.2 Marcas denominativas.................................................................................. 44 2.3.3 Marcas figurativas ........................................................................................ 60 2.3.4 Umbral figurativo .......................................................................................... 61
2.4 Signos o indicaciones habituales (artículo 7, apartado 1, letra d), del RMC).......................................................................................................... 72
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2.4.1 Observaciones generales............................................................................. 72 2.4.2 Fecha en que un término se ha convertido en usual ................................... 73 2.4.3 Apreciación de los términos habituales........................................................ 73 2.4.4 Aplicabilidad del artículo 7, apartado 1, letra d), del RMC a nombres de
variedades vegetales.................................................................................... 74
2.5 Formas con una función esencialmente técnica, valor estético significativo o impuestas por la naturaleza del producto (artículo 7, apartado 1, letra e) del RMC .................................................................... 75 2.5.1 Observaciones generales............................................................................. 75 2.5.2 Forma impuesta por la naturaleza de los productos .................................... 77 2.5.3 Forma de los productos necesaria para obtener un resultado técnico ........ 77 2.5.4 Forma que afecta al valor intrínseco del producto ....................................... 81
2.6 Carácter distintivo adquirido................................................................... 84 2.6.1 Introducción .................................................................................................. 84 2.6.2 Solicitud ........................................................................................................ 85 2.6.3 Fecha a la que deben referirse las pruebas ................................................. 85 2.6.4 Consumidor .................................................................................................. 85 2.6.5 Productos y servicios.................................................................................... 86 2.6.6 Aspectos territoriales .................................................................................... 86 2.6.7 Qué debe demostrarse................................................................................. 89 2.6.8 Las pruebas y su evaluación ........................................................................ 90 2.6.9 Consecuencias del carácter distintivo adquirido .......................................... 95
Motivos de denegación absolutos
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1 Principios generales
1.1 Objeción motivada
Cuando el examinador considere que existen motivos de denegación absolutos, deberá formular una objeción motivada en la que indicará cada uno de los motivos que justifican la denegación y argumentará una motivación clara y específica para cada uno de ellos por separado, evitando la fragmentación o la comunicación gradual de las objeciones. En otras palabras, cada uno de los motivos de denegación deberá ir acompañado de su propia motivación. En numerosos casos se solapan varios motivos de denegación, como por ejemplo el carácter distintivo o el carácter descriptivo. Pero aun en estos casos, cada motivo de denegación deberá fundamentarse por separado. Por ejemplo, cuando se considere que una marca denominativa tiene un significado semántico capaz de suscitar objeciones, con arreglo al artículo 7, apartado 1, letras b) y c), del RMC, la notificación de los motivos de denegación deberá abordar cada uno de estos motivos por separado. En ese caso, es preciso mencionar claramente si la falta de carácter distintivo se deriva de consideraciones idénticas o diferentes de las que hubieran llevado a considerar la marca como descriptiva.
Para denegar el registro de una marca comunitaria basta con que concurra uno de los motivos recogidos en el artículo 7, del RMC en una sola parte de la Unión Europea. No obstante, se recomienda a los examinadores que indiquen en esta fase todos los motivos de denegación aplicables.
En ocasiones, determinados argumentos del solicitante o una limitación (retirada parcial) de la lista de productos y servicios llevarán aparejada la aplicación de otros motivos de denegación. Se recuerda a los examinadores que si la denegación de la marca comunitaria solicitada se basase en nuevos motivos de denegación o en nuevos argumentos, deberá concedérsele a la parte la posibilidad de presentar sus observaciones al respecto.
1.2 Diálogo con el solicitante
Durante el procedimiento de examen, se invitará al examinador a mantener el diálogo con el solicitante.
En todas las fases del procedimiento, el examinador debe analizar minuciosamente las observaciones presentadas por el solicitante, a la vez que deberá tener en cuenta, de oficio, los nuevos hechos o argumentos existentes que aboguen en favor de la aceptación de la marca. Ello se debe a que la solicitud únicamente puede denegarse si en el momento en que se adopta la resolución el examinador está convencido de que la objeción está bien fundada.
Si el solicitante no ha presentado observaciones y el examinador no ha encontrado, de oficio, motivos que justifiquen un cambio de opinión, se denegará la solicitud mediante una notificación en la que figurará el contenido de la objeción original, declarando que se deniega la solicitud e indicando la posibilidad de presentar un recurso. No es aceptable limitar la resolución final a una denegación «por los motivos expuestos en la objeción».
Si el solicitante se opone a la motivación expuesta en la notificación original, la notificación de la denegación deberá indicar en primer lugar la motivación aportada inicialmente y, a continuación, responder a las alegaciones del solicitante. Cuando el
Motivos de denegación absolutos
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examinador deba invocar nuevos hechos o alegaciones que sustenten una resolución de denegación, deberá ofrecerse al solicitante la posibilidad de presentar sus observaciones al respecto antes de adoptar una resolución definitiva.
Si el solicitante intenta eludir las objeciones limitando la lista de productos y servicios, puede ocurrir que esta limitación dé lugar a un nuevo motivo de denegación, (por ejemplo, que, además del carácter descriptivo, la marca induce al público a error). En este caso, el examinador deberá emitir una nueva notificación de objeción, a fin de conceder al solicitante la oportunidad de presentar sus observaciones, en particular los motivos de denegación que considere pertinentes.
No se aceptarán especificaciones de productos o servicios limitadas por la condición de que dichos productos o servicios no poseen una característica determinada (véase la sentencia de 12/02/2004, C-363/99, «Postkantoor», apartado 114). Por ejemplo, respecto de la marca “Teatro”, una lista que especifica libros, con excepción de los libros sobre teatro no deberá aceptarse. Por el contrario, limitaciones formuladas de forma positiva pueden normalmente ser aceptables, como “libros sobre química”.
En lo que se refiere a la prueba del carácter distintivo adquirido por la marca (artículo 7, apartado 3), el solicitante podrá reivindicar que su marca ha adquirido carácter distintivo en virtud de su uso y presentar pruebas del uso correspondiente. El solicitante deberá aportar pruebas del uso después de que se hubiera emitido la notificación de objeción y antes de que el examinador adopte una resolución definitiva. A este respecto, el solicitante podrá solicitar la prórroga de los plazos tras la emisión de la notificación de objeción, de conformidad con lo dispuesto en la regla 71, del REMC. Si el examinador tuviese intención de aceptar la marca sobre la base del artículo 7, apartado 3, no deberá remitirse ninguna notificación de denegación. Si pese a la prueba del uso aportada el examinador considera que la marca comunitaria sigue comprendida en el ámbito de aplicación del artículo 7, apartado 1, porque la prueba del uso no es convincente, la notificación de denegación deberá incluir información sobre la posibilidad de presentar un recurso ante las Salas. También deberá incluir los motivos por los que la marca se encuentra comprendida en uno de los motivos previstos en el artículo 7, apartado 1 y una motivación por separado de las razones por las que la reivindicación del carácter distintivo adquirido presentada por el solicitante carece de fundamento.
1.3 Criterios europeos
El artículo 7, apartado 1, del RMC es una disposición europea y debe interpretarse como una norma común europea. No sería correcto aplicar diferentes normas relativas al carácter distintivo en función de las diversas tradiciones nacionales o diferentes normas (es decir, más o menos estrictas), de protección del orden público o las buenas costumbres dependiendo del país de que se trate.
No obstante, el artículo 7, apartado 2, del RMC, especifica que se denegará el registro incluso si los motivos de denegación sólo existiesen en una parte de la Unión Europea.
Esto significa que el hecho de que la marca sea descriptiva o carezca de carácter distintivo en un idioma oficial de la UE es suficiente para denegar el registro. En relación a otros idiomas, se formulará un rechazo si la marca incurre en el Artículo 7, apartado 1 respecto de una lengua comprendida por una parte significativa del público relevante en al menos una parte de la Unión Europea (véase infra, en el
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apartado 2.3.1.2, La base de referencia, y la sentencia de 13/09/2012, T-72/11, «Espetec», apartados 35 y 36).
Cuando la objeción no se funde en el significado semántico de una palabra, el motivo de denegación remitirá por lo general a la Comunidad en su conjunto. No obstante, la percepción del signo por parte del público destinatario, las prácticas comerciales o el uso de los productos y servicios reivindicados pueden ser distintos en algunas partes de la Unión Europea.
1.4 Criterios no pertinentes
A menudo los solicitantes presentan alegaciones que los tribunales ya han declarado no pertinentes. En consecuencia, deberán desestimarse dichos argumentos citando los extractos correspondientes de las sentencias en cuestión.
1.4.1 Término no utilizado
El hecho de que no pueda verificarse una utilización descriptiva del término objeto de solicitud es irrelevante. El examen de aplicabilidad del artículo 7, apartado 1, letra c), del RMC se apoya en previsiones (partiendo de que la marca se utilizará en relación con los productos y servicios reivindicados). Del texto del artículo 7, apartado 1, letra c), del RMC se desprende claramente que basta con que la marca «pueda servir» para designar las características de los productos y servicios (véase la sentencia de 23 de octubre de 2003 , C-191/01, «Doublemint», apartado 33).
1.4.2 Imperativo de disponibilidad
A menudo se alega que otros operadores no necesitan el término que es objeto de solicitud, pueden utilizar indicaciones más directas o tienen a su disposición sinónimos para describir las características de los productos. Se impone desestimar estas alegaciones por no pertinentes.
Aunque existe un interés público subyacente al artículo 7, apartado 1, letra c), del RMC, consistente en que no se registren como marcas términos descriptivos a los que deben tener acceso todos los competidores, la Oficina no está obligada a demostrar que exista una necesidad o interés concreto presentes o futuros por parte de terceros en relación con el uso del término descriptivo objeto de la solicitud («Freihaltebedürfnis» no concreto). (Véanse las sentencias de 04/05/1999, C-108/97, «Chiemsee», apartado 35 y de 12/02/2004, C-363/99, «Postkantoor», apartado 61).
Por consiguiente, la existencia o no de sinónimos u otros métodos más habituales de expresar el significado descriptivo de un signo, resulta irrelevante (véase la sentencia de 12/02/2004, C-265/00, «Biomild», apartado 42).
1.4.3 Monopolio de hecho
El hecho de que el solicitante sea el único operador que ofrece los productos y servicios en relación con los cuales la marca resulta descriptiva no es pertinente a efectos del artículo 7, apartado 1, letra c), del RMC. No obstante, en este caso,
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resultará más factible que la marca pueda registrarse sobre la base del carácter distintivo adquirido.
1.4.4 Doble significado
El argumento frecuentemente aducido por los solicitantes, según el cual los términos objeto de la solicitud poseen más de un significado y uno de ellos no es descriptivo en relación con los productos/servicios, deberá ser desestimado. Para denegar el registro con arreglo al artículo 7, apartado 1, letra c), del RMC, basta con que al menos uno de los posibles significados del término sea descriptivo en relación con los productos y servicios de que se trate (véase la sentencia de 23/10/2003, C-191/01, «Doublemint», apartado 32, confirmada por la sentencia de 12/02/2004, C-363/99 , «Postkantoor», apartado 97).
Dado que el examen debe centrarse en los productos/servicios objeto de la solicitud, los argumentos relativos a otros posibles significados de la(s) palabra(s) que configuran la marca solicitada (que no guardan relación con los productos/servicios pertinentes) carecen de relevancia. Asimismo, cuando la marca solicitada sea una marca denominativa compuesta, lo importante a efectos del examen es el significado que pueda atribuirse, en su caso, al signo considerado como un todo y no los posibles significados de los componentes analizados por separado (véase la sentencia de 08/06/2005, T-315/03, «ROCKBASS», apartado 56).
1.5 Alcance de las objeciones a los productos y servicios
Casi todos los motivos de denegación absolutos y, en particular, los más pertinentes, como la falta de carácter distintivo, el carácter descriptivo, el carácter genérico y la posibilidad de inducir a error, se deben examinar en relación con los productos y servicios que se reivindican. Si tiene alguna objeción, el examinador deberá indicar expresamente qué motivo (o motivos) de denegación se aplican a la marca de que se trata, en relación con cada producto o servicio reivindicado. Es suficiente que un motivo de denegación sea aplicable a una única categoría homogénea de productos y/o servicios. Por categoría homogénea se entiende un grupo de productos y/o servicios que presenten entre sí un vínculo suficientemente directo y concreto (sentencia de 02/04/2009, T-118/06, «ULTIMATE FIGHTING CHAMPIONSHIP», apartado 28). Cuando se hacen valer el o los mismos motivos de denegación para una categoría o un grupo de productos o servicios, podrá efectuarse una motivación global para todos los productos y/o servicios de que se trate (sentencia de 15/02/2007, C-239/05, «Kitchen company», apartado 38).
En lo que respecta al carácter descriptivo, la objeción se aplica no sólo a aquellos productos/servicios para los que el/los término(s) que componen la marca solicitada resulta(n) directamente descriptivo(s), sino también a la categoría más amplia que contenga (al menos de forma potencial) una subcategoría identificable o productos y/o servicios concretos para los que la marca solicitada sea directamente descriptiva. Si el solicitante no ha establecido una limitación adecuada, la objeción relativa al carácter descriptivo afectará necesariamente a la categoría más amplia como tal. Por ejemplo, «EuroHealth» se debe denegar para los «seguros» en su conjunto y no sólo para los seguros sanitarios (véase la sentencia de 07/06/2001, T-359/99, «EuroHealth», apartado 33).
También surgen objeciones en el caso de los productos y servicios que están directamente vinculados a aquellos a los que se aplica el significado descriptivo. Por
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añadidura, si el significado descriptivo se refiere a una actividad que lleve aparejado el uso de diferentes productos o servicios mencionados de forma separada en la descripción, la objeción se refiere a todos ellos (véase la sentencia de 20/03/2002, T-359/99, «TELE AID», para una serie de productos y servicios relativos o aplicados a la oferta de asistencia a distancia a los conductores de vehículos).
Es posible reivindicar productos y servicios denominados auxiliares cuyo uso es complementario al de los productos o servicios principales. El papel con el que se embalan los productos o las instrucciones de uso o la publicidad de los productos, así como los servicios de reparación conexos, constituyen un ejemplo típico de lo que se acaba de exponer. En estos casos, los productos auxiliares están, por definición, destinados a ser utilizados y vendidos junto con el producto principal (p.ej., vehículos y manuales de instrucciones). En consecuencia, si la MC se considera descriptiva para los productos principales, también lo es lógicamente para los productos auxiliares que están relacionados de forma tan estrecha.
1.6 Plazo para formular objeciones
Las objeciones deben formularse en el plazo más breve y de la manera más detallada posible. Sin embargo, en casos excepcionales, la Oficina procederá a reabrir de oficio el procedimiento de examen cuando resulte evidente que la marca hubiese sido aceptada erróneamente o si, conforme a la nueva jurisprudencia, análoga conclusión fuese aplicable a una marca registrada con anterioridad (sentencia de 08/07/2004, T-289/02 , «TELEPHARMACY SOLUTIONS»). Por lo que se refiere a las solicitudes de marca comunitaria, esto puede ocurrir en cualquier momento con anterioridad al registro, incluso tras la publicación. En el caso de registros internacionales que designen a la UE, esta circunstancia puede producirse siempre que no hubiera dado inicio el plazo de oposición (seis meses tras la nueva publicación) (regla 112, apartado 5, del REMC) y pueda revocarse una declaración de situación provisional anteriormente remitida. La Oficina también podrá reabrir el procedimiento de examen como resultado de las observaciones presentadas por terceros (artículo 40, del RMC).
1.7 Declaraciones de renuncia a reivindicar derechos exclusivos («disclaimers»)
El artículo 37, apartado 2, del RMC permite al examinador solicitar, como condición para el registro, la renuncia a alegar derecho exclusivo alguno sobre un elemento de la marca carente de carácter distintivo. En la práctica, los examinadores no suelen recurrir a esta disposición. Siempre que se considere que la marca no es exclusivamente descriptiva y que no carece de carácter distintivo se aceptará, con carácter general, sin necesidad de una declaración de renuncia. Por lo general, una declaración de renuncia no permitirá salvar una objeción basada en motivos de denegación absolutos.
Si una marca consiste en una combinación de elementos que por separado carecen inequívocamente de carácter distintivo, no es necesario declarar que se renuncia a reivindicar derechos exclusivos sobre cada uno de ellos. Por ejemplo, si la marca de una publicación periódica es «Noticias locales e internacionales de Alicante», no es necesario que los elementos individuales que la componen sean objeto de una declaración de renuncia.
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Si la declaración del solicitante no salva los motivos para la denegación del registro o si el solicitante no acepta la condición impuesta, se denegará la solicitud en la medida en que sea necesario.
Si el solicitante declara que renuncia a invocar derechos exclusivos sobre algún elemento no distintivo de la marca en la solicitud, la declaración se mantendrá aunque el examinador no la considere necesaria. El examinador debe rechazar las declaraciones de renuncia relativas a elementos distintivos, pues implicarían que el ámbito de protección de la marca no quedaría claro.
1.8 Relación entre los diferentes motivos de denegación
La objeción y, en su caso, la denegación incluirán todos los motivos de denegación pertinentes. Cada motivo de denegación será objeto de una motivación por separado. En particular, para evitar confusión sobre si la denegación del registro se basa en el artículo 7, apartado 1, letra b), o en el artículo 7, apartado 1, letra c), del RMC, o en ambos, cada uno de estos motivos de denegación deberá ser abordado en epígrafes por separado. Si el solicitante modifica la lista de productos y servicios reivindicados de modo que surja un nuevo motivo de denegación, éste deberá ser planteado. Puede darse este caso, por ejemplo, cuando el solicitante limita la lista de productos o servicios de tal modo que la marca pueda inducir a error. Si se plantean varios motivos de denegación, el solicitante deberá superarlos todos, pues la denegación puede basarse en un único motivo de denegación (sentencia de 19/09/2002, C-104/00 P, «Companyline», apartado 28).
En los siguientes puntos de las presentes Directrices se abordará de manera independiente cada letra del artículo 7, apartado 1, del RMC por orden alfabético, comenzando por el artículo 7, apartado 1, letra a), del RMC y concluyendo con el artículo 7, apartado 1, letra k). A continuación figura un punto relativo al carácter distintivo adquirido con arreglo al artículo 7, apartado 3, y un punto final que hace referencia a las marcas colectivas.
2 Motivos absolutos (artículo 7, del RMC)
2.1 Artículo 7, apartado 1, letra a), del RMC
2.1.1 Observaciones generales
El artículo 7, apartado 1, letra a) recoge la obligación que incumbe a la OAMI de denegar signos que no se ajustan a los requisitos del artículo 4, del RMC. Según dicho artículo, podrán constituir marcas comunitarias todos los signos que puedan ser objeto de una representación gráfica y, en particular, las palabras, incluidos los nombres de personas, los dibujos, las letras, las cifras, la forma del producto o de su presentación, con la condición de que tales signos sean apropiados para distinguir los productos o los servicios de una empresa de los de otras empresas. Estipula que, para poder constituir una marca con arreglo al artículo 4, del RMC, el asunto de una solicitud debe satisfacer tres requisitos: a) ser un signo, b) poder ser representado gráficamente, y c) distinguir los productos o servicios de una empresa de los de otras empresas (sentencia de 25/01/2007, C-321/03, «Receptáculo o compartimento de recogida transparente», apartado 28).
a) Signo
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De conformidad con el artículo 4, del RMC, una marca puede consistir en cualquier signo que cumpla ciertas condiciones. Aunque los ejemplos concretos que se citan en esta disposición son todos de tipo bidimensional o tridimensional y pueden percibirse visualmente, la lista no es exhaustiva. Por tanto, el objeto no se limita a los signos que pueden ser percibidos visualmente.
Por otra parte, para no vaciar de contenido al artículo 4, del RMC, esta disposición no puede interpretarse en un sentido tan amplio que permita que cualquier objeto no específico pueda aceptarse como signo. Por consiguiente, las ideas y conceptos abstractos o las características generales de los productos no son suficientemente específicos para poder considerarse signos, ya que podrían aplicarse a diversas manifestaciones diferentes (véase sentencia de 21/04/2010, T-7/09, «Spannfutter», apartado 25). Por este motivo, el Tribunal rechazó, por ejemplo, una solicitud para un «receptáculo o compartimento de recogida transparente que forma parte de la superficie externa de una aspiradora», dado que el objeto no era un tipo particular de compartimento de recogida, sino, con carácter general y abstracto, todas las formas imaginables de un compartimento de recogida de esta índole (sentencia de 25/01/2007, C-321/03, «Receptáculo o compartimento de recogida transparente», apartados 35 y 37).
b) Representación gráfica
Los signos que no puedan ser objeto de una representación gráfica no podrán registrarse como marca comunitaria de conformidad con el artículo 7, apartado 1, letra a), del RMC.
La función del requisito de la representación gráfica es definir la propia marca, a fin de determinar el objeto exacto de la protección que la marca registrada confiere a su titular. La jurisprudencia ha establecido claramente que una representación gráfica en el sentido del artículo 2 de la Directiva sobre marcas, que se corresponde con el artículo 4, del RMC, debe facilitar que el signo sea representado visualmente, en particular por medio de figuras, líneas o caracteres, y que la representación sea clara, precisa, completa en sí misma, fácilmente accesible, inteligible, duradera y objetiva (sentencias de 12/12/2002, C-273/00, «Sieckmann», apartados 46 a 55, y de 06/05/2003, «Libertel», C-104/01, apartados 28 y 29). El requisito relativo a la «objetividad» significa que un signo debe poder percibirse siempre de manera inequívoca y coherente a lo largo del tiempo para que funcione como garantía de la indicación del origen. El objeto de la representación es precisamente excluir todo elemento de subjetividad en el proceso de identificación y percepción del signo. Por consiguiente, el medio de la representación gráfica debe ser inequívoco y objetivo.
c) Carácter distintivo
El artículo 4, del RMC hace referencia a la capacidad abstracta de un signo para distinguir los productos de una empresa de los de otra. A diferencia del artículo 7, apartado 1, letra b), del RMC, que atañe al carácter distintivo real de una marca en relación con productos o servicios específicos, el artículo 4, del RMC se refiere exclusivamente a la capacidad teórica de un signo para servir como indicación del origen, con independencia de los productos o servicios. Sólo en circunstancias muy excepcionales un signo podría no tener la capacidad abstracta para distinguir los productos o servicios de una empresa de los de otra. En la práctica, un signo que ni siquiera
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tenga un carácter distintivo no superaría el proceso de examen de los requisitos formales y no se sometería al examen posterior correspondiente al objeto que se formula en el artículo 7, apartado 1, letra a), del RMC.
2.1.2 Ejemplos de solicitudes de marca denegadas o aceptadas con arreglo al artículo 7, apartado 1, letra a)
La lista de ejemplos que consta a continuación no es exhaustiva. Se pueden consultar más ejemplos y orientaciones sobre el registro con arreglo al artículo 4, del RMC en las Directrices, Parte B, Sección 2, Examen de formalidades, Capítulos 9.4 a 9.8, Tipo de marca.
2.1.2.1 Marcas olfativas
Actualmente no existe ningún medio para representar gráficamente los olores de forma satisfactoria. Por lo que se refiere a la fórmula química, pocas personas serían capaces de reconocer, en una fórmula de ese tipo, el olor en cuestión. Además, el depósito de una muestra de un olor no constituye una representación gráfica a efectos del artículo 4, del RMC, puesto que una muestra de un olor no es lo suficientemente estable ni duradera. En otras palabras, el requisito de la representación gráfica no se cumple mediante una fórmula química, una descripción con palabras escritas, el depósito de una muestra del olor en cuestión ni una combinación de dichos elementos (véase la sentencia de 12/12/2002, C-273/00, «Sieckmann», apartados 69 a 73).
No existe en la actualidad una clasificación internacional de olores generalmente admitida que permita, al igual que en el caso de los códigos internacionales de colores o de escritura musical, identificar de manera objetiva y precisa un signo olfativo mediante la asignación de una denominación o de un código concreto e individualizado a cada olor (sentencia de 27/10/2005, T-305/04, «Olor a fresa madura», apartado 34). Si bien, como se desprende de la sentencia «Sieckmann», una descripción no puede representar gráficamente signos olfativos que pueden ser objeto de multitud de descripciones, no puede excluirse, sin embargo, que un signo olfativo pueda ser objeto en el futuro de una descripción que cumpla todos los requisitos del artículo 4, del RMC, tal como ha sido interpretado por la jurisprudencia (sentencia de 27/10/2005, T-305/04, «Olor a fresa madura», apartado 28).
En el asunto antes citado ni la representación gráfica (de una fresa roja) ni la descripción en palabras («olor de fresa madura») se consideraron aceptables para cumplir los requisitos establecidos. El olor a fresa difiere de unas variedades a otras y la descripción «olor a fresa madura» puede referirse a diversas variedades y, por ende, a varios olores distintos. Se consideró que la descripción no era unívoca ni precisa y que no permitía eliminar todo elemento de subjetividad en el proceso de identificación y percepción del signo solicitado. La imagen de una fresa únicamente representa el fruto del que se desprende un olor supuestamente idéntico al signo olfativo de que se trata, y no el olor cuyo registro se solicita, y, por consiguiente no constituye una representación gráfica del signo olfativo.
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2.1.2.2 Marcas gustativas
Los argumentos expuestos supra en el apartado 2.1.2.1 también son aplicables a las marcas gustativas (véase la resolución de 04/08/2003, R 0120/2001-2, «Sabor a fresa artificial»).
2.1.2.3 Marcas sonoras
Si una marca sonora consiste en música, la Oficina aceptará como representación gráfica del sonido objeto de la solicitud la notación musical tradicional (de conformidad con los criterios establecidos en la sentencia de 27/11/2003, C-283/01, «Shield Mark»). Cuando la marca consiste en sonidos no musicales, no basta con la descripción del sonido con palabras (véase sentencia de 27/09/2014, R 708/2006-4, «TARZAN YELL»). En tales casos se acepta como representación gráfica un oscilograma o sonograma siempre que se acompañe del correspondiente archivo de audio presentado por medios electrónicos (véase la decisión del Presidente nº EX-05-3 de 10 de octubre de 2005).
Ejemplos de marcas sonoras aceptables
Marca comunitaria 9 199 134
Sonograma acompañado de un archivo de sonido
Marca comunitaria 1 637 859
Notación musical
2.1.2.4 Marcas animadas
Las marcas animadas también deben cumplir el requisito de la representación gráfica. La representación de la marca debe ir acompañada de una descripción que explique con claridad el movimiento para el que se solicita protección. En su resolución de 23/09/2010, R 443/2010-2, «RED LIQUID FLOWING IN SEQUENCE OF STILLS (MOVEMENT MARK)», la Segunda Sala de Recurso declaró que cuando un signo se defina mediante una representación gráfica y una descripción de texto, para que la representación sea, entre otras cosas, clara, precisa, inteligible y objetiva, la descripción debe coincidir con lo que puede percibirse en la representación gráfica. En dicho asunto, el examinador opinaba que las imágenes fijas facilitadas en la representación, junto con la descripción, no indicaban claramente el movimiento, en particular porque no quedaba suficientemente aclarado cómo progresaba el movimiento entre las distintas imágenes fijas:
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No obstante, la Sala segunda consideró a este respecto que la representación gráfica y la descripción verbal del signo eran perfectamente compatibles y complementarias. El solicitante había facilitado un número suficiente de imágenes fijas para representar claramente el flujo del movimiento junto con una descripción de texto precisa y detallada de su progresión, de modo que no cabía duda sobre el concepto de la marca animada. Según los principios establecidos por la Sala segunda, sólo puede denegarse una marca animada con arreglo a lo dispuesto en el artículo 7, apartado 1, letra a), del RMC cuando una «persona razonablemente observadora deba realizar un esfuerzo intelectual particularmente intenso para comprender en qué consiste la marca animada».
No se ha establecido ningún límite y el número de imágenes fijas dependerá del movimiento de que se trate siempre que se cumplan los requisitos formales. En cuanto a la descripción de la marca, su contenido debe ser exacto y acorde al contenido y complejidad del movimiento para describirlo adecuada y eficazmente.
Ejemplo de marca animada aceptable
Marca comunitaria 5 338 629
Descripción: La marca es una secuencia animada con dos segmentos llameantes que se unen en la parte superior derecha de la marca. Durante la secuencia animada, un objeto geométrico se eleva junto al primer segmento y después desciende junto al segundo segmento, mientras unas cuerdas individuales dentro de cada segmento pasan de estar oscuras a estar iluminadas. El punteado que se muestra en la marca es solamente para el sombreado. La secuencia animada completa tiene una duración de entre uno y dos segundos.
Representaciones: Representación de la marca en blanco y negro y sombras solo en gris; sin indicación de color.
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2.1.2.5 Combinación de dos o más colores «en cualquier configuración» sin forma ni contorno
La combinación de dos o más colores «en cualquier configuración» sin forma ni contorno no cumple los requisitos establecidos en las sentencias «Sieckmann» y «Libertel» sobre claridad y constancia de la representación gráfica, condición para que el signo pueda utilizarse como marca (véase asimismo la resolución de 27/07/2004, R 0730/2001-4, «AMARILLO/AZUL/VERDE»).
La mera yuxtaposición de dos o más colores sin forma ni contornos o la mención de dos o más colores “en todas las formas imaginables” no reúne los requisitos de precisión y de permanencia exigidos por el artículo 4, del RMC (sentencia de 24/06/2004, C-49/02, «Colores azul y amarillo», apartado 34).
Además, dichas representaciones permiten un gran número de combinaciones distintas, por lo que el consumidor no podría percibir y recordar una combinación en particular que le permitiese repetir de forma certera la experiencia de una compra al igual que tampoco permite a las autoridades competentes ni a los operadores económicos conocer el alcance de la protección conferida al titular de la marca. Por consiguiente, una representación gráfica consistente en dos o más colores designados de forma abstracta y sin contornos debe configurarse sistemáticamente asociando los colores de que se trata de una forma predeterminada y uniforme (sentencia de 14/06/2012, T-293/10, «Color per se», apartado 50).
2.1.2.6 Descripciones ambiguas y contradictorias, incoherentes con la naturaleza del signo
Las descripciones ambiguas y contradictorias no son aceptables. Además, la descripción debe ser coherente con la naturaleza del signo. En su sentencia de 14/06/2012, T-293/10, «SIETE CUADRADOS DE DIFERENTES COLORES», el Tribunal General consideró que la descripción de la marca («seis superficies geométricamente dispuestas en tres pares de superficies paralelas, estando cada par dispuesto de forma perpendicular con respecto a los otros dos pares, caracterizada por: (i) dos superficies adyacentes cualesquiera de diferentes colores y (ii) cada superficie constando de una estructura de cuadrícula formada por bordes negros que dividen la superficie en nueve segmentos iguales») era demasiado difícil de comprender:
Un signo definido en estos términos no es una marca de color en sí misma sino una marca tridimensional o gráfica que se corresponde con la apariencia externa de un objeto en particular que tiene una forma específica, un cubo cubierto por cuadrados dispuestos por colores de una forma en particular. Incluso en caso de que la descripción hubiera sido clara y fácilmente inteligible – lo que no era el caso– habría contenido una contradicción incoherente en cuanto a la auténtica naturaleza del signo (apartados 64 y 66).
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2.1.3 Relación con otras disposiciones del RMC
Cuando una marca suscite objeciones con arreglo al artículo 7, apartado 1, letra a), del RMC, no es necesario analizar la marca a la luz de los demás motivos de denegación posibles, como los previstos en el artículo 7, apartado 1, letra b) o en el artículo 7, apartado 1, letra c), del RMC.
Según el artículo 7, apartado 3, del RMC, los motivos de denegación absolutos previstos en el artículo 7, apartado 1, letra a), del RMC no pueden salvarse en virtud del carácter distintivo que la marca hubiera adquirido como consecuencia de su uso.
2.2 Carácter distintivo (artículo 7, apartado 1, letra b), del RMC)
2.2.1 Observaciones generales
Según jurisprudencia reiterada, el carácter distintivo de una marca en el sentido del artículo 7, apartado 1, letra b), del RMC significa que dicho signo permite identificar el producto y/o los servicios para los que se solicita el registro atribuyéndoles una procedencia empresarial determinada y, por consiguiente, distinguir este producto de los de otras empresas (sentencias de 29/04/2001, C-468/01 P a C-472/01 P, apartado 32; de 21/10/2004, C-64/02 P, apartado 42; de 08/05/2008, C-304/06 P, apartado 66, y de 21/01/2010, C-398/08 P, «Audi v OAMI», apartado 33). Conforme a reiterada jurisprudencia, dicho carácter distintivo sólo debe apreciarse, por una parte, en relación con los productos o servicios para los que se solicita el registro y, por otra, con la percepción que el público destinatario tiene de dicho signo (sentencias de 29/04/2001, en los asuntos acumulados C-468/01 P a C-472/01 P, apartado 33; sentencia de 08/05/2008, C-304/06 P, apartado 67 y de 21/01/2010, C-398/08 P, «Audi/OAMI», apartado 34) (sentencias de 14/06/2012, T-293/10, «Color en sí mismo», y de 12/07/2012, C-311/11 P, «WIR MACHEN DAS BESONDERE EINFACH, apartado 23).
Aunque en general se da por aceptado que basta con que la marca presente un mínimo grado de carácter distintivo, también es necesario tomar en consideración el hecho de que, para ser distintiva como marca comunitaria, la marca debe tener un carácter distintivo en toda la Unión Europea.
Según la jurisprudencia de los tribunales europeos, una marca denominativa que es descriptiva de las características de ciertos productos o servicios, en el sentido del artículo 7, apartado 1, letra c), del RMC, carece necesariamente, como consecuencia de ello, de carácter distintivo con respecto a esos mismos productos o servicios, en el sentido del artículo 7, apartado 1, letra b), del RMC (véase la sentencia de 12/06/2007, T-190/05, «TWIST & POUR», apartado 39).
En el mismo sentido, aun cuando una determinada palabra no sea claramente descriptiva con respecto a los productos o servicios de que se trata, de modo que no pueda ser objeto de objeciones con arreglo al artículo 7, apartado 1, letra c), del RMC, podría suscitar objeciones de conformidad con el artículo 7, apartado 1, letra b), del RMC por el motivo de que el público destinatario percibiría que sólo facilita información sobre la naturaleza de los productos y/o servicios de que se trata y no indica su procedencia. Ese fue el caso de la palabra «medi», sobre la que se consideró que únicamente facilitaba información al público destinatario sobre la finalidad médica o terapéutica de los productos o sobre su pertenencia genérica al ámbito médico (sentencia de 12/07/2012, T-470/09, «Medi», apartado 22).
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También podría suscitarse una objeción con arreglo al artículo 7, apartado 1, letra b), del RMC en aquellos casos en los que la estructura léxica empleada, aunque no sea gramaticalmente correcta, puede considerarse habitual en el lenguaje publicitario y en el ámbito empresarial controvertido. Así sucedió con la combinación «ECO PRO», en la que el elemento laudatorio PRO se coloca después del elemento descriptivo ECO, y que el público destinatario percibiría como indicación de que los productos designados están destinados a «profesionales ecológicos» o que «propugnan la ecología» (sentencia de 25/04/2013, T-145/12, «ECO PRO», apartados 29 a 32).
2.2.2 Elementos verbales
Las palabras no tienen carácter distintivo o no pueden transmitir ese carácter a un signo complejo si se utilizan con tanta frecuencia que han perdido su capacidad de distinguir productos y servicios. Los términos que se indican a continuación, de forma aislada o en combinación con otros elementos no registrables, están comprendidos en el ámbito de aplicación de esta disposición.
Los términos que únicamente denoten una calidad o función positiva o atractiva de los productos y servicios deben rechazarse cuando se soliciten de forma individual o conjuntamente con términos descriptivos:
ECO con el significado de «ecológico» (sentencias de 24/04/2012, T-328/11, «EcoPerfect», apartado 25, y de 15/01/2013, T-625/11, «ecoDoor», apartado 21);
MEDI referido a «médico» (sentencia de 12/07/2012, T-470/09, «medi»);
MULTI referido a «mucho, varios, más de uno» (resoluciones de 21/07/1999, R 0099/1999-1, «MULTI 2 ‘n 1»; y de 17/11/2005, R 904/2004-2, «MULTI»);
MINI con el significado de «muy pequeño» o «minúsculo» (resolución de 17/12/1999, R 62/1999-2, «MINIRISC»);
Premium/PREMIUM por referencia a «mejor calidad» (sentencias de 22/05/2012, T-60/11, apartados 46 a 49, 56 y 58, y de 17/01/ 2013, T-582/11 y T-583/11, «Premium L», «Premium XL», apartado 26);
PLUS, en el sentido de «adicional, añadido, de calidad superior, excelente en su clase» (resolución de 15 de diciembre de 1999, R 329/1999-1,«PLATINUM PLUS»);
ULTRA1 con el significado de «extremadamente» (resolución de 09/12/2002, R 0333/2002-1, «ULTRAFLEX»)
UNIVERSAL referido a productos que son aptos para uso general o universal (sentencia de 02/05/2012, T-435/11, «UniversalPHOLED», apartados 22 y 28).
Los sufijos de dominios de nivel superior, como «.com», sólo señalan el lugar en el que se puede obtener información en Internet, por lo que no pueden tornar registrable
1 Modificado el 23 de junio de 2010.
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una marca descriptiva susceptible de cualquier otro tipo de objeción. Por consiguiente, www.libros.com suscita las mismas objeciones para el material impreso que el término aislado «libros». Así lo ha confirmado el Tribunal General en su sentencia de 21/11/2012, T-338/11, «photos.com», apartado 22, en la que declaró que el elemento «.com» es un término técnico y genérico cuyo uso es obligatorio en una estructura normal de una dirección de un sitio comercial de Internet. Asimismo, también puede indicar que los productos y servicios cubiertos por la solicitud de marca pueden obtenerse o examinarse en línea o están relacionados con Internet. Por consiguiente, también debe entenderse que el elemento de que se trata carece de carácter distintivo en relación con los productos o servicios en cuestión.
La abreviatura de la forma jurídica de una sociedad como Ltd. o GmbH no añade carácter distintivo a un signo.
Asimismo, los términos que indican el grupo de personas que producen los productos o prestan los servicios no son registrables, como «empresa, gente» (en el caso de centros de trabajo) o «club». Por ejemplo, «Kitchen Company» no es registrable para cocinas. Sin embargo, lo anterior no se aplica cuando el signo en su conjunto no se refiere simplemente a los productos y servicios de forma abstracta, sino que crea la impresión general de que se trata de una entidad concreta e identificable. Ejemplos: «Royal Society for the Prevention of Cruelty to Animals», «International Trade Mark Association» serían marcas registrables.
Los nombres de personas suelen tener carácter distintivo, independientemente de la frecuencia del nombre e incluso cuando se trata de apellidos tan corrientes como Smith o García. Remítase a la sentencia de 16 de septiembre de 2004, C-404/02, «Nichols», apartados 26 y 30. Lo mismo se aplica a los nombres de personas destacadas, incluidos los jefes de Estado.
2.2.3 Títulos de libros
Las marcas que consisten exclusivamente en el título de una historia o libro famoso pueden no tener carácter distintivo en virtud del artículo 7, apartado 1, letra b), en relación con productos y servicios que tengan por objeto dicha historia. El motivo es que algunas historias (y sus títulos) están tan establecidas o son tan conocidas que han pasado a «formar parte del lenguaje» y no se les puede adscribir más significado que el de una historia en particular.
Por ejemplo, «Peter Pan», «Cenicienta» o «La Ilíada» pueden ser perfectamente marcas distintivas para (por ejemplo) pintura, prendas de vestir o lápices. Sin embargo, no desempañarán una función distintiva en relación con (por ejemplo) libros o películas, porque los consumidores pensarán simplemente que dichos productos hacen referencia a la historia de Peter Pan o Cenicienta, y ese será el único significado que se atribuya a tales términos.
En tal caso sólo se podrán plantear objeciones cuando el título en cuestión sea lo suficientemente famoso como para que pueda ser realmente conocido por el consumidor relevante y cuando pueda percibirse que la marca, en el contexto de los productos/servicios de que se trate, se refiere principalmente a una historia famosa o al título de un libro. Será más probable que se declare la falta de carácter distintivo a este respecto cuando pueda acreditarse que se ha publicado un gran número de versiones de la historia y/o que existen muchas adaptaciones para la televisión, el teatro o el cine que hayan llegado a un público numeroso.
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En función de la naturaleza de la marca de que se trate, podrán suscitarse objeciones en relación con material impreso, películas, grabaciones, obras de teatro y espectáculos (esta lista no es exhaustiva).
2.2.4 Colores
En este apartado se abordan los colores aislados o las combinaciones de colores como tal («color per se»).
Cuando se solicita el registro de colores o combinaciones de colores per se, el criterio de examen adecuado consiste en que si son distintivos, tanto si se aplican a los productos como a sus envases, o si se utilizan en el marco de la prestación de servicios. La ausencia de carácter distintivo de la marca en cualquiera de tales situaciones basta para denegar su registro. En lo que se refiere a las combinaciones de colores, el examen del carácter distintivo se debe basar en la presunción de que la combinación de colores, tal como se solicita, aparece en los productos o sus envases, o bien en la publicidad o en el material publicitario de los servicios.
2.2.4.1 Colores únicos
Tal como ha confirmado el Tribunal de Justicia, los consumidores no están acostumbrados a deducir el origen de los productos sobre la base de su color o el de su envase, al margen de todo elemento gráfico o textual, puesto que, en principio, un color por sí solo no se emplea, en la práctica comercial actual, como medio de identificación (sentencia de 06/05/2003, C-104/01, «Libertel»). Un color por sí solo carece normalmente de la propiedad inherente de distinguir los productos de una determinada empresa (apartado 65). Por consiguiente, un color aislado no tiene carácter distintivo para ningún producto o servicio excepto en circunstancias muy especiales.
Tales circunstancias especiales requieren que el solicitante demuestre que la marca es absolutamente inusual y resulta llamativa en relación con los productos específicos. Estos casos serán extremadamente raros, por ejemplo, el caso del color negro aplicado a la leche. Para denegar el registro no es necesario que exista uno de los factores enumerados en el apartado 2.2.4.2 infra, pero si ése es el caso, se debe utilizar como un argumento más para apoyar la denegación. Si se determina que el color aislado se utiliza comúnmente en los sectores de que se trata y/o tiene un fin decorativo o funcional, deberá denegarse su registro. Según el Tribunal de Justicia, el interés público constituye un obstáculo a la monopolización de un color aislado, al margen de que el ámbito de interés forme parte de un mercado muy específico (sentencia de 13/09/2010, T-97/08, «Tono del color naranja», apartados 44 a 47).
2.2.4.2 Combinaciones de colores
Cuando se solicita el registro de una combinación de colores per se, la representación gráfica presentada debe delinear espacialmente dichos colores para determinar el alcance del derecho solicitado (lo que se ve es lo que se obtiene). La representación gráfica debe indicar claramente la proporción y la posición de los diferentes colores mediante una disposición sistemática que asocie los colores de que se trata de manera predeterminada y permanente (sentencias de 24/06/2004, C-49/02, «Azul y amarillo», apartado 33, y de 14/06/2012, T-293/10, «Color per se», apartado 50).
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Por ejemplo, una marca que se componga de una pequeña línea amarilla encima del rojo es diferente de una marca en la que el rojo y el amarillo aparecen en proporciones iguales y el rojo está a la izquierda. Una reivindicación abstracta, concretamente de dos colores que aparecen «en cualquier combinación posible» o «en cualquier proporción» no es registrable y conduce a una objeción con arreglo al artículo 7, apartado 1, letra a), del RMC (resolución de 27/07/2004, R 0730/2001-4, «GELB/BLAU/ROT», apartado 34). Debe distinguirse lo expuesto de la indicación del modo en que la combinación de colores aparecerá en el producto, algo que no resulta necesario, pues lo importante es el objeto del registro y no el modo en que aparece o puede utilizarse en el producto.
En cuanto a las combinaciones de colores, la denegación se debe fundamentar exclusivamente en hechos o argumentos específicos y, cuando éstos no se puedan demostrar, se debe aceptar el registro de la marca. Si uno de los dos colores es el color habitual o natural del producto, es decir, cuando se añade un único color al color usual o natural del producto, se puede formular una objeción del mismo modo que si se tratase únicamente de un solo color. Ejemplos: el gris es el color habitual del mango de las herramientas de jardinería y el blanco es el color natural de las pastillas detergentes. Por consiguiente, el caso de una pastilla detergente blanca con una capa roja ha de considerarse como un caso que supone la adición de un color.
Las situaciones en las que, no obstante, el registro de una combinación de dos colores debe denegarse comprenden principalmente las siguientes:
En muchos casos un color constituirá simplemente un elemento decorativo de los productos o respondería a la demanda de los consumidores (como, por ejemplo, los colores de los automóviles o las camisetas), independientemente del número de colores en cuestión.
Un color puede constituir la naturaleza de los productos (como en el caso de los tintes).
Un color puede ser técnicamente funcional (ejemplo: el color rojo para los extintores de incendios o varios colores utilizados en los cables eléctricos).
Un color también puede ser usual o genérico (por ejemplo, de nuevo el rojo para los extintores o el amarillo para los servicios postales).
Un color puede indicar una característica especial de los productos, como el sabor (amarillo para el sabor a limón, el rosa para el sabor a fresa).
El registro de una combinación de colores también se debe denegar si puede probarse que la combinación ya existe en el mercado, especialmente si la utilizan diversos competidores (por ejemplo, hemos podido demostrar que diferentes empresas utilizan la combinación de rojo y amarillo para las latas de cerveza o refrescos).
En todos estos casos cabría formular una objeción al registro de la marca, pero siempre a la luz del análisis detenido de los productos y servicios en cuestión y su situación en el mercado.
Motivos de denegación absolutos
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El criterio para apreciar el carácter distintivo de una marca de color que designe servicios no debe diferir del aplicable a las marcas de color que designan productos (como el Tribunal General recordó en su sentencia de 12/11/2010, T-404/09, «Gris y rojo»). En dicho asunto, se consideró que la combinación de colores objeto de la solicitud no difería de forma perceptible para el consumidor pertinente de los colores habitualmente utilizados para el servicio de que se trataba. El Tribunal General concluyó que la combinación de colores objeto de la solicitud era muy parecida a la combinación «blanco/rojo» utilizada en los pasos a nivel de los trenes y en las señales asociadas al tráfico ferroviario y que el signo, considerado en tu totalidad, sería percibido por el público destinatario como un elemento funcional o decorativo y no como una indicación de la procedencia empresarial de los servicios.
Cuanto mayor es el número de colores, menos probable es que exista un carácter distintivo, debido a la dificultad de memorizar un número elevado de colores diferentes y el orden en que se presentan.
En cuanto a los nombres de los colores, véase elapartado 2.3.2.9.
2.2.5 Letras únicas2
2.2.5.1 Consideraciones generales
En su sentencia de 09/09/2010, C-265/09 P, «α», el Tribunal de Justicia declaró que, en el caso de marcas consistentes en letras únicas representadas con caracteres estándar sin alteración gráfica, es preciso apreciar si el signo de que se trata puede distinguir los diferentes productos y servicios en el marco de un examen concreto que tenga por objeto tales productos o servicios (apartado 39).
El Tribunal de Justicia recordó que, según el artículo 4, del RMC, las letras se encuentran entre las clases de signos que pueden constituir marcas comunitarias siempre que sean apropiadas para distinguir los productos o los servicios de una empresa de los de otras empresas (apartado 28) y subrayó que el registro de un signo como marca no exige un grado determinado de creatividad o de imaginación lingüística o artística por parte del solicitante.
Pese a reconocer que es legítimo tener en cuenta las dificultades para acreditar el carácter distintivo de determinados tipos de marcas por su propia naturaleza y que puede ser más difícil establecer el carácter distintivo de una marca consistente en una letra única que respecto a otras marcas denominativas (apartado 39), el Tribunal de Justicia declaró claramente que tales circunstancias no justifican que se fijen criterios específicos que sustituyan o establezcan excepciones al criterio del carácter distintivo tal y como ha sido interpretado en la jurisprudencia (apartados 33 a 39).
En cuanto a la carga de la prueba, el Tribunal de Justicia declaró que, a la hora de examinar los motivos de denegación absolutos, la Oficina está obligada con arreglo al artículo 76, apartado 1, del RMC, a examinar de oficio los hechos pertinentes que puedan llevarla a formular una objeción al amparo del artículo 7, apartado 1, del RMC y que dicha exigencia no puede relativizarse ni invertirse en detrimento del solicitante de la marca comunitaria (apartados 55 a 58). Por consiguiente, corresponderá a la
2 Esta parte versa sobre las letras únicas con arreglo al artículo 7, apartado 1, letra b). Para las letras
únicas de acuerdo con el artículo 7, apartado 1, letra c), véase el apartado 2.3.2.8
Motivos de denegación absolutos
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Oficina explicar, de forma motivada, por qué una marca consistente en una letra única representada en caracteres estándar está desprovista de carácter distintivo.
Por lo tanto, es preciso efectuar un minucioso examen basado en las circunstancias de hecho específicas del caso para apreciar si una letra única representada en caracteres estándar puede funcionar como una marca para los productos/servicios de que se trata. Esta necesidad de apreciación de los hechos entraña que no podrá partirse de presunciones (como que los consumidores no están habituados con carácter general a ver letras únicas como marcas).
En consecuencia, cuando se examine una marca consistente en una letra única, deberán evitarse los argumentos genéricos carentes de fundamento como los relativos a la disponibilidad de los signos, dado el limitado número de letras. La Oficina debe determinar, sobre la base de una apreciación de los hechos, el motivo por el que cabría plantear objeciones a la marca solicitada.
Así pues, está claro que el examen de marcas compuestas por una letra única debe ser riguroso y restrictivo y que cada caso exige que se analice cuidadosamente si una letra determinada puede considerarse distintiva de forma inherente en relación con los productos y/o servicios en cuestión.
2.2.5.2 Ejemplos
Por ejemplo, en los ámbitos técnicos, como los relacionados con ordenadores, máquinas, motores y herramientas, es más probable que las letras aisladas se perciban como referencias técnicas, de modelo o de catálogo, en lugar de como indicadores de procedencia, pese a que así se desprenda de un análisis de los hechos.
En función del resultado del examen previo, una marca consistente en una única letra representada en caracteres estándar puede suscitar objeciones en virtud del artículo 7, apartado 1, letra b), del RMC por estar desprovista de carácter distintivo en relación con los productos y/o servicios de que se trate o con parte de ellos.
Tal sería el caso, por ejemplo, de una marca consistente en la letra «C» para «zumos de frutas», pues esta letra suele utilizarse designar la vitamina C. El público destinatario no lo percibiría como un signo que distingue el origen comercial de los productos en cuestión.
Como ejemplos adicionales de falta de carácter distintivo cabe mencionar las marcas consistentes en una letra aislada solicitadas para cubos de juguete, que suelen utilizarse para enseñar a los niños a construir palabras combinando las letras que figuran en los propios cubos, sin describir, no obstante, el producto como tal, o las letras aisladas solicitadas como marca en relación con servicios de lotería, servicios en los que las letras suelen utilizarse para indicar distintas series de números.
Pese a que en los supuestos anteriores no existe una relación descriptiva directa entre la letras y los productos/servicios, una marca consistente en una única letra carecería de carácter distintivo, porque los consumidores están más habituados, en lo que respecta a los cubos de juguete y a la lotería, a ver letras aisladas como elementos que tienen una connotación funcional o utilitaria y no como indicadores de una procedencia empresarial.
Motivos de denegación absolutos
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Por otra parte, si no puede acreditarse que una determinada letra aislada carece de carácter distintivo en relación con los productos/servicios de que se trata, deberá aceptarse, aunque esté representada mediante caracteres estándar o de un modo bastante básico.
Por ejemplo, se admitió el registro de la letra para transporte; embalaje y almacenamiento de mercancías; organización de viajes correspondientes a la clase 39 y servicios de suministro de comidas y bebidas; alojamiento temporal para la clase 43 (véase la resolución de 30/09/2010, R 1008/2010-2, apartados 12 a 21).
Para más ejemplos, véase el apartado 2.3.2.8 infra.
2.2.6 Eslóganes: apreciación del carácter distintivo
El Tribunal de Justicia ha declarado que, para apreciar el carácter distintivo de los eslóganes, no procede aplicar criterios más severos que los aplicables a otros signos (sentencia de 12/07/2012, C-311/11 P, «WIR MACHEN DAS BESONDERE EINFACH» y la jurisprudencia citada).
Los eslóganes publicitarios podrán suscitar objeciones con arreglo al artículo 7, apartado 1, letra b), del RMC cuando el público destinatario los perciba exclusivamente como una fórmula puramente publicitaria. Sin embargo, se considerará que tienen carácter distintivo si, al margen de su función promocional, el público los entiende como una indicación de la procedencia empresarial de los productos o servicios de que se trata.
El Tribunal de Justicia ha fijado los siguientes criterios que deben aplicarse a la hora de apreciar el carácter distintivo de un eslogan (sentencias de 21/01/2010, C-398/08 P, «Vorsprung durch Technik», apartado 47 y de 13/04/2011, T-523/09, «WIR MACHEN DAS BESONDERE EINFACH», apartado 37).
Un eslogan publicitario tendrá carácter distintivo cuando parezca ser más que un mero mensaje publicitario que ensalce las cualidades de los productos o servicios en cuestión cuando:
tenga varios significados y/o constituya un juego de palabras y/o introduzca elementos de intriga o sorpresa de forma que pueda ser percibido
como de fantasía, sorprendente o inesperado y/o posea una cierta originalidad o fuerza y/o desencadene un proceso cognoscitivo en el público destinatario o requiera un
mínimo de esfuerzo de interpretación.
Además de lo anterior, las siguientes características de un eslogan pueden contribuir a que se aprecie su carácter distintivo:
Estructuras sintácticas inusuales La utilización de recursos lingüísticos o estilísticos como aliteraciones,
metáforas, rimas, oxímoron, etc.
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Sin embargo, el uso de formas gramaticales no ortodoxas debe apreciarse cuidadosamente porque, a menudo, los eslóganes publicitarios se suelen escribir de forma simplificada para hacerlos más concisos y directos (véase, entre otras, la sentencia de 24/01/2008, T-88/06, «SAFETY 1ST», apartado 40). Esto significa que la falta de elementos gramaticales como artículos definidos o pronombres (E/LA/LOS/LAS, etc.), conjunciones (O, Y, etc.) o preposiciones (DE, PARA, etc.) puede no bastar para que un eslogan resulte distintivo. En el asunto «SAFETY 1ST», el Tribunal General consideró que la utilización de «1ST» en lugar de «FIRST» (primero) no era suficientemente heterodoxo como para añadir carácter distintivo a la marca.
Es probable que un eslogan cuyo significado sea impreciso e impenetrable o cuya interpretación exija un esfuerzo mental considerable por parte del consumidor de que se trata sea distintivo, pues los consumidores no serán capaces de establecer un vínculo claro y directo con los productos y servicios reivindicados.
El hecho de que el público destinatario sea un público especializado y que su grado de atención sea más elevado que el del consumidor medio no puede influir en los criterios jurídicos para apreciar el carácter distintivo de un signo. Tal y como señaló el Tribunal de Justicia, «no por ello se deduce necesariamente que basta un menor carácter distintivo cuando el público pertinente es especializado» (sentencia de 12/07/2012, C-311/11 P, «WIR MACHEN DAS BESONDERE EINFACH», apartado 48).
A continuación se incluyen varios ejemplos de las distintas finalidades que pueden tener los eslóganes y de los argumentos que pueden servir de base a una objeción con arreglo al artículo 7, apartado 1, letra b), del RMC.
Marca comunitaria Finalidad principal Asunto
Marca comunitaria nº 5 904 438 MORE THAN JUST A CARD
para la clase 36 (banca, servicios de tarjetas de crédito y de
débito)
Declaración de servicios al cliente R 1608/2007-4
Sujeto a objeción con arreglo al artículo 7, apartado 1, letra b), del RMC.
Este eslogan únicamente transmite información sobre los productos y servicios objeto de la solicitud. Es el tipo de expresión que un anglófono utilizaría para describir una tarjeta bancaria que es un poco distinta a lo habitual. Transmite el concepto de que la tarjeta incluye características que no resultan evidentes a primera vista. El hecho de que el eslogan deje abierta la cuestión de cuáles son las características de que se trata, es decir, que la marca no describa un servicio o característica específica de la «tarjeta» no otorga carácter distintivo a la marca.
Marca comunitaria Finalidad principal Asunto
Marca comunitaria nº 7 394 414 WE PUT YOU FIRST. AND KEEP YOU AHEAD
para la clase 40 Declaración de servicios al cliente -
Sujeto a objeción con arreglo al artículo 7, apartado 1, letra b), del RMC.
La marca es un mensaje publicitario laudatorio que subraya los aspectos positivos de los servicios, en particular, que ayudan a obtener la mejor posición en el sector y a mantenerla en el futuro.
Motivos de denegación absolutos
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Marca comunitaria Finalidad principal Asunto
Marca comunitaria nº 6 173 249 SAVE OUR EARTH NOW
para las clases 3, 17, 18, 20, 22, 24, 25 y 28
Manifestación de valores o eslogan político R 1198/2008-4
Sujeto a objeción con arreglo al artículo 7, apartado 1, letra b), del RMC.
Este signo es una llamada simple y directa a tomar medidas y contribuir al bienestar de la tierra favoreciendo la adquisición de productos respetuosos con el medio ambiente. A diferencia de lo que alegó el solicitante de que la palabra «now» (ahora) constituye un elemento original, pues nadie creerá que al comprar los productos pertinentes estarán literalmente salvando la tierra ahora, la palabra «NOW» es una palabra enfática muy utilizada en marketing para incitar a los consumidores a consumir, a obtener lo que desean sin esperar, es una llamada a la acción. El consumidor pertinente reconocería y percibiría inmediatamente el signo como una expresión publicitaria laudatoria que indica que los productos constituyen una alternativa respetuosa con el medio ambiente con respecto a otros productos del mismo tipo y no como una indicación de su procedencia empresarial.
Marca comunitaria Finalidad principal Asunto
Marca comunitaria nº 4885323 DRINK WATER, NOT SUGAR
para las clases 32 y 33 Declaración inspiradora o motivadora R 718/2007-2
Sujeto a objeción con arreglo al artículo 7, apartado 1, letra b), del RMC.
La marca es un eslogan banal, que simplemente transmite la idea de que el consumidor beberá agua de verdad y no una bebida azucarada. La marca no tienen ningún sentido secundario o escondido, no incluye elementos de fantasía y su mensaje al consumidor es sencillo, directo e inequívoco. Por estos motivos, es poco probable que se perciba como un signo de procedencia empresarial. Es evidente que la marca consiste exclusivamente en un buen consejo, es decir, que es mejor para la salud beber agua que no ha sido azucarada. ¿Qué mejor forma de promocionar dichos productos que con una expresión como «DRINK WATER, NOT SUGAR» (beba agua, no azúcar)? Los consumidores leerán con aprobación este eslogan, pero buscarán la marca en otro lugar del producto.
Marca comunitaria Función principal Asunto
VALORES DE FUTURO Para clase 41 Manifestación de valores
Sentencia de 06/06/2013,
T-428/12
Sujeto a objeción con arreglo al artículo 7, apartado 1, letra b), del RMC
Cuando el público destinatario vea la expresión VALORES DE FUTURO percibirá un mensaje elogioso cuyo único objetivo es dar una imagen positiva de los servicios en cuestión.
Algunos ejemplos de eslóganes aceptados:
DEFINING TOMORROW, TODAY, resolución de 07/02/2012, R 1264/2011-2, marca comunitaria nº 9 694 431, para productos y servicios de las clases 9, 10, 16, 35, 41, 44 y 45.
SITEINSIGHTS, resolución de la Sala de Recurso de 08/11/2011, R 879/2011-2, marca comunitaria nº 9 284 597, para productos y servicios de las clases 9 y 42.
THE PHYSICIAN DRIVEN IMAGING SOLUTION, Registro Internacional nº W 01 096 100, para productos y servicios de las clases 9, 16 y 42.
UNMASKING THE SOCIAL NETWORK OF FRAUD, marca comunitaria nº 10 477 941, para productos y servicios de las clases 9, 36 y 45.
Motivos de denegación absolutos
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Un eslogan suscitará objeciones con arreglo al artículo 7, apartado 1, letra c), del RMC si transmite de forma directa información sobre el tipo, calidad, destino u otras características de los productos o servicios (véase el apartado 2.3.2.5 infra).
2.2.7 Elementos figurativos simples
Las formas geométricas simples como círculos, líneas, rectángulos o pentágonos comunes no permiten transmitir un mensaje que los consumidores puedan recordar y, por consiguiente, no los verán como una marca.
Como ha afirmado el Tribunal, un signo extremadamente simple, consistente en una forma geométrica simple, como un círculo, una línea, un rectángulo o un pentágono no es susceptible, como tal, de transmitir un mensaje que los consumiodres puedan recordar, de forma que no lo considerarán como una marca (véase el asunto T-304/05, apartado 22).
Ejemplos de marcas denegadas
Signo Productos yservicios Justificación Asunto
Clase 33
El signo simplemente consiste en un pentágono normal, una figura geométrica simple. Se percibiría que la forma geométrica, en caso de que fuera la forma de la etiqueta, únicamente tiene un fin estético o funcional y no una función de origen.
Sentencia de 12/09/2007, T-304/05,
«Pentágono»
Clases 9, 14,16, 18, 21,
24, 25, 28, 35-39, 41-45
El signo se percibiría como una forma geométrica excesivamente simple, básicamente un paralelogramo. Para cumplir la función identificativa de una marca, el paralelogramo debería contener elementos que lo singularicen con respecto a otras representaciones de paralelogramos. Las dos características del signo son que está ligeramente inclinado hacia la derecha y que su base está ligeramente redondeada y alargada hacia la izquierda. El consumidor general no percibiría estos matices.
Sentencia de 13/04/2011, T-159/10,
«Paralelogramo»
Clases 14,18, 25
El signo no presenta ningún aspecto que pueda recordar fácil e inmediatamente un público destinatario atento. Será percibido exclusivamente como un elemento decorativo, tanto si se trata de productos de la clase 14 como de los comprendidos en las clases 18 y 25.
Sentencia de 29/09/2009, T-139/08, «Representación de la mitad de una sonrisa
de smiley»
Clase 9
El signo consiste en un triángulo equilátero básico. La configuración invertida y el reborde en rojo del triángulo no le otorgan carácter distintivo. La impresión general que produce el signo es la de una mera figura geométrica que no transmite el mensaje de una marca a primera vista.
Registro internacional nº W01 091 415
Motivos de denegación absolutos
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Signo Productos yservicios Justificación Asunto
Clases 3, 18, 24, 43, 44
El signo se compone exclusivamente de una figura geométrica simple en color verde. Este color en concreto se utiliza de manera general y frecuente en publicidad y para la comercialización de productos y servicios debido a su capacidad para atraer sin transmitir ningún mensaje específico.
Sentencia de 09/12/2010, T-282/09,
«Cuadrado verde»
Ejemplo de una marca aceptada
Signo Productosy servicios Justificación Asunto
Clases 35, 41
El signo es un diseño que presenta elementos triangulares yuxtapuestos. La impresión general que producen es mucho más compleja que la de una simple figura geométrica.
Marca comunitaria nº 10 948 222
2.2.8 Elementos figurativos comunes
La siguiente representación de una hoja de parra no resulta distintiva para el vino:
Asimismo, la siguiente representación de una vaca para productos lácteos no es distintiva:
Marca comunitaria nº 11 345 998, reivindicada para las clases 29 (leche, productos lácteos, etc.) y 35.
El signo anterior fue denegado, pues es común que se utilicen representaciones de vacas en relación con leche y productos lácteos. El hecho de que la marca consistiese en una fotografía «aérea» de una vaca no basta para conferir carácter distintivo al signo, pues las pequeñas alteraciones de un signo común no lo hacen distintivo. El mismo razonamiento podría aplicarse asimismo a productos relacionados como la «leche con cacao».
Motivos de denegación absolutos
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2.2.9 Signos tipográficos
Los signos tipográficos como el punto, la coma, el punto y coma, las comillas o el signo de exclamación no serán considerados por el público como una indicación de origen. Los consumidores los percibirán como un signo destinado a captar la atención del consumidor, pero no como un signo que indique un origen comercial. Análogo razonamiento es aplicable a los símbolos de monedas comunes, como €, £, $. En función de los productos de que se trate, estos signos solo informan al consumidor de que un producto o servicio concreto se comercializa en dicha moneda.
Las siguientes marcas suscitaron objeciones:
Signo Productosy servicios Justificación Asunto
Clases 14, 18 y 25
El Tribunal General confirmó la conclusión de la Sala de Recurso en el sentido de que la marca solicitada carecía del grado suficiente de carácter distintivo. Simplemente consiste en un signo de puntuación sin características adicionales especiales que resulten inmediatamente perceptibles para los consumidores y se trata de un signo común frecuentemente utilizado en el mundo empresarial o en la publicidad. Dada la frecuencia de su uso, el consumidor pertinente percibirá el signo de exclamación como una publicidad de carácter meramente laudatorio o como algo para captar la atención (véase la sentencia de 30/09/2009, T-75/08, «!»).
Marca comunitaria nº 5 332 184
Clases 29, 30, 31 y
32
El signo solicitado fue denegado, porque en el caso de los productos reivindicados (alimentos y bebidas), los porcentajes resultan particularmente importantes en relación con el precio. Por ejemplo, el signo de porcentaje indica claramente que existe una relación favorable coste/beneficio, porque el precio se ha reducido en un porcentaje determinado con respecto al precio habitual. Dicho signo porcentual en un círculo rojo también se emplea a menudo en rebajas, ofertas especiales, liquidaciones de inventario o productos sin marca baratos, etc. El consumidor considerará que el signo constituye un pictograma que transmite la información de que los productos reivindicados se venden a un precio rebajado (véase la resolución de 16/10/2008, R 998/2008-1, «Prozentzeichen»).
Marca comunitaria nº 5 649 256
2.2.10 Pictogramas
Los pictogramas son signos y símbolos básicos y sin ornamento, que se considera que tienen un valor puramente informativo o explicativo con respecto a los productos o servicios pertinentes. Ejemplo de ello son los signos que indican la forma de uso (como un dibujo de un teléfono en relación con servicios de entrega de pizzas a domicilio) o que transmiten un mensaje universalmente comprensible (como un tenedor y un cuchillo en relación con el suministro de comida).
Los pictogramas habitualmente utilizados, por ejemplo, una «P» blanca sobre un fondo azul para designar una plaza de aparcamiento (que podría suscitar objeciones con
Motivos de denegación absolutos
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arreglo al artículo 7, apartado 1, letra d)), o el dibujo de un helado para indicar que se vende helado en las cercanías, no tienen carácter distintivo en relación con los productos o servicios para los que se usan.
Signo Justificación Asunto
Habida cuenta del tipo de productos y servicios solicitados para las clases 9, 35, 36, 38 y 42 (por ejemplo, cajeros automáticos, servicios bancarios), el público percibirá el signo como una indicación útil o como flechas indicativas que muestran donde debe insertarse la tarjeta magnética en el cajero. La asociación de los triángulos y de los demás elementos de la marca solicitada entrañará que el público los perciba como flechas que indican una orientación. El consumidor se ve confrontado cotidianamente a este tipo de información práctica en todo tipo de lugares, como bancos, supermercados, estaciones, aeropuertos, aparcamientos, cabinas telefónicas, etc. (apartados 37 a 42).
Sentencia de 02/07/2009, T-414/07,
«Una mano que sostiene una tarjeta con tres triángulos»
Marca comunitaria nº 9 894 528
para productos de la clase 9
Este signo fue rechazado porque es idéntico al símbolo básico internacional de seguridad conocido como «alto voltaje» o «peligro, riesgo de electrocución». Fue inicialmente definido como tal por la norma ISO 3864 como símbolo estándar de alto voltaje, en el que el signo solicitado está contenido en un triángulo lo que denota que es un símbolo de peligro. Dado que dicho signo coincide con el signo internacional habitual que indica el riesgo de alto voltaje, fue denegado con arreglo al artículo 7, apartado 1, letra b), del RMC.
Resolución de 21/09/2012,
R 2124/2011-5,«Motiv o de un rayo»
2.2.11 Etiquetas comunes o no distintivas
Un signo figurativo puede constar de formas, dibujos o figuras que el público destinatario puede percibir como etiquetas desprovistas de carácter distintivo. También en ese caso, la motivación de la denegación radica en que dichos elementos figurativos no son aptos para causar una impresión en la mente del consumidor, pues son excesivamente simples y/o se usan habitualmente en relación con los productos y servicios reivindicados.
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Véanse los siguientes ejemplos:
Signo Justificación Asunto
Marca comunitaria nº 4 373 403, solicitada
como marca tridimensional que reivindicaba productos de la clase 16 (etiquetas
adhesivas; etiquetas adhesivas para su uso con dispositivos de etiquetado manuales; y etiquetas (que no sean de material textil))
La marca solicitada «carece de carácter distintivo» y fue denegada con arreglo al artículo 7, apartado 1, letra b), del RMC, pues es banal y ordinaria dado que puede relacionarse con las etiquetas adhesivas. El signo dice mucho sobre la naturaleza de los productos y muy poco o incluso nada sobre la identidad del fabricante (apartado 11).
Resolución de 22/05/2006,
R 1146/2005-2
Marca comunitaria nº 9 715 319 para productos de las clases 6, 7, 8, 9 y 20
La marca fue denegada, pues su silueta básica exclusivamente combinada con un color amarillo brillante no puede llevar a que los profesionales pertinentes y el público en general identifiquen los productos objeto de solicitud como procedentes de una empresa en particular. En este caso, el color amarillo puede percibirse como un adorno de los productos o como un medio para atraer la atención hacia dichos productos, sin aportar información específica o transmitir un mensaje concreto sobre la procedencia empresarial de los productos. Asimismo, como es sabido, el color amarillo brillante suele utilizarse comúnmente de forma funcional para una gran variedad de productos, por ejemplo, entre otras cosas, para incrementar la visibilidad de los objetos, subrayar algo o advertir. Por estos motivos, los consumidores pertinentes no reconocerán este color como una marca, sino que lo percibirán por su función decorativa o como una advertencia.
Resolución de 15/01/2013,
R 444/2012-2, «Imagen de una etiqueta en color
amarillo»
Asimismo, las siguientes marcas también fueron denegadas:
Marca comunitaria nº 11 177 912 que reivindica productos de las
clases 29, 30 y 31
Marca comunitaria nº 11 171 279 que reivindica productos de las
clases 29, 30 y 31
Marca comunitaria nº 10 776 599 que reivindica, entre otros,
productos de las clases 32 y 33
En estos tres casos, tanto el color como la silueta de las etiquetas son bastante comunes. El mismo razonamiento se aplica a la representación estilizada de las frutas en el último de los tres casos. Asimismo, el citado elemento figurativo representa o al
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menos alude claramente a los ingredientes de algunos de los productos reivindicados como, por ejemplo, zumos de frutas.
2.2.12 Marcas tridimensionales
2.2.12.1 Observaciones preliminares
El artículo 7, apartado 1, letra b), del RMC no distingue entre diferentes tipos de marcas a la hora de determinar si una marca puede distinguir los productos o servicios de una empresa de los de otras empresas (véase la sentencia de 05/03/2003, T-194/01, «Tableta ovoide», apartado 44). A efectos de la aplicación de dicho criterio uniforme a los distintos tipos de marcas debe efectuarse una distinción en función de la percepción del consumidor y de las condiciones del mercado.
Para los signos consistentes en la forma del propio producto no deben aplicarse criterios más estrictos de los aplicables a otros tipos de marcas, pero puede ser más difícil llegar a la conclusión de que tienen carácter distintivo, pues la percepción que el público destinatario tiene de dichas marcas no es necesariamente la misma que en el caso de una marca denominativa o figurativa (véase la sentencia de 07/10/2004, C-136/02 P, «Maglite», apartado 30).
Las marcas tridimensionales se pueden agrupar en tres categorías:
formas que no guardan relación con los productos y servicios propiamente dichos;
formas que consisten en la forma de los propios productos o de una parte de los productos;
la forma del embalaje o del envase.
2.2.12.2 Formas que no guardan relación con los propios productos o servicios
Las formas que no guardan relación con los propios productos o servicios (por ejemplo, el hombrecillo de Michelin) suelen tener carácter distintivo.
2.2.12.3 Forma de los propios productos o formas relacionadas con los productos y servicios
La jurisprudencia desarrollada en relación con las marcas tridimensionales consistentes en la representación de la forma del propio producto también resulta pertinente para las marcas figurativas consistentes en representaciones bidimensionales del producto o de sus elementos (véase la sentencia de 14/09/2009, T-152/07, «Representación de un reloj»).
Cuando la forma coincide con la forma o con el envase de los productos objeto de solicitud, el examen debe efectuarse de acuerdo a las tres siguientes fases.
Primera fase: Análisis con arreglo al artículo 7, apartado 1, letra e), del RMC
En principio, el examinador debe comprobar en primer lugar si existe uno de los motivos de denegación con arreglo al artículo 7, apartado 1, letra e), del RMC, ya que
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éstos no se pueden obviar a través del carácter distintivo adquirido. En lo que respecta a esta primera etapa, véase infra el apartado 2.5 «Formas con una función técnica esencial, un valor sustancialmente estético o derivada de la naturaleza de los productos».
Segunda fase: Identificación de los elementos de la marca tridimensional
En la segunda fase, el examinador debe comprobar si la representación de la marca tridimensional contiene otros elementos, como palabras o etiquetas, que doten de carácter distintivo a la marca. Con carácter general, cualquier elemento que sea distintivo por sí mismo dotará a la marca tridimensional de carácter distintivo siempre que sea perceptible en el momento de utilizar normalmente el producto. Ejemplos típicos son las palabras o los elementos figurativos, o las combinaciones de los mismos, que aparecen en la parte exterior de la forma y que permanecen claramente visibles, como las etiquetas de las botellas. Por consiguiente, incluso la forma habitual de un producto se puede registrar como marca tridimensional si sobre ella aparece una marca denominativa o una etiqueta que sean distintivas.
Sin embargo, elementos no distintivos o puramente descriptivos combinados con una forma habitual no otorgarán carácter distintivo a dicha forma (sentencia de 18/01/2013, T-137/12, «Forma de un vibrador», apartados 34 y 36).
Tercera fase: Criterios para determinar el carácter distintivo de la propia forma
Por último, debe comprobarse que se cumplan los criterios del carácter distintivo de la propia forma. El criterio básico es si la forma difiere tan significativamente de las formas básicas, comunes o esperadas que permite al consumidor identificar los productos únicamente por su forma y adquirir el mismo artículo otra vez si ha tenido una experiencia positiva con el producto. Un buen ejemplo de ellos son las verduras congeladas con forma de cocodrilo.
Se utilizarán los siguientes criterios al examinar el carácter distintivo de las marcas tridimensionales compuestas exclusivamente por la forma de los productos a los que se refieren:
Una forma no posee carácter distintivo si se trata de una forma geométrica básica (véase la sentencia de 19/09/2001, T-30/00, «Pastillas rectangulares/rojo/blanco») o de una combinación de formas geométricas básicas (véase la resolución de 13/04/2000, R-263/1999-3).
Para tener carácter distintivo, la forma debe diferir significativamente de la que espera el consumidor y de la norma o de los usos del ramo. Cuanto más se acerque la forma a la forma más probable que tendría el producto en cuestión, más verosímil será que dicha forma carezca de carácter distintivo (véase la sentencia de 08/04/2002, C-136/02 P, «Maglite», apartado 31).
No basta con que la forma sea sólo una variante de una forma común o una variante de varias formas habituales en un campo en el que existe una enorme variedad de diseños (véanse las sentencias de 08/04/2002, C-136/02 P, «Maglite», apartado 32, y de 07/02/2002, T-88/00, «Maglite», apartado 37).
El consumidor percibirá de este modo las formas funcionales o los rasgos de una marca tridimensional. Por ejemplo, en el caso de las pastillas detergentes,
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las esquinas redondeadas evitan estropear la colada y las capas de otro color representan la presencia de diferentes ingredientes activos.
Aunque el público está acostumbrado a percibir una marca tridimensional como un signo identificador de la procedencia del producto, no ocurre necesariamente lo mismo cuando el signo es indiferenciable del propio producto. De ello se desprende que la apreciación del carácter distintivo no puede conducir a resultados diferentes en el caso de una marca tridimensional constituida por el aspecto del propio producto y en el de una marca figurativa constituida por la representación, fiel a la realidad, del mismo producto (sentencia de 19/09/2001, T-30/00, «Pastillas rectangulares/rojo/blanco», apartado 49).
A continuación se recoge una lista de formas de productos solicitadas y su análisis.
Signo Justificación Asunto
Las marcas figurativas que muestran una representación gráfica de una reproducción realista de los propios productos no son distintivas en relación con dichos productos. La representación de una pastilla para «productos para la colada y la vajilla en forma de pastillas» fue denegada. La forma, a saber, una pastilla rectangular, figura entre las formas geométricas de base y es evidente para un producto para lavadoras o para lavavajillas. Las esquinas ligeramente redondeadas de la pastilla no son percibidas por el consumidor medio como una particularidad de la forma de que se trata (sentencia de 19/09/2001, T-30/00, «Pastillas cuadradas/rojo/blanco», apartados 44 y 53). Ese mismo planteamiento ha sido confirmado en varias sentencias, incluida la sentencia de 04/10/2007, C-144/06 P, «Pastillas».
Sentencia de 19/09/2001, T-30/00,
«Pastillas rectangulares/rojo/blan
co»
Esta forma fue denegada porque constituye una simple variante de una forma habitual para este tipo de productos, a saber, una linterna (apartado 31).
Sentencia de 08/04/2002,
C-136/02 P, «Maglite»
Esta forma fue denegada porque no difiere de manera significativa de la norma o de los usos del ramo. Aunque por norma general los productos de esta clase suelen ser alargados, existen en el mercado otras formas esféricas o redondeadas (apartado 29). La inclusión del elemento textual en letra pequeña «fun factory» no permite obviar que la forma global carece de carácter distintivo (apartado 36).
Sentencia de 18/01/2013, T-137/12,
«Forma de un vibrador».
Motivos de denegación absolutos
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 33
FINAL VERSION 1.0 DATE 02/01/2015
Signo Justificación Asunto
El Tribunal de Justicia confirmó la denegación de este signo tridimensional, pues no era lo suficientemente diferente de las formas y colores utilizados habitualmente en el sector de los dulces y bombones. La combinación de elementos figurativos no lleva a aplicar los criterios de las marcas bidimensionales.
Sentencia de 06/09/2012, C-96/11 P,
«Ratones de chocolate»
Esta marca tridimensional consistente en un mango, solicitada para productos de la clase 8 (herramientas impulsadas manualmente utilizadas en agricultura, horticultura y silvicultura, incluidas tijeras de podar, podadoras, tijeras de setos, cizallas (herramientas manuales), fue denegada.
Sentencia de 16/09/2009, T-391/07,
«Mango»
Signo Justificación Asunto El Tribunal confirmó la jurisprudencia sobre el carácter no distintivo de las marcas tridimensionales en la forma del producto o de su presentación. Aunque la forma ovalada tiene una compleja oquedad en la superficie, no puede considerarse una diferencia significativa con respecto a las formas de los productos de confitería disponibles en el mercado.
Sentencia de 12/12/2013, T-156/12
«Forma oval»
Se aplican unos criterios análogos, mutatis mutandis, a las formas relacionadas con los servicios, por ejemplo, el dibujo de una lavadora para servicios de lavandería.
2.2.12.4 Forma del envase
La forma de las botellas o envases de los productos sigue los mismos criterios. La forma cuyo registro se solicita debe ser sustancialmente diferente de una combinación de elementos básicos o comunes y debe ser llamativa. También en lo que respecta a los envases, se deben tomar en consideración las características funcionales de un determinado elemento. Como en el ámbito de los envases y botellas los usos comerciales podrían ser diferentes para diversos tipos de productos, se recomienda efectuar una búsqueda de las formas que se encuentran en el mercado y elegir una categoría lo suficientemente amplia de los productos pertinentes (para apreciar el carácter distintivo de un envase de leche, debe efectuarse la búsqueda en relación con los envases de bebidas en general, véanse las conclusiones del Abogado General en el asunto C-173/04, «Standbeutel»).
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Signo Justificación Asunto
La forma objeto de solicitud fue denegada porque se consideró que la forma del conejo de chocolate y el envoltorio dorado son fenómenos corrientes en el mercado que responden a los usos del sector en cuestión. Tras analizar los elementos individuales, es decir, la forma de un conejo, la lámina dorada y el lazo rojo con una campanilla, se consideró que tales elementos considerados separada o conjuntamente, carecían de carácter distintivo (apartados 44 a 47).
Sentencia de 24/05/2012, C-98/11 P, «Forma de un conejo de chocolate con lazo
rojo»
Se denegó el registro de esta marca, la representación de un envoltorio retorcido de caramelos (y no el propio producto) porque es «una forma de envoltorio de caramelos normal y tradicional y que hay numerosos caramelos acondicionados de esta forma en el mercado. Lo mismo se puede decir en relación con el color del envoltorio de que se trata, que es el marrón claro (caramelo) (apartado 56)». Este color no es infrecuente por sí mismo, y tampoco es infrecuente su uso para los envoltorios de caramelos (apartado 56). En consecuencia, el consumidor medio no percibirá que dicho envoltorio es, en sí mismo, una indicación del origen comercial del producto, sino que es un envoltorio de caramelo.
Sentencia de 10/11/2004, T-402/02,
«Envoltorio de caramelo»
El Tribunal General confirmó la denegación de la forma objeto de solicitud. El cuello alargado y el cuerpo aplanado de la botella no la alejan de la forma habitual de las botellas que se utilizan para los productos amparados por la marca solicitada, en particular, productos alimenticios, incluidos zumos, condimentos y productos lácteos. Asimismo, ni la largura del cuello y su diámetro ni la proporción entre la anchura y el espesor de la botella la singularizan de modo alguno (apartado 50). Por otro lado, aun cuando las curvas a los lados de la botella puedan considerarse distintivas, no bastan para modificar por sí solas la impresión de conjunto que produce la forma solicitada para alejarla de modo significativo de la norma o de los usos del ramo (apartado 53).
Sentencia de 15/03/2006, T-129/04, «Forma de una botella
de plástico»
Signo Justificación Asunto
Es habitual que las botellas tengan líneas y pliegues. El relieve superior no es suficientemente llamativo, pero se percibirá como un mero elemento decorativo. En conjunto, la combinación de los elementos no tiene un carácter suficientemente distintivo. El consumidor medio de los productos de la clase 32 no consideraría la forma como indicador del origen de los productos.
Sentencia de 19/04/2013
«Forma de una botella»
Se aceptaron las formas que figuran a continuación:
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Resolución de la Sala de Recurso de 04/08/1999, R 139/1999-1, «Botella Granini»
Sentencia de 24/11/2004, T-393/02, «Forma de frasco blanco y transparente»
El Tribunal General consideró que la botella que figura supra era inusual y permitía distinguir los productos reivindicados, a saber, preparaciones para la colada y recipientes de plástico para productos líquidos, de los que tienen otro origen comercial (apartado 47). El Tribunal General subrayó tres rasgos del frasco. En primer lugar, el recipiente es particularmente anguloso y sus ángulos, aristas y superficies le dan la apariencia de un cristal. En segundo lugar, el recipiente da una impresión monolítica dado que su tapón se integra en la imagen global. Por último, el recipiente es particularmente plano, lo que confiere al frasco una apariencia particular e inusual (apartado 40).
2.2.13 Marcas de motivo
Una marca figurativa puede considerarse una marca «de motivo» cuando se compone de un conjunto de elementos que se repiten periódicamente.
Las marcas de motivo pueden amparar todo tipo de productos y servicios. Sin embargo, en la práctica suelen solicitarse con mayor frecuencia en relación con productos como papel, telas, prendas de vestir, artículos de cuero, joyas, papel para empapelar, muebles, azulejos, neumáticos, productos para la construcción, etc., es decir, para productos que suelen reproducir motivos. En estos casos, el diseño no es más que la apariencia externa de los productos. A este respecto, procede señalar que aunque los patrones se representen en forma de etiquetas cuadradas o rectangulares, deben apreciarse como si cubrieran toda la superficie de los productos que son objeto de la solicitud.
También debe tenerse en cuenta que, cuando una marca de motivo reivindica productos tales como bebidas o sustancias líquidas en general, es decir, productos que suelen distribuirse y comercializarse en recipientes, la apreciación del dibujo debe efectuarse como si éste cubriera la superficie exterior del propio recipiente/envase.
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De lo anterior se desprende que, por regla general, al analizar el carácter distintivo de un motivo, el examinador debe aplicar los mismos criterios que para las marcas tridimensionales constituidas por la apariencia del propio producto (véase la sentencia de 19/09/2012, T-329/10, «Motivo a cuadros negro, gris, beige y rojo oscuro»).
En cuanto a los servicios, los examinadores deben tener en cuenta que las marcas de motivo se utilizarán, en la práctica, en el papel con membrete y en la correspondencia, en las facturas, en las páginas web, publicidad, rótulos, etc.
En principio, si un motivo es común, tradicional y/o típico, carecerá de carácter distintivo. Además, los motivos consistentes en dibujos básicos o simples también suelen estar desprovistos de carácter distintivo. El motivo de denegación radica en que dichos patrones o motivos no transmiten ningún «mensaje» que pueda contribuir a que éste sea recordado fácilmente por los consumidores. Paradójicamente, lo mismo sucede con los patrones compuestos por dibujos extraordinariamente complejos. En estos casos, la complejidad global del motivo no permite retener los detalles específicos de ese motivo (sentencia de 09/10/2002, T-36/01, «Textura de superficie de cristal», apartado 28). En efecto, en muchos casos el público objetivo percibirá el motivo como un elemento meramente decorativo.
A este respecto, procede señalar que el consumidor medio no suele observar los objetos de forma analítica. Por consiguiente, la marca debe permitir al consumidor medio de los productos o servicios en cuestión, normalmente informado y razonablemente atento y perspicaz, distinguir el producto en cuestión de los de otras empresas, sin efectuar un análisis o una comparación y sin prestar una atención especial (sentencias del Tribunal de Justicia de 12/02/2004, C-218/01, «Botella Perwoll», apartado 53, y de 12/01/2006, C-173/04, «Bolsas que se tienen en pie», apartado 29).
El hecho de que el motivo también pueda tener otras funciones y/o efectos constituye un argumento adicional para concluir que carece de carácter distintivo. Por el contrario, si un motivo es de fantasía, inusual o arbitrario, se aleja de la norma o de los usos del ramo o, con carácter general, puede ser fácilmente memorizado por los consumidores objetivo, suele ser merecedor de protección como marca comunitaria.
Como se ha señalado supra, el carácter distintivo de las marcas de motivo debe apreciarse en general en relación con los productos. No obstante, si se ha considerado que una marca de motivo carece de carácter distintivo para los productos que ampara, también estará desprovista de dicho carácter en relación con servicios que estén estrechamente vinculados a esos productos. Por ejemplo, un motivo de pespunte que carece de carácter distintivo para prendas de vestir y artículos de cuero también carecerá de carácter distintivo para los servicios minoristas relativos a dichos productos (véase, por analogía, la resolución de 29/07/2010, R 0868/2009-4, «Motivo de un bolsillo»). Las mismas consideraciones se aplicarían al motivo de una tela en relación con servicios como la fabricación de telas.
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A continuación se incluye una lista no exhaustiva de ejemplos de marcas demotivo.
Signo Justificación Asunto
Marca comunitaria nº 8 423 841, solicitada
como marca figurativa para las clases 18, 24 y 25
Los criterios aplicables a las marcas tridimensionales constituidas por la forma del propio producto también son aplicables a las marcas figurativas constituidas por la apariencia del propio producto. En general, una marca consistente en un motivo decorativo simple y común no contiene ningún elemento que pueda atraer la atención del consumidor y no basta para indicar la procedencia u origen comercial de los productos o servicios. Esta marca de motivo se aplicaba a textiles y, por consiguiente, se consideró que incluía la apariencia del propio producto, dado que la marca se solicitó para las clases 18, 24 y 25.
Sentencia de 19/09/2012, T-326/10, «Motivo a cuadros en gris claro, gris oscuro, beige, rojo oscuro y
marrón», apartados 47 y 48
Marca comunitaria nº 8 423 501, solicitada
como marca figurativa para las clases 18, 24 y 25
En este caso, al igual que en el anterior, el Tribunal General confirmó la denegación de la marca.
Sentencia de 19/09/2012, T-329/10, «Motivo a cuadros en
negro, gris, beige y rojo oscuro».
Marca comunitaria nº 5 066 535 solicitada como
marca figurativa para la clase 12
Cuando la marca consista en una representación estilizada de los productos o servicios, el consumidor pertinente percibirá a primera vista únicamente una representación de una parte concreta o de la totalidad del producto. En este caso en el que la solicitud se refería a neumáticos, el consumidor pertinente percibirá la marca como una mera representación de los surcos del neumático y no como una indicación de la procedencia u origen comercial. El motivo es banal y la marca no puede cumplir su función de indicador de origen.
Marca comunitaria nº 5 066 535 registrada como marca figurativa
en la clase 12 (neumáticos)-
Marca comunitaria nº 9 526 261, solicitada
como marca figurativa (serie de letras «V» estilizadas),
La marca fue denegada para las clases 18 y 25. Fue aceptada para la clase 16. Pese a que el signo estaba descrito como una «serie de letras ‘V’ estilizadas», lo más probable es que el público destinatario perciba el signo como una serie de pespuntes en zigzag o como una serie de figuras geométricas romboidales. En cualquier caso, el motivo es bastante banal, por lo que carece de todo carácter distintivo.
CMarca comunitaria nº 9 526 261, solicitada como marca figurativa (serie de letras «V» estilizadas), , que
reivindicaba productos de las clases 16,
18, 25-
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Signo Justificación Asunto
Marca comunitaria nº 9 589 219, solicitada
como marca figurativa para productos de la clase 9
El signo, solicitado para «placas multipocillo que pueden utilizarse en análisis químicos o biológicos que utilizan electroquimioluminiscencia para uso científico, en laboratorio o para investigación médica», fue denegado, pues no permite indicar la procedencia. La solicitud describía la marca como el motivo contenido en la parte inferior de los productos, y se consideró que el examinador estaba en lo cierto al declarar que, como no presentaba características llamativas, el consumidor no sería capaz de percibirlo más que como un mero adorno de los productos.
Resolución de 09/10/2012,
R 412/2012-2, «Motivo de cuatro círculos del
mismo tamaño»
Marca comunitaria nº 6 900 898, que reivindica productos de las clases 18 y
25
Esta marca fue denegada, pues los pespuntes en los bolsillos son comunes en el sector de la moda y este motivo en particular no contiene ninguna característica fácil de recordar o llamativa que pueda conferir un mínimo grado de carácter distintivo que permita al consumidor percibirla como algo más que un mero elemento decorativo.
Sentencia de 28/09/2010, T-388/09,
apartados 19 a 27
Marca comunitaria nº 3183068, solicitada como
marca figurativa, que reivindica productos de las
clases 19 y 21
La marca, que debía aplicarse a superficies de cristal, fue denegada con arreglo al artículo 7, apartado 1, letra b), del RMC. Se alegó que el consumidor pertinente no estaba habituado a percibir motivos aplicados a superficies de cristal como una indicación del origen comercial y que el motivo se apreciaría como un medio funcional para garantizar la opacidad del cristal. Además, la complejidad y fantasía del motivo no bastan para conferirle carácter distintivo, son imputables a la naturaleza estética o decorativa del acabado y no permiten que los detalles del motivo puedan ser memorizados o retenidos sin percibir al mismo tiempo las características intrínsecas del producto.
Sentencia de 09/10/2002, T-36/01, «Superficie de una placa de cristal», apartados 26 a 28
Marca comunitaria nº 10 144 848, solicitada
como marca figurativa que reivindica productos de las clases 3, 5, 6, 10, 11, 12,
16, 18, 20 y 21
La marca fue denegada porque está compuesta de elementos muy simples y constituye, en conjunto, un signo básico y banal. Para los productos reivindicados, como paños de limpieza y toallitas antisépticas, el signo solicitado puede representar su apariencia, en el sentido de que el material empleado puede tener esta estructura. El signo consiste en una mera repetición de cuadrados idénticos que no muestra ningún elemento o variación perceptible, en particular, en cuanto a la fantasía o en lo que respecta al modo de combinar los elementos, que permitirían distinguirlo de la representación habitual de otro motivo regular consistente en un cierto número de cuadrados. Ni la forma de cada cuadrado en particular ni la forma en la que están combinados constituyen rasgos inmediatamente perceptibles que llamarían la atención del consumidor y que le llevarían a considerar que este signo es distintivo.
Resolución de 14/11/2012,
R 2600/2011-1, «Motivo de un patrón en blanco y negro»
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2.2.14 Marcas de posición
Las solicitudes de marcas de posición pretenden obtener protección efectiva para un signo consistente en elementos (figurativos, de color, etc.), colocados en una parte concreta de un producto y que guardan una proporción particular con respecto al tamaño del producto. La representación de la marca solicitada debe ir acompañada de una descripción que indique la naturaleza exacta del derecho de que se trata.
Los factores que deben ser tomados en consideración para examinar las marcas tridimensionales también resultan pertinentes para las marcas de posición. En particular, el examinador debe analizar si el consumidor pertinente será capaz de identificar un signo que sea diferente de la apariencia normal de los propios productos. Otra consideración importante a la hora de apreciar marcas de posición es si la colocación de la marca en los productos puede entenderse como una indicación de marca.
Procede tener en cuenta que, aunque se admita que el público destinatario puede prestar atención a los distintos detalles estéticos de un producto, ello no supone automáticamente que los perciban como una marca. En determinados contextos, y a la luz de la norma o de los usos de determinados ramos, una marca de posición puede llamar la atención como una característica independiente que se distingue del propio producto y que transmite un mensaje sobre la marca.
A continuación se incluyen ejemplos de la apreciación de marcas de posición:
Signo Justificación Asunto
En este asunto, el Tribunal General admitió a trámite una objeción con arreglo al artículo 7, apartado 1, letra b), del RMC. La descripción de la marca indicaba que «La marca consiste en la posición de campos geométricos y rectangulares en la esfera de un reloj». El Tribunal consideró que la marca no era independiente ni podía distinguirse de la forma o del diseño del propio producto y que los elementos posicionados no diferían de forma significativa de otros diseños existentes en el mercado.
Sentencia de 14/09/2009, T-152/07, «Representación de
un reloj»
En este asunto sobre calcetería que versaba sobre una coloración naranja en la puntera, el Tribunal General consideró que no existían pruebas que demostraran que la coloración en dicha parte del producto sería percibida con carácter general como una marca. Por el contrario, se entendió que este rasgo sería probablemente percibido como un adorno habitual en la norma o en los usos del ramo. Por consiguiente, se ratificó la objeción con arreglo al artículo 7, apartado 1, letra b), del RMC.
Sentencia de 15/06/2010, T-547/08, «Coloración naranja de la puntera de un
calcetín»
Los botones son elementos decorativos comunes en los muñecos de peluche. Un botón es una forma geométrica simple que no se desvía de la norma o las costumbres del sector. No es extraño colocar broches, anillos, cintas, lazos y bordados en las orejas de un peluche. En consecuencia, el público destinatario percibirá los dos signos objeto de la solicitud como elementos ornamentales, no como indicaciones del origen comercial.
Sentencias de 16/01/2014 T-433/12
y T-434/12
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2.3 Carácter descriptivo (artículo 7, apartado 1, letra c), del RMC)
2.3.1 Observaciones generales
2.3.1.1 Concepto de carácter descriptivo
Deberá denegarse el registro de un signo por considerarlo descriptivo cuando tenga un significado que el público pertinente perciba como información sobre los productos y servicios objeto de la solicitud. Es el caso, en particular, cuando el signo aporta información, entre otras cosas, sobre la calidad, la cantidad, las características, el destino, el tipo y/o el tamaño de los productos o servicios. La relación entre el término y los productos y servicios debe ser suficientemente directa y concreta (sentencias de 20/07/2004, T-311/02, «LIMO», apartado 30 y de 30/11/2004, T-173/03, «NURSERYROOM», apartado 20), y concreta, directa e inmediata (sentencia de 26/10/2000, T-345/99, «TRUSTEDLINK», apartado 35). Si una marca es descriptiva, también es no-distintiva.
El artículo 7, apartado 1, letra c), del RMC no se aplica a los términos que únicamente resultan sugerentes o alusivos en relación con determinadas características de los productos y/o servicios. A veces éstos se consideran referencias vagas o indirectas a los productos y/o servicios (sentencia de 31/01/2001, T-135/99, «CINE ACTION», apartado 29).
El interés público que subyace al artículo 7, apartado 1, letra c), del RMC, consiste en no crear derechos exclusivos sobre términos meramente descriptivos cuya utilización también podrían desear otros comerciantes. No obstante, no es necesario que el examinador demuestre que el solicitante o sus competidores ya utilizan el término de manera descriptiva. Por consiguiente, el número de competidores que podría verse afectado es completamente irrelevante. La consecuencia de lo anterior es que si una palabra es descriptiva en su significado común y corriente, no se podrá superar este motivo de denegación demostrando que el solicitante es la única persona que produce o es capaz de producir los productos en cuestión.
2.3.1.2 La base de referencia
La base de referencia es el significado corriente que el público destinatario atribuye a la palabra en cuestión. Tal significado podrá corroborarse con ayuda de diccionarios, ejemplos de uso descriptivo del término en sitios de Internet o deducirse claramente del significado común del término.
Para denegar el registro del signo, el examinador no deberá demostrar que la palabra como tal se encuentra en los diccionarios. En concreto, los diccionarios no recogen todas las posibles combinaciones relativas a un término compuesto. Lo importante es el significado normal y corriente. Asimismo, los términos utilizados en el ámbito de una terminología especializada para designar las características pertinentes de los productos y servicios se considerarán descriptivos. En tales casos, no es necesario probar que el significado del término resulta inmediatamente perceptible por los consumidores destinatarios de los productos y servicios. Basta con que el término se pretenda utilizar o pueda ser entendido por una parte del público destinatario como una descripción de los productos o servicios o como una característica de éstos (véase la sentencia de 17/09/2008, T-226/07, «PRANAHAUS», apartado 36).
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En lo que respecta a las referencias de base, idiomáticas o contenidas en diccionarios, se aplicarán los siguientes principios:
Se denegará el signo si es descriptivo en cualquiera de las lenguas oficiales de la Unión Europea, independientemente del tamaño o de la población del país en cuestión.
Sólo se efectúan comprobaciones sistemáticas de idiomas para las lenguas oficiales de la Unión Europea. Sin embargo, si existen pruebas convincentes de que un determinado término tiene un significado en una lengua que no sea una lengua oficial de la Unión, que comprenda una proporción significativa del público destinatario en al menos una parte de la Unión Europea, dicho término también deberá ser denegado, con arreglo al artículo 7, apartado 2, del RMC (véase la sentencia de 13/09/2012, T-72/11, «Espetec», apartados 35 y 36). Por ejemplo, el término HELLIM es la traducción al turco de la palabra «Halloumi», que es un tipo de queso. Dado que el turco es lengua oficial en Chipre, es un idioma que parte de la población de Chipre comprende y habla y, por consiguiente, el consumidor medio chipriota podría entender que HELLIM es un término descriptivo para queso (véase la sentencia de 13/06/2012, T-534/10, «HELLIM/HALLOUMI»).
Los elementos de prueba pueden proceder de los conocimientos personales de un examinador en particular, o constar en observaciones de terceros o estar incluidos en la documentación aportada en apoyo de solicitudes de anulación.
Una búsqueda en Internet también es un medio de prueba válido del significado descriptivo, especialmente en el caso de neologismos, tecnicismos o términos de jerga, pero se deben valorar cuidadosamente las pruebas para averiguar si la palabra se usa realmente de forma descriptiva, ya que a menudo la diferencia entre el uso descriptivo y el uso de la marca en Internet resulta vaga e Internet contiene una enorme cantidad de información que carece de estructura y que no está contrastada.
La objeción debe explicar de forma inequívoca a qué lengua o lenguas se refiere, qué hace aplicable el motivo de denegación al menos al Estado miembro en el que esta lengua sea la lengua oficial o una de las lenguas oficiales, y excluye la aceptación de la solicitud de transformación en relación con dicho Estado miembro (véase la regla 45, apartado 4, del REMC).
El artículo 7, apartado 1, letra c), se aplica también a las transliteraciones. En particular, las transliteraciones en caracteres latinos de palabras griegas deben tratarse, a efectos de examinar los motivos de denegación absolutos, igual que las palabras escritas en caracteres griegos, y viceversa (sentencia de 16 de diciembre de 2010, T-281/09, «CHROMA», apartado 34). Esto se debe a que los consumidores hablantes de griego conocen el alfabeto latino. Lo mismo cabe decir del alfabeto cirílico, utilizado en la UE por los búlgaros, familiarizados también con los caracteres latinos.
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2.3.1.3 Características mencionadas en el artículo 7, apartado 1, letra c), del RMC
Especie de productos y servicios
Incluye los propios productos o servicios, es decir, su tipo o su naturaleza. Por ejemplo, «banco» para servicios financieros, «Perlé» para vinos y vinos espumosos (sentencia de 01/02/2013, T-104/11, «Perle») o «Universaltelefonbuch» para guías telefónicas internacionales (sentencias de 14/06/2001, T-357/99 y T-358/99, «Universaltelefonbuch») o partes integrantes o componentes de los productos (sentencia de 15/01/2013, T-0625/11, «ecoDoor», apartado 26).
Calidad
Incluye tanto términos laudatorios, que se refieren a una calidad superior de los correspondientes productos, como a la calidad intrínseca de los mismos. Abarca términos como «light», «extra», «fresh» o «hyper light» para productos de muy bajo contenido en calorías (resolución de 27/06/2001, R 1215/00-3, «HYPERLITE»). Asimismo, algunas cifras pueden aludir a la calidad de un producto, como «2000» se refiere al tamaño de un motor o «75» a la potencia (kW) del motor.
Cantidad
Incluye indicaciones sobre la cantidad en la que se venden normalmente los productos, como «caja de seis» para la cerveza, «un litro» para las bebidas, «100» (gramos) para las barras de chocolate. Sólo cuentan las medidas de cantidad que tengan alguna relevancia comercial y no todas las hipotéticamente posibles. Por ejemplo, sería aceptable 99.999 para plátanos.
Destino
El destino es la funcion de un producto o servicio, el resultado que se espera de su uso o, en términos más generales, el uso para el que está previsto el producto o servicio. Un ejemplo es «Trustedlink» para los productos y servicios del sector informático que tienen por objeto garantizar la seguridad (fiabilidad) de un enlace (sentencia de 26/10/2000, T-345/99, «Trustedlink»). Entre los ejemplos de marcas desestimadas por este motivo está «THERAPY» para los instrumentos de masaje (resolución de 08/09/1999, R 0144/1999-3, «THERAPY»), y «SLIM BELLY» para aparatos de mantenimiento físico, actividades deportivas, servicios médicos y de cuidado y belleza corporal (sentencia de 30/04/2013, T‑61/12, «Slim belly»). Esta objeción también se aplica a los accesorios: Un término que describe el tipo de productos también describe el destino que se da a los accesorios relacionados con tales productos. Por consiguiente, «New Born Baby» suscita una objeción para los accesorios de muñecas y «Rockbass» (bajo de rock») para los accesorios de guitarras de rock (sentencia de 08/06/2005, T-315/03, «Rockbass» (recurso C-301/05 P sobreseído)).
Valor
Abarca tanto el precio (elevado o reducido) como el valor en términos de calidad. Por consiguiente, incluye no sólo expresiones como «extra» o «top», sino también
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expresiones como «barato» o «más por su dinero». También se refiere a las expresiones que indican, en el lenguaje común, productos de calidad superior.
Origen geográfico
Véase el apartado 2.3.2.6 infra titulado Apreciación de los términos geográficos.
Época de obtención del producto o de la prestación del servicio
Abarca expresiones relativas a la época en que se prestan los servicios, tanto expresamente («noticias de la tarde» o «24 horas») como de forma habitual (24/7). También incluye el momento en que se obtienen los productos, si ello reviste alguna importancia para los mismos (como vendimia tardía para el vino). Para el vino, la cifra «1998» indicaría la cosecha y, por consiguiente, sería pertinente, pero no para el chocolate.
Otras características
Cubre otras características de los productos o servicios e indica simplemente que la lista anterior de subcategorías con arreglo al artículo 7, apartado 1, letra c), del RMC, se ofrece únicamente a modo de ejemplo. En principio, cualquier característica relativa a los productos y servicios debe conducir a la denegación del registro con arreglo al artículo 7, apartado 1, letra c), del RMC. Carece de pertinencia que las características de los productos o servicios que puedan describirse sean esenciales o accesorias desde el punto de vista comercial o que existan sinónimos que permitan describir las mismas características (sentencias de 12/02/2004, C-363/99, «Postkantoor», apartado 102 y de 24/04/2012, T-328/11, «EcoPerfect», apartado 41).
Ejemplos de «otras características»
el contenido de los productos o servicios reivindicados: véase el apartado 2.3.2.7 infra titulado Productos o servicios que pueden referirse a contenido);
la identificación del consumidor final: «children» o «ellos» (sentencia de 27/02/2002, T-219/00, «Ellos») para prendas de vestir.
Además, un término puede ser objeto de denegación con arreglo al artículo 7, apartado 1, letra c), cuando las características que indica el signo implican valoraciones subjetivas (por ejemplo, la palabra DELICIOSO referida a alimentos) o requieren mayor concreción.
Como estableció el Abogado General Jacobs:
Puede pensarse inmediatamente en muchos otros ejemplos de características generales que pueden necesitar una mayor concreción antes de que el consumidor pueda saber con certeza a qué se está haciendo referencia, pero que, no obstante, constituyen claramente características del producto en cuestión. Por ejemplo, el hecho de calificar un producto de natural designa ciertamente una de sus características, pero el consumidor tendrá dudas en cuanto a la naturaleza exacta de tal característica, a menos que se den más detalles. En realidad, es relativamente difícil encontrar
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indicaciones que puedan servir para designar características que, en alguna medida, no requieran una mayor concreción (resaltado añadido).
(Véanse, por ejemplo, las Conclusiones del Abogado General Jacobs de 10/04/2003, C-191/01 P, «Doublemint», apartado 43.)
2.3.2 Marcas denominativas
2.3.2.1 Una palabra
Los términos descriptivos son aquellos que consisten meramente en información sobre las características de los productos y servicios. Esto significa que los términos descriptivos no pueden desempeñar la función de marca. En consecuencia, el motivo de denegación se aplica independientemente de si un término ya es utilizado por otros competidores de modo descriptivo en relación con los productos y servicios en cuestión.
En particular, una palabra es descriptiva si, tanto para el público en general (si los productos se dirigen a este último) como para un público especializado (independientemente del hecho de que los productos también se dirijan al público en general), la marca tiene un significado descriptivo:
El término «RESTORE», resulta descriptivo para instrumentos y aparatos quirúrgicos y médicos, stents, catéteres y cables guía (sentencia de 17/01/2013, C-21/12 P, «Restore»).
«CONTINENTAL» es descriptivo para animales vivos, en particular, perros y para cuidado y cría de perros, en particular, cachorros y animales de cría. En efecto, la palabra «Continental» indica una raza de bulldog (sentencia de 17/04/2013, T-383/10, «Continental»).
Por otra parte, como ya se ha visto, también suscitan objeciones los términos que describen características deseables de los productos y servicios.
No obstante, es importante distinguir los términos laudatorios que describen, aunque de forma general, características deseables de los productos y servicios, como ser baratos, prácticos, de calidad superior, etc., que están excluidos del registro, de los términos laudatorios en un sentido más amplio, es decir, que se refieren a connotaciones positivas o al comprador o al productor de los productos sin referirse específicamente a los productos y servicios en cuestión.
No es descriptiva:
«Bravo», pues no está claro quién dice «Bravo» a quién ni lo que se elogia (sentencia de 04/10/2001, C-517/99).
2.3.2.2 Combinaciones de palabras
Por regla general, la mera combinación de elementos, descriptivos de las características de los productos o servicios, es a su vez descriptiva de dichas
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características. El mero hecho de unir tales elementos sin introducir ninguna modificación inusual, en particular de tipo sintáctico o semántico, sólo puede dar como resultado una marca descriptiva. No obstante, si debido al carácter inusual de la combinación en relación con dichos productos o servicios, una combinación crea una impresión suficientemente distante de la producida por la mera unión de las indicaciones suministradas por los elementos que lo componen, se considerará que dicha combinación prevalece sobre la suma de dichos elementos (sentencia de 12/02/2004, C-265/00, «BIOMILD», apartados 39 y 43). Los conceptos «carácter inusual de la combinación», «impresión suficientemente distante» y «de forma que prevalezca sobre la suma de dichos elementos» han de interpretarse en el sentido de que el artículo 7, apartado 1, letra c), del RMC, no es de aplicación cuando los dos elementos descriptivos se combinan de forma imaginativa.
Se denegó el registro en los siguientes casos:
«BIOMILD» para yogur suave y orgánico (sentencia de 12/02/2004, C-265/00).
«Companyline» para seguros y cuestiones financieras (sentencia de 19/09/2002, C-104/00 P).
«Trustedlink» para software para comercio electrónico, servicios de consultoría empresarial, servicios de integración de software y servicios de formación sobre tecnologías y servicios de comercio electrónico (sentencia de 26/10/2000, T-345/99).
«CINE COMEDY» para la difusión de programas de radio y de televisión, producción, exhibición y alquiler de películas, cesión, transmisión, alquiler y otros derechos de explotación sobre películas (sentencia de 31/01/2001, T-136/99).
«TELE AID» para dispositivos electrónicos que transmiten voz y datos, servicios de reparación para automóviles y vehículos, explotación de una red de telecomunicaciones, servicios de grúa y de salvamento y servicios electrónicos empleados para determinar la posición de vehículos (sentencia de 20/03/2002, T-355/00).
«QUICK-GRIP» para herramientas manuales, abrazaderas y partes y piezas para todos esos productos (auto de 27/05/2004, T-61/03).
«TWIST & POUR» para recipientes portátiles de plástico vendidos como parte integral de una pintura líquida con un dispositivo de almacenamiento y aplicación (sentencia de 12/06/2007, T-190/05).
«CLEARWIFI» para servicios de telecomunicaciones, concretamente acceso de gran velocidad a redes informáticas y de telecomunicaciones (sentencia de 19/11/2009, T-399/08).
«STEAM GLIDE» para planchas eléctricas, planchas planas eléctricas, planchas eléctricas para la ropa, piezas y accesorios de esos productos (sentencia de 16/01/2013, T-544/11).
«GREEN CARBON» para caucho regenerado, en particular, materiales carbonosos reciclados, en particular materiales rellenos de plástico, elastómero o caucho obtenidos de neumáticos pirolizados o compuestos de caucho en los que se han utilizado tales materiales de relleno (sentencia de 11/04/2013, T-294/10).
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Del mismo modo, las combinaciones del prefijo «EURO» con términos puramente descriptivos debe denegarse cuando el elemento «EURO» refuerza el carácter descriptivo de la marca en su conjunto o cuando existe un vínculo razonable entre este término y los productos o servicios en cuestión. Lo expuesto se ajusta a la sentencia de 07/06/2001, T-359/99, «EUROHEALTH».
El incumplimiento de las reglas gramaticales no impide que una combinación de palabras pueda considerarse una indicación descriptiva (sentencia de 16/12/2008, T-335/07 «PATENTCONSULT», apartado 22).
Para combinaciones formadas por sustantivos y adjetivos, se debe examinar si el significado de la combinación cambia en caso de invertirse el orden de sus elementos. Por ejemplo, «Vacations direct» (no registrable, resolución de 23/01/2001, R 33/2000-3) es equivalente a «Direct vacations», mientras que «BestPartner» no es lo mismo que «PartnerBest».
El mismo razonamiento se aplica a las palabras formadas por la combinación de un adjetivo y un verbo. En consecuencia, la palabra «ULTRAPROTECT» debe considerarse descriptiva para los preparados esterilizantes y sanitarios, aunque esté formada por la combinación (incorrecta desde el punto de vista gramatical) de un adjetivo (ULTRA) y un verbo (PROTECT), ya que su significado sigue entendiéndose con claridad (resolución de 03/06/2013, R 1595/2012-1).
Además, debe tenerse en cuenta que en el mundo de la publicidad, los artículos definidos y los pronombres (EL, LA, TE, etc.), las conjunciones (O, Y, etc.) o las preposiciones (DE, PARA, etc.) suelen omitirse. Por tanto, la ausencia de estos elementos gramaticales puede no ser siempre suficiente para que la marca tenga un carácter distintivo.
Por último, las combinaciones compuestas por palabras de dos lenguas diferentes pueden suscitar objeciones, siempre que los consumidores comprendan el significado de ambos términos sin gran dificultad.
2.3.2.3 Escritura incorrecta y omisiones
Una escritura incorrecta no modifica necesariamente el carácter descriptivo de un signo. En primer lugar, es posible que las palabras se escriban de forma incorrecta debido a la influencia de otro idioma o de la ortografía de una palabra en territorios ajenos a la Unión Europea, como el inglés americano, las jergas o el deseo de hacerlas más modernas. Ejemplos de signos que han sido denegados:
«XTRA» (resolución de 27/05/1998, R 0020/1997-1) «XPERT» (resolución de 27/07/1999, R 0230/1998-3) «EASI-CASH» (resolución de 20/11/1998, R 0096/1998-1) «LITE» (sentencia de 27/02/2002, T-79/00) «RELY-ABLE» (sentencia de 30/04/2013, T-640/11).
Asimismo, los consumidores comprenderán, sin mayor esfuerzo mental, la «@» como una letra «a» y el signo «€» como una letra «e». Los consumidores sustituirán los números concretos por palabras, por ejemplo «2» como «to» (por) y «4» como «for» (para).
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Por otra parte, si la escritura incorrecta resulta simplemente imaginativa y/o llamativa o cambia el significado de la palabra (aceptado: «MINUTE MAID», marca comunitaria nº 2091262, (en lugar de «Minute made»)), el signo puede registrarse.
Por regla general, la escritura incorrecta atribuye al signo un grado suficiente de carácter distintivo cuando:
es sorprendente, inesperada, inusual, arbitraria y/o
puede modificar el significado del elemento verbal o requiere un mínimo de esfuerzo de interpretación por parte del consumidor para relacionarla de forma directa e inmediata con el término al que presuntamente hace referencia.
Se denegaron las siguientes marcas.
Signo Justificación Asunto
ACTIVMOTION SENSOR
Marca comunitaria nº 10 282 614 que reivindica
productos de la clase 7 (equipos de limpieza de
piscinas y spas, en particular, barredoras,
aspiradores y sus piezas)
La marca simplemente consiste en «ACTIV» una escritura claramente incorrecta de la palabra «ACTIVE», «MOTION» y «SENSOR». Combinadas, las palabras forman una combinación perfectamente comprensible y llanamente descriptiva, y por consiguiente fue denegada.
Resolución de 06/08/2012,
R 716/2012-4,«ACTIV MOTION SENSOR»,
apartado 11.
XTRAORDINARIO
Registro Internacional que designa la UE nº 930 778,
que reivindica productos de la clase 33
(tequila)
Este término no existe pero se asemeja mucho al adjetivo en español «extraordinario». Los consumidores españoles y portugueses percibirían el signo como una escritura incorrecta de una palabra que significa «notable», «especial», «espectacular», «soberbio» o «maravilloso» y, como tal, atribuirían un significado descriptivo al signo.
Resolución de 08/03/2012,
R 2297/2011-5, «Xtraordinario»,
apartados 11 y 12.
Por otra parte, las siguientes marcas fueron registradas:
Signo Justificación Asunto
LINQ
Marca comunitaria nº 1 419 415 que
comprende productos y servicios de las clases 9 y
38
Esta palabra es un término inventado que no figura en ningún diccionario conocido, y no se acreditó que dicha palabra constituyera una escritura incorrecta habitual de un término que se utilizase en los círculos comerciales de interés del solicitante. Por otra parte, dado que la palabra es corta, la letra final «Q» se percibirá como peculiar de modo que la escritura de fantasía resulta evidente.
Resolución de 04/02/2002,
R 9/2001-1, «LINQ», apartado 13.
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Signo Justificación Asunto
LIQID
Marca comunitaria nº 5 330 832 que
inicialmente cubría productos de las clases 3, 5
y 32
En esta marca denominativa, la combinación «QI» es muy común en la lengua inglesa, pues la letra «Q» suele ir seguida de una «U». La impactante escritura incorrecta de la palabra «liquid» permite, incluso a un consumidor apresurado, percibir la peculiaridad de la palabra «LIQID». Además, esta escritura no sólo afectaría a la impresión visual producida por el signo, sino también a la auditiva, pues el signo solicitado se pronunciaría de forma distinta a la palabra «liquid».
Resolución de 22/02/2008,
R 1769/2007-2, «LIQID», apartado 25.
2.3.2.4 Abreviaturas y acrónimos
Las abreviaturas de términos descriptivos son en sí mismas descriptivas si se han utilizado realmente de ese modo y el público pertinente, general o especializado, las identifica con el término descriptivo completo. El mero hecho de que una abreviatura se derive de un término descriptivo no basta.
Los siguientes signos fueron denegados porque el significado descriptivo para el público pertinente podía demostrarse claramente:
«SnTEM» (sentencia de 12/01/2005, T-367/02 a T-369/02) «TDI» (sentencia de 03/12/2003, T-16/02 (recurso C-82/04 P admitido)) «LIMO» (sentencia de 20/07/2004, T-311/02) «BioID» (sentencia de 05/12/2002, T-91/01 (mediante el recurso C-37/03 P se
anuló la sentencia del Tribunal General y la resolución de la segunda Sala de Recurso)).
Es preciso tener en cuenta que las bases de datos de Internet, como «Acronym Finder» se deben utilizar como base de referencia con gran cautela. Es preferible utilizar libros técnicos de referencia o las obras científicas de divulgación, por ejemplo, en el ámbito de la informática. Por otra parte, el uso de la abreviatura por un determinado número de operadores en el sector de que se trata en Internet basta para acreditar el uso efectivo de dicha abreviatura.
Los signos compuestos por un acrónimo independiente y no descriptivo que precede o sigue una combinación de elementos verbales descriptivos suscitarán objeciones por ser descriptiva cuando el público destinatario los perciba simplemente como una expresión combinada con una abreviatura de dicha combinación de palabras, por ejemplo «Multi Markets Fund MMF». Ello se debe a que el acrónimo y la combinación de palabras sirven para explicitarse recíprocamente y para subrayar el vínculo que existe entre los mismos (sentencias de 15/03/2012, C-90/11 y C-91/11, «Natur-Aktien- Index / Multi Markets Fund», apartados 32 y 40). Será así incluso cuando el acrónimo no refleje los meros «elementos accesorios» de la combinación de palabras, como artículos, preposiciones, signos de puntuación, como por ejemplo en los siguientes casos:
«NAI – Der Natur-Aktien-Index» «The Statistical Analysis Corporation – SAC»
Aunque la norma anterior abarca la mayoría de los casos, no todos los supuestos de combinaciones de elementos verbales descriptivos yuxtapuestos a una abreviatura de
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dicha combinación se considerarán descriptivos en su conjunto. Ejemplo de ello son los casos en los que el público destinatario no percibe de forma inmediata el acrónimo como una abreviatura de la combinación de elementos verbales descriptiva, sino como un elemento distintivo que hará del signo en su conjunto más que la suma de sus partes, como en el siguiente ejemplo:
«The Organic Red Tomato Soup Company – ORTS».
2.3.2.5 Eslóganes
Un eslogan suscitará objeciones con arreglo al artículo 7, apartado 1, letra c), del RMC si transmite de forma directa información sobre el tipo, calidad, destino u otras características de los productos o servicios.
Los criterios establecidos en la jurisprudencia para apreciar si un eslogan es o no descriptivo son idénticos a los aplicados a las marcas denominativas que únicamente contienen un elemento (sentencia de 06/11/2007, T-28/06, «VOM URSPRUNG HER VOLLKOMMEN», apartado 21). No es adecuado aplicar a los eslóganes criterios más estrictos que los aplicados a otro tipo de signos, en particular, teniendo en cuenta que el término «eslogan» no se refiere a una subcategoría especial de signos (sentencia de 12/07/2012, C-311/11 P, «WIR MACHEN DAS BESONDERE EINFACH», apartados 26 y 40).
Ejemplo de un eslogan descriptivo
Una solicitud referida a la clase 9 (sistemas de navegación por satélite, etc.) para «FIND YOUR WAY», (resolución de 18/07/2007, R 1184/2006-4) suscitó objeciones con arreglo al artículo 7, apartado 1, letras b) y c), del RMC. La expresión FIND YOUR WAY en relación con los productos objeto de solicitud de la clase 9 tiene el claro propósito de informar al consumidor pertinente de que los productos de la parte recurrente ayudan a los consumidores a identificar ubicaciones geográficas para encontrar su camino. El mensaje que transmite el signo solicitado se refiere de forma directa al hecho de que los consumidores encontrarán el trayecto para viajar de un lugar a otro cuando utilicen los productos de que se trata.
«BUILT TO RESIST» sólo puede tener un único significado en relación con papel, artículos de papelería y artículos de oficina de la clase 16, cuero, cuero de imitación, artículos de viaje no incluidos en otras clases y guarnicionería de la clase 18 y prendas de vestir, calzado y artículos de sombrerería de la clase 25, en particular, que los productos se han fabricado para durar y que, por consiguiente, son resistentes al uso y desgaste (sentencia de 16/09/2009, T-80/07, «BUILT TO RESIST», apartados 27 y 28).
2.3.2.6 Indicaciones geográficas
Un término geográfico se refiere a cualquier nombre de un lugar, por ejemplo un país, región, ciudad, lago o río. Esta lista no es exhaustiva. Las formas adjetivadas no difieren lo suficiente del término geográfico original como para que el público destinatario piense en otra cosa que en el término geográfico (sentencia de 15/10/2003, T-295/01, «OLDENBURGER», apartado 39). Por ejemplo, «alemán» se percibirá como referido a Alemania y «francés» seguirá percibiéndose como referido a
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Francia. Asimismo, los términos anticuados como «Ceilán», «Bombay» o «Birmania» entran dentro del ámbito de este concepto sólo en caso de que se usen aún de forma habitual o los consumidores los entiendan como una designación de origen.
En este apartado el concepto «término geográfico» se emplea de manera que abarca cualquier indicación geográfica de una solicitud de marca comunitaria, mientras que las expresiones «indicación geográfica protegida» y «denominación de origen» o «indicación de procedencia»se utilizan exclusivamente en el contexto de la legislación específica que las protege.
Si la marca contiene otros elementos no descriptivos o distintivos, se deberá examinar si la combinación (de la marca en su conjunto) es registrable del mismo modo que en otros casos en que se unen elementos descriptivos y elementos distintivos o no descriptivos (véase infra en el apartado 2.3.4, Carácter figurativo mínimo).
Las denominaciones de origen y las indicaciones geográficas protegidas por los Reglamentos UE específicos en la materia se tratan en la sección relativa al Artículo 7, apartado 1, letras j) y k).
Apreciación de los términos geográficos Como en el caso de todos los demás términos descriptivos, el criterio es si el término geográfico describe características objetivas de los productos y servicios. La apreciación debe realizarse en relación con los productos y servicios que se reivindican y a la percepción del público interesado. El carácter descriptivo del término geográfico puede referirse a:
el lugar de producción de los productos; el contenido del producto (por ejemplo, la ciudad o la región sobre la que versa
una guía de viajes); el lugar en que se prestan los servicios, el tipo de cocina (para restaurantes).
El primer paso para analizar el término geográfico consiste en determinar si el público destinatario lo entiende como tal. En la mayoría de los casos, esta noción se determinará tomando como base a un consumidor normalmente informado y con conocimientos suficientes que no sea un especialista en geografía.
El segundo paso es determinar si el término geográfico objeto de solicitud designa un lugar que presenta actualmente, para el público destinatario, un vínculo con los productos o servicios reivindicados, o si es razonable contar con que, en el futuro, pueda crearse tal vínculo (sentencia de 04/05/1999, C-108/97 y C-109/97, «Chiemsee», apartado 31). En otras palabras, el término geográfico no sólo debe entenderse como término sugerente o de fantasía. Por ejemplo, aunque Polo Norte y Mont Blanc son términos geográficos conocidos, en el contexto de los helados o de los coches deportivos, ninguno de los dos términos se podría entender como un posible lugar de producción, sino meramente como un término sugerente o de fantasía. Lo mismo ocurre con los nombres de ciudades de moda para productos y servicios, que no tienen nada que ver con el motivo por el que tales ciudades son conocidas («Hollywood» para chicle), o los nombres de algunos barrios de moda o calles comerciales («Champs Élysées» para agua embotellada, «Manhattan» para tomates, «Denver» para equipos de iluminación o «Port Louis» para textiles).
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Por otra parte, existen algunos términos geográficos que pueden denegarse exclusivamente debido a su amplio renombre y fama por la elevada calidad de sus productos o servicios. En tal caso no es preciso efectuar un análisis detallado de ese vínculo (sentencia de 15/12/2011, T-377/09, «Passionately Swiss», apartados 43 a 45). Por ejemplo, «Milano» debería rechazarse para ropa, «Zürich» para servicios financieros e Islas Canarias para servicios turísticos.
En lo que respecta a posibilidad futura de vinculación, la denegación del registro con arreglo al artículo 7, apartado 1, letra c), del RMC no puede basarse exclusivamente en el hecho de que los productos o servicios puedan producirse o prestarse teóricamente en el lugar designado por el término geográfico objeto de solicitud (sentencia de 08/07/2009, T-226/2008, «ALASKA»).
Por el contrario, debe evaluarse el grado de familiaridad del público destinatario con el término geográfico, las características del lugar que designa y la categoría de productos o servicios (sentencia de 4 de mayo de 1999, C-108/97 y C-109/97 «Chiemsee», apartados 32 y 37).
En particular, la evaluación debe tener en cuenta la relevancia del origen geográfico de los productos de que se trata, los usos del ramo en la utilización de nombres geográficos para indicar el origen de los productos o referirse a determinados criterios cualitativos y objetivos de los productos.
Para los productos agrícolas o las bebidas (agua mineral, cerveza), los nombres geográficos a menudo suelen referirse al lugar de producción. No obstante, éste puede no ser el caso en todos los Estados miembros y dependerá del tamaño del lugar o la zona (sentencia de 15/10/2003, T-295/01, «OLDENBURGER»). En este apartado, los nombres geográficos mencionados no son indicaciones geográficas protegidas ni denominaciones de origen protegidas.
En lo que se refiere a los productos textiles y de cuidado corporal, conviene determinar si existe una producción real de tales productos y si este hecho es conocido por el público destinatario a escala nacional o internacional. No obstante, este requisito no debe confundirse con el renombre de una indicación geográfica como tal y no cumple necesariamente la condición de que exista un vínculo entre el término geográfico y los productos o servicios de que se trata (sentencia de 15/10/2008, T-230/06, «Port Louis», apartados 28 a 35).
En caso de duda es recomendable consultar a un nacional del Estado miembro respectivo.
Los principios anteriores se aplican también a los nombres de países.
Por último, el mero hecho de que un término geográfico sea utilizado por un solo productor no basta para obviar la objeción, aunque será un argumento importante que habrá que tomar en consideración para el examen del carácter distintivo adquirido.
2.3.2.7 Términos que describen el contenido de productos o servicios.
Cuando una marca consista exclusivamente en una palabra que describa lo que puede ser la esencia o el contenido de los productos o servicios de que se trate, suscitará objeciones con arreglo al artículo 7, apartado 1, letra c), del RMC. Los términos
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comúnmente conocidos y susceptibles de ser asociados por el público destinatario con una cosa, producto o actividad en particular describen contenido.
Lo esencial es si el signo objeto de solicitud puede utilizarse en el sector en cuestión en relación con los productos o servicios objeto de la solicitud de un modo que el público destinatario perciba inevitablemente como descriptivo del contenido de los productos o servicios reivindicados, por lo que debe mantenerse disponible para otros operadores.
Por ejemplo, un nombre muy conocido como «Vivaldi» suscitará inmediatamente un vínculo con el famoso compositor, al igual que el término «esquís» se asociará automáticamente con el deporte de esquí. Aunque la clase 16 (libros) es un ejemplo básico de una categoría de productos que incluye contenido u objeto, es posible que una objeción formulada en virtud de este apartado también se suscite en relación con otros productos o servicios como soportes de datos, DVD, CD ROM o servicios editoriales. En este apartado se utilizarán indistintamente las expresiones «contenido» y «objeto». Véase asimismo el apartado 2.2.3 sobre «Títulos de libros».
Los nombres de personas famosas (en particular, músicos o compositores) pueden indicar la categoría de los productos si, debido a su uso generalizado, el plazo temporal, la fecha del fallecimiento, o su popularidad, reconocimiento, el hecho de ser interpretado por múltiples artistas, o por la formación musical, el público los puede considerar genéricos. Ese sería el caso de «Vivaldi», cuya música es interpretada por orquestas de todo el mundo por lo que la marca «Vivaldi» no se entendería como un indicador de origen de la música.
Las objeciones basadas en los criterios anteriores:
únicamente serán aplicables a productos (por ejemplo, libros) o servicios (por ejemplo, educación) que incluyan contenido sobre otras cosas, productos o actividades (por ejemplo, un libro sobre historia o un curso de historia);
cuando la marca conste exclusivamente de la palabra que identifica dicho contenido (por ejemplo, «VEHÍCULOS» o «HISTORIA»), y
se formularán caso por caso, previa apreciación de múltiples factores (véase infra).
Productos o servicios que pueden referirse a contenido
En la mayoría de los casos, los productos o servicios que incluyan o puedan referirse a contenido susceptible de suscitar una objeción son los siguientes:
Clase 9: Soportes de datos magnéticos, software, discos registradores, publicaciones electrónicas descargables.
○ Suscitan objeciones
— STATISTICAL ANALYSIS para software — ROCK MUSIC para CDs
Clase 16: Productos de imprenta, fotografías y material didáctico, siempre que incluya productos de imprenta.
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○ Suscitan objeciones
— HISTORY para libros — PARIS para guías de viajes — CAR para revistas — ANIMALS para fotografías — MEDITACIÓN TRASCENDENTAL para material de instrucción y de
enseñanza
Clase 28: Juegos de mesa
○ Suscitan objeciones
— MEMORY (véase auto de 05/03/2011, C–369/10)
Clase 35: Ferias, publicidad, servicios de ventas al por menor.
○ Suscitan objeciones
— ELECTRONICA para ferias relacionadas con productos electrónicos (sentencia de 05/12/2000, T-32/00, «Electrónica», apartados 42 a 44)
— LIVE CONCERT para servicios de publicidad — CLOTHING para servicios de ventas al por menor
Clase 38: Telecomunicaciones
○ Suscitan objeciones
— NEWS para telecomunicaciones — MATH para foros en línea
Clase 41: Educación, formación, esparcimiento, publicaciones electrónicas en línea no descargables.
○ Suscitan objeciones
— GERMAN para cursos de idiomas — HISTORY para educación — COMEDY para programas de televisión — MEDITACIÓN TRASCENDENTAL para servicios de formación
La anterior lista de las clases de Niza no es exhaustiva aunque resultará aplicable a la gran mayoría de los casos. Por consiguiente, las objeciones basadas en contenido descriptivo deberán formularse prioritariamente en el marco de los productos o servicios arriba indicados.
Cuando la marca consista en un término descriptivo de una característica particular de los productos o servicios, una designación de productos o servicios que excluya la característica particular que describe el signo objeto de solicitud no se salvará de una objeción basada en el contenido. Ello se debe a que no se permite que el solicitante reivindique productos o servicios con la condición de que éstos no posean una
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característica en particular (véase la sentencia de 12/02/2004, C-363/99, «Postkantoor», apartados 114 a 116). A continuación se incluyen varios ejemplos inventados para ilustrar las designaciones de productos o servicios que no evitarán una objeción:
COMEDY (comedia) para transmisiones televisivas excepto para programas de comedia
PENGUINS (pingüinos, en plural) para libros, excepto libros sobre pingüinos TECHNOLOGY (tecnología) para clases, excepto clases de informática y sobre
tecnología.
Distintos de los ejemplos anteriores son las reivindicaciones positivas de productos o servicios, con arreglo a las cuales es imposible que el signo solicitado describa objeto o contenido. Por ejemplo, los siguientes ejemplos inventados no suscitarán objeciones, al menos en lo que a descripción de contenido se refiere:
COMEDY para transmisiones televisivas sobre economía, política y tecnología PENGUIN para libros de humor sobre temas del oeste, medievales y de la Roma
clásica TECHNOLOGY para clases sobre escritura creativa de ficción
2.3.2.8 Letras únicas y cifras
Letras únicas3
Consideraciones generales
El Tribunal de Justicia declaró que, a la hora de examinar los motivos de denegación absolutos, la Oficina está obligada con arreglo al artículo 76, apartado 1, del RMC, a examinar de oficio los hechos relevantes que puedan llevarla a formular una objeción al amparo del artículo 7, apartado 1, del RMC y que dicha exigencia no puede relativizarse ni invertirse en detrimento del solicitante de la marca comunitaria (apartados 55 a 58). Por consiguiente, corresponderá a la Oficina explicar, de forma motivada, por qué una marca que consiste en una única letra representada en caracteres estándar es descriptiva.
En consecuencia, cuando se examine una marca consistente en una letra única, deberán evitarse los argumentos genéricos carentes de fundamento como los relativos a la disponibilidad de los signos, dado el limitado número de letras. Tampoco es apropiado basar una objeción en una motivación especulativa sobre los distintos significados que dicho signo pueda tener. La Oficina debe determinar, sobre la base de una apreciación de los hechos, el motivo por el que cabría plantear objeciones a la marca solicitada.
Así pues, está claro que el examen de marcas compuestas por una letra única debe ser riguroso y restrictivo y que cada caso exige un cuidadoso análisis.
3 Esta parte versa sobre las letras únicas con arreglo al artículo 7, apartado 1, letra c). Para las letras
únicas al amparo del artículo 7, apartado 1, letra b), véase apartado 2.2.5
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Ejemplos
Por ejemplo, en los ámbitos técnicos, como los relacionados con ordenadores, maquinaria, motores y herramientas, es más probable que las letras aisladas tengan una connotación descriptiva si transmiten información suficientemente precisa sobre los productos y/o servicios en cuestión.
Asimismo, se consideró que la letra «E» era descriptiva en relación con plantas de generación de energía eólica y sus partes, generadores, cuchillas de rotores para plantas de generación de energía eólica, rotores para plantas de generación de energía eólica de la clase 7; interruptores de control para plantas de generación de energía eólica, transformadores de frecuencia, aparatos de medidas, de señalización y de control (inspección) de la clase 9 y torres para plantas de generación de energía eólica de la clase 19, porque puede entenderse como una referencia a «energía» o «electricidad» (sentencia de 21/05/2008, T-329/06, «E», apartados 24 a 31 y resolución de 08/09/2006, R 394/2006-1, apartados 22 a 26).
También es posible que una objeción esté justificada para productos y/o servicios destinados a un público más general. Por ejemplo, las letras «S», «M» o «L» en relación con las prendas de vestir suscitarían objeciones, pues dichas letras se utilizan para describir una talla particular de ropa, especialmente como abreviaturas de «Small» (pequeño), «Medium» (mediano) o «Large» (grande).
Por otra parte, si no puede acreditarse que una determinada letra aislada es descriptiva para los productos y/o servicios en cuestión, y siempre que la marca solicitada no suscite ninguna objeción con arreglo a otra letra del artículo 7, apartado 1, del RMC, deberá aceptarse.
Véase el apartado 2.2.5.2 supra para otros ejemplos.
Cifras
En su sentencia de 10/03/2011, C-51/10 P, «1000», el Tribunal de Justicia resolvió que los signos compuestos exclusivamente por cifras sin modificaciones gráficas pueden ser registrados como marcas (apartados 29 y 30).
El Tribunal de Justicia se remitió, por analogía, a su anterior sentencia de 09/09/2010, C-265/09 P, «α» en relación con las letras únicas (apartado 31) y puso de manifiesto que las marcas compuestas por cifras deben examinarse expresamente en relación con los productos y/o servicios específicos de que se trata (apartado 32).
Por consiguiente, una cifra únicamente podrá registrarse como marca comunitaria si resulta distintiva en relación con los productos o servicios comprendidos en la solicitud de registro (apartado 32) y no es meramente descriptiva o está desprovista de carácter distintivo por otros motivos en relación con tales productos o servicios.
Por ejemplo, la Sala confirmó la denegación de la marca «15» solicitada para prendas de vestir, calzado y artículos de sombrerería de la clase 25, alegando que la cifra «15» estaba directa y específicamente relacionada con dichos productos, pues contenía información evidente y directa sobre la talla. La Sala también confirmó la denegación de dicho signo para «cervezas» de la clase 32, pues se demostró que, en el ámbito de la comercialización de los productos de que se trataba, en la que se basó el examinador, existían en el mercado comunitario varias cervezas muy fuertes con un
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contenido alcohólico del 15% vol. (resolución de 12/05/2009, R 0072/2009-2, apartados 15 a 22).
Es sabido que las cifras se suelen utilizar para transmitir información pertinente sobre los productos y/o servicios en cuestión. Por ejemplo, en los siguientes supuestos se suscitaría una objeción porque el signo solicitado resultaría descriptivo al referirse a:
la fecha de fabricación de los productos/de la prestación de los servicios, cuando dicho factor resulte pertinente en relación con los productos/servicios en cuestión. Por ejemplo, 1996 o 2000 para «vinos» suscitarían objeciones, pues la edad del vino es un factor muy importante para la elección de compra;
el tamaño: 1600 para automóviles, 185/65 para neumáticos, talla 10 para ropa femenina en el Reino Unido, y talla 32 en Francia,
la cantidad: 200 para cigarrillos;
prefijos telefónicos: 0800 o 0500 en Reino Unido, 800 en Italia, 902 en España, etc.;
la fecha de la prestación de los servicios: 24/7;
la potencia de los productos: 115 para motores o vehículos;
el contenido alcohólico: 4,5 para cervezas, 13 para vino;
el número de piezas: 1 000 para rompecabezas.
Por otra parte, cuando la cifra no parezca tener ningún significado posible en relación con los productos o servicios, será aceptada, por ejemplo «77» para servicios financieros o «333» para prendas de vestir.
2.3.2.9 Nombres de colores
Un signo compuesto exclusivamente por el nombre de un color suscitará objeciones con arreglo al artículo 7, apartado 1, letra c), del RMC cuando la solicitud reivindique cualquier producto con respecto al cual el público pueda percibir razonablemente el color como una descripción de una de sus características. Por ejemplo, el nombre del color AZUL en relación con el queso, describe un tipo específico de queso, el color VERDE un tipo concreto de té. El nombre del color MARRÓN en relación con el azúcar describe el color y el tipo de azúcar. Esta norma se aplica principalmente a los colores comunes, por ejemplo colores primarios o el PLATA y ORO. Cuando los productos reivindicados hagan referencia a colorantes como pintura, tinta, tinte, productos cosméticos, etc., el nombre de los colores puede describir el color real de los productos y los signos que consistan exclusivamente en un color suscitarán objeciones con arreglo al artículo 7, apartado 1, letra c), del RMC. En estos casos, los nombres de los colores no se entenderán como marcas comerciales, sino únicamente como elementos que describen la característica principal de los productos.
Con carácter general, se aplicarán las siguientes directrices.
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Cuando el color constituya una de las características básicas de los productos y sea pertinente para la elección del consumidor, como en el caso de prendas de vestir y automóviles, nombres de colores como ESMERALDA o ALBARICOQUE, que, aunque tienen un significado alternativo, se reconocen por tener una fuerte connotación con colores concretos, suscitarán objeciones;
Palabras como ZAFIRO o FLAMENCO no tienen una connotación de color suficientemente fuerte como para eclipsar el otro significado no referido a un color, por lo que, con carácter general, no se formularán objeciones al respecto siempre que no sea probable que se perciban según su significado de color en relación con los productos o servicios reivindicados.
Los nombres de colores combinados con otras palabras podrán registrarse si el signo en su conjunto es distintivo: CAFÉ HELADO, HELADO DE VANILLA, AZUL BRUMOSO. Las combinaciones descriptivas como AZUL PROFUNDO no deberán aceptarse. Las palabras que figuren en el diccionario y resulten descriptivas, pero tengan un significado oculto y que es poco probable que otras personas utilicen pueden ser aceptadas: LUNA (nombre empleado por los alquimistas para plata) y CORNIOLA (un nombre alternativo para CORNALINA, una piedra semipreciosa roja menos conocida).
2.3.2.10 Denominaciones de variedades vegetales
Las denominaciones de variedades vegetales incluyen las variedades o subespecies de plantas vivas o semillas agrícolas. Como tales, no serán percibidas como marcas.
Esta parte se refiere únicamente a las denominaciones de variedades vegetales que se utilizan en el comercio y que no se encuentran simultáneamente registradas por la Oficina Comunitaria de Variedades Vegetales de acuerdo con el Reglamento Nº 2100/94. El examen de las solicitudes de MC que contienen o consisten en denominaciones registradas de variedades vegetales se explica en la parte de estas Directrice correspondiente al Artículo 7, apartado 1, letra f), del RMC (véase el apartado 2.6.1.2).
Los criterios para apreciar el carácter descriptivo de una marca para plantas no difieren de los aplicables a otras categorías de marcas. Lo dispuesto en la legislación sobre marcas se aplica a las plantas del mismo modo que a otras categorías de productos. De lo anterior se desprende que el nombre de una variedad vegetal deberá denegarse con arreglo al artículo 7, apartado 1, letra c), del RMC salvo que haya adquirido carácter distintivo conforme a lo dispuesto en el artículo 7, apartado 3, del RMC.
Cuando la marca comunitaria solicitada consista en términos referidos a plantas vivas, semillas agrícolas, frutas frescas, verduras frescas y otros términos similares, el examinador comprobará, mediante una búsqueda en Internet, si el término en cuestión coincide con la denominación de una variedad vegetal utilizada en el comercio.
Si en el marco de esta comprobación se detecta que el término en cuestión se utiliza en el comercio, en la UE o en otra parte, el examinador formulará una objeción en virtud del Artículo 7, apartado 1, letra c), alegando que el término en cuestión describe la naturaleza de los productos.
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Dependiendo de las circunstancias del caso, y siempre que las pruebas encontradas demuestren que el término en cuestión se ha utilizado hasta el punto de que se ha convertido en habitual en el comercio en la UE, se formulará una objeción en virtu del Artículo 7, apartado 1, letras c) y d) (véase también el apartado 2.4.4).
Por ejemplo, en su resolución de 01/03/2012, R 1095/2011-5, «SHARBATI», la Quinta Sala de Recurso confirmó la denegación de la marca «SHARBATI» solicitada para arroz, harina y preparados a base de cereales, pan, galletas y confitería de la clase 30, dado que es descriptiva de estos productos: Sharbati es un tipo de arroz así como un tipo de cereal que confiere su nombre a una determinada harina conocida en India.
Aunque la mayor parte de las pruebas demostraban que procedía de la India, una parte se refería al negocio de la exportación en los mercados de materias primas. Por consiguiente, el hecho de que una palabra determinada sea la denominación de una variedad de arroz en la India, ya era un indicador claro de que el producto iba a ser distribuido en la Unión Europea.
Sin embargo, la Sala consideró que no había pruebas suficientes que acreditasen que el término SHARBATI se había convertido en genérico en la Unión Europea. Pese a que se demostró que se había ofrecido arroz sharbati o harina de sharbati a operadores en la Unión Europea, que efectivamente se había importado a la Unión Europea y de que no había ninguna otra denominación concreta para dicho producto, no se disponía de pruebas suficientes de que en la fecha de presentación de la solicitud de la marca comunitaria, los productos fueran conocidos en la medida en que lo exige el artículo 7, apartado 1, letra d), del RMC.
También deberán formularse objeciones cuando la marca solicitada sólo constituya una ligera variación (es decir, que incluya diferencias menores que no modifiquen la impresión visual y auditiva del signo) de la denominación de variedad utilizada en el comercio, de modo que pueda inducir a los consumidores a pensar que se encuentran ante la denominación descriptiva o genérica de una variedad vegetal.
Un ejemplo de lo anterior puede hallarse en la resolución de 03/12/2009, R 1743/2007-1, «VESUVIA». La Sala consideró que las pruebas que apuntaban a que procedían de Estados Unidos y Canadá, bastaban para concluir que la denominación «Vesuvius» de una variedad de rosas, podría convertirse en una indicación descriptiva en la Unión Europea en el sentido del artículo 7, apartado 1, letra c), del RMC y que la marca solicitada «VESUVIA» se parecía mucho. La Sala justificó su denegación alegando que habitualmente se hace referencia a las rosas en femenino.
Por último, procede señalar que deberá formularse una objeción no sólo en relación con la marca solicitada que sea idéntica (o presente ligeras variaciones) a la denominación de una variedad vegetal que se utiliza en el mercado como denominación genérica de una variedad vegetal, sino también en relación con los productos y/o servicios que puedan vincularse directamente a la variedad vegetal en cuestión (por ejemplo, importación-exportación de la variedad vegetal en cuestión).
2.3.2.11 Nombres de bancos y periódicos/revistas
En el ámbito de los bancos, los periódicos y las revistas, los consumidores están acostumbrados a reconocer combinaciones descriptivas de términos como indicaciones de origen. Esto se debe a:
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la entidad pertinente se identifica como la única con derecho a usar la combinación de que se trate (véase, por ejemplo, «BANK OF ENGLAND» o «BANCO DE ESPAÑA» u otros nombres de bancos centrales), o
una presencia intensa y prolongada en el mercado (véase, por ejemplo, «IL GIORNALE» [periódico] en Italia), o
la combinación sigue identificándose con una entidad específica (véase, por ejemplo, «COSTA BLANCA NEWS» o «BANCO DE ALICANTE»)
En estos casos no deben formularse objeciones. No obstante, las combinaciones descriptivas como «ONLINEBANK», «E-BANK» o «INTERNETNEWS» siguen suscitando objeciones, dado que no producen, al menos prima facie, la impresión de una entidad claramente identificable.
2.3.2.12 Nombres de hoteles
En el sector hotelero, los nombres de los establecimientos suelen constar de una combinación de la palabra «HOTEL» con un término geográfico (es decir, el nombre de una isla, una ciudad, un país, etc.). Suelen indicar establecimientos específicos que no guardan relación alguna con el término geográfico al que hacen referencia, dado que no están situados en ese lugar concreto. En consecuencia, estos hábitos del sector han hecho que los consumidores no perciban expresiones como «HOTEL BALI», «HOTEL BENIDORM» u «HOTEL INGLATERRA» como indicaciones descriptivas (en alusión a que los servicios se prestan en un hotel situado en la localidad en cuestión), sino más bien como indicaciones de origen. En realidad, tales expresiones no son equivalentes a expresiones correctas desde el punto de vista gramatical como «HOTEL EN BALI», «HOTEL DE BENIDORM» u «HOTEL EN INGLATERRA», que pueden suscitar claras objeciones. Y esto es aún más cierto en los casos en los que el nombre del hotel consta de los nombres de dos ciudades (o de dos términos geográficos en general), por ejemplo, «HOTEL LONDRES SAN SEBASTIÁN». En realidad, en este caso la presencia de las palabras SAN SEBASTIÁN (ciudad del norte de España) indica con claridad que «HOTEL LONDRES» debe considerarse una expresión imaginativa. Por consiguiente, no deberían formularse objeciones. Sin embargo, en los casos en los que el término geográfico precede a la palabra «HOTEL», la situación podría cambiar según las distintas lenguas. Por ejemplo, en inglés, los términos «BALI HOTEL» se percibirían como una expresión referida a cualquier hotel ubicado en la isla de Bali, lo que suscita evidentes objeciones. En consecuencia, cada caso debe evaluarse por sus propias características. Por último, las combinaciones descriptivas como «LEADING HOTELS» siguen suscitando objeciones, ya que no producen, al menos prima facie, la impresión de una entidad claramente identificable.
2.3.2.12 Combinaciones de nombres de países/ciudades con un número de año
Las marcas que constan de una combinación del nombre de un país/ciudad con un número de año deben rechazarse en virtud del artículo 7, apartado 1, letras b) y c), del RMC para todos los productos y servicios reivindicados. A modo de ejemplo, la marca «GERMANY 2006» se ha considerado una indicación descriptiva para una extensa lista de productos y servicios que abarcan desde películas no impresionadas, pertenecientes a la clase 1, a mantenimiento de vehículos, perteneciente a la clase 37. En particular, la resolución del asunto R 1467/2005-1 de 21/07/2008 estableció que esta marca:
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describe el tipo y el contenido de los servicios que consisten en «preparar, organizar y promover un evento en Alemania en 2006» (ibídem, apartado 29, en referencia a la organización de acontecimientos deportivos relacionados o asociados con campeonatos de fútbol, etc.);
describe la «finalidad y, por tanto, en parte el nivel de calidad de los productos o servicios durante tales campeonatos celebrados en Alemania en 2006, y los presenta como adecuados para competiciones del más alto nivel o que han sido utilizados satisfactoriamente en el contexto de tales competiciones» (ibídem, apartado 30, en referencia a instrumental médico, pelotas de fútbol, etc.);
califica los productos de «souvenirs» (ibídem, apartado 31, en referencia a artículos como pegatinas, confeti, pijamas, etc.).
En relación con los souvenirs, la Sala subrayó que «los artículos promocionales y las marcas compartidas no se limitan a los tradicionales artículos de «souvenir». Es de dominio público que hay una tendencia a encontrar nuevos mercados mediante la combinación de diversos productos con la marca de un evento o un nombre famosos no relacionados con aquéllos (ibídem, apartado 34, en referencia a productos como gafas, televisores, papel higiénico, etc., todos relacionados o asociados con campeonatos de fútbol).
2.3.3 Marcas figurativas
Los signos representados en idiomas que no sean el latín, el griego o el cirílico se consideran, a efectos formales, marcas figurativas. Ahora bien, ello no significa que el contenido semántico de dichos signos no deba ser tenido en consideración a los efectos del artículo 7, apartado 1, letra c).
Cuando una marca figurativa consista exclusivamente en una forma básica natural que no difiera de forma significativa de una estampa realista que sirva para indicar el tipo o destino, u otra característica, de los productos o servicios, deberá formularse una objeción en virtud del artículo 7, apartado 1, letra c), del RMC en el sentido de que resulta descriptiva de una característica de los productos o servicios en cuestión.
Signo Asunto
Sentencia de 08/07/2010, T-385/08 «Representación de un perro»
Sentencia de 08/07/2010, T-386/08 «Representación de un caballo»
En estos casos, el Tribunal General consideró que, con respecto a los productos de las clases 18 y 31, el dibujo de un perro y un caballo, respectivamente, servía para indicar el tipo de animal al que estaban destinados los productos.
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En el primer caso, el Tribunal señaló que los productos de la clase 18 se fabricaban especialmente para perros, como correas, collares y otros accesorios para perros incluidos bolsos. En el sector de los accesorios para animales, resulta habitual utilizar figuras de animales fieles a la realidad o estilizados pero realistas para indicar el tipo de animal de que se trata. Por consiguiente, para los productos de la clase 18 el público destinatario percibirá inmediatamente el mensaje visual de que dichos productos están destinados a perros, sin más esfuerzo intelectual. La efigie de un perro, por lo tanto, se refiere a una característica esencial de los productos de que se trata. En consecuencia, el signo solicitado es descriptivo (apartados 25 a 28).
Lo mismo sucede con la clase 31. Dado que los alimentos para animales domésticos incluyen comida para perros, la marca solicitada es una indicación descriptiva de los productos de que se trata y será inmediatamente comprendida por el público destinatario (apartado 29).
En el segundo caso, el Tribunal entendió que, con respecto a prendas de vestir, artículos de sombrerería y cinturones de la clase 25, la figura de un caballo resultaba descriptiva para el tipo o el destino de los productos, en particular, que tales productos se han desarrollado o son especialmente adecuados para montar a caballo. Puesto que el público destinatario establecería un vínculo directo entre el caballo y la equitación, el Tribunal sostenía que existía un vínculo directo y concreto entre la representación de un caballo y los productos en cuestión (apartados 35 a 38).
Por ejemplo, se consideró que el signo que consta infra era lo suficientemente estilizado como para alejarse de forma significativa de una imagen real que sirva para indicar el tipo o el destino de los productos y servicios, por lo que fue registrado.
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 844 Clases 1, 3, 5, 6, 7, 8, 9, 11, 16,
17, 18, 19, 20, 21, 22, 26, 28, 31, 41, 42
2.3.4 Umbral figurativo4
2.3.4.1 Observaciones preliminares
Los términos o signos que no sean distintivos o resulten descriptivos o genéricos pueden excluirse del ámbito de aplicación de una denegación basada en el artículo 7, apartado 1, letras b), c) o d), del RMC si se combinan con otros que pueden hacer el signo distintivo en su conjunto. En otras palabras, no podrán denegarse sobre la base del artículo 7, apartado 1, letras b), c) y/o d), signos consistentes en un elemento no distintivo, descriptivo o genérico combinado con elementos que hace que el signo en su conjunto supere un determinado grado de carácter distintivo.
En la práctica, ello supone que una de las principales preguntas que deben formularse en su trabajo diario los examinadores es si la marca es lo suficientemente figurativa
4 Nota: Esta parte se actualizará de acuerdo con la evolución del Programa de Convergencia 3 (CP3).
Algunos ejemplos ya acordados en el CP3 se han incorporado al texto.
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como para alcanzar el carácter distintivo mínimo necesario que se exige para poder registrarla.
La presencia de elementos figurativos puede otorgar carácter distintivo a un signo consistente en un elemento verbal descriptivo y/o no distintivo de modo que éste pueda ser registrado como marca comunitaria. Por consiguiente, lo que el examinador debe analizar es si la estilización y/o los elementos gráficos de un signo bastan para que éste pueda servir como marca.
A los efectos del presente documento, por la expresión «elemento figurativo» se entenderá cualquier elemento gráfico / estilización que figure en el signo, como el tipo de letra, el tamaño de letra, los colores y la disposición/colocación de las palabras o letras. También incluye las formas geométricas, las etiquetas, los motivos y los símbolos, al igual que cualquier combinación de los elementos anteriores.
Por regla general, cuando un elemento figurativo que es distintivo por sí solo va acompañado por una palabra descriptiva y/o que no tiene carácter distintivo, la marca puede registrarse siempre y cuando el elemento figurativo sea claramente reconocible en la marca a raíz de su tamaño y posición.
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 11 418 605 Clase 24
Esta marca suscitó objeciones porque los caracteres tipográficos no son distintivos, ya que no difiere de forma significativa de los caracteres tipográficos que se suelen utilizar en el mercado y debido a que el motivo en rojo que figura en la letra «i» es casi imperceptible.
Incluso cuando el elemento figurativo cumpla los requisitos arriba indicados sigue siendo preciso analizar la marca en su conjunto en relación con los productos y servicios reivindicados.
En efecto, es preciso tener en cuenta que cuando el elemento verbal sea descriptivo/no distintivo, debe comprobarse en particular si el elemento figurativo es:
llamativo y/o sorprendente, y/o inesperado, y/o inusual, y/o arbitrario;
capaz de generar en la mente del consumidor un recuerdo inmediato y persistente del signo desviando la atención del mensaje descriptivo/no distintivo que transmite el elemento verbal;
de una naturaleza tal que requiera un esfuerzo de interpretación por parte del público destinatario para entender el significado del elemento verbal.
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Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 11 595 601 Productos de la clase 3(signo en fase de examen)
La marca solicitada que figura supra suscitó objeciones, ya que es claramente descriptiva (y carece de carácter distintivo) en relación con los productos reivindicados de la clase 3. El contenido descriptivo de la palabra prevalece sobre la inclusión figurativa de la letra «L», aun cuando la letra figurativa «L» podría registrarse para esos mismos productos y servicios.
Por último, el hecho de que una marca contenga elementos figurativos no impide que pueda inducir a error, que sea contraria al orden público o que esté comprendida en el ámbito de aplicación de otros motivos de denegación, como los previstos en el artículo 7, apartado 1, letras h), i), j) y k), del RMC.
2.3.4.2 Elementos verbales estilizados
Por lo general, los elementos verbales descriptivos o no distintivos que figuren en caracteres tipográficos estándar o básicos, con o sin efecto, como «negrita» o «cursiva» no son registrables. Cuanto más legibles y/o comunes sean los caracteres tipográficos, menos distintivo será el signo. El mismo razonamiento se aplica a los caracteres tipográficos manuscritos. Los caracteres tipográficos manuscritos que sean fácilmente legibles y/o habituales suelen carecer de carácter distintivo. En otras palabras, para conferir carácter distintivo a un signo, la estilización de los caracteres tipográficos debe ser tal que exija un esfuerzo mental por parte de los consumidores para comprender el sentido del elemento verbal en relación con los productos y servicios reivindicados.
Minúsculas y mayúsculas
Signo Marca comunitaria nº Productos y servicios
CyberDOCS Marca comunitaria nº 310 888 Clases 9 y 16
«El uso de letras mayúsculas para la sílaba final de «CyberDOCS» no refuerza el carácter distintivo de la marca. La Oficina trata, justificadamente, cualquier signo como una marca denominativa si está escrito en caracteres normalizados, con independencia de si son minúsculas o mayúsculas. Una marca descriptiva no deja de serlo sólo porque parte de sus letras estén escritas en mayúscula y parte en minúscula» (véase la resolución R 133/1999-1, apartado 14).
Caracteres tipográficos estándar + cursiva
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 4 651 683 Entre otros, productos de lasclases 1, 7 y 22.
El signo anterior fue denegado. En este caso, «Foam» figura escrito en un carácter tipográfico estándar y «plus» consta simplemente en cursiva. Dado que ninguna de estas formas es llamativa o extraordinaria en modo alguno, el público no considerará que los elementos visuales confieren al signo la función de indicador de origen (resolución de 07/05/2008, R 655/2007-1, «Foamplus», apartado 16).
Motivos de denegación absolutos
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 64
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Caracteres tipográficos especiales
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 5 456 207 Clases 12, 25 y 28
El término «Superleggera» significa «Súper ligero» en español y la denegación de esta marca fue confirmada por el Tribunal General (véase la sentencia de 19/05/2010, T-464/08, «Superleggera», apartados 33 y 34). El TG señaló que aunque el tipo de letra es algo peculiar, su estilo no puede generar un recuerdo inmediato y persistente en el público destinatario ni distinguir los productos del solicitante de los de otros proveedores presentes en el mercado. Ello se debe a que la forma de las letras manuscritas es común en el comercio. Por consiguiente, los consumidores y, en este caso, el público destinatario las perciben como bastante normales. En cuanto al argumento del solicitante en el sentido de que la utilización de la «S» mayúscula al principio modifica la forma en la que se percibe la expresión «Superleggera», el TG señaló que el uso de mayúsculas no trae como consecuencia que la expresión deje de percibirse en el sentido de informar al público sobre los productos en cuestión.
Signo Productos y servicios
Ejemplo tomado de CP3
obras cinematográficas en soportes de imagen u otros soportes de datos; material
impreso; organización de grandes eventos; entretenimiento
La marca significa: Bollywood te hace feliz
Color
La mera «adición» de un color o de una combinación de colores que sea básica y/o que se suela utilizar en el mercado no basta para que pueda registrarse un elemento verbal descriptivo y/o no distintivo. Como ejemplo, véase la siguiente marca que fue denegada a pesar de incluir un color.
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 7 147 689 Productos y servicios de lasclases 9 y 38
Carácter tipográfico, tamaño de fuente o disposición de las palabras y/o letras
La forma en que estén dispuestos los elementos verbales puede conferir carácter distintivo a un signo siempre que afecte a la percepción que tiene el consumidor del significado de los elementos verbales. En otras palabras, la disposición debe ser de naturaleza tal que exija un esfuerzo mental por parte del consumidor para percibir la conexión existente entre las palabras y los productos y servicios reivindicados. Por lo general, el hecho de que las palabras estén dispuestas en sentido vertical, invertido o en una, dos o más líneas no basta para conferir al signo el carácter distintivo mínimo que se requiere para su registro.
Motivos de denegación absolutos
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 65
FINAL VERSION 1.0 DATE 02/01/2015
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 8 294 233 Productos de la clase 3
La marca anterior solicitada para cosméticos y productos para el cuidado del cuerpo fue denegada porque los caracteres tipográficos son banales y la presentación de las dos palabras, una por encima de la otra, no puede considerarse inusual. El hecho de que la «b» sea más grande que el resto de las letras de la palabra «beauty» es prácticamente imperceptible. Estas circunstancias por sí solas no pueden conferir carácter distintivo a la marca solicitada (sentencia de 11/06/2012, T-559/10, «natural beauty», apartado 26).
Las siguientes marcas se consideraron aceptables.
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 2 795 771 Productos y servicios de lasclases 9 y 38.
El acrónimo «DVB» significa «Digital Video Broadcasting», una expresión referida a un tipo de tecnología de radiodifusión. Sin conocer con carácter previo el acrónimo «DVB», es preciso realizar un esfuerzo mental y aplicar cierto grado de interpretación para comprender el significado del signo representado supra. Las letras que componen el signo no son claramente identificables por separado, ya que el signo puede representar «DV3», «D13», «DVB» o incluso «LV3» o «LVB» de forma estilizada. Asimismo, los caracteres tipográficos no difieren significativamente de los que resultan habituales. Dado que posee, al menos, un mínimo grado de carácter distintivo, el signo anterior puede actuar como una marca (resolución de 09/10/2008, R 1641/2007-2, apartados 23 a 25).
Signo Productos y servicios
Ejemplo tomado de CP3 servicios de perfumería
de un diseñador de moda; ropa
2.3.4.3 Elementos verbales combinados con otros elementos figurativos
Elementos verbales combinados con figuras o dibujos banales
La formas y figuras básicas incluyen puntos, líneas, segmentos de líneas, círculos y polígonos como triángulos, cuadrados, rectángulos, paralelogramos, pentágonos, hexágonos, etc. Ha de tenerse presente que existen formas, figuras y dibujos que, pese a no ser «geométricos», son demasiado simples o banales como para atribuir carácter distintivo a un signo.
Es improbable que se acepten elementos verbales descriptivos o no distintivos que estén combinados con formas/figuras/dibujos básicos/simples/banales, sean éstos geométricos o no. Se debe a lo siguiente: cuando los consumidores miran la marca, es el elemento verbal el que, con
carácter general, más probablemente reconocerán los consumidores y más fácilmente memorizarán;
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dichas formas/figuras no transmiten ningún «mensaje» a los consumidores por lo que no son aptas para desviar su atención del significado descriptivo/no distintivo del elemento verbal.
La utilización de un color básico y/o utilizado con frecuencia en el mercado no confiere a la marca un grado suficiente de carácter distintivo.
Las siguientes marcas suscitaron objeciones:
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 6 039 119 Productos de la clase 24
Signo Productos y servicios
Ejemplo tomado de CP3 edición de libros y revistas
Signo Productos y servicios
Ejemplo tomado de CP3 café
Por otro lado, formas, figuras y dibujos complejos pueden añadir carácter distintivo a un signo. Por regla general, cuanto más complejas sean las formas/figuras/dibujos, más distintivos serán. A continuación se ofrece un ejemplo de un signo con carácter distintivo (se da por supuesto que la forma geométrica no es una representación del envase de los productos).
Signo Productos y servicios
Ejemplo tomado de CP3 café
Sin embargo, para que se llegue a la conclusión de que el signo es lo suficientemente distintivo, es preciso tener en cuenta también otros factores, como los siguientes:
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la forma/figura/dibujo no debe consistir en una combinación no distintiva de formas/figuras/dibujos básicos/simples/banales, geométricos o no. En estos casos, es necesario apreciar adecuadamente el «impacto visual» del elemento figurativo en relación con el del elemento verbal;
la forma/figura/dibujo no debe ser una etiqueta común/no distintiva;
la forma/figura/dibujo no debe utilizarse habitualmente en el mercado en relación con los productos y servicios reivindicados;
la forma/figura/dibujo no debe ser un motivo que no pueda ser fácilmente memorizado por el público destinatario;
la forma/figura/dibujo no debe poseer características que sean meramente decorativas/funcionales;
la forma/figura/dibujo no debe consistir en una representación bidimensional descriptiva/no distintiva de los productos y/o servicios (o de una parte de ellos) ni reforzar el mensaje descriptivo y/o publicitario que transmite el elemento verbal;
la forma/figura/dibujo no debe ser una representación bidimensional no distintiva del envase/embalaje de los productos reivindicados;
la forma/figura/dibujo no puede ser una representación no distintiva de la apariencia externa/silueta de los productos o de una parte de los mismos;
la forma/figura/dibujo no debe consistir en una representación bidimensional no distintiva del lugar/espacio/ubicación en el que se vendan/suministren/distribuyan/exhiban los productos/servicios reivindicados.
Estas «características» pueden yuxtaponerse y estar presentes simultáneamente en el mismo signo.
A continuación se incluye una lista de algunos ejemplos de elementos figurativos que pertenecen a algunas de las categorías mencionadas supra.
Elementos figurativos consistentes en una representación descriptiva/no distintiva de los productos o servicios o de una parte de los mismos
En algunos casos, el elemento figurativo consiste en una representación de los productos o servicios reivindicados (o de una parte de ellos). En principio, la representación se considera descriptiva y/o desprovista de carácter distintivo cuando:
se trata de una representación «fiel» o «realista» de los productos y servicios;
es una representación simbólica/estilizada, si bien realista, de los productos y servicios.
En ambos casos, para suscitar objeciones, la representación de los productos/servicios no debe diferir de forma significativa de las que se utilizan por lo general en el mercado. Los siguientes signos no tienen carácter distinitivo.
Motivos de denegación absolutos
Directrices relativas al examen ante la Oficina, Parte B, Examen Página 68
FINAL VERSION 1.0 DATE 02/01/2015
Signo Productos y servicios
Ejemplo tomado de CP3 pescado
Signo Productos y servicios
Ejemplo tomado de CP3 pescado
Elementos figurativos que refuerzan el «mensaje» descriptivo y/o promocional que transmite el elemento verbal.
El elemento figurativo se considera asimismo descriptivo y/o carente de carácter distintivo cuando se limita a reforzar el mensaje descriptivo y/o promocional que transmite el elemento verbal.
Signo Marca comunitaria nº Productos y servicios
Registro internacional que designa a la UE nº 1 131 046
Clases 36 (servicios de recaudación de fondos para obras
benéficas), clases 42 y 45.
El elemento figurativo se limita a reforzar el mensaje que transmiten los elementos verbales, es decir, que se puede hacer una donación con un solo clic.
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 1 088 576 Clase 29
«fra Danmark» significa «de Dinamarca». El elemento figurativo (aunque no es una imitación heráldica de la bandera danesa) refuerza claramente el mensaje de que los productos reivindicados proceden de Dinamarca. La resolución ha sido confirmada por la Sala (véase la resolución de 05/12/2013, R 469/2013-1).
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 10 909 109 Clases 5, 18, 21, 25, 28 y 31
«Hundesport» significa «deporte para perros/caninos»
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Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 9 117 219 entre otros, café en la clase 30
La palabra MOCA indica un tipo de café en algunas lenguas europeas, por ejemplo, el italiano, español y portugués. El elemento figurativo que hay entre las letras «MO» y «CA» consta de los colores de la bandera italiana. Aunque se pueden formular objeciones al registro de la marca solicitada en virtud del artículo 7, apartado 1, letra h), del RMC, este elemento no añade ningún carácter distintivo al signo, dado que indica claramente a los consumidores el origen/destino geográfico de los productos
Elementos figurativos de uso común en el comercio en relación con los productos o servicios
Por regla general, los elementos figurativos de uso común en el comercio en relación con los productos y/o servicios reivindicados no añaden carácter distintivo al signo en su conjunto. Véanse las siguientes marcas.
Signo Nº de la marca Productos y servicios
Registro internacional que designa a la UE nº 1116291
Productos y servicios de las clases 29, 30, 31 y 43
La expresión en alemán «Einfach Gut!» que consta en la marca anterior significa «simplemente bueno» en español. El corazón rojo es una forma de uso común en el comercio en relación con productos y servicios, sobre todo con alimentos como el chocolate y los dulces en general, y en particular en ocasiones especiales como San Valentín. Por consiguiente, se denegó el registro de esta marca.
Signo Asunto
Sentencia de 15/09/2005, C-37/03 P, «BioID»
La marca anterior fue denegada para los productos y servicios reivindicados de las clases 9, 38 y 42 relativos a gestión de contraseñas y características de seguridad para software y telecomunicaciones. El público destinatario entenderá que el signo significa, en su conjunto, «identificación biométrica», que no puede distinguirse de los productos y servicios reivindicados y que no posee ningún carácter que garantice al usuario final la identidad de origen del producto o del servicio designado por la marca desde el punto de vista del público destinatario (apartado 70). Además, la falta de cualquier elemento distintivo particular y los caracteres en letra «Arial» y de diferentes grosores no permiten que la marca solicitada sirva como un indicador de origen (apartado 71).
Elementos figurativos consistentes en motivos
Por norma, los motivos no añaden carácter distintivo a los signos que están compuestos por elementos verbales descriptivos/no distintivos cuando el público destinatario los percibe como meros elementos decorativos. En efecto, en tales
Motivos de denegación absolutos
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supuestos no transmiten ningún «mensaje» que pueda ser fácilmente recordado por los consumidores.
Combinaciones de elementos figurativos no distintivos y/o banales
En general, las combinaciones de elementos figurativos banales (geométricos o no) no añaden carácter distintivo a los signos compuestos por elementos verbales cuando no son aptas para desviar la atención del consumidor del significado descriptivo/no distintivo de mensaje que transmite el elemento verbal. En estos casos es preciso apreciar adecuadamente el «impacto visual» del elemento figurativo en relación con el del elemento verbal.
Véanse, a título de ejemplo, las siguientes marcas denegadas:
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 11 439 932
Para servicios de las clases 39 y 41
(incluidos servicios prestados por clubes automovilísticos)
Retirada
En este caso el «destello» no basta para conferir carácter distintivo a la marca. En efecto, no es llamativo, perceptible ni fácil de recordar y tampoco resulta dominante con respecto a los demás elementos verbales y figurativos. Además, el destello (al igual que los demás elementos figurativos, por ejemplo, los caracteres tipográficos, los colores y la etiqueta) no son aptos para desviar la atención del consumidor del mensaje claramente descriptivo/no distintivo que transmite la expresión «SUPERCAR EXPERIENCE».
Cabe aplicar un razonamiento similar, mutatis mutandis, al elemento figurativo del siguiente signo:
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 11 387 941 Clases 9, 35 y 41
Motivos de denegación absolutos
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Por otro lado, las siguientes marcas fueron registradas:
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 10 894 996 Productos y servicios de las
clases 12, 35 y 36 (registrada)
Marca comunitaria nº 10 834 299 Productos y servicios de las
clases 9, 38 y 42 (registrada)
En ambos casos algunos de los elementos figurativos (el signo antes de la palabra «Specialized» y los cinco rectángulos dispuestos en forma circular colocados a la derecha de la palabra «ECO») provocan un impacto visual autónomo, con el mismo grado de influencia en la impresión general del signo que el elemento verbal, por lo que son aptos para atraer la atención del consumidor.
Elementos verbales combinados con etiquetas comunes/no distintivas
En ocasiones, elementos verbales descriptivos y/o no distintivos se combinan con motivos que, aunque no constituyen simples formas geométricas, son pese a todo etiquetas comunes/no distintivas. Dichas etiquetas no son capaces de imprimirse en la mente del consumidor porque son demasiado simples y/o de uso común en el comercio en relación con los productos/servicios reivindicados. Véase el siguiente ejemplo:
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 116 434 Clase 32(denegada)
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 1 166 164 Servicios de las clases 35, 37y 42
Por lo que respecta a la percepción, por el público pertinente, de la forma y del color de la etiqueta, las etiquetas de precios de colores se utilizan corrientemente en el comercio para todo tipo de productos y servicios. Por consiguiente, el hecho de que la etiqueta de la marca pueda atraer la atención del público no influye en el significado de los elementos denominativos predominantes. Además, este elemento gráfico tiende a reforzar el carácter publicitario de los elementos denominativos en la percepción del público pertinente (sentencia de 03/07/2003, T-122/01, «BEST BUY», apartados 33 y 37).
Tampoco en dichos casos, la inclusión de colores «comunes» (o de una combinación de colores) añade carácter distintivo al signo. Ello es aún más cierto cuando el color reivindicado posee funciones distintas de un mero carácter decorativo.
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Véase, a título de ejemplo, la siguiente marca:
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 10 849 263 Servicios de las clases 35, 36, 38,
41, 42, 43, 44 y 45 (denegada).
La circunstancia de que este tipo de etiquetas se utilicen habitualmente en productos (como licores, turrón, etc.) no basta para otorgar al signo un grado suficiente de carácter distintivo en relación con servicios.
2.4 Signos o indicaciones habituales (artículo 7, apartado 1, letra d), del RMC)
2.4.1 Observaciones generales
El artículo 7, apartado 1, letra d), del RMC excluye del registro a los signos que se compongan exclusivamente de términos o indicaciones que se hayan convertido en habituales en el lenguaje común o en el contexto de las costumbres leales y constantes del comercio en el momento pertinente (véase el apartado 2.4.2 infra). En este contexto, la naturaleza habitual del signo suele referirse a algo diferente de las propiedades o características de los propios productos o servicios.
Aunque hay un claro solapamiento entre el ámbito de aplicación del artículo 7, apartado 1, letra d) y el artículo 7, apartado 1, letra c), del RMC, los signos que contempla el artículo 7, apartado 1, letra d), del RMC se excluyen del registro no por ser descriptivos, sino por su uso vigente en los sectores comerciales que cubren los productos o servicios para los que se solicita la marca (sentencia de 04/10/2001, C-517/99, «Bravo», apartado 35).
Además, los signos o las indicaciones que se han convertido en habituales en el lenguaje común o en las costumbres leales y constantes del comercio para designar los productos o servicios que cubre ese signo no tienen la capacidad de distinguir los productos o servicios de una empresa de los de otras empresas y, por tanto, no cumplen la función esencial de una marca (sentencia de 16/03/2006, T-322/03, «WEISSE SEITEN», apartado 52).
Este motivo de denegación también abarca palabras que inicialmente no tenían significado o que tenían un significado diferente, por ejemplo, «weiße Seiten» (= «páginas blancas»). También incluye determinadas abreviaturas que han pasado a formar parte del lenguaje informal o de la jerga y, por consiguiente, se han convertido en habituales en el comercio.
Asimismo, una denegación basada en el artículo 7, apartado 1, letra d), del RMC también abarca los elementos figurativos que o bien usaron a menudo pictogramas o indicaciones similares o que se han convertido en la designación normal de productos
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o servicios, como una «P» blanca sobre fondo azul para las plazas de aparcamiento, el báculo de Esculapio para las farmacias, o la silueta de un cuchillo y un tenedor para los servicios de los restaurantes. .
Signo Justificación Asunto
Marca comunitaria nº 9 894 528, que cubre productos de la clase 9
«Este dispositivo es idéntico al símbolo internacionalmente conocido como “de alta tensión” o “precaución: riesgo de descarga electríca”. La ISO 3864 lo ha definido como el símbolo normalizado para indicar alta tensión, mientras que el dispositivo para el que se solicita registro está dentro del triángulo, lo que denota que es un símbolo de peligro [...] En consecuencia, dado que coincide esencialmente con el símbolo internacional utilizado para indicar que existe riesgo de alta tensión, la Sala considera que no se puede admitir su registro como marca comunitaria de conformidad con el artículo 7, apartado 1, letra d), del RMC (apartado 20).
R 2124/2011-5
2.4.2 Fecha en que un término se ha convertido en usual
El carácter usual debe examinarse en relación con la fecha de presentación de la solicitud de la marca comunitaria (sentencias de 05/03/2003, T-237/01, «BSS», apartado 46, y de 05/10/2004, C-192/03, apartados 39-40). La cuestión de si un término o un elemento figurativo carecía de carácter descriptivo o era distintivo mucho tiempo antes de esa fecha, o en el momento en que se adoptó por primera vez, será en la mayoría de los casos irrelevante, dado que no demuestra necesariamente que el signo en cuestión no se hubiera convertido en usual en la fecha de presentación de la solicitud (sentencia de 05/03/2003, T-237/01, «BSS», apartado 47).
En algunos casos, un signo objeto de solicitud puede convertirse en usual a partir de la fecha de presentación de la solicitud. Los cambios de significado de un signo que lleven a que se convierta en usual tras la fecha de presentación de la solicitud no conllevan una declaración de nulidad ex tunc de conformidad con el artículo 52, apartado 1, letra a), del RMC, sino que pueden llevar a una declaración de caducidad con efecto ex nunc de conformidad con el artículo 51, apartado 1, letra b), del RMC. Por ejemplo, la marca comunitaria registrada «STIMULATION» fue anulada porque se había convertido en un término de uso habitual en relación con bebidas energéticas.
2.4.3 Apreciación de los términos habituales
La cuestión de si una marca es habitual debe examinarse, en primer lugar, mediante la referencia a los productos o servicios en relación con los que se solicita el registro y, en segundo lugar, sobre la base de la percepción que tiene de la marca el público destinatario (sentencia de 07/06/2011, T-507/08, «16PF», apartado 53).
Por lo que respecta al público pertinente, el carácter habitual debe examinarse teniendo en cuenta las expectativas que se espera que tenga el consumidor medio, a quien se considera normalmente informado y razonablemente atento y perspicaz, en
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relación con el tipo de productos en cuestión (sentencia de 16/03/2006, T-322/03, «Weisse Seiten», apartado 50).
No obstante, en los casos en los que participan intermediarios en la distribución al consumidor o usuario final de un producto, el público pertinente que ha de tenerse en cuenta al determinar el carácter habitual del signo comprende no sólo a todos los consumidores y usuarios finales, en función de las características del mercado que se trate, todas las partes del sector que se dedican a la comercialización del producto en cuestión (sentencias de 29/04/2004, C-371/02, «Bostongurka», apartado 26, y sentencia de 06/03/2014, C-409/12, «Kornspitz», apartado 27).
El Tribunal General ha declarado que el artículo 7, apartado 1, letra d), del RMC no es aplicable cuando el signo en el mercado lo utiliza un solo operador (distinto del solicitante de la marca comunitaria) (sentencia de 07/06/2011, T-507/08, «16PF»). En otras palabras, una marca no se considerará usual sólo por el mero hecho de que un competidor del solicitante de la marca comunitaria utiliza también el signo en cuestión. Para demostrar el carácter usual es preciso que el examinador aporte pruebas (que suelen provenir de Internet) de que el consumidor pertinente ha visto la marca en un contexto ajeno al de las marcas y que, como consecuencia, reconocerá su sentido usual en relación con los productos y servicios reivindicados.
Por lo que respecta a la relación con los productos y servicios para los que se solicita registro, el artículo 7, apartado 1, letra d), del RMC no será de aplicación cuando la marca consista en un término laudatorio más general que no guarde ninguna relación particular con los productos y servicios de que se trata (véase la sentencia de 04/10/2001, C-517/99, «Bravo», apartados 27 y 31).
2.4.4 Aplicabilidad del artículo 7, apartado 1, letra d), del RMC a nombres de variedades vegetales
La cuestión del carácter genérico puede suscitarse con ocasión del examen de marcas que consistan exclusivamente en el nombre de una variedad vegetal que no esté registrada de manera simultánea en la Oficina Comunitaria de Variedades Vegetales, con arreglo al Reglamento nº 2100/94. En este caso, la marca podría suscitar objeciones de conformidad con el artículo 7, apartado 1, letra f), del RMC. Por consiguiente, si las pruebas disponibles demuestran que un determinado nombre de variedad vegetal se ha convertido en usual en la Unión Europea como denominación genérica de la variedad de que se trate, los examinadores – además de formular una objeción a la marca solicitada con arreglo al artículo 7, apartado 1, letra c) y b), del RMC sobre la base de que la marca solicitada es descriptiva – también deberán formular una objeción con arreglo al artículo 7, apartado 1, letra d), del RMC basándose en el motivo adicional de que la marca consiste exclusivamente en un término que se ha convertido en genérico en el sector comercial de que se trate de la Unión Europea. Véanse los apartados 2.3.2.10 y 2.6.1.2, Denominaciones de variedades vegetales.
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2.5 Formas con una función esencialmente técnica, valor estético significativo o impuestas por la naturaleza del producto (artículo 7, apartado 1, letra e) del RMC
2.5.1 Observaciones generales
El artículo 7, apartado 1, letra e), del RMC excluye del registro los signos constituidos exclusivamente por: (i) la forma impuesta por la naturaleza del propio producto, (ii) la forma del producto necesaria para obtener un resultado técnico, o (iii) la forma que afecte al valor intrínseco del producto.
Del texto de esta disposición se deduce que no es de aplicación a los signos para los que se solicita registro en relación con los servicios.
Procede tener presente que no está justificado formular una objeción al amparo del artículo 7, apartado 1, letra e), del RMC cuando el signo solicitado consiste en una forma combinada con elementos adicionales distintivos (ya sean verbales o figurativos), pues el signo en su conjunto ya no estaría constituido exclusivamente por una forma.
Sin embargo, el artículo 7, apartado 1, letra e), del RMC no establece el tipo de signos que deben considerarse formas en el sentido de dicha disposición. No distingue entre formas tridimensionales, formas bidimensionales o representaciones bidimensionales de formas tridimensionales. Por consiguiente, el artículo 7, apartado 1, letra e), del RMC debe considerarse aplicable a las marcas que reproducen formas, al margen de la dimensión en la que figuren (sentencia de 08/05/2012, T-331/10, «superficie con lunares negros», apartado 24). Por lo tanto, la aplicabilidad del artículo 7, apartado 1, letra e), del RMC no se circunscribe a las formas tridimensionales.
Es preciso señalar a este respecto que, conforme a reiterada jurisprudencia, la clasificación de una marca como «figurativa» no excluye en todo caso la aplicabilidad de los motivos de denegación previstos en el artículo 7, apartado 1, letra e), del RMC. El Tribunal de Justicia y el Tribunal General han declarado que la jurisprudencia desarrollada en relación con marcas tridimensionales constituidas por el aspecto del propio producto, también se aplica a marcas «figurativas» constituidas por la representación bidimensional del producto (sentencias de 22/06/2006, C-25/05 P, «Envoltorio de caramelo», apartado 29 y de 04/10/2007, C-144/06, «Pastillas», apartado 38).
El artículo 7, apartado 3, del RMC establece claramente que las formas impuestas por la naturaleza del propio producto (existentes en la naturaleza o fabricadas), las formas esencialmente funcionales o aquellas que afectan al valor intrínseco del producto no pueden salvar una objeción formulada al amparo del artículo 7, apartado 1, letra e), del RMC demostrando que han adquirido carácter distintivo. Por consiguiente, la protección de marca quedará excluida cuando una forma esté comprendida en el ámbito de aplicación del artículo 7, apartado 1, letra e), del RMC, al margen de que dicha forma en particular haya adquirido efectivamente carácter distintivo en el mercado.
A este respecto, ha de señalarse que el Tribunal de Justicia, en su sentencia de 20/09/2007, C-371/06, «BENETTON», relativa a la interpretación del artículo 3, apartado 1, letra e), tercer guión, de la Primera Directiva 89/104 (Directiva sobre marcas) (idéntico al artículo 7, apartado 1, letra e), del RMC) declaró que la forma de un producto que dé un valor sustancial a éste no puede constituir una marca con
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arreglo al artículo 3, apartado 3, de la Directiva (idéntico al artículo 7, apartado 3, del RMC) incluso cuando, antes de la solicitud de registro, haya adquirido una fuerza atractiva por el hecho de su notoriedad como signo distintivo, a raíz de campañas publicitarias que pongan de manifiesto las características concretas del producto de que se trate.
Asimismo, el Tribunal de Justicia, en su sentencia de 08/04/2003, C-53/01, C-54/04 y C-55/01, «Linde», apartado 44, declaró que dado que el artículo 3, apartado 1, letra e), de la Directiva es un obstáculo preliminar que puede impedir que se registre un signo constituido exclusivamente por la forma de un producto, se desprende de él que, si se cumple uno solo de los criterios mencionados en dicha disposición, no puede registrarse como marca un signo de este tipo.
El Tribunal también señaló que, si se supera este obstáculo preliminar, sigue siendo necesario comprobar si debe denegarse el registro del signo tridimensional constituido por la forma de un producto en virtud de una o varias de las causas de denegación contenidas en el artículo 3, apartado 1, letras b) a d) (sentencias C-53/01, C-54/04 y C-55/01, «Linde», apartado 45).
Si el examen de un signo con arreglo al artículo 7, apartado 1, letra e), del RMC lleva a la conclusión de que se cumple uno de los requisitos establecidos en dicha disposición, ya no será necesario analizar si el signo ha adquirido carácter distintivo por el uso, dado que una objeción formulada con arreglo al artículo 7, apartado 1, letra e), del RMC no puede salvarse invocando el artículo 7, apartado 3, del RMC (sentencia de 6 de octubre de 2011, T-508/08, «Representación de un altavoz», apartado 44). Ello explica la ventaja que entraña realizar un examen previo del signo con arreglo al artículo 7, apartado 1, letra e), del RMC cuando resulten aplicables varios motivos de denegación absolutos previstos en el artículo 7, apartado 1, del RMC.
En consecuencia, para lograr una gestión sólida y eficiente, y una economía procesal, se solicita a los examinadores que formulen todas las objeciones al registro del signo con arreglo al artículo 7, apartado 1, del RMC, incluido el artículo 7, apartado 1, letra e), del RMC, tan pronto como consideren que procede aplicarlo.
Por consiguiente, cuando el signo para el que se solicita registro esté constituido por una forma que el público destinatario pueda considerar meramente funcional y que no se aleja de manera significativa de los usos del ramo, el examinador debe plantear una objeción con arreglo al artículo 7, apartado 1, letras e) y b), del RMC, aunque las pruebas relativas a la falta de carácter distintivo tengan más peso que las referidas al carácter funcional.
No obstante, también podría suceder que, tras una objeción inicial formulada exclusivamente de conformidad con el artículo 7, apartado 1, letras b) y/o c), del RMC, las pruebas presentadas por el solicitante demuestren que las características esenciales de la forma de que se trate tienen un fin técnico o que la forma da un valor intrínseco a los productos. En dichos casos, deberá formularse también otra objeción de acuerdo con el artículo 7, apartado 1, letra e), incisos ii) o iii), para que el solicitante pueda presentar observaciones al respecto. En dichos supuestos, el solicitante sólo podrá intentar salvar la objeción con argumentos, pues las pruebas del carácter distintivo adquirido no serán tomadas en consideración en el marco de una objeción al amparo del artículo 7, apartado 1, letra e), del RMC.
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2.5.2 Forma impuesta por la naturaleza de los productos
Conforme al artículo 7, apartado 1, letra e), inciso i), del RMC, no pueden registrarse los signos constituidos exclusivamente por la forma impuesta por la naturaleza del propio producto.
Este motivo de denegación sólo se aplicará cuando la marca solicitada, ya sea bidimensional o tridimensional, esté constituida exclusivamente por la única forma natural posible para los productos (fabricados o existentes en la naturaleza), por ejemplo, la representación realista que se muestra a continuación de un plátano para plátanos:
Ha de señalarse que cuando un determinado producto pueda adoptar varias formas, no es adecuado plantear una objeción con arreglo al artículo 7, apartado 1, letra e), inciso i), del RMC, pues no existe una sola forma posible natural para los productos. Por ejemplo, sería inadecuado aplicar este motivo de denegación a la forma que consta a continuación del cabezal de una maquinilla de afeitar eléctrica cuando la especificación se refiera a «maquinillas de afeitar eléctricas», pues no todas ellas deben fabricarse forzosamente con esta configuración:
No obstante, es posible que puedan aplicarse otros motivos de denegación como, en este caso, una objeción con arreglo al artículo 7, apartado 1, letra e), inciso ii), del RMC, porque la forma en cuestión es funcional en sus características básicas (sentencia de 18/06/2002, C-299/99, «Philips»).
En todos los casos en los que la marca comunitaria solicitada esté constituida exclusivamente por la forma de los productos impuesta por su naturaleza, también podrá formularse una objeción de conformidad con el artículo 7, apartado 1, letra c), del RMC, alegando que la forma de que se trata es descriptiva de la naturaleza de los productos.
2.5.3 Forma de los productos necesaria para obtener un resultado técnico
El artículo 7, apartado 1, letra e), inciso ii), del RMC excluye del registro los signos constituidos exclusivamente por la forma del producto necesaria para obtener un resultado técnico.
El Tribunal de Justicia ha dictado dos sentencias principales en relación con las formas esencialmente funcionales que brindan orientación para examinar las marcas
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constituidas exclusivamente por formas funcionales (sentencias de 18/06/2002, C-299/99, «Philips», y de 14/09/2010, C-48/09 P, «Bloque de Lego rojo»), en las que interpreta, entre otros, los artículos 3, apartado 1 de la Directiva, idéntico al artículo 7, apartado 1), del RMC.
Por lo que respecta al signo anterior, el Tribunal de Justicia declaró que en cuanto a los signos constituidos exclusivamente por la forma del producto necesaria para obtener un resultado técnico, el objetivo del artículo 3, apartado 1, letra e), segundo guión, de la Directiva es denegar el registro de formas cuyas características esenciales respondan a una función técnica, porque la exclusividad inherente al derecho de marca obstaculizaría la posibilidad de que los competidores ofrecieran un producto que incorporase esa función o, al menos, eligiesen libremente la solución técnica que desearan adoptar para incorporar dicha función en su producto (sentencia de 18/06/2002, C-299/99, «Philips», apartado 79).
Procede señalar que el artículo 7, apartado 1, letra e), inciso ii), del RMC, al referirse a los signos constituidos «exclusivamente» por la forma del producto «necesaria» para obtener un resultado técnico, tiene por objeto garantizar que únicamente se deniegue el registro de las formas de producto que no hacen sino incorporar una solución técnica y cuyo registro como marca obstaculizaría realmente, por ello, la utilización de esa solución técnica por otras empresas (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartado 48).
Un signo estará constituido «exclusivamente» por la forma del producto necesaria para obtener un resultado técnico cuando todas las características esenciales de la forma responden a una función técnica, sin que tenga pertinencia, a estos efectos, la inclusión de características no esenciales sin función técnica (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartado 51). El hecho de que puedan existir formas alternativas, que tengan otras dimensiones u otro diseño y que permitan obtener el mismo resultado técnico, no trae como consecuencia excluir la aplicación de esta disposición (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartados 53 a 58).
Sin embargo, el artículo 7, apartado 1, letra e), inciso ii) no puede aplicarse si la forma de los productos incorpora un elemento no funcional importante, como un elemento ornamental o de fantasía que desempeña un papel importante en esa forma (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartado 52).
Por el contrario, la presencia de uno o de algunos elementos arbitrarios menores en un signo tridimensional cuyos elementos esenciales están dictados en su totalidad por la solución técnica a la que ese signo da expresión no influye en la apreciación de que dicho signo está constituido exclusivamente por la forma del producto necesaria para obtener un resultado técnico (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartado 52).
Una aplicación correcta del artículo 7, apartado 1, letra e), inciso ii), del RMC implica que se identifiquen debidamente las características esenciales del signo tridimensional
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de que se trate. La expresión «características esenciales» debe entenderse en el sentido de que se refiere a los elementos más importantes del signo (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartados 68 y 69).
La identificación de dichas características esenciales debe efectuarse caso por caso. Además, el examinador puede basar su apreciación directamente en la impresión global ofrecida por el signo, o bien proceder, en un primer momento, a un examen consecutivo de cada uno de los elementos constitutivos del signo (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartado 70).
A diferencia de la situación que cubre el artículo 7, apartado 1, letra b), del RMC, el modo en que se considera que el consumidor medio percibirá el signo no es un elemento decisivo al aplicar el motivo de denegación con arreglo al artículo 7, apartado 1, letra e), inciso ii), del RMC, sino que, como máximo, puede constituir un criterio de apreciación pertinente para el examinador cuando éste identifique las características esenciales del signo (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartado 76).
Una vez identificadas las características esenciales del signo, corresponde aún a la autoridad competente comprobar si todas estas características responden a la función técnica del producto en cuestión (sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», apartado 72).
A la hora de examinar una solicitud de marca comunitaria en virtud del artículo 7, apartado 1, letra e), inciso ii), debe tomarse en consideración el significado de la expresión «resultado técnico». Dicha expresión debe interpretarse en sentido amplio y comprenderá, por ejemplo, formas que:
encajen en otro artículo otorguen la máxima fuerza utilicen el menor material posible faciliten el almacenamiento y transporte cómodo.
Uno de los asuntos más importantes en relación con formas esencialmente funcionales tuvo que ver con la forma de un bloque de construcción de un juguete.
En este caso, después de un procedimiento de anulación, dos instancias de la Oficina (en primer lugar la División de Anulación y en segundo lugar la Gran Sala) anularon la marca comunitaria nº 107 029 para el signo tridimensional que figura infra en relación con «juegos de construcción» comprendidos en la clase 28:
Signo Marca comunitaria nº Productos y servicios
Marca comunitaria nº 107 029 Clase 28(juegos de construcción)
En particular, la Gran Sala consideró que todas las distintas características del «Bloque Lego rojo» cumplen funciones técnicas concretas, es decir: (i) las proyecciones [tacos]: su altura y diámetro afectan a la capacidad de agarre; su número
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afecta a la versatilidad de la fijación; su diseño afecta a la disposición de la fijación; (ii) las proyecciones secundarias: su capacidad de agarre; su número permite obtener la capacidad de agarre óptima en todas las posiciones; el grosor de la pared actúa como un resorte; (iii) lados: se conectan a los lados de otros bloques para formar una pared; (iv) bordes huecos: se engranan con las proyecciones y proporcionan fijación para la capacidad de agarre; y (v) forma general: forma de bloque para construcción; tamaño correcto para la mano de un niño (resolución de 10/07/2006, R 856/2004-G, apartado 54).
El Tribunal General desestimó el recurso contra la anterior resolución, confirmó las conclusiones de la Gran Sala y declaró que ésta había aplicado correctamente el artículo 7, apartado 1, letra e), inciso ii), del RMC (sentencia de 12/11/2008, T-270/06, «Bloque de Lego rojo»).
En virtud de un recurso, el Tribunal de Justicia, en su sentencia de 14/09/2010, C-48/09 P, «Bloque de Lego rojo», confirmó la sentencia del Tribunal General, y señaló que
[…] la solución incorporada en la forma del producto examinada es la técnicamente preferible para la categoría de productos de que se trata. Si el signo tridimensional constituido por tal forma se registrara como marca sería difícil que los competidores del titular de ésta comercializaran formas de producto que fueran verdaderas alternativas, es decir, formas que no fueran similares y que, no obstante, fueran interesantes desde el punto de vista funcional para el consumidor (apartado 60).
Lo que es más importante, el Tribunal de Justicia aclaró que las características esenciales de una forma deben identificarse del modo más objetivo posible con el fin de aplicar el artículo 7, apartado 1, letra e), inciso ii), del RMC. El Tribunal de Justicia añadió que dicha identificación puede realizarse, según el caso y a la luz de su grado de complejidad, mediante un simple análisis visual de ese signo o, por el contrario, fundarse en un examen minucioso en el que se tengan en cuenta elementos útiles para la apreciación, como investigaciones y peritajes, o incluso datos relativos a los derechos de propiedad intelectual conferidos anteriormente en relación con el producto de que se trate (apartado 71).
Asimismo, el Tribunal de Justicia declaró que
[l]a funcionalidad técnica de las características de una forma puede apreciarse, en particular, teniendo en cuenta la documentación relativa a las patentes anteriores que describe los elementos funcionales de la forma de que se trate (apartado 85).
Por consiguiente, el hecho de que la forma de que se trata sea o haya sido objeto de una reivindicación en una patente concedida o en una solicitud de patente constituye una prueba prima facie de que los aspectos de la forma considerados funcionales en la reivindicación de patente son necesarios para obtener un resultado técnico (las Salas de recurso han adoptado este enfoque, por ejemplo, en su resolución de 17/10/2013 en el asunto R 42/2013-1).
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Un asunto relativo a la siguiente forma objeto de solicitud para «cuchillos y mangos de cuchillos» constituye un ejemplo de cómo identificar las características esenciales de una forma y cómo apreciar si todas ellas desempañan una función técnica:
Signo Asunto
Sentencia de 19/09/2012, T-164/11 «Forma de mango de cuchillo»
En este caso, la forma objeto de solicitud se describió en los siguientes términos
[...] un mango de cuchillo ligeramente curvado caracterizado por un pequeño ángulo de entre 5 a 10 grados entre la lama del cuchillo y el eje longitudinal de la empuñadura, que contiene una parte central ligeramente redondeada en la sección transversal que se ensancha hacia un tope final estrecho. El mango también incluye en la empuñadura del cuchillo un tornillo moleteado.
El Tribunal declaró que
de la patente [que invoca el solicitante de anulación] se desprende claramente que el efecto técnico del ángulo existente entre la lama del cuchillo y el eje longitudinal del mango de madreperla consiste en facilitar el corte. La sección intermedia es particularmente importante para realizar cortes largos. Los hace más precisos y permite imprimir mayor presión. Por último, el tornillo moleteado permite abrir la empuñadura y cambiar las lamas del cuchillo sin utilizar otras herramientas y sin obstaculizar la manipulación del cuchillo durante su uso (apartado 30).
Asimismo, concluyó que los elementos más importantes del signo, que constituyen sus características esenciales, eran exclusivamente funcionales (apartado 33).
2.5.4 Forma que afecta al valor intrínseco del producto
En virtud del artículo 7, apartado 1, letra e), inciso iii), del RMC, los signos que estén constituidos exclusivamente por la forma que afecta al valor intrínseco de los productos no pueden ser registrados y, de serlo, pueden ser anulados.
Aunque la misma forma puede estar protegida, en principio, como un dibujo o modelo y como una marca, procede señalar que el artículo 7, apartado 1, letra e), inciso iii), del RMC únicamente deniega la protección de marca a formas en determinados casos concretos, en particular, cuando el signo esté constituido exclusivamente por una forma que afecte al valor intrínseco del producto.
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El concepto de «valor» debe interpretarse no sólo desde el punto de vista comercial (económico), sino también desde el de su «capacidad de atracción», es decir, la posibilidad de que los productos se compren fundamentalmente debido a su forma particular. No obstante, el concepto no debe interpretarse en el sentido de «reputación», ya que la aplicación de este motivo de denegación absoluto se justifica exclusivamente por el efecto que tiene en el valor que añade a los productos la forma y no otros factores, como la reputación de la marca denominativa que se utiliza también para identificar los productos en cuestión (véase a este respecto la resolución de 16/01/2013 en el asunto R 2520/2011-5, apartado 19).
Como reiteró el Tribunal, el fin próximo de la prohibición de acceso al registro de las formas que otorgan un valor sustancial al producto es el mismo que en el caso de las formas meramente funcionales, es decir, evitar que el derecho exclusivo y permanente que proporciona una marca pueda servir para prolongar la vigencia de otros derechos que el legislador ha querido sujetar a «plazos de caducidad» (sentencia de 6 de octubre de 2011, T-508/08, «Representación de un altavoz», apartado 65).
Hasta la fecha, el asunto principal en relación con el valor intrínseco que confieren las formas a los productos versa sobre la representación tridimensional de un altavoz que figura infra.
Signo Asunto Productos
Resolución de 10/09/2008, R 497/2005-1
Sentencia de 06/10/2011, T-508/08,
«Representación de un altavoz»
Además de altavoces, otros aparatos para la recepción, el tratamiento, la reproducción, la regulación o la distribución de
señales sonoras comprendidos en la clase 9, así como el
mobiliario para equipos de alta fidelidad de la clase 20.
El Tribunal General, en su sentencia de 06/10/2011, T-508/08, «Representación de un altavoz», confirmó la resolución de la Sala por la que se consideraba que el signo en cuestión quedaba incluido en el ámbito de aplicación del artículo 7, apartado 1, letra e), inciso iii), del RMC. Esta ha sido, hasta el momento, la única sentencia de los órganos jurisdiccionales europeos en la que se aborda el fondo de la cuestión de la forma ornamental que afecta al valor intrínseco de los productos.
El Tribunal consideró que para productos como los enumerados supra, el diseño constituía un elemento de gran importancia en la elección del consumidor, aunque éste tomara igualmente en consideración otras características del referido producto. Tras declarar que la forma para la que se había solicitado el registro había revelado un diseño muy especial que era un elemento esencial de la estrategia de marca del solicitante y que hacía que el producto en cuestión fuera más atractivo, y por consiguiente, que aumentara su valor, el Tribunal señaló que de los documentos que obraban en autos, es decir, de los extractos de sitios de Internet de distribuidores, de subastas o de venta de productos de segunda mano, se desprendía que ante todo se destacan las características estéticas de dicha forma y que tal forma se percibía como un tipo de escultura pura, alargada e intemporal para la reproducción de música, lo cual, en realidad, la convertía en un elemento esencial como argumento para la promoción de ventas (apartado 75). Por consiguiente, el Tribunal concluyó que,
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independientemente de las demás características del producto en cuestión, la forma para la que se solicitó el registro confería valor intrínseco a dicho producto.
De la sentencia anterior se desprende que es importante determinar si el valor estético de una forma puede determinar, por sí solo, el valor comercial del producto y la elección en sentido amplio del consumidor. Carece de importancia que el valor total del producto también se vea afectado por otros factores, siempre que el valor que aporta la forma sea sustancial en sí mismo.
En la práctica, este motivo de denegación se aplicará principalmente en relación con productos en los que la forma del objeto de que se trata es el factor principal, aunque no necesariamente exclusivo, que determina la decisión de compra. Así sucederá, por ejemplo, con obras de arte y artículos como joyería, jarrones y otros objetos adquiridos principalmente por su valor estético asociado a su forma.
Por otra parte, el hecho de que la forma sea agradable o atractiva no basta para excluir su registro. En tal caso, sería prácticamente imposible imaginar una marca de una forma, dado que en la actividad comercial moderna no existe ningún producto de utilidad industrial que no haya sido objeto de un estudio, investigación y diseño industrial antes de su eventual comercialización (resolución de 03/05/2000, R 0395/1999-3, «Gancino quadrato singolo», apartados 1 y 2 y 22 a 36).
Por ejemplo, la Sala consideró que la siguiente forma no afecta al valor intrínseco de los productos:
Signo Asunto
Resolución de 14/12/2010, R 0486/2010-2 «Forma de una silla»
La Sala consideró que, pese a que la forma anterior era estéticamente agradable y atractiva a la vista, no se alejaba suficientemente de los usos de presentación de sillas en vigor en la fecha de presentación de la solicitud. Asimismo entendió que la silla también se adquiría para sentarse en ella y para ser usada como una pieza de mobiliario de oficina cómoda en casa o en el lugar de trabajo. Distinguió este caso del citado caso «Altavoz», poniendo de manifiesto que características tales como el hecho de que el respaldo estuviera curvado y ofreciera apoyo lumbar y que los reposabrazos también incrementasen el confort al igual que las cuatro ruedas de las patas, eran visibles en esta forma, a diferencia de las características técnicas del altavoz, en la sentencia «Altavoz».
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La Sala consideró que la circunstancia de ser un «icono del diseño» invocada por el titular de la marca comunitaria con respecto a la silla arriba indicada no demostraba automáticamente que el valor del producto radicaba en primer lugar en su forma, sino que era el resultado de que la silla tenía un diseño sólido, cómodo y ergonómico que se ha hecho famoso, en particular, a raíz de importantes esfuerzos de marketing realizados a lo largo de los años.
La Sala también señaló que el titular de la marca comunitaria no había alegado que el valor de la forma radicase en su atractivo visual y que el solicitante de la anulación no había aportado pruebas que demostrasen que los vendedores publicitasen la silla en cuestión basándose principalmente en su aspecto estético (apartados 21 a 23).
Para examinar este tipo de marcas es preciso realizar un análisis caso por caso. En la mayoría de ellos, sólo será posible efectuar un examen apropiado cuando, a raíz de la documentación e información aportada por el solicitante (o un tercero), existan pruebas de que el valor estético de la forma puede determinar, por sí solo, el valor comercial del producto y la elección en sentido amplio del consumidor. Así sucedió precisamente en los dos asuntos arriba indicados: en el asunto «Altavoz», la Sala solo formuló una objeción en este sentido tras analizar cuidadosamente las pruebas presentadas por el solicitante y en el asunto mencionado inmediatamente supra, las pruebas fueron aportadas por el solicitante de anulación pero resultaron insuficientes.
2.6 Carácter distintivo adquirido
2.6.1 Introducción
De conformidad con el artículo 7, apartado 3, del RMC, una marca podrá registrarse en cualquier caso aunque incumpla lo dispuesto en el artículo 7, apartado 1, letras b), c) y d), del RMC, siempre que «la marca hubiere adquirido, para los productos o servicios para los cuales se solicite el registro, un carácter distintivo como consecuencia del uso que se ha hecho de la misma».
El artículo 7, apartado 3, del RMC constituye una excepción a la norma establecida en el artículo 7, apartado 1, letras b), c) o d), del RMC, con arreglo a las cuales, deberá denegarse el registro de las marcas que, per se, carezcan de carácter distintivo, de las marcas descriptivas, y de las marcas que consistan exclusivamente en indicaciones que se hayan convertido en habituales en el lenguaje común o en las costumbres leales y constantes del comercio.
El carácter distintivo adquirido mediante el uso significa que, aunque el signo ab initio carezca de tal carácter distintivo inherente respecto a los productos y servicios reivindicados, a causa del uso que se hace del mismo en el mercado, el público pertinente ha pasado a percibir dicho signo como un elemento identificativo de los productos y servicios objeto de la solicitud de MC como procedentes de una determinada empresa. De este modo, el signo ha adquirido la capacidad de distinguir ciertos productos y servicios de los de otras empresas, porque se perciben como originarios de una empresa concreta. En este sentido, un signo en principio no susceptible de ser registrado con arreglo al artículo 7, apartado 1, letras b), c) o d), del RMC puede adquirir una nueva importancia, y su connotación, que deja de ser meramente descriptiva o no distintiva, le permite superar tales motivos absolutos de denegación del registro como marca que, de otro modo, se habrían aplicado.
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2.6.2 Solicitud
La Oficina examinará el carácter distintivo adquirido si media una solicitud al respecto del solicitante de la marca comunitaria, que podrá formularse en cualquier momento durante el procedimiento de examen.
2.6.3 Fecha a la que deben referirse las pruebas
Las pruebas deberán demostrar que tal carácter distintivo a través del uso se adquirió previamente a la fecha de presentación de la solicitud de MC. En el caso de un RI, la fecha pertinente es la de registro por parte de la Oficina Internacional. Cuando se reivindique prioridad, la fecha considerada será la fecha de prioridad. En lo sucesivo, se aludirá a todas estas fechas como la «fecha de presentación».
2.6.3.1 Procedimientos de examen
Puesto que una marca disfruta de protección desde su fecha de presentación, y dado que la fecha de presentación de la solicitud de registro determina la prioridad de una marca sobre otra, una marca deberá ser registrable en tal fecha. En consecuencia, el solicitante deberá demostrar que el carácter distintivo se ha adquirido mediante el uso de la marca previamente a la fecha de solicitud del registro (sentencia de 11/06/2009, C-542/07P, «PURE DIGITAL», apartados 49 y 51; y sentencia de 07/09/2006, C-108/05, «EUROPOLIS», apartado 22). Los datos que acrediten el uso de la marca con posterioridad a tal fecha no deberán descartarse automáticamente, en la medida en que puedan proporcionar información indicativa respecto a la situación previa a la fecha de solicitud (sentencia de 28/10/2009, T-137/08, «GREEN/YELLOW», apartado 49).
2.6.3.2 Procedimientos de anulación
En los procedimientos de anulación aunque una marca se hubiera registrado contraviniendo lo dispuesto en el artículo 7, apartado 1, letras b), c) o d), del RMC, no podrá ser declarada nula si, por el uso que se haya hecho de ella, hubiera adquirido después de su registro un carácter distintivo respecto a los productos o servicios para los cuales esté registrada (artículo 52, apartado 2, del RMC).
La finalidad precisa de esta norma consiste en mantener el registro de las marcas que, debido al uso que se ha hecho de ellas, han adquirido entretanto (es decir, después de su registro) un carácter distintivo respecto a los productos o los servicios para los cuáles se registraron, a pesar del hecho de que, cuando se efectuó el registro, este contravenía el artículo 7, del RMC (sentencia de 14/12/2011, T-237/10, «Louis Vuitton», apartado 86; y sentencia de 15/10/2008, T-405/05, «MANPOWER», apartado 127).
2.6.4 Consumidor
El carácter distintivo de un signo, incluido el adquirido mediante el uso, debe evaluarse en relación con la supuesta percepción del consumidor medio de la categoría de productos o servicios en cuestión. Estos consumidores se consideran razonablemente bien informados, atentos y perspicaces. La definición del público destinatario está
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vinculada al examen de los destinatarios de los productos o servicios de que se trate, puesto que la marca debe desempeñar su función esencial en relación con ellos. En consecuencia, tal definición debe efectuarse a la luz de la función esencial de las marcas, es decir, garantizar al consumidor o al usuario final la identidad de origen del producto o servicio designado por la marca, permitiéndole distinguir sin confusión posible ese producto o servicio de los que tienen otra procedencia (sentencia de 29/09/2010, T-378/07, «ROJO/NEGRO/GRIS (Superficies exteriores de un tractor)», apartados 33, 38).
Por tanto, el consumidor destinatario incluye no solo a las personas que han adquirido efectivamente los productos y servicios, sino también a toda persona potencialmente interesada, en el sentido estricto de futuros compradores (sentencia de 29/9/2010, T-378/07, «ROJO/NEGRO/GRIS (Superficies exteriores de un tractor)», apartados 41 y siguientes).
Los futuros compradores se definen con arreglo al producto o servicio concreto para el que se procura el registro. Si los productos o servicios reivindicados son generales (por ejemplo, bolsos o relojes), es irrelevante que los productos ofrecidos de manera concreta bajo el signo en cuestión sean artículos de lujo extremadamente caros; el público incluirá a todos los futuros compradores de los productos reivindicados en la solicitud de MC, incluidos los que no sean de lujo y los de menor precio si la reivindicación se refiere a la categoría general.
2.6.5 Productos y servicios
Puesto que una de las funciones principales de una marca es garantizar el origen de los productos y los servicios, el carácter distintivo adquirido debe evaluarse respecto a los productos y servicios de que se trate. En consecuencia, las pruebas del solicitante deberán demostrar la existencia de un vínculo entre el signo y los productos y servicios para los que se solicita dicho signo, estableciendo que los sectores interesados, o al menos una parte significativa de estos, identifican, gracias a la marca, el producto atribuyéndole una procedencia empresarial determinada (sentencia de 04/05/1999, C-108/97 y C-109/97, «CHIEMSEE», apartado 52; y sentencia de 19/05/2009, T-211/06, «CYBERCREDIT et al.», apartado 51).
2.6.6 Aspectos territoriales
En virtud del artículo 1, del RMC, una marca comunitaria tiene un carácter unitario y produce los mismos efectos en el conjunto de la Unión Europea. El artículo 7, apartado 2, del RMC establece que el registro de una marca deberá denegarse si los motivos absolutos solo existieren en una parte de la Unión Europea.
Como consecuencia lógica de lo referido, el carácter distintivo adquirido deberá establecerse en todo el territorio en el que la marca, ab initio, carecía de tal carácter (sentencia de 22/6/2006, C-25/05P, «Envoltorio de caramelo», apartados 83 y 86; y sentencia de 29/09/2010, T-378/07, «ROJO/NEGRO/GRIS (Superficies exteriores de un tractor)», apartado 30).
Esto se debe a que el carácter unitario de la marca comunitaria exige que un signo posea carácter distintivo, inherente o adquirido por el uso, en toda la Unión Europea (sentencia de 17/05/2011, T-7/10, «υγεία», apartado 40). Resultaría paradójico aceptar, por un lado, en virtud del artículo 3, apartado 1, letra b), de la DM, que un Estado miembro tenga que denegar el registro como marca nacional de un signo
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privado de todo carácter distintivo en su territorio y, por otro, que ese mismo Estado miembro deba respetar una marca comunitaria relativa a tal signo por el único motivo de que este ha adquirido un carácter distintivo en el territorio de otro Estado miembro (sentencia de 14/12/2011, T-237/10, «Louis Vuitton», apartado 100).
2.6.6.1 Disposiciones especiales respecto a la adhesión de nuevos Estados miembros
De conformidad con lo dispuesto en los Tratados de Adhesión de la UE, una MC solicitada antes de la fecha de adhesión de un determinado Estado miembro solo podrá denegarse por motivos que ya existían con anterioridad a tal fecha. En este sentido, en los procedimientos de examen de la Oficina, el carácter distintivo adquirido deberá demostrarse únicamente respecto a los Estados miembros de la UE en la fecha de la solicitud de la MC, y no a aquellos que se hayan incorporado a la UE con posterioridad.
2.6.6.2 Marcas en 3D, colores per se y marcas figurativas
Si existe una objeción formulada en toda la Unión Europea, como suele suceder en el caso de las marcas en 3D, los colores per se y las marcas figurativas que consisten exclusivamente en la representación de los productos en cuestión, el carácter distintivo adquirido deberá demostrarse en el conjunto de la Unión Europea. Respecto a la posibilidad de extrapolar las pruebas, véase más adelante el apartado 2.12.8.7.
2.6.6.3 Zona lingüística
En los casos en los que la MC solicitada se deniegue en relación con su significado en una lengua determinada, el carácter distintivo por el uso deberá demostrarse al menos con respecto a los Estados miembros en los que tal lengua sea oficial.
Deberá actuarse con especial precaución cuando una lengua sea oficial en varios Estados miembros de la UE. En tales casos, al tramitar una objeción por motivos absolutos basada en el significado de los términos en una lengua determinada, el carácter distintivo por el uso deberá demostrarse para cada uno de los Estados miembros en los que tal lengua sea oficial (así como en cualquier otro Estado miembro o mercado en el que dichos términos serán entendidos).
(a) Entre los ejemplos de lenguas oficiales en más de un Estado miembro de la UE figuran:
Alemán
El alemán es lengua oficial en Alemania y Austria, así como en Luxemburgo y Bélgica. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en alemán deberá examinarse automáticamente respecto a todos esos países.
Griego
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El griego es lengua oficial no solo en Grecia, sino también en Chipre. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en griego deberá examinarse automáticamente respecto a esos dos países.
Inglés
El inglés es lengua oficial en el Reino Unido, Irlanda y Malta. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en inglés deberá examinarse automáticamente respecto a todos esos países.
Francés
El francés es lengua oficial no solo en Francia, sino también en Bélgica y Luxemburgo. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en francés deberá examinarse automáticamente respecto a todos esos países.
Neerlandés
El neerlandés es lengua oficial no solo en los Países Bajos, sino también en Bélgica. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en neerlandés deberá examinarse automáticamente respecto a esos dos países.
Sueco
El sueco es lengua oficial no solo en Suecia, sino también en Finlandia. Toda reivindicación de que el carácter distintivo adquirido por el uso permite que el signo solicitado salve una objeción por motivos absolutos basada en el significado de los términos en sueco deberá examinarse automáticamente respecto a esos dos países.
(b) Comprensión de la lengua de un Estado miembro en Estados miembros en los que no es oficial
Además de los Estados miembros donde la lengua de los términos de un signo es oficial en la UE, deberá considerarse asimismo si una determinada lengua oficial de la Unión se comprende en otros Estados miembros en los que no es oficial. Tal situación puede darse porque, dependiendo de los productos y servicios designados en la solicitud de MC, el público pertinente en el Estado miembro en cuestión cuente con un conocimiento elemental de la lengua de que se trate, o porque el público pertinente consiste en especialistas que comprenden ciertos términos técnicos en la lengua oficial de otro Estado miembro de la UE. En tal caso, el carácter distintivo adquirido deberá demostrarse respecto al público pertinente en esos otros Estados miembros, y no solo en aquellos en los que la lengua en cuestión es oficial.
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Por ejemplo, el TG determinó que una proporción muy elevada de consumidores y profesionales europeos cuenta con un conocimiento elemental del inglés (sentencia de 26/09/2012, T-301/09, «CITIGATE», apartado 41). En consecuencia, dependiendo del consumidor destinatario de los productos y servicios en cuestión, y de si el signo consiste en un término elemental en inglés o no, es posible que el carácter distintivo adquirido tenga que evaluarse asimismo respecto a otros Estados miembros.
Pasando del público general a otro más especializado para productos y servicios, el TG determinó que ciertos términos ingleses en los ámbitos médico (sentencia de 29/03/2012, T-242/11, «3D eXam», apartado 26), técnico (sentencia de 09/03/2012, T-172/10, «BASE-SEAL», apartado 54) y financiero (sentencia de 26/09/2012,T-301/09, «CITIGATE», apartado 41), serán comprendidos por los profesionales correspondientes en toda la Unión Europea, ya que el inglés es la lengua profesional utilizada comúnmente en tales ámbitos.
Por otro lado, puesto que la comprensión de las lenguas no se encuentra limitada estrictamente por las fronteras geográficas, es perfectamente posible que por razones históricas, culturales o de mercados transfronterizos, cierto vocabulario (normalmente elemental) de una lengua determinada se extienda y pueda ser entendido de manera amplia por el público general de otro Estado miembro, y en particular, de aquéllos con fronteras terrestres en común. Por ejemplo, el alemán y el francés se utilizan habitualmente en las regiones italianas del Trentino-Alto Adigio y del Valle de Aosta, respectivamente.
2.6.7 Qué debe demostrarse
El Tribunal de Justicia ha establecido directrices relativas a las condiciones que deben dar lugar a la determinación de que una marca ha adquirido un carácter distintivo por el uso: «la autoridad competente estima que, gracias a la marca, una parte significativa de los sectores interesados identifica el producto atribuyéndole una procedencia empresarial determinada, dicha autoridad debe extraer la conclusión, en todo caso, de que la condición exigida para el registro de la marca se cumple.» (Véase sentencia de 04/05/1999, C-108/97 y C-109/97, «CHIEMSEE», apartado 45 y siguientes).
En este sentido, las pruebas deben demostrar que una proporción significativa del público destinatario de los productos y servicios reivindicados en el territorio en cuestión percibe la marca como un elemento identificativo de dichos productos o servicios de una empresa determinada; en otras palabras, que el uso dado a la marca ha generado un vínculo en la mente del público pertinente con los productos o servicios de una empresa concreta, con independencia de que los términos en cuestión carezcan del carácter distintivo para crear tal vínculo si tal uso no hubiera tenido lugar.
En lo que atañe al alcance de la penetración en el mercado y el reconocimiento del público destinatario que una marca debe lograr para que se establezca que ha adquirido un carácter distintivo por el uso, en cuanto que se ha convertido en un elemento identificativo de los productos y servicios de una determinada empresa frente a los de otras para el público destinatario, la jurisprudencia no prescribe porcentajes fijos de reconocimiento del mercado para dicho público. En lugar de utilizar un porcentaje fijo del público destinatario en un mercado determinado, las pruebas deben demostrar que una proporción significativa del público percibe la marca como un elemento identificativo de productos o servicios específicos.
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Por último, las pruebas deberán referirse a cada uno de los productos o servicios designados en la solicitud de MC. Tras una objeción inicial por motivos absolutos con arreglo al artículo 7, apartado 1, letras b), c) o d), del RMC, únicamente los productos o servicios designados en la solicitud respecto a los que se haya demostrado su carácter distintivo adquirido por el uso serán registrables.
2.6.8 Las pruebas y su evaluación
Para establecer el carácter distintivo adquirido, podrán tenerse en cuenta las pruebas de los elementos que siguen: la cuota de mercado que posee la marca; la intensidad, la extensión geográfica y la duración del uso de la marca; la importancia de las inversiones realizadas por la empresa para promocionarla; la proporción de los sectores interesados que identifica el producto o servicio atribuyéndole una procedencia empresarial determinada gracias a la marca, así como las declaraciones de cámaras de comercio e industria o de otras asociaciones profesionales (sentencia de 04/05/1999, C-108/97 y C-109/97, «CHIEMSEE», apartado 31; y sentencia de 29/09/2010, T-378/07, «ROJO/NEGRO/GRIS (Superficies exteriores de un tractor)», apartado 32).
La Oficina no está obligada a examinar los hechos que puedan conferir a la marca solicitada un carácter distintivo adquirido por el uso en el sentido del artículo 7, apartado 3, salvo que el solicitante los haya invocado (sentencia de 12/12/2002, T-247/01, «ECOPY», apartado 47).
2.6.8.1 Tipo de pruebas que pueden presentarse
Entre los ejemplos de pruebas que pueden utilizarse para indicar algunos o la totalidad de los factores anteriores, que pueden poner de relieve el carácter distintivo adquirido, figuran elementos como folletos de ventas, catálogos, listas de precios, facturas, informes anuales, cifras de volumen de negocio, cifras e informes de inversión en publicidad, anuncios publicitarios (recortes de prensa, carteles en vallas publicitarias, anuncios en televisión), junto con pruebas de su intensidad y alcance, así como encuestas a clientes o estudios de mercado.
Los solicitantes deberán prestar especial atención en para asegurarse de que las pruebas demuestren no solo el uso de la marca solicitada, sino también que resultan suficientes para identificar las fechas de tal uso y el territorio geográfico específico de la utilización en la UE. Normalmente, las pruebas no fechadas resultarán insuficientes para demostrar que el carácter distintivo se adquirió antes de la fecha de presentación, y las pruebas de uso fuera de la UE no pueden demostrar el reconocimiento del mercado requerido por parte del público destinatario de la Unión. Además, si las pruebas combinan materiales relativos a territorios de la UE, y a otros no pertenecientes a esta, y no permiten a la Oficina identificar el alcance concreto del uso específico en la UE, carecerán igualmente de valor probatorio para el público destinatario de la Unión.
En el artículo 78, del RMC figura una relación no exhaustiva de las diligencias de instrucción en los procedimientos ante la Oficina, que puede servir para la orientación de los solicitantes.
2.6.8.2 Evaluación de pruebas en su conjunto
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Puesto que la Oficina debe evaluar las pruebas en su conjunto (R 0159/2005-4, «Metavit/MEXA-VIT C et al.», apartado 7), no es necesario que ninguna de ellas por separado pueda demostrar el asunto en cuestión. Tal demostración puede derivarse de una evaluación conjunta de todos los elementos de prueba presentados (sentencia de 07/06/2005, T-303/03, «SALVITA», apartado 42; y resolución de 08/03/2006, R 0358/2004-4, «MediQi/MEDICE», apartado 34). Para evaluar el valor probatorio de un documento, debe considerarse su credibilidad. También es necesario tener en cuenta el origen del documento, las circunstancias en las que se llevó a cabo, la persona a la que se dirigió y si el documento parece ser sólido y digno de crédito (sentencia de 07/06/2005, T-303/03, «SALVITA», apartado 42; y sentencia de 16/12/2008, T-86/07, «DEITECH» [marca figurativa], apartados 46 y siguientes).
2.6.8.3 Cuota de mercado
La cuota de mercado de la marca puede resultar relevante para evaluar si esta ha adquirido un carácter distintivo por el uso, en la medida en que tal penetración en el mercado puede capacitar a la Oficina para inferir si el público destinatario reconocería la marca como un elemento identificativo de los productos o servicios de una empresa concreta, distinguiendo estos así de los de otras empresas.
El volumen de publicidad en el mercado correspondiente de los productos o servicios reivindicados (representado por la inversión en publicidad para la promoción de una marca) también puede ser relevante para evaluar si la marca en cuestión ha adquirido un carácter distintivo por el uso (sentencia de 22/06/2006, C-25/05P, «Envoltorio de caramelo», apartados 76 y siguientes). No obstante, muchos intentos de demostrar el carácter distintivo adquirido por el uso fracasan porque las pruebas del solicitante no son suficientes para establecer la existencia de un vínculo entre la cuota de mercado y la publicidad, por un lado, y la percepción del consumidor, por el otro.
2.6.8.4 Encuestas y sondeos de opinión
Las encuestas relativas al nivel de reconocimiento de la marca por el público destinatario en el mercado del que se trate, si se realizan debidamente, pueden constituir uno de los tipos de prueba más directos, ya que sirven para demostrar la percepción real de dicho público. No obstante, no es tarea fácil formular y efectuar de manera correcta una encuesta, de forma que pueda percibirse como un elemento auténticamente neutral y representativo. Las preguntas que sugieren la respuesta, las muestras de población poco representativas y la modificación indebida de las contestaciones deben evitarse, ya que estas prácticas pueden aminorar el valor probativo de tales encuestas.
El TG ha determinado que, en principio, no es inconcebible que una encuesta efectuada poco antes o después de la fecha de presentación pueda contener indicaciones de utilidad, aunque no cabe duda de que su valor probatorio variará probablemente en función de si el período comprendido es cercano o no a la fecha de presentación o de prioridad de la solicitud de marca en cuestión. Asimismo, su valor probatorio dependerá del método de encuesta utilizado (sentencia de 12/07/2006, T-277/04, «VITACOAT», apartados 38 y 39).
En este sentido, toda prueba derivada de una encuesta de opinión deberá evaluarse con cautela. Es importante que las preguntas formuladas sean pertinentes y no sugieran la respuesta. Los criterios para la selección del público entrevistado deberán
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examinarse con detenimiento. La muestra ha de ser indicativa del público destinatario en su conjunto y, en este sentido, deberá seleccionarse aleatoriamente.
También deberán examinarse las pruebas procedentes de asociaciones comerciales independientes, organizaciones de consumidores y competidores. En general, a las pruebas aportadas por proveedores o distribuidores deberá otorgárseles menor peso, puesto que es menos probable que dichas pruebas se faciliten desde la perspectiva de un tercero independiente. En este sentido, el grado de independencia de tales terceros influirá en el peso que deberá otorgarse a dichas pruebas por parte de la Oficina (sentencia de 28/10/2009, T-137/08, «GREEN/YELLOW»).
2.6.8.5 Volumen de negocios y publicidad
La información relativa al volumen de negocios es una de las formas de prueba a las que las empresas pueden acceder con mayor facilidad. Lo mismo ocurre en el caso de los gastos de publicidad.
Estas cifras pueden ejercer un efecto significativo en la evaluación de las pruebas, pero, en la gran mayoría de los casos, no son suficientes por sí solas para demostrar la cuestión del carácter distintivo adquirido por el uso de una marca. Tal insuficiencia obedece a que el volumen de negocios y los costes de publicidad por sí solos, sin otros datos corroborativos adicionales, son con frecuencia demasiado generales para extraer conclusiones concretas acerca del uso de una marca en particular: ha de ser posible identificar con precisión las cifras de facturación y publicidad y las pruebas relativas a la marca solicitada, y los productos o servicios en cuestión también deben ser identificables.
A menudo, los productos y servicios se comercializan bajo varias marcas, lo que dificulta la tarea de determinar cuál es la percepción del cliente destinatario respecto a la marca solicitada en concreto, y la facturación o la publicidad pueden incluir con frecuencia cifras de venta o promoción de otras marcas, o de formas significativamente diferentes de la marca en cuestión (por ejemplo, marcas figurativas en lugar de marcas denominativas, o elementos escritos distintos en una marca figurativa), o son demasiado generales para permitir la identificación de los mercados específicos objeto de consideración. En consecuencia, puede que las cifras de facturación o publicidad consolidadas de manera general no basten para probar si el público pertinente percibe la marca en cuestión como una indicación del origen o no.
Cuando se aportan cifras de facturación o publicidad, estas deben corresponder no sólo a la marca cuyo registro se procura, sino también específicamente a los productos o servicios designados por tal marca. Sería conveniente que las cifras de facturación se presenten divididas por años y por mercados. Los períodos específicos de uso (incluidos los datos pormenorizados relativos a la fecha de comienzo de tal uso) deben demostrarse mediante pruebas, de modo que la Oficina pueda cerciorarse de que estas prueban que la marca adquirió un carácter distintivo antes de la fecha de presentación.
2.6.8.6 Pruebas de uso indirectas
Las pruebas podrán contener o consistir en registros obtenidos en un Estado miembro sobre la base de la adquisición del carácter distintivo.
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La fecha a la que se refieren las pruebas presentadas a escala nacional suele diferir de la fecha de presentación de la solicitud de MC. Tales registros podrán tenerse en cuenta, aunque no son vinculantes, cuando el examinador pueda evaluar las pruebas que se aportaron a la oficina nacional de la PI.
2.6.8.7 Extrapolación
Otra cuestión importante en la evaluación de las pruebas es si la Oficina puede servirse de la extrapolación basada en una cierta selección de las mismas para extraer conclusiones más amplias. A tal efecto, es relevante la medida en que las pruebas que demuestran el carácter distintivo adquirido por el uso en ciertos Estados miembros pueden utilizarse para sacar conclusiones respecto a la situación del mercado en otros Estados miembros no considerados en tales pruebas.
Extrapolar de este modo para extraer conclusiones más generales reviste especial importancia para una Unión Europea ampliada que comprende numerosos Estados miembros, ya que es muy poco probable que una parte pueda aportar pruebas relativas a la Unión Europea en su conjunto, y tenderá más bien a concentrarse en determinadas áreas.
La extrapolación es posible en los casos en los que el mercado es homogéneo y si se aportan al menos algunas pruebas. Las condiciones de los mercados y los hábitos de los consumidores han de ser comparables. En consecuencia, reviste especial importancia que el solicitante presente datos relativos al tamaño del mercado, a la cuota de mercado propia, y, si es posible, a la de sus principales competidores, así como a sus gastos de comercialización. Únicamente si todos los datos son comparables, la Oficina podrá extrapolar los resultados de un territorio a otro. Por ejemplo, si la MC se utiliza en todo el territorio en cuestión, pero las pruebas se refieren únicamente a una parte del mismo, la inferencia es posible si las circunstancias son comparables. Sin embargo, si la MC sólo se utiliza en parte del territorio en cuestión (y las pruebas se refieren a este), normalmente resultará difícil extrapolar tales datos a otras partes del territorio.
2.6.8.8 Modo de uso
Las pruebas deben ofrecer ejemplos del modo en que se usa la marca (en folletos, embalajes, muestras de los productos etc.). No se debe conceder peso alguno al uso de una marca sustancialmente diferente.
A veces se da el caso de que el uso mostrado corresponde a un signo que, aunque similar a la marca cuyo registro se solicita, es en sí mismo distinto. En estos casos tales pruebas se deben desestimar. El carácter distintivo adquirido debe demostrarse respecto al signo solicitado. No obstante, de conformidad con el artículo 15, apartado 1, letra a), del RMC, podrán permitirse las modificaciones de menor importancia del signo que no alteren el carácter distintivo del mismo (resolución de 15/01/2010, R 0735/2009-2, «PLAYNOW», y resolución de 0 9/02/2010, R 1291/2009-2, «EUROFLORIST»).
Es posible demostrar el carácter distintivo adquirido de un signo que se ha utilizado junto con otras marcas (sentencia de 28/10/2009,T-137/08, «Green/Yellow», apartado 27), siempre que el consumidor destinatario atribuya al signo en cuestión la función de identificación (sentencia de 07/07/2005, C-353/03, «HAVE A BREAK»;
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sentencia de 30/09/2009 T-75/08, «!» [marca figurativa], apartado 43; y sentencia de 28/10/2009, T-137/08, «GREEN/YELLOW», apartado 46).
2.6.8.9 Duración del uso
Las pruebas deben indicar cuándo comenzó el uso y han de demostrar asimismo que este fue continuo, o indicar los motivos si existieron interrupciones en el período de uso.
Por regla general, es probable que el uso prolongado de la marca sea un importante factor de persuasión en el establecimiento del carácter distintivo adquirido. Cuanto más tiempo hayan visto los clientes y posibles clientes la marca, mayor probabilidad habrá de que la vinculen con una fuente particular en el mercado.
No obstante, habida cuenta de que la duración del uso es sólo uno de los factores que deben tenerse en consideración, puede haber situaciones en las que estarían justificadas las excepciones a la regla anterior, en particular si intervienen otros factores que compensan la brevedad del uso. Por ejemplo, si los productos o servicios son objeto de una campaña publicitaria importante y/o el signo para el que se ha solicitado registro es una mera variante de un signo con un uso prolongado, podría suceder que el carácter distintivo adquirido se lograra con rapidez.
Podría ser el caso de la salida al mercado de la nueva versión de un sistema operativo para equipos informáticos de uso muy generalizado, en la que se reprodujera esencialmente la estructura y/o los contenidos de la marca aplicados en las versiones previas del producto. La marca para un producto de estas características podría alcanzar un carácter distintivo adquirido muy amplio en un plazo bastante corto, sólo porque todos los usuarios existentes sabrían de inmediato que el signo aplicado se refiere a la nueva versión del producto.
Del mismo modo, hay determinados acontecimientos deportivos importantes que, por naturaleza, se celebran a intervalos regulares y suscitan un interés intenso y amplio entre millones de personas. Aunque su fecha de inicio se conoce, la decisión del lugar en el que se desarrolla genera mucha expectación e interés en los lugares nominados. Por tanto, es razonable suponer que en el momento en que se anuncia la asignación de un torneo o unos juegos en particular a una ciudad o país determinados, prácticamente todos los consumidores pertinentes interesados en el deporte o los deportes de que se trate, o los profesionales del sector, lo conozcan. Esto puede permitir que una marca relacionada con los eventos en cuestión logre un carácter distintivo adquirido de manera rápida o incluso instantánea, en particular cuando el signo reproduce la estructura de marcas utilizadas previamente, ya que el público percibe de inmediato el nuevo evento como una secuela de una serie de eventos consolidados.
La evaluación de ese posible carácter distintivo adquirido instantáneo seguirá criterios generales relativos a, por ejemplo, la magnitud del uso, el territorio, la fecha pertinente o el público destinatario, para los que se aplican normas generales, así como criterios relativos a la responsabilidad del solicitante de aportar las pruebas correspondientes. La única particularidad se refiere a la duración del uso y la posibilidad de que, en determinadas circunstancias, el logro de un carácter distintivo adquirido pueda ocurrir de manera muy rápida e incluso instantánea. Como sucede con cualquier otra reivindicación de carácter distintivo adquirido, es responsabilidad del solicitante demostrar que el público puede percibir la marca en cuestión como un signo distintivo.
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2.6.8.10 Pruebas posteriores a la fecha de presentación
Las pruebas deben demostrar que, previamente a la fecha de presentación, la marca había adquirido un carácter distintivo por el uso.
No obstante, las pruebas no pueden rechazarse únicamente porque su fecha sea posterior a la de presentación, ya que pueden proporcionar indicaciones relativas a la situación anterior a esta última fecha. En consecuencia, tales pruebas deberán evaluarse, y habrá que otorgarles el peso que corresponda.
Por ejemplo, una marca que disfrute de un reconocimiento particularmente relevante en el mercado o que posea una cuota de mercado significativa unos meses después de la fecha de presentación puede contar con un carácter distintivo adquirido también en dicha fecha.
2.6.9 Consecuencias del carácter distintivo adquirido
Una marca registrada de conformidad con el artículo 7, apartado 3, del RMC disfruta de la misma protección que cualquier otra que haya sido considerada registrable de manera inherente tras su examen. Si la solicitud de MC se acepta con arreglo al artículo 7, apartado 3, del RMC, esta información se publica en el Boletín de Marcas Comunitarias, utilizando el código INID 521.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 0
INTRODUCCIÓN
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Índice
1. Panorama general del procedimiento de oposición: la diferencia entre los «motivos absolutos» y los «motivos relativos» de denegación de una solicitud de MC................................................................................... 3
2 Motivos de oposición................................................................................ 3
3 Los «derechos anteriores» en que debe basarse una oposición ......... 4
4 Objeto del procedimiento de oposición y el modo más expedito de tratarlo ........................................................................................................ 5
ANEXO .............................................................................................................. 7
Contenido y estructura de las resoluciones de oposición ........................... 7 1 Observaciones generales ..........................................................................7 2 Normas procesales – admisibilidad, justificación ...................................9 3 Prueba del uso............................................................................................ 9 4 Artículo 8, apartado 1, letra a), del RMC ................................................... 9 5 Artículo 8, apartado 1, letra b), del RMC ................................................. 10
5.1 Comparación de los productos y servicios................................................... 10 5.2 Comparación de los signos .......................................................................... 10 5.3 Elementos distintivos y dominantes de las marcas...................................... 11 5.4 Carácter distintivo de la marca anterior........................................................ 11 5.5 Público destinatario. Nivel de atención ........................................................ 12 5.6 Apreciación global, otros argumentos y conclusión ..................................... 12
6 Artículo 8, apartado 3, del RMC............................................................... 12 7 Artículo 8, apartado 4, del RMC............................................................... 13
7.1 El uso en el tráfico económico de alcance no únicamente local .................. 14 7.2 El derecho en virtud de la legislación nacional ............................................ 14 7.3 El derecho del oponente respecto de la marca impugnada......................... 14 7.4 Conformidad con el criterio de la legislación nacional ................................. 14
8 Artículo 8, apartado 5, del RMC............................................................... 15 8.1 Comparación de los signos .......................................................................... 15 8.2 Renombre de la marca anterior.................................................................... 15 8.3 Perjuicio al renombre.................................................................................... 16 8.4 Justa causa................................................................................................... 16
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1. Panorama general del procedimiento de oposición: la diferencia entre los «motivos absolutos» y los «motivos relativos» de denegación de una solicitud de MC
La «oposición» es un procedimiento que tiene lugar ante la OAMI cuando un tercero, sobre la base de los derechos anteriores que ostenta, solicita que la Oficina deniegue una solicitud de marca comunitaria (la «solicitud de MC») o un registro internacional que designa a la UE.
Cuando se presente una oposición contra un registro internacional que designa a la UE, debe entenderse que todas las referencias a las solicitudes de marca comunitaria que figuran en las presentes Directrices incluyen los registros internacionales que designan a la UE. Se han elaborado unas Directrices específicas para las marcas internacionales en las que se describen peculiaridades referentes a las oposiciones.
En virtud del Reglamento (CE) nº 207/2009 del Consejo, de 26 de febrero de 2009, sobre la marca comunitaria (en lo sucesivo, el «RMC»), la oposición debe estar basada en los derechos que ostenta el oponente sobre una marca anterior u otra forma de signo comercial. Los motivos en los que puede estar basada una oposición se denominan «motivos de denegación relativos», y en el artículo 8 del RMC, que lleva este título, se encuentran las disposiciones pertinentes. A diferencia de lo que ocurre en el caso de los motivos de denegación absolutos, que son examinados de oficio por la Oficina (y que pueden tener en cuenta las observaciones de terceros, aunque dichos terceros no sean parte del procedimiento), los motivos de denegación relativos son procedimientos inter partes basados en posibles conflictos con derechos anteriores. La Oficina no plantea de oficio estas objeciones relativas. La carga recae, pues, en el titular del derecho anterior que tiene que mantener una actitud vigilante respecto de la presentación de solicitudes de marca comunitaria por parte de otras personas que podrían colisionar con sus derechos anteriores, y, en su caso, oponerse a las marcas en conflicto.
Cuando se presenta una oposición dentro del plazo establecido y se abona la tasa correspondiente, el servicio especializado (la División de Oposición) de la Oficina gestiona el procedimiento, el cual normalmente incluye un intercambio de observaciones entre el oponente y el solicitante (en lo sucesivo, las «partes»). Después de considerar estas observaciones, en caso de que las partes no logren un acuerdo, la División de Oposición resolverá (en una «resolución» susceptible de recurso) bien denegar total o parcialmente la solicitud impugnada o denegar la oposición. Si la oposición no está bien fundada, será denegada. Si la solicitud de marca comunitaria no se deniega totalmente, siempre que no existan otras oposiciones pendientes, se procederá a su registro.
2 Motivos de oposición
El artículo 8, del RMC establece los posibles motivos por los que puede presentarse una oposición.
El artículo 8, del RMC permite a los titulares que basen las oposiciones en sus derechos anteriores para evitar el registro de marcas comunitarias en una serie de situaciones que van desde la identidad absoluta (es decir, doble) de los productos y/o servicios y entre las marcas (artículo 8, apartado 1, letra a), del RMC, en el que se presume el riesgo de confusión y no es necesario probarlo) hasta la similitud
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(artículo 8, apartado 1, letra b), del RMC, en la que debe existir un riesgo de confusión) (véanse las Directrices, Parte C, Oposición, Sección 2, Doble identidad y riesgo de confusión).
El artículo 8, apartado 3, del RMC permite al titular de una marca evitar la presentación no autorizada de su marca por parte de su agente o representante (véanse las Directrices, Parte C, Oposición, Sección 3, Marca presentada por un agente).
El artículo 8, apartado 4, del RMC permite al titular de marcas anteriores no registradas, o de otros signos utilizados en el tráfico económico de alcance no únicamente local, evitar el registro de una solicitud de marca comunitaria posterior si el titular tiene el derecho a prohibir la utilización de dicha solicitud. Aunque el artículo no menciona expresamente el riesgo de confusión, la aplicación de las normas correspondientes en virtud de lo dispuesto en el artículo 8, apartado 4, del RMC con frecuencia exigirá un análisis del riesgo de confusión (véanse las Directrices, Parte C, Oposición, Sección 4, Derechos no registrados).
El artículo 8, apartado 5, del RMC permite a los titulares de marcas registradas anteriores con renombre evitar el registro de una solicitud de marca comunitaria posterior que, sin justa causa, perjudicaría a dicha marca anterior. El riesgo de confusión no constituye una condición para aplicar este artículo. Esto es así porque el artículo 8, apartado 5, del RMC protege específicamente (aunque no de forma exclusiva) las funciones y los usos de las marcas que no entran dentro de la indicación de la protección de origen que ofrece un riesgo de confusión y, como tal, se dirige más a proteger el esfuerzo y la inversión financiera implicadas en la creación y la promoción de marcas en la medida en que éstas alcanzan notoriedad, así como a facilitar la plena explotación del valor de las marcas (véanse las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas).
3 Los «derechos anteriores» en que debe basarse una oposición
La oposición debe basarse como mínimo en un derecho anterior del que sea titular el oponente.
El significado de derechos «anteriores» en el sentido del artículo 8, apartados 1 y 5, del RMC queda definido en el artículo 8, apartado 2, del RMC, como los derechos que tienen una fecha anterior (no la hora ni el minuto, tal como confirma el Tribunal en su sentencia de 22 de marzo de 2012, en el asunto C-190/10, «Génesis Seguros») de solicitud de registro distinta de la de la solicitud de marca comunitaria, incluidas las fechas de las prioridades reivindicadas, o se haya convertido en notoriamente conocida en un Estado miembro con anterioridad a la solicitud de marca comunitaria o, en su caso, de la fecha de prioridad reivindicada. Véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales.
Estos derechos están compuestos fundamentalmente de marcas registradas de la UE y de las solicitudes de dichas marcas «notoriamente conocidas» con arreglo a lo dispuesto en el artículo 6 bis del Convenio de París (las cuales no precisan estar registradas). Para obtener una explicación detallada sobre dichas marcas «notoriamente conocidas» con arreglo a lo dispuesto en el artículo 8, apartado 2, letra c), del RMC y el modo en que son distintas de las marcas de renombre del
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artículo 8, apartado 5, consulte las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas, punto 2.1.2.
Con arreglo a lo dispuesto en el artículo 8, apartado 3, del RMC, el oponente debe demostrar que es titular de una marca, adquirida en cualquier lugar del mundo, ya sea mediante registro o por el uso (en la medida en que la legislación del país de origen reconozca este tipo de derecho de marca) para la que un agente o representante del titular ha solicitado el registro en su propio nombre sin el consentimiento del titular.
El artículo 8, apartado 4, del RMC se ocupa, en cambio, de las oposiciones basadas en marcas anteriores no registradas o en otro signo utilizado en el tráfico económico de alcance no únicamente local, con arreglo al Derecho del Estado miembro de la UE. Por lo tanto, el significado de derechos «anteriores» del artículo 8, apartado 4, por lo que a la correspondiente fecha de adquisición se refiere, viene definido por el correspondiente Derecho nacional.
Pueden alegarse diversos motivos legales, tanto en una misma oposición como en oposiciones múltiples a la misma solicitud de marca comunitaria, que estén basados en distintos derechos anteriores.
La práctica de la OAMI está basada en las disposiciones legales del RMC que se aplican directamente o por analogía, tal como ha confirmado la jurisprudencia del Tribunal General (sentencias de 16/09/2004, en el asunto T-342/02, «MGM» y de 11/05/2006, en el asunto T-194/05, «TeleTech»). En particular:
Pluralidad de oposiciones: La regla 21, apartados 2 y 3, del REMC permite a la Oficina examinar solo la oposición «más eficaz» u oposiciones «más eficaces», suspendiendo el resto y, finalmente, considerándolas resueltas si se deniega la solicitud sobre la base de la oposición elegida. Respecto del significado de la oposición «más eficaz», véase infra.
Pluralidad de derechos anteriores en una oposición: el Tribunal ha observado que agrupar varios derechos anteriores en una sola oposición es, a efectos prácticos, lo mismo que presentar una pluralidad de oposiciones, haciendo posible que la Oficina base la denegación de la solicitud en el(los) derecho(s) anterior(es) «más eficaces». Respecto del significado del derecho anterior «más eficaz», véase infra.
Pluralidad de motivos legales en la o las oposiciones: si la oposición se estima en su totalidad sobre la base del motivo legal «más eficaz», no es necesario examinar el resto de motivos. Si no se cumple uno de los requisitos necesarios de un motivo legal, no será necesario examinar el resto de requisitos de dicha disposición. Respecto del significado del motivo legal «más eficaz», véase infra.
4 Objeto del procedimiento de oposición y el modo más expedito de tratarlo
El Tribunal de Justicia ha declarado que el único objetivo del procedimiento de oposición es decidir si la solicitud puede continuar el registro y no solucionar con carácter preventivo posibles conflictos (por ejemplo, a escala nacional derivados de la
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posible transformación de la solicitud de marca comunitaria) (sentencia de 11/05/2006, en el asunto T-194/05, «TeleTech», apartados 25-27).
El Tribunal de Justicia ha confirmado de forma clara que la Oficina no tiene obligación de examinar todas las oposiciones, derechos y motivos legales anteriores que se invoquen contra la misma solicitud de marca comunitaria, si basta con uno para denegar dicha solicitud. Tampoco está obligada a escoger el derecho anterior con el ámbito territorial más amplio para evitar la eventual transformación de la solicitud en tantos territorios como sea posible (sentencia de 16/09/2004, en el asunto T-342/02, «MGM» y de 11/05/2006, en el asunto T-194/05, «TeleTech»).
Este principio permite un tratamiento más expedito de las oposiciones. La Oficina tiene libertad para escoger la o las oposiciones, derecho(s) o motivo(s) legal(es) anterior(es) «más eficaz/eficaces», así como cuál de ellos examinar antes a la luz del principio de economía procesal.
La oposición «más eficaz» se define normalmente como la oposición que permite a la Oficina denegar el registro de la solicitud de marca comunitaria impugnada en la medida más amplia posible y del modo más sencillo.
El derecho anterior «más eficaz» se define normalmente como el signo más similar (o más cercano) que abarca el ámbito de productos y servicios más amplio y/o el derecho que abarca los productos y servicios más similares.
El motivo legal «más eficaz» se define normalmente como el motivo de oposición que presenta a la Oficina la forma más sencilla de denegar de la forma más amplia posible el registro de la solicitud de marca comunitaria impugnada.
En general, el artículo 8, apartado 1, letra a), si resulta aplicable, será el motivo más sencillo en términos de economía procesal para denegar una solicitud de marca comunitaria, ya que la Oficina no precisa entrar a analizar las similitudes y las diferencias entre los signos o los productos y servicios, ni será necesario establecer un riesgo de confusión. En su defecto, las circunstancias fácticas de cada oposición determinarán si el artículo 8, apartado 1, letra b) o el artículo 8, apartados 3, 4 o 5 son los motivos «más eficaces» (por ejemplo, si los productos y servicios del derecho anterior y la solicitud de marca comunitaria son distintos, el artículo 8, apartado 1, letra b) y el apartado 3 no sirven como fundamento válido de oposición; el primero exige al menos alguna similitud en este sentido y el último exige al menos productos y servicios estrechamente vinculados o comercialmente equivalentes).
Si el solicitante ha exigido prueba del uso en relación con algunos de los derechos anteriores, la Oficina considerará, por lo general, primero si un derecho anterior que todavía no está bajo la obligación del uso puede sustentar íntegramente la oposición. En caso contrario, se examinarán otros derechos anteriores que no requieran el requisito del uso para comprobar si la oposición puede sustentarse plenamente sobre dicha base acumulativa. En dichos casos, se denegará la solicitud de marca comunitaria sin que sea necesario considerar la prueba del uso. Únicamente si dicho(s) derecho(s) anterior(es) está(n) disponible(s), la Oficina considerará dichos derechos anteriores para los que se solicitó la prueba de uso.
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ANEXO
Contenido y estructura de las resoluciones de oposición
1 Observaciones generales
Las resoluciones de oposición siguen una estructura armonizada (plantilla) que, en función del contexto concreto, se ajusta para dotar de coherencia lógica a la resolución. El uso de dicha plantilla asimismo implica que las decisiones tienen un formato común.
En relación al estilo y lenguaje, las resoluciones de oposición son redactadas en un estilo formal, utilizando un lenguaje correcto. El lenguaje debe ser correcto tanto a lo que se refiere a ortografía y gramática, como a los aspectos formales (por ejemplo, oraciones coherentes y completas, referencias correctas a la marca, a los bienes y servicios, o a las partes, no repetir párrafos, etc.) Las resoluciones son enviadas a revisión lingüística cuando es posible.
Las resoluciones de oposición comienzan indicando los datos personales de las partes: los nombres y las direcciones del oponente, el solicitante y sus respectivos representantes (en su caso). Se indica la fecha de la resolución.
A ello le sigue el fallo (la «Resolución») que establece lo siguiente: si la oposición se mantiene o se deniega; en su caso, los productos y servicios para los que se mantiene (de forma parcial) la oposición (salvo si la oposición se admite íntegramente y la solicitud de marca comunitaria se deniega en su totalidad); la resolución sobre las costas; y la determinación de las costas. La parte final de la resolución también hace referencia a las «costas» y es conforme con la determinación de las costas del fallo. Asimismo, por lo que a las costas se refiere, la resolución incluye un párrafo relativo a la revisión de la determinación de las costas (que se suprime cuando cada una de las partes corre con sus propias costas).
A continuación, la parte de «Motivos» comienza con los «hechos» que identifican a la marca impugnada al indicar el número de solicitud de marca comunitaria, los productos y servicios impugnados, los derechos anteriores y todos los motivos reivindicados por el oponente.
Derechos anteriores: si una oposición es admitida íntegramente sobre la base de un derecho anterior (y se invoca más de uno), la decisión únicamente indicará el correspondiente derecho anterior (esto se hará en la parte de los hechos). Cuando la oposición se deniega total o parcialmente, la resolución identificará todos los derechos anteriores invocados por el oponente (ya sea en la parte relativa a los hechos o al final), indicando el territorio (o territorios para los registros internacionales), el número de registro e incluyendo una reproducción del signo1.
Marca impugnada: si no se comparan los signos (por ejemplo, la oposición no es admisible, no está justificada, se deniega por una prueba del uso insuficiente o
1 Si se utiliza un código de dos letras, deberá ser uno de los que están disponibles en https://www.wipo.int/export/sites/www/standards/es/pdf/03-03-01.pdf salvo para las marcas comunitarias para las que se utilizarán las siglas CTM o CTMA en lugar de EM.
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por la diferenciación de los productos), se reproducirá la marca impugnada junto con el número de solicitud de marca comunitaria en la parte relativa a los hechos.
Productos y servicios impugnados: se incluirán en una lista en la sección de comparación de productos y servicios. Si se omite la comparación de los productos y servicios (por ejemplo, la diferenciación de los signos), la resolución normalmente solo indicará, en la parte relativa a los hechos, las clases a las que pertenecen los productos y servicios impugnados.
Posteriormente, la Oficina establece los aspectos sustantivos y procesales de la resolución en el orden que se indica a continuación. Sin embargo, cuando se estime apropiado, teniendo en cuenta las circunstancias específicas de un determinado asunto, la Oficina podrá modificar el orden en que se examinen los distintos factores.
En las resoluciones de la Oficina, algunos aspectos sustantivos y procesales (indicados más abajo) solo se examinarán en la medida en que resulten relevantes para el resultado de la resolución. Esto puede implicar un proceso en el que primero se examine uno o algunos de los derechos anteriores invocados (normalmente aquellos signos que poseen más similitudes con el signo impugnado y/o abarcan un mayor ámbito de productos y servicios idénticos o similares) y luego el resto de derechos anteriores solo en la medida en que sea estrictamente necesario.
Todas las resoluciones de oposición deben incorporar la parte de «conclusión» y/o «apreciación global» (en el caso del artículo 8, apartado 1, letra b), del RMC) donde se justifica el resultado de la resolución de forma coherente, apoyado por los argumentos que se han desarrollado en los apartados previos de la resolución.
La resolución se ocupará asimismo de cualquier cuestión pendiente como la importancia de cualquier otro derecho anterior opuesto, la necesidad de examinar otras pretensiones como las que se incluyen en el artículo 8, apartados 3, 4 y 5, así como otras cuestiones que resulten pertinentes.
Si una oposición es admitida íntegramente sobre la base de uno de los derechos anteriores, la Oficina no emitirá una resolución respecto del resto de derechos anteriores. Se incluirá una breve declaración de que dichos derechos no serán examinados por motivos de economía procesal.
Si la oposición no es admisible sobre la base del derecho anterior que se considera «más cercano» al signo impugnado, por lo general se denegará en relación con el resto de derechos anteriores con una declaración general que los identifique íntegramente (número de marca, denominación [representación gráfica] y los productos y servicios) y que explique que dichos derechos se consideran menos similares al que se ha examinado o, si abarcan una lista más amplia de productos y servicios que el que se ha examinado, explique por qué no existe riesgo de confusión respecto de este otro derecho anterior.
Por último, la resolución tratará cualesquiera otros argumentos relevantes de las partes (especialmente los argumentos no estándar de la parte perdedora) o las cuestiones procesales pertinentes (como las solicitudes de restitutio in integrum, las ampliaciones/suspensiones solicitadas y a las que las partes se oponen firmemente, las solicitudes de proseguir el procedimiento solicitadas y denegadas o a las que se oponen firmemente las partes).
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2 Normas procesales – admisibilidad, justificación
Los oponentes deben cumplir una serie de requisitos procesales para que se adopte una resolución sobre el fondo en relación con la oposición, en particular si el derecho o los derechos anteriores en que se basa la oposición son (i) admisibles y están (ii) debidamente justificados2.
Al inicio de la resolución se incluirá, solo cuando se estime pertinente para la conclusión, un apartado que aborde estas cuestiones.
En cuanto a la admisibilidad: si la oposición se admite íntegramente sobre la base de uno de los derechos anteriores que se ha considerado admisible, no se tratará la cuestión de la admisibilidad del resto de derechos anteriores. Sin embargo, si la oposición se deniega de forma parcial o total basándose en un derecho admisible y justificado que no sea el derecho más eficaz, se tratará la cuestión de la admisibilidad del derecho más eficaz.
En cuanto a la justificación: si la oposición se admite basándose en uno de los derechos anteriores que se ha justificado debidamente, no se tratará la cuestión de la admisibilidad del resto de los derechos anteriores. Sin embargo, si la oposición se deniega de forma parcial o total basándose en un derecho admisible y justificado que no sea el derecho más eficaz, se tratará la cuestión de la justificación del derecho más eficaz. Si la oposición no ha quedado debidamente justificada, se denegará únicamente basándose en este motivo, sin tratar la cuestión del riesgo de confusión. En principio, no es necesario examinar la justificación de uno de los dos derechos anteriores invocados cuando, en cualquier caso, se concluya que no existe riesgo de confusión entre las marcas en conflicto.
3 Prueba del uso
Cuando el solicitante solicite prueba de uso de los derechos anteriores, la Oficina también examinará si, y en qué medida, se ha demostrado el uso para las marcas anteriores, siempre que esto sea pertinente para el resultado de la resolución de que se trate.3
4 Artículo 8, apartado 1, letra a), del RMC
Este motivo solo podrá ser aceptado cuando exista una doble identidad, en concreto, cuando los signos sean idénticos y los productos y servicios también.
El examen de la identidad se inicia por lo general con la comparación de los productos y servicios relevantes seguida de una comparación de los signos. Si se concluye que existe una doble identidad, no es necesario apreciar el riesgo de confusión. La conclusión de mantener la oposición es automática.
Si no puede establecerse la identidad entre los productos y servicios y/o los signos, la oposición quedará incluida en lo establecido en el artículo 8, apartado 1, letra a), del
2 Véanse las Directrices relativas a la oposición, Parte 1, Aspectos procesales. 3 En las Directrices, Parte C, Oposición, Sección 6, Prueba del uso, pueden encontrarse orientaciones generales sobre la prueba del uso.
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RMC aunque el examen continúa sobre la base del artículo 8, apartado 1, letra b), del RMC.4
5 Artículo 8, apartado 1, letra b), del RMC
En principio, deberán tratarse los siguientes apartados:
5.1 Comparación de los productos y servicios
La similitud de productos y servicios es una condición sine qua non para apreciar riesgo de confusión. Como tal, el examen del riesgo de confusión se inicia por lo general comparando los productos y servicios correspondientes.
En las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 2, Comparación de los productos y servicios, pueden encontrarse orientaciones generales sobre la comparación de los productos y servicios.
La resolución no incluirá, sin embargo, una comparación total de los productos y servicios:
cuando se considere que los signos son distintos; y
cuando en determinadas circunstancias, por economía procesal, la División de Oposición pueda llevar a cabo una comprobación expedita de los productos y servicios, en el supuesto de que, dado que existe identidad o similitud entre algunos de los productos y servicios pertinentes, todos son idénticos o similares. Este procedimiento se sigue normalmente cuando, incluso si el grado de similitud de los productos y servicios se cumple en su máximo alcance, habiendo considerado los restantes factores, no se aprecia riesgo de confusión. Normalmente, esta comprobación expedita solo se utiliza cuando no afecta a derechos de ninguna de las partes.
Si no existe un grado de similitud entre los productos y servicios, el examen finalizará en ese momento por lo que al riesgo de confusión se refiere.
Por el contrario, si hay al menos algún grado de similitud, el examen proseguirá.
5.2 Comparación de los signos
Una condición que debe existir para apreciar un riesgo de confusión es al menos algún grado de similitud entre los signos. Tal como hemos visto anteriormente, la comparación de los signos implica una apreciación global de las características visuales, fonéticas y/o conceptuales de los signos en cuestión. Si no es posible la comparación en uno de los niveles (por ejemplo, la comparación fonética, ya que la marca es figurativa) podrá obviarse dicho nivel. Si existe similitud en, al menos, uno de los tres niveles, los signos serán similares. Si los signos son lo suficientemente similares para que exista riesgo de confusión, esta circunstancia se abordará en la apreciación global del riesgo de confusión. En las Directrices, Parte C, Oposición,
4 Véanse las Directrices, Parte C, Oposición, Parte 2, Doble Identidad y riesgo de confusión, Capítulo 1, Principios generales y metodología, punto 1.2.1.1.
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Sección 2, Doble Identidad y riesgo de confusión, Capítulo 3, Comparación de los signos, pueden encontrarse orientaciones generales sobre la comparación de los signos.
Las resoluciones comienzan indicando el territorio de referencia.
A continuación, la resolución lleva a cabo una comparación objetiva de los signos en la que se destacan las similitudes y las diferencias materiales visuales, fonéticas y conceptuales entre los signos. En esta fase normalmente no se tiene en cuenta ni se da importancia a los diversos elementos coincidentes o diferentes de los signos (esto se lleva a cabo en un momento posterior de la resolución). La comparación objetiva establece que existen, al menos a priori, indicios de un supuesto de riesgo de confusión, confirmando así que hay un cierto grado de similitud entre los signos.
Esta comparación objetiva de los signos también sirve como punto de referencia cuando la Oficina evalúa posteriormente los elementos distintivos y dominantes de las marcas. Si la oposición está basada en el artículo 8, apartados 5 y/o 4, la comparación objetiva actúa como un punto de referencia para el análisis independiente a que hacen referencia estos apartados.
Si no existe un grado de similitud entre los productos y servicios, el examen del riesgo de confusión finalizará en ese momento. Los signos son distintos solo si no puede establecerse la similitud en ninguno de los tres niveles. Si se considera que los signos son distintos, no se llevará a cabo ni la comparación de los productos y servicios (incluida la presunción de identidad) ni la valoración del carácter distintivo elevado de la marca anterior ni la apreciación global. La oposición se denegará, por lo que al riesgo de confusión se refiere, en la parte de la «Conclusión», exclusivamente sobre la base de la diferenciación de los signos. En caso contrario, cuando se considere que los signos son similares visual, fonética o conceptualmente, el examen proseguirá.
5.3 Elementos distintivos y dominantes de las marcas
La apreciación global de las marcas en conflicto debe estar basada en la impresión de conjunto que las marcas proporcionan, teniendo en cuenta, en particular, sus elementos distintivos y dominantes. Por lo tanto, en esta sección de la resolución, se explican y se determinan los elementos dominantes y/o distintivos de los signos.
En las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo, y Capítulo 5, Carácter dominante, pueden encontrarse orientaciones generales sobre el análisis de los elementos distintivos y dominantes.
5.4 Carácter distintivo de la marca anterior
Cuando un oponente reivindica de manera explícita que una marca anterior tiene un carácter distintivo particular en virtud de un amplio uso o renombre, dicha reivindicación se examinará y evaluará. En las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo, pueden encontrarse orientaciones generales sobre el carácter distintivo de la marca anterior.
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En determinadas circunstancias, en interés de la economía procesal, la Oficina podrá no investigar una reivindicación de carácter distintivo elevado cuando no sea significativo para el resultado de la resolución. Esto solo ocurrirá cuando no se vean afectados los derechos de la otra parte.
Si no se reivindica el carácter distintivo, o si la reivindicación no está respaldada por pruebas, la apreciación del carácter distintivo de una marca anterior estará basada en su carácter distintivo intrínseco (dicho de otro modo, en su carácter distintivo inherente).
5.5 Público destinatario. Nivel de atención
En las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 6, Público destinatario y nivel de atención pueden encontrarse orientaciones generales sobre el «público destinatario» y el «nivel de atención».
La resolución describe quién es el consumidor de referencia para los productos y servicios pertinentes y el significado de esta conclusión. En su caso, también indica el nivel de atención que aplica el consumidor de referencia.
5.6 Apreciación global, otros argumentos y conclusión
En las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 7, Otros factores y Capítulo 8, Apreciación global, pueden encontrarse orientaciones generales sobre «Otros factores» y la «Apreciación global». Además de lo que se ha mencionado anteriormente en relación con la «conclusión» y/o la «apreciación global», la Apreciación global:
establece y evalúa otros factores y principios relevantes para estimar el riesgo de confusión (como una familia de marcas, la coexistencia o la forma de compra de los productos y servicios);
evalúa la importancia relativa de todos los factores interdependientes, que pueden complementarse o compensarse entre sí, para adoptar la decisión sobre el riesgo de confusión (por ejemplo, las marcas pueden ser distintivas para algunos de los productos o servicios, pero no para otros y, por tanto, el riesgo de confusión solo existirá en relación con los productos y servicios para los que marca anterior se considera distintiva).
6 Artículo 8, apartado 3, del RMC
Los motivos de denegación del artículo 8, apartado 3, del RMC están sujetos a los siguientes requisitos:
la parte oponente es el titular de la marca en que se basa la oposición; el solicitante es un agente o representante del titular de la marca anterior; la solicitud se presenta en nombre del agente o representante; la solicitud se presentó sin el consentimiento del titular; el agente o el representante no logra justificar sus actos;
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los signos son idénticos o con leves diferencias y los productos/servicios son idénticos o equivalentes.
Las condiciones son acumulativas, por lo que si una de ellas no se cumple, la oposición que esté basada en el artículo 8, apartado 3, del RMC no podrá prosperar.
La resolución de oposición incluirá, en principio, los siguientes apartados:
1) Derecho de la parte oponente; 2) Relación de agente o representante; 3) Solicitud en nombre del agente o del representante; 4) Solicitud sin el consentimiento del titular; 5) Falta de justificación por parte del solicitante; 6) Comparación de los signos; 7) Comparación de los productos y servicios; 8) Conclusión.
Sin embargo, en función del asunto y su resultado puede que no sea necesario incluir en la resolución todos los apartados mencionados. Puede modificarse el orden de los apartados, por ejemplo, si la oposición puede denegarse porque los signos son distintos, la comparación de los signos puede ser el primer y el único apartado que debe incluirse en la resolución.
Deben examinarse los argumentos y las pruebas aportadas por las partes, así como aportar una motivación para establecer si se han cumplido los requisitos.
En los apartados «Comparación de los signos» y «Comparación de los productos y servicios» debe establecerse si los signos son idénticos (o poseen leves diferencias que no afectan de forma sustancial a su carácter distintivo) y si los productos/servicios son idénticos (o equivalentes desde el punto de vista comercial).
En las Directrices, Parte C, Oposición, Sección 3, Presentación de la marca por un agente no autorizado, pueden encontrarse orientaciones generales sobre el Artículo 8, apartado 3.
7 Artículo 8, apartado 4, del RMC
En las Directrices, Parte C, Oposición, Sección 4, Derechos en virtud del artículo 8, apartado 4, punto 3.1 «Tipos de derechos contemplados en el artículo 8, apartado 4, del RMC», pueden encontrarse orientaciones generales sobre los tipos de derechos contemplados en el artículo 8, apartado 4, del RMC.
Los motivos de denegación del artículo 8, apartado 4, del RMC están sujetos a los siguientes requisitos acumulativos:
el derecho anterior debe ser una marca no registrada o un signo similar; el signo debe utilizarse en el tráfico económico; el uso debe ser no únicamente local; el derecho debe adquirirse antes de la fecha de presentación de la marca
impugnada; el titular del signo debe tener el derecho de prohibir el uso de la marca
impugnada en virtud de la legislación nacional.
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Sin embargo, en el caso de que no se cumpla uno de los requisitos mencionados, la oposición deberá denegarse y no será necesario tratar el resto de requisitos.
En consecuencia, la resolución de oposición deberá tratar, en principio, los siguientes apartados.
7.1 El uso en el tráfico económico de alcance no únicamente local
La condición que exige un uso en el tráfico económico constituye un requisito fundamental, sin el que el signo de que se trate no puede gozar de protección contra el registro de una marca comunitaria, con independencia de los requisitos que deban cumplirse en virtud de la legislación nacional para adquirir los derechos exclusivos.
En las Directrices, Parte C, Oposición, Sección 4, Derechos contemplados en el artículo 8, apartado 4, punto 3.2, Uso en el tráfico económico de alcance no únicamente local, pueden encontrarse orientaciones generales sobre el «Uso en el tráfico económico».
7.2 El derecho en virtud de la legislación nacional
En la resolución debe quedar demostrado si el oponente ha adquirido el derecho invocado de conformidad con la legislación que regula el signo de que se trate (por ejemplo, en algunos casos, los derechos nacionales exigen el registro o el renombre), si el derecho se adquirió antes de la fecha de presentación y si, y en qué condiciones, la legislación que regula el signo de que se trate confiere a su titular el derecho a prohibir la utilización de una marca posterior.
A efectos de lo anterior, deberá comprobarse la información que ofrecen las Directrices (listado de «derechos anteriores» en el sentido del artículo 8, del RMC) y/o las pruebas aportadas por las partes.
7.3 El derecho del oponente respecto de la marca impugnada
Esta parte de la resolución examina si se cumplen las condiciones establecidas por la legislación que regula el signo anterior en relación con la marca impugnada, lo cual suele exigir una comparación de los signos y de los productos y servicios o actividades comerciales, así como una conclusión en este sentido.
7.4 Conformidad con el criterio de la legislación nacional
Una vez que se han comparado los productos y servicios y los signos, deberá establecerse si se cumplen las condiciones establecidas en la legislación nacional, tal como se han indicado en el apartado «El derecho en virtud de la legislación nacional», por ejemplo, el riesgo de confusión.
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8 Artículo 8, apartado 5, del RMC
Los motivos de denegación del artículo 8, apartado 5, del RMC están sujetos a los siguientes requisitos:
Los signos en conflicto deben ser idénticos o similares.
La marca del oponente debe tener renombre. Asimismo, el renombre debe ser anterior a la marca impugnada; debe existir en el territorio de referencia y estar relacionado con los productos y/o servicios en que se basa la oposición.
Perjuicio al renombre: el uso de la marca impugnada se aprovecha indebidamente del carácter distintivo o de la notoriedad de la marca anterior o es perjudicial para los mismos.
Los requisitos anteriores son acumulativos, por lo que la falta de uno de ellos conlleva la denegación de la oposición con arreglo al artículo 8, apartado 5, del RMC. Sin embargo, el cumplimiento de las condiciones mencionadas podrá no ser suficiente, ya que la oposición todavía puede no prosperar si el solicitante/titular indica una causa justa para utilizar la marca impugnada.
En consecuencia, la resolución de oposición deberá tratar, en principio, los siguientes apartados.
8.1 Comparación de los signos
La aplicación del artículo 8, apartado 5, del RMC exige una conclusión positiva de similitud entre los signos. Siempre que se haya comparado los signos con arreglo al artículo 8, apartado 1, letra b), del RMC, se hace referencia a las correspondientes conclusiones, lo que es igualmente válido con arreglo al artículo 8, apartado 5, del RMC. De lo cual se deriva que si en el examen del artículo 8, apartado 1, letra b), del RMC se considera que los signos no son similares, la oposición se tratará necesariamente con arreglo al artículo 8, apartado 5, del RMC. Sin embargo, el simple hecho de que los signos en cuestión sean similares no es suficiente para concluir que el público destinatario establecerá un vínculo entre ellos, sino que deberá probarse necesariamente la existencia de dicho vínculo cuando se considere que los signos son similares.
En las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas contempladas en el artículo 8, apartado 5, punto 3.2, Similitud de los signos, y punto 3.3, El vínculo entre los signos, pueden encontrarse orientaciones generales sobre la «Similitud de los signos» y «El vínculo entre los signos».
8.2 Renombre de la marca anterior
Las pruebas presentadas para demostrar el renombre deberán estar debidamente indicadas. No es necesario incluir una lista y describir cada uno de los elementos. Solo debe mencionarse, de modo general, la prueba relevante para la correspondiente conclusión (si es o no suficiente para demostrar el renombre).
En las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas contempladas en el artículo 8, apartado 5, Alcance del renombre, punto 3.1.3, Apreciación del
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renombre, y punto 3.1.4, Prueba del renombre, pueden encontrarse orientaciones generales sobre el «Alcance, apreciación y prueba del renombre».
8.3 Perjuicio al renombre
Este apartado se ocupa del examen de si es probable un perjuicio o un aprovechamiento indebido, en el sentido de si es previsible en el curso normal de los acontecimientos. A tal efecto, el oponente habrá de aportar pruebas o, como mínimo, exponer una línea argumental coherente, en que explique en qué podría consistir el perjuicio o aprovechamiento indebido y cómo podría ocasionarse, que pudiera llevar a concluir a primera vista que dicho evento es realmente probable en el curso normal de las cosas.
El examen de las reivindicaciones del oponente relativas al perjuicio debe ir precedido de una identificación de los productos y/o servicios contra los que se dirige la oposición y respecto de qué productos y/o servicios se ha considerado el renombre.
En las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas contempladas en el artículo 8, apartado 5, punto 3.4.3, Formas de perjuicio, y punto 3.4.4, Prueba del perjuicio, pueden encontrarse orientaciones generales sobre las «Formas de perjuicio» y la «Prueba del perjuicio».
Si la oposición se admite íntegramente basándose en una de las formas de perjuicio, no será necesario examinar si también son aplicables el resto de formas.
8.4 Justa causa
La justa causa se examina únicamente si el solicitante de la marca comunitaria así lo reivindica y siempre que exista una similitud entre los signos, un renombre y, al menos, una de las formas de perjuicio.
En las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas contempladas en el artículo 8, apartado 5, punto 3.5, Uso sin justa causa, pueden encontrarse orientaciones generales sobre la «Justa causa».
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 1
ASPECTOS PROCESALES
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ÍNDICE
1 Introducción: rasgos generales del procedimiento de oposición......... 6
2 Examen de la admisibilidad...................................................................... 7 2.1 Escrito de oposición .................................................................................. 7
2.1.1 Oposición temprana contra un registro internacional..................................... 8 2.1.2 Oposición temprana contra una solicitud de marca comunitaria ................... 8
2.2 Pago ............................................................................................................8 2.2.1 Recepción tardía del escrito de oposición y recepción del pago dentro del
plazo de oposición.......................................................................................... 9 2.2.2 Fecha de pago................................................................................................ 9 2.2.3 Consecuencias en caso de falta de pago .................................................... 10 2.2.4 Reembolso de la tasa................................................................................... 11
2.3 Lenguas y traducción del escrito de oposición ..................................... 11 2.4 Examen de la admisibilidad..................................................................... 13
2.4.1 Requisitos de admisibilidad absolutos ......................................................... 13 2.4.1.1 Identificación de la solicitud de marca comunitaria impugnada.................14 2.4.1.2 Identificación de marcas y derechos anteriores ........................................14 2.4.1.3 Identificación de los motivos......................................................................18
2.4.2 Requisitos de admisibilidad relativos ........................................................... 19 2.4.2.1 Fechas.......................................................................................................19 2.4.2.2 Representación de la marca o el signo anterior ........................................20 2.4.2.3 Productos y servicios ................................................................................21 2.4.2.4 Marca renombrada anterior: alcance del renombre...................................23 2.4.2.5 Identificación del oponente........................................................................23 2.4.2.6 Representación profesional.......................................................................27 2.4.2.7 Firma .........................................................................................................29 2.4.2.8 Requisitos de admisibilidad relativos: sanciones.......................................30
2.4.3 Indicaciones opcionales ............................................................................... 30 2.4.3.1 Alcance de la oposición.............................................................................30 2.4.3.2 Declaración motivada................................................................................31
2.5 Notificación del escrito de oposición ..................................................... 31
3 Periodo de reflexión ................................................................................ 32 3.1 Iniciación del periodo de reflexión.......................................................... 32 3.2 Prórroga del periodo de reflexión ........................................................... 33
4 Fase contradictoria ................................................................................. 34 4.1 Posibilidad de completar la oposición.................................................... 34 4.2 Justificación ............................................................................................. 35
4.2.1 Marcas comunitarias y solicitudes de marcas comunitarias ........................ 35 4.2.2 Transformación de una marca comunitaria (solicitud) ................................. 36
4.2.2.1 Oposición basada en una (solicitud de) marca comunitaria que ha sido (va a ser) objeto de transformación...........................................................36
4.2.3 Registros o solicitudes de marcas que no son marcas comunitarias .......... 36 4.2.3.1 Certificados expedidos por la autoridad oficial competente.......................37 4.2.3.2 Extractos de bases de datos oficiales .......................................................37 4.2.3.3 Extractos de boletines oficiales de las oficinas de marcas nacionales y
de la OMPI ................................................................................................39 4.2.3.4 Vigencia del registro de marca ..................................................................39
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4.2.3.5 Examen de la prueba ................................................................................40 4.2.3.6 Certificados de renovación ........................................................................42 4.2.3.7 Legitimación para presentar oposición ......................................................43
4.2.4 Prueba de las marcas notoriamente conocidas, las reivindicaciones de renombre, las marcas solicitadas por un agente y los signos anteriores utilizados en el tráfico económico................................................................. 44 4.2.4.1 Marcas notoriamente conocidas................................................................44 4.2.4.2 Marcas renombradas ................................................................................44 4.2.4.3 Marca no registrada u otro signo utilizado en el tráfico económico ...........45 4.2.4.4 Marca solicitada por un agente o representante .......................................45
4.2.5 Sanción......................................................................................................... 46
4.3 Traducciones / cambios de lengua durante el procedimiento de oposición .................................................................................................. 46 4.3.1 Traducción de la prueba de registros de marca y de hechos, pruebas y
alegaciones presentados por el oponente para completar su expediente... 46 4.3.1.1 Sanciones..................................................................................................48
4.3.2 Traducción de las observaciones adicionales.............................................. 48 4.3.3 Traducción de documentos distintos de las observaciones......................... 49 4.3.4 Prueba del uso ............................................................................................. 50 4.3.5 Cambio de lengua durante el procedimiento de oposición .......................... 51
4.4 Documentos ilegibles / remisión a otros expedientes........................... 52 4.4.1 Documentos ilegibles ................................................................................... 52 4.4.2 No devolución de los documentos originales ............................................... 52 4.4.3 Información confidencial............................................................................... 52 4.4.4 Referencias a documentos o elementos de prueba de otro procedimiento. 53
4.5 Otros intercambios de alegaciones ........................................................ 54 4.5.1 Prueba adicional de la prueba del uso ......................................................... 55
4.6 Observaciones de terceros...................................................................... 55
5 Conclusión del procedimiento ............................................................... 56 5.1 Conciliación.............................................................................................. 56 5.2 Limitaciones y retiradas........................................................................... 56
5.2.1 Limitaciones y retirada de solicitudes de marca comunitaria ....................... 57 5.2.1.1 Retirada o limitación previa al examen de admisibilidad ...........................58 5.2.1.2 Limitación y retirada de una solicitud de marca comunitaria antes de
que expire el periodo de reflexión .............................................................58 5.2.1.3 Limitación o retirada de una solicitud de marca comunitaria después de
que expire el periodo de reflexión .............................................................59 5.2.1.4 Limitación y retirada de una solicitud de marca comunitaria tras la
adopción de una resolución.......................................................................59 5.2.1.5 Lengua ......................................................................................................60
5.2.2 Retirada de la oposición ............................................................................... 60 5.2.2.1 Retirada de la oposición antes de que expire el periodo de reflexión .......60 5.2.2.2 Retirada de la oposición una vez expirado el periodo de reflexión............60 5.2.2.3 Retirada de la oposición después de que se dicte una resolución ............61 5.2.2.4 Lengua ......................................................................................................61
5.2.3 Retirada de una retirada/limitación............................................................... 61
5.3 Resolución sobre el fondo....................................................................... 61 5.3.1 Derecho anterior no acreditado .................................................................... 62 5.3.2 Cese de la existencia del derecho anterior .................................................. 62
5.4 Reembolso de la tasa............................................................................... 62
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5.4.1 La oposición se considera no presentada.................................................... 62 5.4.1.1 Escrito de oposición y retirada de la oposición presentados el mismo
día .............................................................................................................63 5.4.1.2 Reembolso después de la republicación...................................................63
5.4.2 Reembolso en vista de la retirada/limitación de la solicitud de marca comunitaria ................................................................................................... 63 5.4.2.1 Solicitud de marca comunitaria retirada/limitada antes de que expire el
periodo de reflexión...................................................................................63 5.4.2.2 Retirada de la oposición debido a la limitación de la solicitud de marca
comunitaria durante el periodo de reflexión...............................................63 5.4.3 Pluralidad de oposiciones y reembolso del 50 % de la tasa de oposición... 64 5.4.4 Casos en los que no se reembolsa la tasa de oposición ............................. 64
5.4.4.1 Retirada de la oposición antes de que expire el periodo de reflexión NO motivada por una limitación.......................................................................64
5.4.4.2 La retirada de la oposición por parte del oponente es anterior..................65 5.4.4.3 Acuerdo entre las partes antes del comienzo del procedimiento ..............65 5.4.4.4 Conclusión del procedimiento por otros motivos .......................................65 5.4.4.5 Respuesta a la renuncia a invocar derechos exclusivos ...........................65
5.4.5 Reembolso erróneo de la tasa de oposición ................................................ 66
5.5 Resolución sobre el reparto de costas ................................................... 66 5.5.1 Casos en los que procede adoptar una resolución sobre las costas........... 66 5.5.2 Casos en los que no procede adoptar una resolución sobre las costas...... 66
5.5.2.1 Acuerdo sobre las costas ..........................................................................66 5.5.2.2 Información procedente de la «parte potencialmente ganadora»..............67
5.5.3 Casos estándar de resoluciones sobre costas............................................. 67 5.5.4 Casos en los que procede declarar un asunto sobreseído.......................... 68
5.5.4.1 Pluralidad de oposiciones..........................................................................68 5.5.4.2 Denegación de una solicitud por motivos absolutos o formalidades .........69 5.5.4.3 Casos de acumulación de asuntos............................................................69 5.5.4.4 Significado de «cargar con las propias costas» ........................................70
5.6 Fijación de las costas .............................................................................. 70 5.6.1 Cantidades que deben reembolsarse/fijarse................................................ 70 5.6.2 Procedimiento aplicable cuando la fijación de costas se incluye en la
resolución principal ....................................................................................... 71 5.6.3 Procedimiento aplicable cuando es necesario fijar la cuantía de las
costas por separado ..................................................................................... 72 5.6.3.1 Admisibilidad .............................................................................................72 5.6.3.2 Prueba.......................................................................................................72
5.6.4 Revisión de la fijación de costas .................................................................. 72
6 Aspectos procesales............................................................................... 73 6.1 Corrección de errores .............................................................................. 73
6.1.1 Corrección de errores en el escrito de oposición ......................................... 73 6.1.2 Corrección de errores y faltas en las publicaciones..................................... 73
6.2 Plazos........................................................................................................ 74 6.2.1 Prórroga de plazos en el procedimiento de oposición ................................. 74
6.2.1.1 Plazos prorrogables e improrrogables.......................................................74 6.2.1.2 Solicitud presentada dentro del plazo .......................................................75 6.2.1.3 Prórroga de un plazo por iniciativa de la Oficina .......................................76 6.2.1.4 Firma .........................................................................................................76
6.3 Suspensión............................................................................................... 76 6.3.1 Suspensión solicitada por ambas partes...................................................... 76 6.3.2 Suspensiones por la Oficina de oficio o a instancia de una de las partes ... 77
6.3.2.1 Explicación del principio básico, momento de la suspensión ....................78
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6.3.2.2 Solicitudes o registros de marca comunitaria anteriores ...........................79 6.3.2.3 Marcas (solicitudes o registros/derechos) nacionales/internacionales
anteriores ..................................................................................................79 6.3.2.4 Ejemplos....................................................................................................79
6.3.3 Pluralidad de oposiciones............................................................................. 80 6.3.3.1 Tras la denegación de la solicitud de marca comunitaria ..........................80
6.3.4 Aspectos procesales .................................................................................... 80 6.3.4.1 Supervisión de los expedientes suspendidos............................................80 6.3.4.2 Reanudación del procedimiento ................................................................81 6.3.4.3 Cálculo de los plazos ....................................................................................81
6.4 Pluralidad de oposiciones ....................................................................... 82 6.4.1 Pluralidad de oposiciones y limitaciones...................................................... 82 6.4.2 Pluralidad de oposiciones y resoluciones .................................................... 83 6.4.3 Acumulación de procedimientos................................................................... 84
6.5 Cambio de partes (cesión, cambio de nombre, cambio de representante, interrupción del procedimiento)..................................... 85 6.5.1 Cesión y procedimiento de oposición........................................................... 85
6.5.1.1 Introducción y principio básico ..................................................................85 6.5.1.2 Cesión de una marca comunitaria anterior................................................86 6.5.1.3 Cesión de un registro nacional anterior .....................................................87 6.5.1.4 Oposición basada en una combinación de registros de marca
comunitaria y registros nacionales ............................................................88 6.5.1.5 Cesión de la solicitud de marca comunitaria impugnada ..........................89 6.5.1.6 Cesión parcial de una solicitud de marca comunitaria impugnada............89
6.5.2 Identidad de partes después de la cesión.................................................... 90 6.5.3 Cambio de nombre ....................................................................................... 90 6.5.4 Cambio de representantes ........................................................................... 90 6.5.5 Interrupción del procedimiento como consecuencia del fallecimiento o de
la incapacidad jurídica del solicitante o de su representante ....................... 90 6.5.5.1 Fallecimiento o incapacidad jurídica del solicitante ...................................91 6.5.5.2 El solicitante no puede proseguir el procedimiento ante la Oficina por
motivos legales (por ejemplo, quiebra)......................................................91 6.5.5.3 Fallecimiento o imposibilidad del representante del solicitante de actuar
ante la Oficina por motivos legales............................................................92
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1 Introducción: rasgos generales del procedimiento de oposición
El procedimiento de oposición se inicia con la recepción del escrito de oposición, el cual se notifica inmediatamente al solicitante, quien recibe una copia de los documentos obrantes en el expediente.
Cuando se presente una oposición contra un registro internacional que designa a la UE, debe entenderse que todas las referencias que figuran en las Directrices a las solicitudes de marca comunitaria incluyen los registros internacionales que designan a la UE. La Parte M de las Directrices, sobre las Marcas internacionales, redactada específicamente para las marcas internacionales, también hace referencia a la oposición.
Posteriormente, tras comprobar que se ha abonado la tasa de oposición, se examina si el escrito de oposición cumple otros requisitos de forma establecidos por el Reglamento.
En general, cabe distinguir dos tipos de irregularidades en lo concerniente a la admisibilidad:
1. Irregularidades absolutas: irregularidades que no pueden subsanarse una vez expirado el plazo de oposición. Si el oponente no subsana dichas irregularidades por iniciativa propia dentro del plazo de oposición, la oposición no será admitida.
2. Irregularidades relativas: irregularidades que pueden subsanarse una vez expirado el plazo de oposición. La Oficina requerirá al oponente, después de que expire el plazo de oposición, para que subsane las irregularidades en un plazo improrrogable de dos meses. Si el oponente no subsana dichas irregularidades, la oposición no será admitida.
Es importante destacar que para salvaguardar el principio de imparcialidad, la Oficina no enviará ninguna comunicación relativa al pago de la tasa de oposición o a las irregularidades de admisibilidad durante el plazo de oposición.
Una vez finalizado el examen de la admisibilidad de la oposición, se envía una notificación a ambas partes en la que se señalan los plazos del procedimiento. Éste comienza con un periodo en el cual las partes pueden negociar y alcanzar un acuerdo (con o sin consecuencias económicas), que es denominado periodo de reflexión. El periodo de reflexión vence dos meses después de la notificación de la admisibilidad, siendo prorrogable una vez por un periodo de 22 meses y durar un máximo de 24 meses. Cuando expira este periodo de reflexión, se inicia la fase contradictoria del procedimiento.
Posteriormente, se concede al oponente un plazo adicional de dos meses para que complete su expediente, es decir para que presente todas las pruebas y alegaciones que estime necesarias para fundamentar su oposición. Cuando hayan transcurrido estos dos meses, o cuando se haya dado traslado de las pruebas y alegaciones presentadas, el solicitante dispondrá de un plazo de dos meses para contestar a la oposición.
La Oficina puede pedir a las partes que limiten sus alegaciones a cuestiones concretas y permitir que presenten alegaciones sobre otras cuestiones en un momento posterior.
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El solicitante tiene básicamente dos formas posibles de defender su solicitud. El solicitante puede cuestionar la validez de las marcas anteriores solicitando que se presente la prueba del uso y puede presentar alegaciones y pruebas con el fin de convencer a la Oficina de que procede desestimar la oposición.
Si el solicitante se limita a presentar pruebas y alegaciones, se concederán dos meses al oponente para presentar observaciones al respecto y tras estos intercambios procede normalmente resolver sobre la oposición.
Si el solicitante presenta una solicitud de prueba del uso de la(s) marca(s) anterior(es), la etapa posterior del procedimiento puede limitarse exclusivamente a esa cuestión y abordarse más adelante el objeto del litigio.
La prueba del uso presentada por el oponente es comunicada al solicitante, quien dispondrá de dos meses para presentar alegaciones. De hacerlo así, sus comentarios se transmitirán al oponente, quien tendrá por consiguiente la oportunidad de presentar su respuesta definitiva.
En otros supuestos, puede resultar también necesario o útil mantener otro intercambio de alegaciones. Esto puede suceder, por ejemplo, cuando el asunto versa sobre cuestiones complejas o cuando el oponente plantea una nueva cuestión que es admitida en el procedimiento. En este caso, puede brindarse al solicitante la oportunidad de contestar. Con posterioridad, incumbe al examinador decidir si procede conceder al oponente un nuevo plazo para presentar alegaciones.
Una vez que las partes hayan presentado sus alegaciones, se declara concluido el procedimiento, el expediente queda a la espera de que se adopte una resolución sobre el fondo y se informa correspondientemente a aquellas.
2 Examen de la admisibilidad
2.1 Escrito de oposición
Artículo 41, apartados 1 y 3, del RMC Regla 16 bis y regla 17, apartado 4, del REMC Decisión n° EX-11-3 del Presidente de la Oficina
La oposición habrá de recibirse en la Oficina por escrito y dentro del plazo de oposición, a saber en los tres meses siguientes a la publicación de la solicitud de la marca comunitaria impugnada.
El escrito de oposición recibido por fax o por correo se introducirá en el sistema informático de la Oficina, enviándose al oponente el acuse de recibo correspondiente. También es posible presentar escritos de oposición por vía electrónica. El impreso de oposición electrónico se incorpora e introduce automáticamente en el sistema informático de la Oficina
El solicitante recibirá inmediatamente una copia del escrito de oposición (y de la documentación que haya presentado el oponente) a efectos informativos. Si la oposición se basa en una marca comunitaria, el solicitante será informado también de
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que puede obtener información sobre marcas comunitarias anteriores a través de las herramientas de búsqueda online, que están disponibles en el sitio web de la Oficina.
2.1.1 Oposición temprana contra un registro internacional
La oposición contra un registro internacional (RI) podrá presentarse entre el sexto y el noveno mes siguiente a la fecha de la primera republicación (artículo 156, apartado 2, del RMC). Por ejemplo, si la fecha de la primera republicación es el 15 de febrero de 2013, el plazo de oposición comienza el 16 de agosto de 2013 y finaliza el 15 de noviembre de 2013.
No obstante, las oposiciones presentadas después de la republicación del RI pero antes del comienzo del plazo de oposición se mantendrán en suspenso y se considerarán presentadas el primer día del plazo de oposición. Si la oposición se retira antes de esa fecha, se reembolsará la tasa de oposición.
Si la oposición es recibida antes del inicio del plazo de oposición (regla 114, apartado 3 del REMC), se remitirá una carta por la que se comunique al oponente que la oposición se considerará recibida en el primer día del plazo de oposición y que la oposición se mantendrá en suspenso hasta entonces.
2.1.2 Oposición temprana contra una solicitud de marca comunitaria
Cualquier escrito de oposición contra una solicitud de marca comunitaria recibida por fax y/o por correo antes del inicio del plazo de oposición conforme al artículo 41, apartados 1 a 3, del RMC, se mantendrá en suspenso y se considerará presentado en el primer día del plazo de oposición, es decir, el primer día siguiente a la publicación de la solicitud de marca comunitaria en la parte A.1. del Boletín de Marcas Comunitarias. Si la oposición es retirada antes de esa fecha o la solicitud de marca comunitaria es denegada antes de la publicación (artículo 39 del RMC), se reembolsará la tasa de oposición.
La Oficina comunicará al oponente que, dado que la solicitud de marca comunitaria contra la que se dirige la oposición aún no ha sido publicada en el Boletín de Marcas Comunitarias, la oposición se mantendrá en suspenso y sólo se tramitará después de la publicación de la solicitud de marca comunitaria impugnada. El oponente será informado de que la oposición se considerará presentada en el primer día del plazo de oposición.
2.2 Pago
Para las normas generales sobre el pago, véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos.
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2.2.1 Recepción tardía del escrito de oposición y recepción del pago dentro del plazo de oposición
Regla 17, apartado 2, del REMC
Si el escrito de oposición se recibe tarde pero el pago se recibe en la Oficina dentro del plazo de oposición, la oposición no será admitida. En tal caso, la Oficina no reembolsará la tasa de oposición. Deberá informarse al oponente de la inadmisión de su oposición y se le concederán dos meses para presentar sus alegaciones al respecto.
Si el oponente aporta pruebas concluyentes, tales como informes de fax, confirmación de recepción por servicio de mensajería y/o acuse de recibo de cartas certificadas, que acrediten que el escrito de oposición no se presentó tardíamente sino que fue recibido efectivamente de forma correcta por la Oficina en el plazo de oposición de tres meses, la Oficina deberá reconsiderar su decisión y aceptar la oposición por haberse recibido dentro del plazo de oposición. En tal caso, proseguirá el examen de la admisibilidad. En caso de que las pruebas presentadas por el oponente no demuestren que el escrito de oposición fue recibido en el plazo pertinente o si el oponente no contesta en el plazo de dos meses, deberá adoptarse una resolución declarando la inadmisibilidad de la oposición. De la notificación de la resolución enviada al oponente, deberá remitirse copia al solicitante.
2.2.2 Fecha de pago
Artículo 41, apartado 3, del RMC Artículo 8, del RTMC Regla 17, apartado 1, del REMC
La Oficina deberá recibir la totalidad del importe de la tasa de oposición dentro del plazo de oposición.
Si la tasa de oposición se ha recibido una vez transcurrido el plazo de oposición pero las instrucciones de pago se habían dado al banco durante los últimos 10 días del plazo de oposición, la oposición puede proseguir si se cumplen dos condiciones: el oponente presenta pruebas de haber dado las instrucciones de pago durante los últimos 10 días del plazo de oposición Y abona un recargo del 10 % de la tasa de oposición (doble condición). No obstante, el oponente no tendrá que abonar este recargo si presenta pruebas de haber dado al banco las instrucciones de pago más de 10 días antes de haber transcurrido el plazo de pago. Cuando la tasa de oposición no se reciba dentro del plazo de oposición, o cuando no se aplique la excepción antes mencionada, el escrito de oposición se considerará no presentado.
Artículo 5, apartado 2; y artículo 8, apartado 1, del RTMC Decisión n° EX-06-1 del Presidente de la Oficina
Si el oponente o su representante tienen abierta una cuenta corriente, el pago se considerará efectivo el día en que se reciba la oposición.
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Puesto que el pago por cuenta corriente se considera efectuado el día de recepción de la oposición, si el escrito de oposición se recibe fuera de plazo, el pago también se considera tardío. En consecuencia, la oposición se considerará no presentada.
El sistema de cuentas corrientes es un sistema de cargo automático. Ello significa que la Oficina puede efectuar cargos en dichas cuentas para todo tipo de operaciones financieras sin recibir instrucciones.
La ausencia de indicación o la indicación incorrecta del importe de la tasa de oposición no tiene efectos negativos, pues es evidente que el oponente tenía intención de pagar el importe de la tasa.
Aunque no haya una petición expresa del oponente, la existencia de una cuenta corriente bastaría en ese caso para que se efectuara el adeudo en la cuenta. Lo anterior es cierto con independencia de que se use o no el impreso de oposición.
Sólo se hará una excepción a esta regla cuando el titular de una cuenta corriente que no desee que se utilice esta cuenta para el pago de una tasa o gasto en particular lo comunique a la Oficina por escrito (por ejemplo, indicando una transferencia bancaria).
Pago de la tasa de oposición mediante cargo en la cuente corriente de un tercero
El pago de la tasa de oposición mediante cargo en la cuenta corriente de un tercero requiere que este último autorice expresamente el cargo en su cuenta de la tasa concreta. En tales supuestos, el oponente deberá presentar una autorización dentro del plazo de oposición.
El pago se considerará realizado el día en que la Oficina reciba la autorización.
2.2.3 Consecuencias en caso de falta de pago
Regla 17, apartados 1 y 4; y regla 54, del REMC
En el caso de que no se abone la tasa de oposición dentro del plazo establecido, no se considerará presentada la oposición y se enviará una notificación al oponente sobre este extremo.
Simultáneamente, deberá remitirse al solicitante una copia de esta notificación a título informativo.
Si en el plazo de dos meses concedido, el oponente presenta pruebas de que la conclusión de la Oficina acerca de la pérdida de derechos es inexacta, y acredita que el pago se realizó en plazo, se enviará una notificación, con copia para el solicitante, acompañada de la prueba presentada por el oponente.
El oponente podrá, en un plazo de dos meses, solicitar a la Oficina que adopte una resolución. Si así lo hiciere, la resolución deberá notificarse a las dos partes.
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2.2.4 Reembolso de la tasa
Artículo 8, apartado 3; y artículo 9, apartado 1, del RTMC Regla 17, apartado 1; y regla 18, apartado 5, del REMC
En el caso de que no se abone la totalidad de la tasa de oposición dentro del plazo establecido o de que se abone después de la expiración del plazo de oposición, y de que la oposición no se considere presentada, se devolverá al oponente el importe abonado. El reembolso de la tasa de oposición, previsto en la regla 18, apartado 5, del REMC, incluirá cualquier recargo que se hubiere abonado por el oponente en virtud del artículo 8, apartado 3, del RTMC.
2.3 Lenguas y traducción del escrito de oposición
Artículo 119, apartados 5 y 6, del RMC Regla 16, regla 17, apartado 3; regla 83, apartado 3; y regla 95, letra b), del REMC
De acuerdo con lo dispuesto en el artículo 119, apartado 5, del RMC, los escritos de oposición deberán presentarse en una de las lenguas de la Oficina. Pueden darse varias situaciones en cuanto a la elección de la lengua de procedimiento:
1. Se ha utilizado el impreso oficial de oposición de la OAMI y el oponente ha elegido una lengua de procedimiento admisible.
La oposición cumple el régimen lingüístico de los Reglamentos.
Ejemplos
a) Las lenguas de la solicitud de marca comunitaria son portugués e inglés. Se ha enviado la versión en lengua portuguesa del impreso, pero no puede traducirse ninguno de los elementos textuales pertinentes para la admisibilidad, y se marcan las casillas correspondientes. La oposición será admitida. Dado que la lengua de procedimiento sólo puede ser el inglés, no es necesario solicitar al oponente que indique la lengua de procedimiento de oposición. Cuando se notifique la oposición, deberá adjuntarse un impreso oficial en blanco en inglés, indicándose la lengua de procedimiento.
b) Las lenguas de la solicitud de marca comunitaria son alemán e inglés. Se ha enviado la versión en lengua francesa del impreso, pero la oposición se presenta en francés o no puede traducirse ninguno de los elementos textuales, y se marcan las casillas correspondientes. La oposición será admitida. Dado que la lengua de procedimiento puede ser alemán o inglés, se solicitará al oponente que indique la lengua de procedimiento de oposición. Cuando se notifique la oposición, deberá adjuntarse un impreso oficial en blanco en la lengua indicada.
2. El impreso oficial de oposición de la OAMI ha sido utilizado y el texto contenido en el impreso está en una de las lenguas de la Oficina, pero no es una de las lenguas posibles del procedimiento.
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Si los elementos textuales relevantes para la admisibilidad no pueden traducirse (por ejemplo, números) y se han marcado todas las casillas pertinentes, la oposición será admitida, aun cuando contenga partes textuales que figuren en la lengua errónea, como una explicación de los motivos. Dado que la explicación de los motivos no es obligatoria en la fase de admisibilidad, el hecho de que no figure en la lengua correcta no afecta a la admisibilidad. No «existe».
La Oficina comprobará si el oponente ha indicado la lengua de procedimiento en el impreso.
○ De no ser así, o si se ha indicado una lengua errónea, y tanto la primera como la segunda lengua de la solicitud de marca comunitaria son lenguas de la Oficina, se enviará una carta solicitando al oponente que indique la lengua de procedimiento. Si no se recibe respuesta en un plazo de dos meses, la oposición no será admitida. Cuando la oposición sea notificada, deberá adjuntarse un impreso en blanco en la lengua de procedimiento.
○ De no ser así, o si se ha indicado una lengua errónea y sólo una de las lenguas de la solicitud de marca comunitaria es una lengua de la Oficina, no es necesario preguntar por la lengua de procedimiento, ya que sólo puede ser una lengua de la Oficina. Cuando la oposición sea notificada, deberá adjuntarse un impreso en blanco en la lengua de procedimiento. La lengua de procedimiento se indicará en la carta.
○ Si la lengua de procedimiento se indica correctamente, deberá adjuntarse un impreso en blanco en la lengua de procedimiento cuando se notifique la oposición.
Lo mismo se aplicará si se ha utilizado el impreso oficial de oposición de la OAMI y el texto del impreso NO está en una de las lenguas de la Oficina.
3. No se ha utilizado un impreso oficial de oposición de la OAMI, pero el texto de la oposición figura en una lengua posible del procedimiento.
La oposición cumple el régimen lingüístico de los Reglamentos.
4. No se ha utilizado un impreso oficial de oposición de la OAMI y el texto de la oposición figura en una de las lenguas de la Oficina, pero no es una de las lenguas posibles del procedimiento.
Conforme al artículo 119, apartado 6 del RMC y la regla 16, apartado 1 del REMC, el oponente presentará, a iniciativa propia, una traducción a la lengua de procedimiento en el plazo de un mes. Si no se recibe dicha traducción, la oposición no será admitida.
5. No se ha utilizado un impreso oficial de oposición de la OAMI y el texto de la oposición figura en una de las lenguas oficiales, pero no es una de las lenguas de la Oficina.
No se admitirá la oposición. Se aplicará el artículo 119, apartado 5 del RMC. Se enviará una notificación en la primera lengua (si es una de las lenguas de la Oficina) o en la segunda lengua de la solicitud de marca comunitaria impugnada.
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La lista de productos y servicios se rige por un régimen especial (véase el punto 2.4.2.3 infra).
Explicación de los motivos: Cuando se marque una de las casillas relativas a los motivos y de forma adicional se aporte una explicación de los hechos o alegaciones, no será necesario traducir esta explicación ni indicaciones como «véase el anexo», «véase el documento adjunto», «se presentará más adelante» en la fase de examen de la admisibilidad. Estas traducciones se presentarán más adelante, una vez terminado el periodo de reflexión y antes de la finalización del plazo para acreditar la oposición.
2.4 Examen de la admisibilidad
Reglas 15 y 17, del REMC
El examen de la admisibilidad abarca los requisitos absolutos y los requisitos relativos:
En la regla 15, apartado 1 y apartado 2, letras a) a c), del REMC constan las indicaciones y los elementos que deben figurar en el escrito de oposición o que debe facilitar el oponente por iniciativa propia dentro del plazo de oposición.
En la regla 15, apartado 2, letras d) a h), del REMC figuran las indicaciones y los elementos que, si no se facilitan dentro del plazo de oposición, dan lugar al envío por la Oficina de un escrito de notificación de irregularidad al oponente para que la subsane en un plazo improrrogable de dos meses.
En la regla 15, apartado 3, del REMC figuran las indicaciones opcionales (que determinan el alcance de la oposición pero no la inadmisión de la oposición).
2.4.1 Requisitos de admisibilidad absolutos
Si la oposición no es admisible como consecuencia de requisitos de admisibilidad absolutos, se informará al oponente y se le invitará a presentar observaciones sobre la admisibilidad. De confirmarse la inadmisibilidad, se enviará al oponente una resolución por la que se desestima la oposición con copia al solicitante.
Oposiciones contra solicitudes de MC
Se examinarán las marcas o los derechos anteriores para comprobar si están claramente identificados. Si el único derecho anterior que sirve de base a la oposición no está debidamente identificado, ésta no se admitirá y se invitará al oponente a formular sus observaciones sobre la inadmisibilidad antes de que se adopte la resolución de inadmisibilidad. Si el único derecho anterior que sirve de base a la oposición está debidamente identificado (requisitos de admisibilidad absolutos), la Oficina examinará si cumple también los requisitos de admisibilidad relativos.
Cuando la oposición se base en más de un derecho anterior y uno de ellos haya sido correctamente identificado, el examen de admisibilidad (requisitos relativos) podrá seguir adelante sobre la base de dicho derecho anterior. Las partes serán informadas a este respecto cuando se les notifiquen los plazos del procedimiento de oposición.
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Oposiciones contra registros internacionales que designan a la UE
En relación a procedimientos de oposición contra Marcas Internacionales que designan la UE se llevará a cabo un examen de admisibilidad completo. Dicho examen debe extenderse a todos los derechos anteriores. En caso de que ninguno de los derechos anteriores haya sido identificado adecuadamente, la oposición se considerará inadmisible y la Oficina invitará al oponente a pronunciarse sobre dicha inadmisibilidad antes de dictarse la oportuna resolución.
2.4.1.1 Identificación de la solicitud de marca comunitaria impugnada
Regla 15, apartado 2, letra a) y regla 17, del REMC
Los elementos obligatorios para la identificación de la solicitud de marca comunitaria son el número de la solicitud y el nombre del solicitante.
Por ejemplo, si el número de solicitud indicado no se corresponde con el nombre del solicitante indicado, la Oficina decidirá si puede determinarse sin duda alguna cuál es la solicitud de marca comunitaria impugnada. Si no se indica el nombre del solicitante, puede encontrarse en el sistema informático de la Oficina.
La fecha de publicación es una indicación opcional, que permite un doble control de la identificación de la solicitud de marca comunitaria. Aunque ésta no se indique, la solicitud de marca comunitaria puede identificarse suficientemente mediante otras indicaciones.
En cada escrito de oposición sólo podrá impugnarse una única solicitud de marca comunitaria.
Cuando la solicitud de marca comunitaria no pueda identificarse, esta irregularidad sólo podrá subsanarse por iniciativa del oponente durante los tres meses del plazo de oposición, de lo contrario la oposición no se admitirá y se invitará al oponente a formular sus comentarios sobre la inadmisibilidad de su solicitud. De confirmarse la inadmisibilidad, se enviará al oponente una resolución por la que se desestima la oposición con copia al solicitante.
2.4.1.2 Identificación de marcas y derechos anteriores
Artículo 8, apartado 2, del RMC Regla 15, apartado 2, letra b); y regla 17, apartado 2, del REMC
Los elementos de identificación deben buscarse no sólo en el escrito de oposición, sino también en los anexos u otros documentos presentados junto con el escrito de oposición o cualesquiera documentos presentados en el plazo de oposición.
Una oposición puede basarse en cinco tipos de derechos anteriores: (1) registros o solicitudes de marcas anteriores (2), registros o solicitudes de marcas renombradas anteriores (3), marcas notorias anteriores (4), marcas anteriores no registradas y (5) signos anteriores utilizados en el tráfico económico.
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Derechos anteriores que no son anteriores
Artículo 8, apartado 2; y artículo 41, apartado 1, del RMC
Para que un derecho sea anterior debe tener, si carece de prioridad, una fecha de solicitud previa al día en el que se presentó la solicitud de marca comunitaria impugnada. En caso de conflicto entre una marca nacional y una solicitud de marca comunitaria, la hora y el minuto de la presentación de la marca nacional carece de pertinencia para determinar qué marca es anterior (sentencia de 22/03/2012, C 190/10 , «Génesis»).
En ocasiones la oposición se basa en una o más marcas u otros derechos que no son anteriores a la solicitud de marca comunitaria en el sentido del artículo 8, apartado 2, del RMC. La decisión sobre si un derecho es o no anterior se adopta en la fase de admisibilidad.
Cuando la única marca anterior o todas las marcas anteriores no resultaran anteriores, la Oficina comunicará al oponente la inadmisibilidad y le invitará a presentar observaciones sobre esta cuestión antes de que se adopte una decisión sobre la inadmisibilidad.
En el caso de que la oposición se funde en más de un derecho y uno sea anterior, y uno o más de uno no lo sean, la Oficina notificará la admisibilidad de la oposición de la forma habitual sin mencionar el hecho de que una o más marcas o derechos no son anteriores. Esta cuestión se decidirá en la resolución.
Registros o solicitudes de marcas anteriores
Artículo 8, apartado 2, letras a) y b), del RMC Regla 15, apartado 2, letra b); regla 17, apartado 2; y regla 19, apartado 3, del REMC
Estos derechos consisten en registros o solicitudes de marcas comunitarias, registros internacionales que designan a la Unión Europea, registros o solicitudes de marcas nacionales o Benelux (incluidas «ex marcas comunitarias» respecto de las cuales se ha presentado una petición de transformación) y registros internacionales en virtud del Arreglo o del Protocolo de Madrid con efectos en un Estado miembro.
La antigüedad reivindicada en una marca comunitaria podrá tenerse en cuenta a efectos del artículo 8, apartado 2, letra a), del RMC siempre que el titular de la marca comunitaria haya renunciado a la marca anterior o haya dejado que se extinga conforme al artículo 34, apartado 2, del RMC y este hecho sea demostrado por el oponente.
En tal caso, el oponente deberá basar su oposición en la marca comunitaria, alegando expresamente, en el plazo de oposición de tres meses, que la marca nacional sigue existiendo con la antigüedad reivindicada en la marca comunitaria. Deberá demostrarse una relación clara entre la marca comunitaria indicada y la marca anterior respecto de la que se reivindicó la antigüedad en la marca comunitaria. En el plazo señalado con arreglo a la regla 19, apartado 1, del REMC, el oponente deberá aportar prueba suficiente, procedente de la OAMI, de que la reivindicación de antigüedad ha sido aceptada y prueba, procedente de la administración en la que se registró la marca
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nacional, de que ésta ha sido objeto de renuncia o se ha dejado extinguir conforme al artículo 34, apartado 2, del RMC.
Los elementos de identificación absolutos correspondientes a los registros y solicitudes de marca anterior son:
El número de registro/solicitud;
Las solicitudes de marca nacional resultantes de la transformación de una solicitud/marca comunitaria anterior se considerarán nacidas tan pronto como se presente una petición de transformación válida. Tales derechos se considerarán debidamente identificados a efectos de admisibilidad cuando el oponente indique el número de la solicitud/marca comunitaria objeto de transformación y los países para los que ha solicitado la transformación.
La indicación relativa a si la marca anterior ha sido registrada o solicitada;
El Estado miembro, incluido el Benelux, en que se ha registrado/solicitado la marca anterior o, en su caso, la indicación de que se trata de una marca comunitaria.
En caso de que el escrito de oposición no indique el Estado miembro pero vaya acompañado de un certificado, se considerará que el Estado miembro está suficientemente identificado, aunque el certificado no esté redactado en la lengua de procedimiento. No procede pedir una traducción del certificado en esta fase del procedimiento. Si el certificado se refiere a un registro internacional, se presume que la oposición se basa en esta marca en todos los Estados miembros y/o países del Benelux indicados en el certificado.
Marca solicitada por un agente
Artículo 8, apartado 3, del RMC Regla 15, apartado 2, letras b) e i), del REMC
Una marca solicitada por un agente es una solicitud de marca comunitaria impugnada respecto de la cual el oponente alega que la persona que mantiene o ha mantenido relaciones comerciales con el oponente (su agente o su representante) presentó la solicitud sin su consentimiento.
Las marcas o los derechos anteriores en los que se basa la oposición deberán identificarse siguiendo los mismos criterios que en el caso de los registros o solicitudes de marcas anteriores. Es decir, se hará constar el país y el número de registro o solicitud. La representación de la marca (en color, en su caso) sólo deberá aportarse si la marca anterior del titular es una marca no registrada, ya que en este caso no puede facilitarse un número de registro para identificar claramente la marca anterior. En el caso de las marcas denominativas, se indicará la palabra que constituye la marca. En el caso de las marcas figurativas o de otro tipo no registradas, se presentará la representación de la marca tal como ésta se utiliza y es reivindicada por el titular. Véanse también las Directrices, Parte C, Oposición, Sección 3, Marca solicitada por un agente.
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Registros o solicitudes de marcas renombradas anteriores
Artículo 8, apartados 1 y 5, del RMC Regla 15, apartado 2, letra c) y g), del REMC
En virtud del artículo 8, apartado 5, del RMC una oposición puede basarse en una marca renombrada, invocada contra productos y servicios que sean o no similares. La marca renombrada puede ser un registro comunitario, internacional, del Benelux y nacional, así como una solicitud anterior pendiente de registro.
Se aplican los mismos requisitos de identificación que en el caso de las marcas registradas invocadas en virtud del artículo 8, apartado 1, letra b) del RMC: número y Estado miembro o región de protección, la indicación del lugar y los productos y servicios en relación con los cuales la marca goza de renombre es un requisito de admisibilidad relativo.
Marca anterior notoriamente conocida
Artículo 8, apartado 2, letra c) del RMC Regla 15, apartado 2, letra b), incisos i) y (ii); y regla 17, apartado 2, del REMC
El artículo 8, apartado 2, letra c), del RMC protege las marcas notoriamente conocidas en el sentido del artículo 6 bis del Convenio de París. Puede tratarse de una marca registrada o no registrada o de una marca que no esté registrada en el territorio en el que deba protegerse (independientemente de que esté registrada en el territorio de origen).
Las indicaciones absolutas son las siguientes:
Una indicación del Estado miembro en el cual la marca sea notoriamente conocida: si esta indicación no puede deducirse de los documentos obrantes en el expediente, la marca no se admitirá como base de la oposición.
Si se trata de una marca registrada, las indicaciones mencionadas en la regla 15, apartado 2, letra b), inciso i), del REMC, es decir, el número de registro y el Estado miembro en el que esté registrada la marca.
Si la marca no está registrada, una representación de la misma. En el caso de las marcas denominativas, se indicará la palabra que constituye la marca. En el caso de las marcas figurativas o de otro tipo, se presentará la representación de la marca (en color, en su caso) tal como ésta se utiliza y tal como se reivindica que es notoriamente conocida. Si la oposición se basa además en una marca registrada, pero no se presenta una representación de la marca notoriamente conocida, la Oficina supone que ambas marcas se refieren al mismo signo y que el oponente reivindica que la marca registrada es notoriamente conocida (resolución de 17/10/2007, R 0160/2007-1, «QUART/Quarto»).
Aspectos procesales
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 18
FINAL VERSION 1.0 01/02/2015
Marcas anteriores no registradas y signos anteriores utilizados en el tráfico económico
Artículo 8, apartado 4, del RMC Regla 15, apartado 2, letra b), inciso (iii) y regla 17, apartado 2, del REMC
Esta categoría está constituida por signos que no están registrados y que se utilizan como marcas o por una gran diversidad de derechos anteriores, entre ellos los derechos sobre una denominación social, un nombre comercial, un signo de un negocio, un rótulo de establecimiento, títulos de obras literarias o artísticas protegidas y el derecho a un signo con arreglo a las acciones de usurpación (passing off).
Las indicaciones absolutas son las siguientes:
Una indicación del tipo o la naturaleza del derecho. La naturaleza del derecho determina el alcance de la oposición, del cual depende la defensa del solicitante. El «nombre comercial», la «denominación social», el «signo de un negocio», el «derecho con arreglo a las acciones de usurpación », los «títulos de obras literarias o artísticas protegidas» constituyen indicaciones admisibles de la naturaleza de los derechos. En cambio, no se admitirán expresiones generales tales como «derecho consuetudinario» y «competencia desleal» sin indicar la naturaleza específica del derecho. Esta lista no es exhaustiva. En caso de que el oponente base su oposición en un derecho que no puede constituir un derecho anterior con arreglo al artículo 8, apartado 4 del RMC, por ejemplo, un derecho de autor o un dibujo o modelo industrial, la oposición será admitida. Sin embargo, una vez iniciado el procedimiento, la oposición será desestimada en cuanto al fondo;
Una indicación del Estado miembro en el que se reivindica la existencia del derecho;
Una representación del derecho anterior (en color, en su caso).
A falta de las indicaciones anteriores, no se admitirá el derecho de que se trata.
2.4.1.3 Identificación de los motivos
Artículo 41, apartado 3, y artículo 75, del RMC Regla 15, apartado 2, letra c); y regla 17, apartado 2, del REMC
De conformidad con la regla15, apartado 2, letra c), del REMC, no se admitirá una oposición en la que no se especifiquen los motivos si no se subsana esta irregularidad antes de que venza el plazo de oposición.
La especificación de los motivos consistirá en una declaración en el sentido de que se cumplen los requisitos correspondientes previstos en el artículo 8, apartados 1, 3, 4 y 5, del RMC. En esta fase del procedimiento, la presentación de alegaciones y pruebas es voluntaria.
En particular, los motivos se considerarán identificados adecuadamente si:
Se ha marcado una de las casillas pertinentes del impreso de oposición;
Aspectos procesales
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 19
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No se marcado la casilla pertinente, pero la marca anterior está identificada y cabe considerar que la oposición se basa en el artículo 8, apartado 1.
En ambos casos, es posible identificar sin ninguna duda los motivos en el escrito de oposición y la oposición se admitirá.
De lo contrario, antes de desestimar la oposición, deberá procederse a un examen detallado del escrito de oposición en su totalidad: es irrelevante que los motivos se indiquen en el impreso de oposición, en sus anexos o en los documentos que se acompañan como prueba. Los motivos de oposición deberán ser inequívocamente claros.
En cualquier otro supuesto, se invitará al oponente a formular sus alegaciones sobre la inadmisibilidad antes de rechazar la oposición.
2.4.2 Requisitos de admisibilidad relativos
Regla 15, apartado 2, letra d) – h), del REMC
Las irregularidades relativas son las que pueden subsanarse una vez expirado el plazo de oposición. La Oficina requerirá al oponente para que subsane las irregularidades en el plazo de dos meses a partir de la notificación de las irregularidades. Si el oponente las subsanare, la oposición se considerará admisible; de lo contrario, no se admitirá.
2.4.2.1 Fechas
Regla 15, apartado 2, letra d) y regla 17, apartado 4, del REMC
Se trata de la fecha de presentación y, en su caso, la fecha de registro y la fecha de prioridad de la marca anterior.
Este requisito se aplica a los derechos siguientes:
solicitud o registro de marca comunitaria, nacional o internacional anterior invocada en virtud del artículo 8, apartado 1, letra a) o b), del RMC;
marca notoria anterior invocada en virtud del artículo 8, apartado 2, letra c), del RMC, si está registrada dentro del territorio comunitario;
marca anterior en virtud del artículo 8, apartado 3, del RMC si está registrada;
marca renombrada anterior invocada en virtud del artículo 8, apartado 5, del RMC.
Estas indicaciones pueden tener importancia a fin de evitar posibles errores en la identificación de la marca anterior. Basta con que sea posible encontrar estos elementos en los documentos adjuntos. En caso de que no consten estos elementos, se comunicará al oponente la existencia de irregularidades.
Aspectos procesales
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 20
FINAL VERSION 1.0 01/02/2015
2.4.2.2 Representación de la marca o el signo anterior
Regla 15, apartado 2, letra e); y regla 17, apartado 4, del REMC
En el caso de derechos que no estén registrados, éste es un requisito de admisibilidad absoluto, dado que, de lo contrario, no sería posible determinar la existencia del derecho anterior (véase supra).
El requisito de admisibilidad relativo que consiste en aportar una representación de la marca en virtud de la regla 15, apartado 2, letra e), del REMC se aplica a los siguientes derechos:
solicitud o registro de marca nacional o internacional anterior invocada en virtud del artículo 8, apartado 1, letra a) o b), del RMC;
marca notoria anterior invocada en virtud del artículo 8, apartado 2, letra c), del RMC, si está registrada dentro del territorio comunitario;
marca renombrada anterior invocada en virtud del artículo 8, apartado 5, del RMC;
marca presentada por un agente (artículo 8, apartado 3, del RMC, si se trata de una marca registrada).
Si se trata de una marca denominativa, bastará con una indicación de la palabra.
Si se trata de una marca figurativa, tridimensional o de otro tipo, deberá aportarse una representación de la misma, tal como aparece en la solicitud o en el registro y, en su caso, en color.
Si no se adjunta al escrito de oposición la representación debida, se notificará al oponente la irregularidad. En el caso de que el oponente no la subsane en el plazo de dos meses, no se admitirá el derecho anterior.
Si la marca anterior es una marca comunitaria, no se exige una representación, ya que figura en las bases de datos de la Oficina.
No es obligatorio presentar una representación de la marca en color cuando la marca nacional no haya sido publicada en color (por razones técnicas), lo que constituye práctica habitual, por ejemplo, en Chipre y Letonia. En tales supuestos, la Oficina no exige una representación en color ni requiere al oponente para que presente una traducción de las indicaciones de color.
Los siguientes países o bien siempre han publicado en color o bien lo han hecho desde la fecha que se indica:
Alemania; Austria; Bélgica; Bulgaria; Croacia (2009); Dinamarca;
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Eslovaquia (2008); Eslovenia (1992); España (desde el 31 de julio de 2002); Estonia (2003); Finlandia (2005) Francia (1992); Grecia (2007); Irlanda (2003); Italia; Hungría; Lituania (desde julio de 2009); Luxemburgo; Malta; Países Bajos; Polonia (2003); Portugal (2006); Reino Unido (2004); República Checa (1999); Rumanía; Suecia.
Las marcas internacionales se han publicado en color desde 1989.
Regla 80, apartado 2; y regla 17, apartado 4, del REMC
En caso de que la representación que obra en el expediente sea poco clara, la Oficina podrá solicitar una más clara. Cuando la representación recibida sea incompleta o ilegible y no se atienda al requerimiento de presentar una más clara, la representación se considerará no recibida y el derecho se declarará inadmisible.
2.4.2.3 Productos y servicios
Regla 15, apartado 2, letra f) y regla 17, apartado 4, del REMC Comunicación nº 5/07 del Presidente de la Oficina
La regla 15, apartado 2, letra f), del REMC establece que el escrito de oposición deberá incluir los productos y servicios en los que se basa la oposición en la lengua de procedimiento. Esto se aplica a todos los tipos de derechos anteriores.
La oposición puede basarse en todos los productos y servicios para los que se registró o solicitó la marca anterior o en sólo algunos de dichos productos y servicios.
Según la Comunicación nº 5/07 del Presidente de la Oficina de 12 de septiembre de 2007 relativa a la modificación de las prácticas en los procedimientos de oposición, la indicación del/de los número(s) de clase se acepta como una indicación suficiente de los productos y servicios de los derechos anteriores en los que se basa la oposición. Lo anterior se aplica tal como se indica a continuación.
Aspectos procesales
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 22
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Parte de los productos y servicios
Si la oposición se basa en parte de los productos y servicios para los que la(s) marca(s) anterior(es) se solicitó/solicitaron o registró/registraron, dichos productos y servicios deberán enumerarse en la lengua de procedimiento.
La Oficina aceptará también una indicación del/de los número(s) de clase pertinentes, siempre que se adjunte un certificado o extracto de registro de una fuente oficial [el certificado o extracto de registro deberá constar en la lengua de procedimiento o traducirse a la lengua de procedimiento o hacer uso de códigos nacionales o INID para identificar claramente el/los número(s) de clase pertinente(s)].
Si el número de productos y servicios en los que se basa la oposición es menor que el número de productos y servicios para los que se ha registrado la marca, no será necesario indicar los productos y servicios en los que no se base la oposición, dado que son irrelevantes para el procedimiento.
Todos los productos y servicios
Si la oposición se basa en todos los productos y servicios para los que la(s) marca(s) anterior(es) se solicitó/solicitaron o registró/registraron, dichos productos y servicios deberán enumerarse en la lengua de procedimiento.
Sin embargo, en lugar de enumerarlos, el oponente podrá referirse a «todos los productos y servicios para los que se registró la marca anterior», siempre que se adjunte un certificado o extracto de registro de una fuente oficial (el certificado o extracto de registro deberá constar en la lengua de procedimiento o traducirse a la lengua de procedimiento o hacer uso de códigos nacionales o INID).
La Oficina aceptará también una indicación del/de los número(s) de clase pertinentes, siempre que se adjunte un certificado o extracto de registro de una fuente oficial [el certificado o extracto de registro deberá constar en la lengua de procedimiento o traducirse a la lengua de procedimiento o hacer uso de códigos nacionales o INID para identificar claramente los número(s) de clase pertinente(s)].
Además, cuando el oponente indique en el impreso de oposición que la oposición se basa en «todos los productos y servicios para los que se registró el derecho anterior», pero a continuación sólo enumere «parte» de dichos productos y servicios (en comparación con el certificado de registro o extracto oficial pertinente que se adjunta al impreso de oposición) la Oficina, para subsanar la información contradictoria recogida en el escrito de oposición, supondrá que la oposición se basa en «todos los productos y servicios para los que se registró el derecho anterior».
Aun cuando el oponente no haya indicado, o no haya indicado con claridad, los productos y/o servicios en los que basa su oposición, basta con que adjunte un certificado de registro en la lengua de procedimiento; entonces se presumirá que la oposición se basa en los productos y servicios que figuran en el certificado.
Sin embargo, si el certificado no está redactado en la lengua de procedimiento o si no se adjunta ningún certificado, deberá notificarse esta irregularidad.
Aspectos procesales
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 23
FINAL VERSION 1.0 01/02/2015
En el caso de que una oposición se base en «todos los productos y servicios idénticos/ similares», se solicitará una aclaración, ya que esta redacción no permite identificar con suficiente claridad la base de la oposición.
Si se emplea una indicación como «la oposición se basa en todos los productos de la clase 9» sin adjuntar un certificado en la lengua de procedimiento, la Oficina exigirá que se presente una especificación en la lengua de procedimiento.
Una indicación de este tipo sólo será admisible cuando el oponente responda que es titular de un registro en el que consta una descripción según la cual el signo está registrado para «todos los productos de la clase 9».
Si la oposición se basa en marcas o derechos anteriores no registrados, el oponente deberá indicar las actividades comerciales en las cuales se utilizan dichas marcas o derechos.
Aspectos específicos: oposición presentada contra registros internacionales que designan la Unión Europea
A efectos de admisibilidad, en el caso de oposiciones presentadas contra registros internacionales que designan la Unión Europea, la indicación del/de los número(s) de clase únicamente en el escrito de oposición no basta para identificar los productos y servicios en los que se basa la oposición. Si la oposición se basa en la totalidad o parte de los productos y servicios para los que la(s) marca(s) anterior(es) se registró/registraron o solicitó/solicitaron, dichos productos y servicios deberán enumerarse en la lengua de procedimiento de oposición. Dicha enumeración debe incluir todos los productos o servicios amparados por dicha marca o al menos los productos o servicios en los que se fundamenta la oposición.
2.4.2.4 Marca renombrada anterior: alcance del renombre
Regla 15, apartado 2, letra g), del REMC
En el caso de que la oposición se fundamente en una marca anterior de renombre en el sentido contemplado en el artículo 8, apartado 5, del RMC, deberá incluirse una indicación del Estado miembro en el que la marca tiene renombre y los productos y servicios para los que lo tiene.
2.4.2.5 Identificación del oponente
Artículo 41, apartado 1, del RMC Regla 1, apartado 1, letra b); y regla 15, apartado 2, letra h), inciso i), del REMC
El oponente podrá ser una persona física o jurídica. Con el fin de poder identificar al oponente, deberá indicarse al menos su nombre y dirección.
Hasta la fecha no se han dado casos de oposición en que el oponente no haya sido identificado. Si sólo se indica el nombre del oponente y, por ejemplo, un número de fax, se requerirá al oponente para que comunique su dirección.
Aspectos procesales
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 24
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Al examinar si el oponente está claramente identificado, deberá prestarse atención a la naturaleza del oponente, es decir, si es una persona física o jurídica. Cuando existan dudas acerca de si el oponente es una persona física o jurídica, o cuando no se mencione el tipo de persona jurídica de que se trata (por ejemplo, GmbH, KG, SA, Ltd.), se notificará esta irregularidad.
Legitimación
Regla 1, apartado 1, letra b); y regla 15, apartado 2, letra h), incisos (i) y (iii), del REMC
A no ser que se indique lo contrario, se presume que el oponente afirma ser el titular del derecho anterior. Sólo en el caso de que presentase oposición un licenciatario autorizado o una persona facultada para ejercer tal derecho con arreglo a la legislación nacional aplicable, deberá presentar una declaración en este sentido, así como las indicaciones relativas a la autorización o el derecho que le faculta para presentar dicha oposición. De no facilitarse esta información se notificará la existencia de una irregularidad.
De conformidad con la regla 15, apartado 2, letra h), inciso i), del REMC, en el caso de que presentase oposición un licenciatario o una persona facultada para ejercer tal derecho, deberá indicar su nombre y dirección con arreglo a lo dispuesto en la regla 1, apartado 1, letra b).
Si el escrito de oposición se basa en los motivos previstos en el artículo 8, apartado 1, o en el artículo 8, apartado 5, del RMC, y por lo tanto en registros o solicitudes de marcas, podrá ser presentado por el titular y por los licenciatarios de estos registros o solicitudes, siempre que hayan sido autorizados por el titular.
Si el escrito de oposición se basa en los motivos previstos en el artículo 8, apartado 3, del RMC (marca de agente), podrá ser presentado por el titular de la marca.
Si el escrito de oposición se basa en los motivos previstos en el artículo 8, apartado 4, del RMC (marcas o signos anteriores), podrá ser presentado por el titular de la marca o signo anterior y por las personas facultadas con arreglo a la legislación nacional para ejercitar los derechos derivados de la marca o signo anterior.
Siempre que el oponente alegue ser titular de un derecho o registro en un Estado miembro de la Unión Europea, tendrá derecho a presentar oposición con independencia de cuál sea su país de origen.
Cambio de titular (cesión de la marca anterior) antes de presentar la oposición
En caso de que se haya cedido la marca anterior antes de presentar la oposición, se debe establecer una distinción entre oposiciones basadas en una marca comunitaria anterior y oposiciones basadas en registros (o solicitudes) de marcas nacionales.
Aspectos procesales
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 25
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Oposición basada en una marca comunitaria anterior
El derechohabiente de un registro o de una solicitud de marca comunitaria sólo podrá presentar una oposición basada en registros o solicitudes de marcas comunitarias si se cumplen las condiciones establecidas en el artículo 17, apartado 6, del RMC, a saber, únicamente si cuando se presente la oposición el oponente ha presentado una solicitud de registro de la cesión. De acuerdo con lo dispuesto en el artículo 17, apartado 7, del RMC, cuando deban respetarse plazos con respecto a la Oficina, el derechohabiente puede cursar a la Oficina las declaraciones previstas a tal fin tan pronto como ésta haya recibido la solicitud de registro de la cesión.
Incumbe al oponente facilitar esta información, y la Oficina no comprobará este extremo durante el examen de admisibilidad. Sin embargo, si el oponente menciona en la explicación de su oposición que es el nuevo titular (o utiliza palabras similares), la Oficina le requerirá para que indique la fecha en que la solicitud de registro de la cesión fue enviada a la Oficina o recibida por ésta.
Oposición basada en un registro o solicitud de marca nacional
Una oposición basada en un registro o solicitud de marca nacional puede ser presentada por el «antiguo» titular o el derechohabiente, puesto que existen prácticas diferentes en los distintos Estados miembros acerca de la necesidad de registrar la cesión en el Registro de marcas nacionales para poder invocar los derechos derivados del registro.
En ciertos casos, la oposición la presenta el oponente A mientras que, como consecuencia de la cesión de la marca anterior en la que se basa la oposición, la marca es propiedad de B. Dado que A puede figurar todavía como titular en el registro pertinente, la Oficina aceptará como válida la oposición presentada por A como oponente, aunque no sea ya el titular de la marca anterior.
Si la oposición es presentada por el oponente B y en una copia del certificado de registro figura A como titular de la marca anterior, la oposición se admitirá basándose en la presunción de que la marca anterior fue cedida a B antes de que se presentara la oposición (o se indica en el escrito de oposición que presenta su oposición en calidad de licenciatario). No obstante, el derecho a presentar la oposición tiene que demostrarse en el plazo estipulado para la justificación.
Pluralidad de oponentes
Regla 15, apartado 1; y regla 75, apartado 1, del REMC Resolución de 11/10/2000, R 623/1999-1, «Emultech»
En determinados casos, el escrito de oposición indica más de un oponente. Sólo existen dos situaciones en las que la Oficina admite que dos o más personas independientes (físicas o jurídicas) presenten conjuntamente una oposición, a saber:
cuando son cotitulares de la marca o derecho anterior;
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cuando la oposición es presentada por el titular o cotitular de una marca o derecho anterior conjuntamente con uno o más licenciatarios de tales marcas o derechos anteriores.
Si no se indica que los múltiples oponentes cumplen una de las dos condiciones arriba mencionadas, deberá requerírseles para que indiquen su relación (cotitularidad o titular/licenciatario) o que designen a uno de los oponentes como único oponente.
Si una marca o derecho anterior tuviere más de un titular (cotitularidad), la oposición podrá ser presentada por cualquiera de ellos.
No obstante, cuando los oponentes informen a la Oficina de que, por ejemplo, la empresa A B.V. es titular de cinco de los derechos anteriores y la empresa A PLC de otros cinco, deberán indicar con cuál de ellos ha de proseguir la oposición. En consecuencia, no se tomarán en consideración cinco de los diez derechos anteriores. Si los oponentes no responden debidamente dentro del plazo de dos meses señalado, la oposición no se admitirá.
Admisible
Marcas anteriores 1 2 3 4 5 Titular A/B A A A A
Marcas anteriores 1 2 3 4 5 Titular A/B A/C A A A
La segunda combinación sólo será admitida si al menos A es uno de los oponentes.
No admisible
Marcas anteriores 1 2 3 4 5 Titular A A B B B
Se pedirá a los oponentes que indiquen si desean continuar el procedimiento con A o B como oponente.
Marcas anteriores 1 2 3 4 5 Titular A/B A A B B
Se pedirá a los oponentes que prosigan la oposición conjuntamente sobre la base de las tres primeras marcas anteriores o bien que prosigan la oposición conjuntamente sobre la base de las marcas anteriores primera, cuarta y quinta.
Marcas anteriores 1 2 3 4 5 Titular A/B/C B/C A A A
Se pedirá a los oponentes que prosigan la oposición conjuntamente como oponentes A, B y C sobre la base de las marcas anteriores primera y segunda o que prosigan la oposición conjuntamente como oponentes A y B sobre la base de las marcas anteriores primera, cuarta y quinta.
Aspectos procesales
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 27
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Indicación de relaciones distintas de la cotitularidad
En caso de que en el escrito de oposición figuren dos oponentes, uno como titular del derecho anterior y otro como licenciatario (autorizado por el titular a presentar oposición), no se plantearán objeciones si el titular de todos los derechos anteriores en los que se fundamenta la oposición es la misma persona física o jurídica, con independencia del número de licenciatarios que se le unan en el procedimiento.
En el siguiente ejemplo, la oposición se admitirá con A, B y C como oponentes múltiples:
Marcas anteriores 1 2 3 Titular A A A Licenciatarios B C Ninguno
En cambio, en el siguiente caso, si bien B es admitido como oponente múltiple en su calidad de licenciatario de la marca anterior 1, no cabe admitirlo como oponente múltiple en su calidad de titular de la marca anterior 3. La Oficina requerirá a los oponentes para que indiquen si desean continuar el procedimiento de oposición con A o con B como oponente. Si éstos no responden, la oposición no se admitirá.
Marcas anteriores 1 2 3 Titular A A B Licenciatarios B C A
Prueba
En los casos en que la oposición se basa en marcas registradas anteriores, el medio de prueba más común para acreditar la cotitularidad es presentar una copia del certificado de registro o un extracto de una base de datos oficial. Si la oposición se basa en varios derechos o marcas anteriores y los oponentes ya han presentado la prueba relativa a la cotitularidad de una marca registrada anterior, los oponentes deberán confirmar la titularidad de los otros derechos anteriores. Dado que en esta fase del procedimiento de oposición los oponentes no están obligados a presentar pruebas de sus marcas o derechos anteriores, se considerará suficiente, a efectos de admisibilidad, una declaración en la que confirmen su capacidad para presentar oposición conjuntamente.
2.4.2.6 Representación profesional
Representante
Artículos 92 y 93, del RMC Regla 15, apartado 2, letra h), inciso ii), del REMC
La Regla 15, apartado 2, letra h), inciso ii), del REMC establece que en el caso de que la parte que presente oposición hubiera designado un representante, deberá facilitar el nombre y dirección profesional del mismo con arreglo a lo dispuesto en la Regla 1, apartado 1, letra e), del REMC.
Aspectos procesales
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Si el oponente pertenece a un Estado miembro de la UE (y, por lo tanto, no está obligado a actuar a través de un representante de conformidad con el artículo 92 del RMC), la falta de designación de un representante o la falta de indicación del nombre o del domicilio profesional del mismo, tendrá como única consecuencia que la Oficina se ponga directamente en contacto con el oponente.
Si el oponente tuviera la obligación de actuar a través de un representante con arreglo al artículo 92 del RMC y no lo designara o no indicara el nombre o el domicilio profesional del mismo, ello constituiría una irregularidad de admisibilidad relativa. La Oficina requerirá al oponente para que designe un representante y/o indique el nombre y la dirección del mismo, y, en caso contrario, no se admitirá la oposición.
Regla 77 del REMC
Toda notificación de la Oficina remitida al representante debidamente autorizado tendrá el mismo efecto que si se hubiera enviado a la persona representada.
Toda comunicación o carta remitida a la Oficina por el representante debidamente autorizado tendrá el mismo efecto que si procediere de la persona representada.
Además, si la persona representada presenta por sí misma documentos a la Oficina sin estar representada por un representante debidamente autorizado, esos documentos serán aceptados por la Oficina en la medida en que dicha persona tenga su domicilio o sede social o un establecimiento comercial o industrial real y efectivo en la UE. De no ser así, los documentos serán rechazados.
Para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
Pluralidad de representantes, representante común
Regla 75 del REMC
Cada parte podrá tener varios representantes que pueden actuar de forma conjunta o separada. No se ha establecido un límite máximo al número de representantes.
Con todo, la Oficina se comunicará únicamente con el representante designado en primer lugar. Si existen varios oponentes y en el escrito de oposición no se designa a un representante común, será considerado representante común el representante nombrado en primer lugar en el escrito de oposición.
No obstante, si uno de los oponentes está obligado a designar un representante (porque procede de un tercer país), este representante será considerado representante común, salvo que el oponente nombrado en primer lugar en el escrito de oposición haya designado un representante.
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Regla 76, apartado 8, del REMC
Cuando haya pluralidad de oponentes o de solicitantes, el representante de la persona nombrada en primer lugar será el representante común de todos los oponentes o solicitantes. En el caso de que la persona nombrada en primer lugar no haya designado un representante y uno de los oponentes o solicitantes esté obligado a designar un representante y lo haya hecho, este último será considerado representante común de todos los oponentes o solicitantes.
Para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
Cambio de representante
Regla 76 del REMC
El oponente y el solicitante podrán cambiar de representante en el curso del procedimiento de oposición. Para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
Poder
Artículo 92, apartado 2, del RMC Regla 76 del REMC
En el caso de que hubiera varias partes en el procedimiento que estén representadas ante la Oficina, los representantes tendrán que presentar ante la Oficina un poder firmado para su inclusión en el expediente, como poder individual o general, únicamente si la otra parte lo solicita expresamente y, si fuera necesario, presentar un poder firmado. La Oficina especificará el plazo de presentación del mismo.
Los detalles sobre la representación y el poder se establecen en las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
2.4.2.7 Firma
Regla 80, apartado 3; y regla 82, apartado 3, del REMC
En el caso de que el escrito de oposición se envíe por fax o por correo, debe estar firmado por el oponente o, en el caso de que lo presente un representante, debe estar firmado por éste.
Si el escrito de oposición se envía por fax o por un medio de comunicación electrónico, no es necesaria la firma y basta con que se indique el nombre del remitente.
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2.4.2.8 Requisitos de admisibilidad relativos: sanciones
Regla 17, apartado 4, del REMC
En caso de que no concurrieran o se cumplieran requisitos de admisibilidad relativos, el oponente o su representante deberán subsanar esta irregularidad en un plazo de dos meses. Este plazo no podrá prorrogarse.
Si no se subsanara esta irregularidad en el plazo prescrito, no se admitirá la oposición o, si la irregularidad sólo afecta a una parte de los derechos anteriores, se comunicará al oponente que la oposición es admisible pero que no se tendrán en cuenta los derechos anteriores en cuestión.
2.4.3 Indicaciones opcionales
2.4.3.1 Alcance de la oposición
Regla 15, apartado 3, letra a), del REMC
La oposición puede contener una indicación de los productos y servicios contra los que se dirige. A falta de tal indicación, se considerará que la oposición se dirige contra todos los productos y servicios de la marca impugnada.
Si el oponente indica que la oposición sólo se dirige contra una parte de los productos y servicios de la solicitud de marca comunitaria, deberá enumerar con claridad estos productos y servicios. En caso de que no lo hiciera, bien en el escrito de oposición o bien en la explicación de los motivos de la oposición, se le comunicará la irregularidad. Si la irregularidad no se subsana en el plazo señalado mediante la enumeración de los productos y/o servicios contra los que se dirige la oposición, no se admitirá la oposición.
Hay casos en los que, en respuesta a la carta de la Oficina por la que se solicita al oponente que enumere exactamente a qué parte de los productos y servicios se opone, el oponente indica que «todos los productos y servicios para los que se solicitó la marca impugnada». La Oficina no puede aceptar esta indicación y la oposición no será admitida. Ello se debe a que al indicar que sólo dirige la oposición contra una parte de los productos y servicios de la solicitud de marca comunitaria, el oponente ha limitado claramente su oposición a este respecto y no puede ampliar su alcance una vez transcurrido el plazo de oposición de tres meses.
El alcance de la oposición está correctamente indicado cuando los productos son productos específicos comprendidos en una expresión más amplia utilizada en la especificación impugnada (por ejemplo, la oposición se dirige contra pantalones y la solicitud de marca comunitaria se presentó para prendas de vestir - en este ejemplo, se considerará que los únicos productos impugnados son los pantalones). Sin embargo, en el caso de que el oponente utilice una formulación ambigua como «la oposición se dirige contra todos los productos similares a…», cuando los productos del oponente son sustituidos por los productos del solicitante, o cualquier otra indicación que no identifique claramente los productos y servicios impugnados, deberá pedirse una aclaración. Si el oponente no respondiera debidamente a esta petición, la oposición no será admitida.
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Además, en el caso de que el oponente indique en el impreso de oposición que ésta se dirige contra «parte de los productos y servicios de la marca impugnada», pero a continuación enumera «todos» esos productos y servicios en el escrito de oposición o en los anexos, la Oficina, para subsanar la información contradictoria recogida en el escrito de oposición, supondrá que la oposición se dirige contra «todos los productos y servicios».
2.4.3.2 Declaración motivada
Regla 15, apartado 3, letra b), del REMC
Según la formulación de la regla 15 del REMC, resulta ahora evidente que debe distinguirse entre:
la base de la oposición, es decir, el derecho anterior invocado; deberá identificarse debidamente y no podrá modificarse una vez finalizado el plazo de oposición;
la indicación de los motivos de la oposición, es decir, «el riesgo de confusión» (regla 15, apartado 2, letra c), del REMC, utilizando el término «a saber»);
una declaración motivada, es decir, la indicación de los principales hechos, alegaciones o pruebas en los que se basa la oposición.
La «declaración motivada» incluye una prueba de la existencia del derecho anterior, que (a diferencia de lo que ocurre en el caso de la identificación del derecho anterior) es una cuestión de fondo, y no una cuestión de admisibilidad.
La declaración motivada es opcional en la fase de la presentación de la oposición; no guarda relación con el examen de la admisibilidad. Es admisible si se incluye en el escrito de oposición, pero, en caso contrario, podrá presentarse después de que finalice el periodo de reflexión (regla 19, apartado 1, del REMC) y se considerará una cuestión de fondo, y no una cuestión de admisibilidad de la oposición.
2.5 Notificación del escrito de oposición
Reglas 16 bis y 18, del REMC Decisión n° EX-11-3 del Presidente de la Oficina
La Oficina transmitirá a la otra parte, a efectos informativos, cualquier escrito de oposición y cualquier documento presentado por la parte que presente oposición, así como todas las comunicaciones dirigidas por la Oficina a una de las partes antes del inicio del periodo de reflexión.
Una vez que se haya declarado la admisibilidad de la oposición conforme a la regla 17 del REMC, la Oficina enviará una notificación a las partes comunicando que se considerará que se inicia el procedimiento dos meses después de la recepción de la notificación. La notificación fijará asimismo el plazo para que el oponente presente los hechos, pruebas y alegaciones que sustentan su oposición, así como el plazo para
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que el solicitante presente sus observaciones de contestación. Es importante señalar que, por la existencia de distintos medios de comunicación (fax, correo electrónico y correo ordinario), los plazos mencionados en dicha notificación se fijan atendiendo al medio de comunicación más lento. Por ejemplo, si una de las partes es notificada por vía electrónica a través de la página web oficial de la Oficina, se considerará que la notificación ha tenido lugar en el quinto día natural siguiente a la fecha en la que el documento fue creado por los sistemas de la Oficina. Por lo tanto, si la notificación a la otra parte se envía por fax, esta última parte también dispondrá de los cinco días adicionales, de forma que los plazos concedidos en las notificaciones coincidan.
Cuando la oposición se basa en una marca anterior registrada o solicitada en color, la Oficina se cerciorará de que la representación en color sea recibida por el solicitante. En algunos casos, ello exigirá una notificación por correo.
La notificación no se efectuará antes de la expiración del plazo de oposición.
3 Periodo de reflexión
3.1 Iniciación del periodo de reflexión
Regla 17, regla 18, apartado 1; regla 19 y regla 20, apartados 2, 6, 7, del REMC Comunicación n° 1/06 del Presidente de la Oficina
Cuando se considere admisible la oposición, la Oficina enviará una notificación a las partes informándolas de que la oposición se considera admisible y que el procedimiento se considerará iniciado dos meses después de la recepción de dicha notificación (se concede un periodo de «reflexión» de dos meses antes de que se inicie oficialmente el procedimiento, con repercusiones jurídicas en particular en cuanto a las tasas de oposición).
Según la sentencia del Tribunal de Justicia de 18 de octubre de 2012, «REDTUBE, C- 402/11 P», la notificación remitida a las partes por la que se les comunica que la oposición es admisible conforme a la regla 18, apartado 1, del REMC constituye una resolución que es susceptible de recurso junto con la resolución definitiva del asunto, tal como se establece en el artículo 58, apartado 2, del RMC. En consecuencia, la Oficina está vinculada por esta resolución.
El periodo de reflexión se fijará de manera que venza dos meses después de la notificación. Se indicará el día exacto del vencimiento en la notificación de la Oficina. Este día caerá siempre dos meses después de la fecha de la notificación aun cuando se trate de un día en que la Oficina no está abierta, por ejemplo un sábado o un domingo.
El periodo de reflexión podrá durar un total de 24 meses, si ambas partes lo solicitan antes de que expire dicho periodo. La Oficina concederá una ampliación de 22 meses, con independencia del periodo de ampliación que se haya solicitado.
No es posible eludir la limitación del periodo de reflexión al plazo de 24 meses solicitando una suspensión. En esta fase podrán aceptarse solicitudes, pero sólo surtirán efecto una vez expirado el período de reflexión. En el caso de que las partes invoquen la existencia de negociaciones en curso, no se suspenderá el procedimiento
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durante el periodo de reflexión, si bien podrá solicitarse dicha suspensión cuando haya vencido el periodo de reflexión.
Se concederá al oponente un plazo de dos meses después de la finalización del periodo de reflexión para presentar cualesquiera hechos, pruebas y alegaciones, con independencia de si ya ha presentado tales hechos, pruebas o alegaciones en el escrito de oposición. En el mismo plazo, el oponente deberá acreditar también su(s) derecho(s) anterior(es).
La solicitud enviada al oponente es un requerimiento general para que complete el expediente a tenor de lo previsto en la regla 19 del REMC. La. La Oficina no indicará la naturaleza y el tipo de elementos que deben presentarse a fin de completar el expediente (véase concretamente la regla 20, apartado 6, segunda frase, del REMC). Antes bien, corresponde al oponente decidir lo que desea presentar. Para facilitar la tarea al oponente, la Oficina ha elaborado una lista que enumera el tipo de prueba normalmente exigida para cada tipo de derecho. Esta lista es remitida a los oponentes como anexo a la notificación de la admisibilidad de la oposición y puede ser consultada por los oponentes para comprobar la preparación de su oposición.
En la práctica, el plazo que se señale para presentar estos elementos adicionales se fijará en cuatro meses a partir de la fecha de notificación. Por lo tanto, los oponentes deben saber que el plazo para presentar estos elementos adicionales no es un plazo de dos meses a partir del fin del periodo de reflexión, sino un plazo de cuatro meses desde la notificación.
Se concederá al solicitante un plazo adicional de dos meses para contestar a la oposición. En lugar de establecer un plazo separado de dos meses (dos meses para el periodo de reflexión, dos meses para completar la oposición, dos meses para contestar), el plazo para contestar a la oposición se fijará en seis meses a partir de la notificación de la admisibilidad (día de inicio del periodo de reflexión).
Cuando el oponente complete su oposición después de la notificación y antes de que expiren los cuatro meses de que dispone, los elementos adicionales serán remitidos al solicitante sin introducir ningún cambio en el plazo para contestar a la oposición. No obstante, si la Oficina recibe los elementos adicionales sin tiempo suficiente para remitirlos al solicitante dentro del plazo señalado al oponente, los elementos adicionales serán remitidos al solicitante al tiempo que se le señalara un nuevo plazo de dos meses para contestar a la oposición. Este plazo separado de dos meses correrá a partir de la fecha de recepción de la notificación de los elementos adicionales con objeto de asegurar que el solicitante disponga siempre de un plazo completo de dos meses para preparar su contestación.
3.2 Prórroga del periodo de reflexión
Artículo 119, apartados 5, 6, del RMC Regla 18, apartado 1 y regla 96, apartado 1, del REMC Comunicación n° 1/06 del Presidente de la Oficina
El periodo de reflexión podrá prorrogarse hasta un total de 24 meses.
Aspectos procesales
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Para conceder una prórroga del periodo de reflexión se exigirá:
Una solicitud firmada por ambas partes, bien en una solicitud conjunta o en dos solicitudes separadas. No es necesario exponer un motivo para la concesión de la prórroga.
La solicitud deberá figurar en la lengua de procedimiento. Con carácter alternativo, la solicitud podrá presentarse en una de las lenguas de la Oficina. Sin embargo, deberá presentarse una traducción en el plazo de un mes a partir de la presentación de la solicitud. La Oficina no remitirá ninguna carta exigiendo una traducción de la solicitud de prórroga.
La solicitud deberá presentarse antes de la finalización del periodo de reflexión. Cualquier solicitud presentada una vez vencido el periodo de reflexión será denegada. Si una de las partes presenta la solicitud dentro del periodo de reflexión y la otra la presenta después de haber vencido dicho periodo, la prórroga será también denegada.
La prórroga del periodo de reflexión debe distinguirse de las solicitudes de prórroga de un plazo o una suspensión. En caso de que la solicitud de prórroga no sea admisible porque ha sido presentada extemporáneamente o porque el periodo de reflexión ya ha sido prorrogado, será considerada una solicitud de suspensión, siempre que se cumplan los requisitos correspondientes.
Se concederá la prórroga por un periodo de 24 meses a partir de la fecha de inicio del periodo de reflexión. Este procedimiento evita las múltiples prórrogas y al mismo tiempo concede a las partes la máxima libertad para decidir el momento en que desean continuar con la fase contradictoria del procedimiento.
Cualquiera de las partes podrá poner fin posteriormente al periodo de reflexión prorrogado (cancelación) indicándolo expresamente por escrito.
Es irrelevante que la otra parte esté o no de acuerdo con esta solicitud.
Si una de las partes opta voluntariamente por poner fin al periodo de reflexión antes de que finalice la prórroga de dicho periodo, la Oficina lo confirmará a ambas partes y fijará el fin del periodo de reflexión en las dos semanas siguientes a dicha notificación. La fase contradictoria del procedimiento comenzará al día siguiente. En la misma carta se notificarán los nuevos plazos para la justificación de la oposición y para la contestación del solicitante, que serán de dos y cuatro meses desde el final del periodo de reflexión.
La opción de poner fin voluntariamente al periodo de reflexión es irrevocable y no se aceptará durante el último mes anterior al inicio del procedimiento.
4 Fase contradictoria
4.1 Posibilidad de completar la oposición
En los dos meses siguientes a la finalización del periodo de reflexión, el oponente puede presentar nuevos hechos, pruebas y alegaciones en apoyo de su oposición.
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En ese mismo plazo, el oponente deberá demostrar la existencia y la validez de sus derechos anteriores invocados.
4.2 Justificación
Artículo 41 del RMC Regla 19, regla 20, apartado 1; y regla 79, del REMC
La justificación se define en la regla 19, apartado 2, del REMC y se refiere a la prueba de la existencia, validez y ámbito de protección de la(s) marca(s) o del/de los derecho(s) anterior(es) así como de su derecho a presentar oposición.
Después de que las partes hayan sido notificadas de la admisibilidad de la oposición, el oponente dispone de dos meses a partir del vencimiento del periodo de reflexión no sólo para completar el expediente, es decir, para presentar toda la prueba en apoyo de su oposición, sino también para probar la existencia y validez de los derechos anteriores invocados y su derecho a presentar oposición. Cuando sea pertinente para la oposición, el oponente aportará también pruebas del renombre, alto carácter distintivo o cualquier otro aspecto que afecte al ámbito de protección de su(s) derecho(s) anterior(es), etc.
Las pruebas deberán presentarse en la lengua de procedimiento o acompañadas de una traducción a efectos de justificación. La traducción deberá presentarse dentro del plazo de presentación del documento original. La Oficina no tendrá en cuenta los documentos o las partes de los documentos que no se hayan presentado o que no se hayan traducido a la lengua de procedimiento dentro del plazo fijado por la Oficina.
A menos que se remitan por fax o por medios electrónicos, cualquier documento de prueba u otros elementos probatorios deberán presentarse en dos copias, de las que una de ellas se trasladará a la otra parte. No podrán tenerse en cuenta los documentos remitidos por correo o entregados personalmente de los cuales no se presenten dos copias (para poder remitir una de ellas a la otra parte). Cualquier documento o elemento de prueba, salvo los que consistan en hojas sueltas, que se haya remitido a la Oficina por correo o entrega personal deberá acompañarse de una copia. Si no se facilita una copia, estos documentos o elementos de prueba no se tomarán en consideración.
Si el oponente no ha demostrado la existencia de al menos un derecho anterior, se desestimará la oposición por infundada.
Si el derecho anterior que ha sido considerado admisible no se justifica en la fase de justificación y existe(n) otro(s) derecho(s) anterior(es) justificado(s), se examinarán los requisitos de admisibilidad absolutos para tal(es) derecho(s) anterior(es).
El oponente tendrá que demostrar su legitimación para presentar oposición a efectos de la justificación (véase el apartado 4.2.3.7 infra).
4.2.1 Marcas comunitarias y solicitudes de marcas comunitarias
Si la marca o solicitud anterior fuera una marca comunitaria, el oponente no tendrá que aportar documento alguno en lo que se refiere a la existencia y validez de la marca
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comunitaria o solicitud de marca comunitaria. El examen de la justificación se realizará de oficio en función de los datos contenidos en la base de datos de la Oficina.
4.2.2 Transformación de una marca comunitaria (solicitud)
Artículo 112, apartado 1, del RMC
Esta sección sólo abordará los aspectos específicos de la transformación en el procedimiento de oposición. Para más información sobre la transformación, véanse las Directrices, Parte E, Operaciones de registro, Sección 2, Transformación.
4.2.2.1 Oposición basada en una (solicitud de) marca comunitaria que ha sido (va a ser) objeto de transformación
Las solicitudes de marcas nacionales resultantes de la transformación de una marca comunitaria o solicitud de marca comunitaria anterior se considerarán nacidas tan pronto como se presente una petición de transformación válida. Tales derechos se considerarán debidamente identificados a efectos de admisibilidad, con arreglo a lo dispuesto en la regla 18, apartado 1 del REMC, cuando el oponente indique el número de la marca comunitaria (o solicitud de marca comunitaria) objeto de transformación y los países para los que ha solicitado la transformación.
Cuando durante el procedimiento de oposición la solicitud de marca comunitaria (o la marca comunitaria) en la que se basa la oposición deja de existir (o se limita la lista de productos y servicios) y se presenta una solicitud de transformación, el procedimiento podrá continuar. Ello se debe a que los registros de marcas nacionales resultantes de una transformación de una solicitud de marca comunitaria pueden constituir la base del procedimiento de oposición inicialmente planteado en virtud de dicha solicitud de marca comunitaria (Resolución de 15 de julio de 2008, 1313/2006-G, «CARDIVA/CARDIMA»).
En tal caso, la Oficina pedirá al oponente por escrito que le informe de si mantiene la oposición a la vista de la retirada, renuncia o desestimación de la solicitud o solicitudes anteriores de marca comunitaria, o del registro o registros anteriores, y si tiene intención de basarse en las solicitudes nacionales que resulten de la transformación de la marca comunitaria anterior. Si el oponente no informa a la Oficina, dentro del plazo, de que quiere basarse en las solicitudes nacionales, la oposición será desestimada por infundada.
El oponente deberá aportar pruebas, a la mayor brevedad posible, de la existencia de las solicitudes nacionales anteriores.
4.2.3 Registros o solicitudes de marcas que no son marcas comunitarias
Regla 19, apartado 2, letra a), incisos i), ii), del REMC
Para acreditar un registro o solicitud de marca anterior, el oponente deberá presentar a la Oficina pruebas de la presentación de la solicitud o del registro de marca. La Oficina admite los siguientes documentos:
Aspectos procesales
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Certificados expedidos por la autoridad oficial competente; Extractos de bases de datos oficiales; Extractos de boletines oficiales de las oficinas de marcas nacionales y de la
OMPI.
4.2.3.1 Certificados expedidos por la autoridad oficial competente
Cualquier certificado de registro o el último certificado de renovación que demuestre la validez de la marca anterior más allá del plazo que se concedió al oponente para que acredite su oposición, expedido por una oficina nacional o por la OMPI si se refiere a un registro internacional, constituye una prueba válida. Más adelante se exponen otros requisitos en relación con los certificados de renovación.
En caso de que la oposición se base en una solicitud, el oponente deberá aportar la prueba de la presentación de la solicitud ante la oficina nacional o la prueba de la presentación de la solicitud internacional ante la OMPI. Una vez que la solicitud anterior se haya convertido en un registro, el oponente deberá aportar la prueba de tal registro. Si, tras la parte contradictoria del procedimiento, el oponente aporta la prueba de que la solicitud nacional se convirtió en un registro antes del límite de tiempo fijado en la regla 19, apartado 1, del REMC, la marca anterior se rechazará por infundada en virtud de la regla 20, apartado 1, del REMC. Un certificado de solicitud no basta para probar que la marca ha sido registrada. En otras palabras, no puede servir para acreditar la existencia del registro de la marca.
Algunos certificados sólo presentan escasas diferencias entre el impreso de solicitud y el certificado de registro, por lo que deben examinarse detenidamente.
También se aceptan documentos equivalentes expedidos por la administración que procedió al registro de la marca (por ejemplo, un certificado de registro).
4.2.3.2 Extractos de bases de datos oficiales
Los extractos de bases de datos se admiten únicamente si proceden de una base de datos oficial, es decir, la base de datos oficial de una de las oficinas nacionales o de la OMPI, y si tienen un valor equivalente al de un certificado de registro o de la última renovación. La imagen electrónica intacta de un extracto de una base de datos online reproducida en una hoja separada es también admisible, ya que contiene una identificación oficial de la autoridad o base de datos de donde procede. No se admiten los extractos de bases de datos comerciales, aunque reproduzcan exactamente la misma información que los extractos oficiales.
Las bases de datos aceptadas oficialmente incluyen:
TMview: para marcas comunitarias y marcas solicitadas o registradas en las oficinas participantes (siempre que contenga los datos pertinentes). Para más información, véase: http://www.tmview.europa.eu/tmview/welcome.html;
BENELUX-MERKEN (para las marcas Benelux);
DPINFO (para las marcas alemanas);
SITADEX (para las marcas españolas);
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OPTICS y extractos de la página web de la UKPO (para las marcas británicas);
S.A.R.A, UIBM online del sitio web de UIBM y Telemaco de las Cámaras de Comercio italianas (para las marcas italianas).
En lo que respecta a los registros internacionales, se aceptan las siguientes:1
ROMARIN (la versión «abreviada» del extracto será suficiente siempre que contenga toda la información necesaria);
TMview (siempre que contenga todos los datos pertinentes).
También se admiten extractos de otras oficinas nacionales a condición de que procedan de una base de datos oficial.
Los extractos de bases de datos comerciales no son admisibles aun cuando reproduzcan toda la información necesaria. Constituyen ejemplos de extractos no admitidos DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK, SAEGIS o COMPUMARK.
Cuando el extracto de una base de datos oficial no recoja toda la información requerida, el oponente la completará con otros documentos de una fuente oficial que muestren la información que falta.
Ejemplos
En ocasiones, los extractos de SITADEX (base de datos oficial de la Oficina española) no contienen la lista de los productos y/o servicios; en tales casos, el oponente habrá de presentar un documento adicional (por ejemplo, una publicación del boletín oficial) que muestre la lista de productos y servicios.
Los extractos de SITADEX no siempre muestran la imagen en la misma página cuando la marca es figurativa. La imagen aparece algunas veces en una página separada. En consecuencia, en el caso de las marcas figurativas españolas, cuando el oponente presenta un extracto de SITADEX como prueba, deberá cerciorarse de que la representación de la marca figura en la misma página y, de no ser así, tendrá que presentar un documento o página adicional que muestre la imagen, que puede proceder del propio SITADEX (que reproduzca la imagen en una página separada que, al imprimirla o guardarla como .pdf, por ejemplo, incluye una identificación de la fuente) o de otra fuente oficial (como su publicación en el boletín oficial). No basta con copiar la imagen de SITADEX e incluirla electrónicamente o de otra forma en el escrito de oposición.
1 La práctica de la Oficina ha consistido en aceptar las impresiones de la base de datos CTM-Online para los registros internacionales que designen a la UE. Esta práctica no se mantendrá ya que contraviene la regla 19, apartado 2, letra a), del REMC. No se prevé ninguna excepción a esta norma en el Título XIII del RMC. Esta nueva práctica entró en vigor el 1 de julio de 2012 y se aplica a todas las oposiciones presentadas desde esa fecha (o con posterioridad). La información contenida en las cartas estándar para la notificación de oposiciones admisibles se actualizó a partir del 1 de julio de 2012. La antigua práctica sigue aplicándose a todas las oposiciones con una fecha de presentación anterior al 1 de julio de 2012.
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En el caso de que la lengua de procedimiento sea el inglés, y por lo que respecta a las marcas portuguesas, procede señalar que el INPI también facilita una versión en inglés del extracto de la marca portuguesa por lo que, en principio, no es necesaria la traducción. Sin embargo, por lo que respecta a la lista de productos y/o servicios, el extracto en sí sólo proporciona los títulos de clase con una advertencia que indica que esa referencia al título de clase no refleja necesariamente los productos y/o servicios protegidos por la marca. A este respecto, el oponente deberá presentar siempre la lista original en portugués (procedente de una lista oficial) y, cuando la lista no consiste en un título de clase, una traducción fiel al inglés. Lo anterior se aplica también a los extractos oficiales de otras oficinas nacionales que proporciona la versión en inglés de sus extractos, como Eslovenia.
4.2.3.3 Extractos de boletines oficiales de las oficinas de marcas nacionales y de la OMPI
Las solicitudes y/o los registros de marcas se publican en un boletín oficial en todos los Estados miembros. Las copias de la publicación se admitirán siempre que el documento (o las alegaciones al respecto del oponente) indiquen el origen de la publicación. A falta de tal indicación, la prueba se considerará insuficiente para acreditar la validez de la marca.
Además, una copia de la publicación de la solicitud no basta para acreditar que la marca ha sido registrada. En otras palabras, no puede servir para acreditar la existencia del registro de la marca.
La Oficina admite la primera publicación de la OMPI del registro internacional por considerar que acredita suficientemente el registro, si bien una vez efectuado el registro, éste todavía puede ser denegado por las oficinas nacionales durante los 12 a 18 meses siguientes. El oponente sólo tendrá que probar que la marca no ha sido denegada en el caso de que el solicitante cuestione la protección de la marca en cuestión en un territorio dado o para determinados productos y servicios.
4.2.3.4 Vigencia del registro de marca
Por regla general, el registro de una marca tiene una vigencia de diez años. Una vez transcurrido este periodo, el registro de la marca podrá renovarse cada diez años. En la mayoría de los países, la fecha de inicio del periodo de diez años es la fecha de presentación, si bien existen algunas excepciones.
Países Plazo de protección Fecha de inicio
Alemania 10 años Fecha de presentación
Austria 10 años Fecha de registro
Benelux (Bélgica, Luxemburgo, Países Bajos)
10 años Fecha de presentación
Bulgaria 10 años Fecha de presentación
Chipre 7 años en el primer periodo/14 años en larenovación Fecha de presentación = fecha de registro
Croacia 10 años Fecha de presentación
Dinamarca 10 años Fecha de registro
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Eslovaquia 10 años Fecha de presentación
Eslovenia 10 años Fecha de presentación
España
10 años para marcas solicitadas a partir del 12/05/1989 (20 años para marcas solicitadas antes de esa fecha, que se computan a partir de la fecha de registro, y con una renovación desde la fecha de presentación)
Fecha de presentación
Estonia 10 años Fecha de registro
Finlandia 10 años Fecha de registro
Francia 10 años Fecha de presentación
Grecia 10 años Fecha de presentación
Hungría 10 años Fecha de presentación
Irlanda 10 años para las marcas registradas desde el 01/07/1996 (antes de esa fecha, 7/14 años para la renovación)
Fecha de registro = fecha de presentación
Italia 10 años Fecha de presentación
Letonia 10 años Fecha de presentación
Lituania 10 años Fecha de presentación
Malta 10 años Fecha de registro = fecha depresentación
Polonia 10 años Fecha de presentación =fecha de registro
Portugal 10 años Fecha de registro
República Checa 10 años Fecha de presentación
Reino Unido
10 años desde el 31/10/1994 (las marcas solicitadas con anterioridad estaban en vigor, una vez que concluyeran las formalidades de registro, durante 7 años desde la fecha de la solicitud. Las marcas con fecha de renovación anterior al 31/10/1994 se renovaron por un plazo de 14 años)
Fecha de presentación = fecha de registro
Rumanía 10 años Fecha de presentación
Suecia 10 años Fecha de registro
Registro internacional
10 años (aun cuando para los registros del Acuerdo de Madrid de 20 años, las tasas deben pagarse en dos plazos de 10 años, lo que equivale a una tasa de renovación)
Fecha de registro internacional
Conforme a la regla 19, apartado 2, letra a), inciso ii), del REMC, si la marca está registrada, el oponente deberá presentar prueba del registro. Si la prueba presentada no acredita que se ha registrado una solicitud y posteriormente una de las partes demuestra que, en el momento de la expiración del plazo fijado conforme a la regla 19, apartado 1, del REMC, el oponente no probó este extremo, se aplicará la regla 19, apartado 2, letra a), inciso ii), del REMC, y la marca anterior será rechazada por infundada.
4.2.3.5 Examen de la prueba
El número que figura entre corchetes es el número del código internacional que sirve para identificar la información en muchos, pero no en todos, los certificados de
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registro. El oponente no está obligado a presentar una explicación de los códigos INID ni de los códigos nacionales.
Deberán verificarse los siguientes elementos:
La autoridad de expedición;
Los números de solicitud [210] y/o de registro [111] (en ciertos países éstos son o eran diferentes);
La extensión territorial de los registros internacionales (es decir, los países en los que está protegida la marca y los productos y servicios amparados por la misma);
Las fechas de presentación de la solicitud [220], de prioridad [300] y de registro [151] (en ciertos países, p. ej. Francia, las fechas de presentación y de registro que constan en el certificado coinciden);
Una representación del signo tal como fue solicitado o registrado [531, 540, 541, 546, 554, 556, 557, 571, 591] y reivindicado en el escrito de oposición. Habrá que comprobar que la reivindicación realizada por el oponente en el plazo de oposición de tres meses está reflejada en las pruebas aportadas. Por consiguiente, si por ejemplo la marca anterior está en color y fue identificada correctamente durante el plazo de oposición de tres meses, caben dos escenarios admisibles. El primero consiste en que debe presentarse una representación oficial en color de la marca (certificado de registro, certificado de renovación, extracto oficial, etc.) que contenga una reproducción de la marca en color. El segundo es que se presente un documento oficial con la representación de la marca en blanco y negro, junto con una reivindicación del color y una descripción del color, todo ello traducido a la lengua de procedimiento. No obstante, este segundo escenario sólo es admisible si el oponente ha presentado también una representación en color de la marca procedente de una fuente no oficial (hoja de papel separada junto a las observaciones o adjunta al escrito de oposición, etc.). Cuando la oficina de la marca nacional no ofrezca una reivindicación en color detallada que identifique los colores y, en cambio, afirme «colores reivindicados» (o una expresión similar), será aceptable siempre que esta anotación se traduzca a la lengua de procedimiento y siempre que esté acompañada por una representación en color de la marca (tal como se ha visto en el escenario 2);
En otras palabras, si por ejemplo el oponente ha reivindicado correctamente durante el plazo de oposición de tres meses que su marca figurativa era en color y sólo ha enviado una representación en blanco y negro a la Oficina sin otras pruebas de una reivindicación de color, la oposición basada en ese derecho anterior será rechazada por no haber sido acreditada con arreglo a la regla 20, apartado 1, del REMC.
Lo anterior se aplicará con independencia de si la oposición se basa en una o varias marcas anteriores.
Además, en el caso de que la oficina nacional no ofrezca una indicación de la reivindicación de color en su certificado o extracto oficial, deberán presentarse documentos adicionales para acreditar esta reivindicación (por ejemplo, una copia de la publicación de la marca en el boletín). Asimismo, en el caso de que la
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oficina nacional (por ejemplo, la Oficina de Marcas portuguesa) publique la representación de la marca en color, pero la información contenida en el certificado no muestre por escrito la reivindicación del color, el oponente habrá de presentar una versión en color del certificado o extracto en el plazo indicado en la regla 19, apartado 1 del REMC.
Los productos y servicios amparados [511];
La fecha de expiración del registro (si se recoge);
El titular [731, 732];
Otras inscripciones que afecten a la situación jurídica o procesal o al ámbito de protección de la marca (por ejemplo, renuncias a invocar derechos exclusivos [526], limitaciones, renovaciones, cesiones, acciones legales en curso, el hecho de que la marca fue registrada por haber adquirido carácter distintivo como consecuencia del uso, etc.).
4.2.3.6 Certificados de renovación
Regla 19, apartado 2, letra a), inciso ii), del REMC
En caso de que el oponente haya presentado un certificado de registro pero el registro expirara antes del vencimiento del plazo de acreditación, deberá presentar un certificado de renovación a fin de demostrar que el período de protección de la marca se prolonga más allá del plazo que se le ha concedido para acreditar su oposición o de su prórroga. Lo que cuenta es la fecha de expiración del registro y no la posibilidad de renovar la marca dentro del periodo de gracia de seis meses en virtud del Convenio de París.
Únicamente bastará presentar el certificado de renovación sin que sea necesario aportar una copia del certificado de registro cuando el certificado de renovación contenga todos los datos necesarios para determinar el alcance de la protección de la marca anterior. Por ejemplo, los certificados de renovación alemanes y en ocasiones los españoles no recogen todos los datos necesarios y, por tanto, no son suficientes por sí solos para acreditar la marca anterior.
Sin embargo, si el oponente aporta un documento equivalente emitido por la administración ante la que se registró la marca, no necesitará presentar un certificado de renovación.
En el caso de que no se aporte una prueba apropiada de la renovación, el registro anterior no se tomará en consideración.
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4.2.3.7 Legitimación para presentar oposición
Artículo 41 del RMC Regla 19, apartado 2; y regla 15, apartado 2, letra h), inciso iii), del REMC
Dependiendo del motivo invocado, las siguientes personas están legitimadas para presentar oposición:
1. Los titulares y licenciatarios autorizados para los supuestos previstos en el artículo 8, apartados 1 y 5;
2. Los titulares (únicamente) para las marcas mencionadas en el artículo 8, apartado 3;
3. Los titulares de derechos anteriores mencionados en el artículo 8, apartado 4, y las personas autorizadas con arreglo a la legislación nacional aplicable.
Ejemplo
En el caso de que el oponente sea una sociedad, el nombre de la sociedad habrá de compararse atentamente con el nombre de la sociedad que es titular de la marca anterior. Por ejemplo, cuando se trata de sociedades británicas, John Smith Ltd., John Smith PLC y John Smith (UK) Ltd. son personas jurídicas distintas.
Si la oposición es presentada por el oponente B y una copia del certificado de registro pone de manifiesto que el titular de la marca anterior es A, la oposición se desestimará por no haber sido acreditada, a menos que el oponente haya presentado pruebas de la cesión y, en caso de estar disponible, de la inscripción de la cesión en el registro que proceda o a menos que el oponente haya demostrado que A y B son la misma entidad jurídica que únicamente ha cambiado de denominación.
Si el oponente es un licenciatario del titular de la marca, el extracto del registro mostrará por regla general el momento en el que se inscribió la licencia. Sin embargo, algunos Estados miembros no inscriben las licencias en sus registros. En todos los casos, incumbe al oponente acreditar que es un licenciatario y también que cuenta con la autorización del titular de la marca para presentar oposición. No hay limitaciones a las pruebas que pueden aportarse para acreditar dicha autorización: por ejemplo, cualquier autorización expresa en nombre del titular de la marca, como el contrato de licencia, se considera suficiente, siempre que recoja indicaciones sobre la autorización o el derecho a presentar oposición.
Lo mismo se aplica a las personas autorizadas con arreglo a la legislación nacional aplicable por el motivo previsto en el artículo 8, apartado 4, del RMC. El oponente tiene la carga de demostrar su legitimación para presentar oposición conforme a la legislación nacional aplicable.
Con arreglo al artículo 22 del RMC y las reglas 33, 34 y 35 del REMC, la Oficina registrará y publicará los contratos de licencia relativos a marcas comunitarias. Si la marca anterior en la que se basa la oposición conforme a un contrato de licencia es una marca comunitaria, el oponente no tendrá que aportar pruebas del contrato de licencia, ya que la licencia ha sido registrada y publicada por la Oficina con arreglo al artículo 22 del RMC. Por otra parte, el oponente deberá presentar pruebas que demuestren que este contrato de licencia le faculta para actuar en defensa de la marca si la licencia ha sido registrada y publicada por la Oficina, siempre que dicha prueba no
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se adjuntara a la petición inicial presentada conforme al artículo 22, apartado 5, del RMC. Para más información sobre licencias, véanse las Directrices, Parte E, Operaciones de registro, Sección 3, Capítulo 2, Licencias. No es suficiente demostrar el registro del contrato de licencia – la facultad del oponente de defender la marca comunitaria ha de presentarse también por escrito.
4.2.4 Prueba de las marcas notoriamente conocidas, las reivindicaciones de renombre, las marcas solicitadas por un agente y los signos anteriores utilizados en el tráfico económico
4.2.4.1 Marcas notoriamente conocidas
Artículo 8, apartado 2, del RMC Regla 19, apartado 2, letra b), del REMC
Una marca notoria anterior es una marca que es notoriamente conocida en un Estado miembro, en el sentido del artículo 6 bis del Convenio de París. Esta marca puede ser una marca no registrada, pero puede también ser una marca registrada.
En caso de que el oponente invoque una marca registrada y reivindique la misma marca en el mismo país como marca notoriamente conocida, se considerará, por regla general, como una reivindicación de que su marca registrada ha adquirido un alto grado de carácter distintivo como consecuencia del uso.
Es muy frecuente que los oponentes confundan las marcas «notoriamente conocidas» con las marcas «renombradas» previstas en el artículo 8, apartado 5, del RMC. Dependiendo del motivo de oposición que se indique, el asunto habrá de apreciarse a la luz del artículo 8, apartado 2, y/o del artículo 8, apartado 5, del RMC. Véanse también las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas.
El oponente ha de demostrar que es titular de una marca anterior que ha adquirido notoriedad en el territorio de referencia, en relación con los productos y servicios en los que se basa la oposición. Para acreditar su marca, deberá presentar pruebas de la notoriedad de la marca.
4.2.4.2 Marcas renombradas
Artículo 8, apartado 5, del RMC Regla 19, apartado 2, letra c), del REMC
Una oposición en virtud del artículo 8, apartado 5, del RMC se basa en una marca anterior que goza de renombre. Véanse también las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas.
En estos casos, la marca anterior es una marca registrada. Por consiguiente, el oponente ha de presentar el certificado de registro, etc., tal como se ha indicado anteriormente.
Para que prospere una oposición en virtud del artículo 8, apartado 5, del RMC, el oponente deberá acreditar el renombre adquirido por la marca anterior. Además, el
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oponente ha de alegar y demostrar que el uso de la marca objeto de la solicitud de marca comunitaria impugnada daría lugar a un aprovechamiento indebido o a un perjuicio del carácter distintivo o al renombre de la marca anterior, o indicar que es probable que ello se produzca en el curso habitual de los acontecimientos.
4.2.4.3 Marca no registrada u otro signo utilizado en el tráfico económico
Artículo 8, apartado 4, del RMC Regla 19, apartado 2, letra d), del REMC
En relación con estos derechos, la Oficina aplica la protección conferida por la legislación nacional aplicable.
No todos los derechos contemplados en el artículo 8, apartado 4, del RMC son derechos no registrados, p. ej. en ciertos países se registran las denominaciones sociales y los nombres comerciales. Si se trata de un derecho registrado, ha de presentarse una copia de los certificados de registro y de renovación, etc. tal como se ha indicado para los registros de marca. En el caso de marcas o signos no registrados, el oponente aportará pruebas de la adquisición del derecho anterior. Deberá demostrar además que puede prohibir el uso de una marca posterior.
El oponente debe además presentar la prueba de que ha utilizado su signo (derecho anterior, registrado o no) con un alcance no únicamente local. Asimismo, también tiene que indicar las disposiciones de la legislación nacional en que se basa para invocar su derecho y presentar su defensa con arreglo a dicha legislación. Véanse también las Directrices, Parte C, Oposición, Sección 4, Derechos en virtud del artículo 8, apartado 4, del RMC.
4.2.4.4 Marca solicitada por un agente o representante
Artículo 8, apartado 3, del RMC Regla 19, apartado 2, letra e), del REMC
Se trata de aquellos casos en que una persona (agente o representante del titular de una marca) solicita su registro en la Oficina. El titular puede oponerse a la solicitud del solicitante desleal. Véanse también las Directrices, Parte C, Oposición, Sección 3, Marca solicitada por un agente.
El oponente ha de probar su titularidad sobre la marca y la fecha de adquisición de la misma. Como puede tratarse de una marca registrada o de una marca no registrada, el oponente tendrá que presentar la prueba del registro en alguna parte del mundo o la prueba de la adquisición de los derechos como consecuencia del uso. El oponente también tendrá que acreditar la existencia de una relación de representación o de agente.
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4.2.5 Sanción
Regla 20, apartado 1, del REMC
En la medida en que los derechos anteriores invocados no hayan sido acreditados, se desestimará la oposición por infundada. Cuando el examen de las pruebas revele que no ha quedado acreditado ninguno de los derechos anteriores sobre los que se fundamentó la oposición, es decir, que el oponente no ha probado suficientemente que es el titular de un derecho anterior válido, toda la oposición deberá desestimarse inmediatamente tras el vencimiento del plazo de dos meses para la acreditación, sin esperar a recibir la respuesta del solicitante.
La Oficina no está obligada en ningún caso a informar a las partes de los hechos o las pruebas que podrían haberse presentado o que no se han presentado. Esto se indicará en la resolución definitiva, que será susceptible de recurso.
4.3 Traducciones / cambios de lengua durante el procedimiento de oposición
En el procedimiento de oposición, la mayoría de los documentos de las partes deben presentarse en la lengua de procedimiento de oposición para que puedan tomarse en consideración. Se aplican reglas diferentes a los distintos documentos.
La norma general es la regla 96 del REMC. La regla 96, apartado 1, del REMC, se aplica a los escritos y documentos presentados en el marco del procedimiento de oposición. La regla 96, apartado 2, del REMC, se aplica a las pruebas que acompañan a un escrito presentado en el marco del procedimiento de oposición. No obstante, no se aplicará la regla 96 del REMC si existe una lex specialis. La regla 19, apartado 3, del REMC para hechos, pruebas y alegaciones presentados por el oponente y la regla 22, apartado 6, del REMC para la prueba del uso (siempre presentada por el oponente) son ejemplos de dicha lex specialis.
4.3.1 Traducción de la prueba de registros de marca y de hechos, pruebas y alegaciones presentados por el oponente para completar su expediente
Regla 19, apartados 3 y 4; y regla 20, apartado 1, del REMC
La Oficina sólo puede tener en cuenta las pruebas presentadas en la lengua de procedimiento de oposición dentro del plazo señalado para la presentación del documento original. La regla 19, apartado 3, del REMC constituye una lex specialis frente a cualquier otra norma sobre el régimen lingüístico.
En consecuencia, tanto las pruebas presentadas por el oponente por primera vez al término del plazo de acreditación de la oposición, como cualquier otro documento o certificado previamente presentado, han de estar en la lengua de procedimiento, o acompañados de una traducción. Sólo se tendrán en cuenta los elementos presentados y traducidos dentro de este plazo. Si no se ha presentado ninguna traducción o si se ha presentado una traducción insuficiente, la oposición se desestimará total o parcialmente por infundada.
Aspectos procesales
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Regla 98, apartado 1, del REMC
De conformidad con la regla 98, apartado 1, del REMC, la traducción deberá reproducir la estructura y el contenido del documento original.
Por lo tanto, en principio deberá traducirse todo el documento siguiendo la estructura del documento original.
La Oficina no considera que la información ya facilitada en la lengua de procedimiento en el escrito de oposición, o en documentos adjuntos al mismo o presentados con posterioridad (p. ej. explicación de motivos, listas de marcas anteriores, etc.) sea equivalente a una traducción válida de un documento de registro, como un certificado de registro, aun cuando dichas indicaciones hayan sido aceptadas a efectos de admisibilidad. Deben presentarse traducciones de documentos individuales y no una traducción montada con fragmentos de otros documentos.
Los extractos de bases de datos comerciales no podrán considerarse traducciones válidas de un documento oficial, a menos que reproduzcan la estructura y el contenido del documento original.
La Oficina reconoce que no es necesaria una traducción de los epígrafes de los certificados/extractos (como «fecha de presentación», «reivindicación de color», etc.), siempre que se identifiquen también mediante los códigos INID o los códigos nacionales.
La lista de códigos INID y sus explicaciones se adjuntan en el Apéndice 1 de la Norma ST.60 – Recomendación relativa a los datos bibliográficos sobre marcas, disponible en el sitio web de la OMPI.
Pueden omitirse en la traducción las indicaciones administrativas irrelevantes que no guarden relación con el asunto.
En el caso de que la oposición se base sólo en una parte de los productos y servicios amparados por el derecho anterior, bastará con presentar una traducción únicamente de los productos y servicios en los que se basa la oposición.
Sólo puede hacerse una excepción al principio anterior de que debe traducirse todo el documento siguiendo la estructura del documento original cuando todo el documento original esté en la lengua de procedimiento, con la excepción de la lista de productos y servicios. En este caso, será admisible si únicamente los productos y servicios en los que se basa la oposición han sido traducidos separadamente en el escrito de oposición, en documentos adjuntos al mismo o se han presentado posteriormente dentro del plazo para acreditar la oposición. Lo mismo se aplica a los extractos o certificados que utilizan códigos INID o nacionales, cuando la única información que ha de traducirse a la lengua de procedimiento es la lista de productos y servicios.
Cuando las oficinas nacionales faciliten una traducción al inglés, todos los elementos deberán traducirse, por ejemplo las anotaciones relativas al tipo de marca o a la situación de la marca (registrada, impugnada, etc.) ya que tienen relación con el asunto (véase la sentencia de 29/09/2011, T-479/08, «adidas v. OHIM – Patrick Holding»).
Aspectos procesales
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Regla 98, apartado 1, del REMC
La Oficina admite traducciones sencillas, realizadas por cualquier persona. Normalmente, la Oficina no hace uso de su facultad de exigir una traducción jurada certificada por un traductor jurado u oficial. Siempre que el representante incluya una declaración en la que se constate que la traducción es fiel al original, la Oficina no lo cuestionará. La Oficina acepta incluso texto manuscrito en las copias de los certificados originales para reproducir el significado de las distintas entradas en la lengua de procedimiento, siempre que evidentemente estén completas y sean legibles.
La Oficina no exige al oponente aportar traducciones de las pruebas en función de la reacción del solicitante, ya que la regla 19, apartado 3, del REMC no establece ninguna excepción al principio de que las pruebas han de traducirse.
4.3.1.1 Sanciones
Regla 19, apartados 3 y 4; y regla 20, apartado 1, del REMC
Si los documentos no se presentan en la lengua de procedimiento, deberán traducirse en el plazo señalado para la presentación del documento original.
De no ser así, la consecuencia jurídica será que los documentos que no hayan sido traducidos en el citado plazo no se tomarán en consideración. No obstante, si no se han traducido los documentos que demuestran la existencia y la validez del derecho anterior, se desestimará de inmediato la oposición por infundada.
4.3.2 Traducción de las observaciones adicionales
Regla 20, apartados 2 y 4; y regla 96, apartado 1, del REMC
No existe una regla especial que se aplique a las traducciones de la primera respuesta del solicitante u otras observaciones formuladas por el solicitante o el oponente en una fase posterior del procedimiento. Por lo tanto, en relación con estos escritos resulta de aplicación la regla 96, apartado 1, del REMC. Lo anterior significa que la primera respuesta del solicitante o la respuesta del oponente a las observaciones del solicitante pueden presentarse en cualquiera de las lenguas de la Oficina.
Procede señalar que si la primera respuesta del solicitante o la réplica del oponente no figuran en la lengua de procedimiento, sino en una de las lenguas de la Oficina, los documentos presentados no se tomarán en consideración a menos que el solicitante o el oponente presenten una traducción de los mismos a la lengua de procedimiento en el plazo de un mes desde la fecha de la recepción del original por la Oficina. La Oficina no requerirá a las partes a que envíen una traducción. Las partes tendrán que enviar la traducción a iniciativa propia.
Aspectos procesales
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Ejemplo 1
La lengua de procedimiento de oposición es el inglés y el solicitante dispone hasta el 26 de junio de 2002 para presentar observaciones en respuesta al escrito de oposición. Si el 20 de junio de 2002 presenta sus observaciones de respuesta en alemán, deberá presentar su traducción a más tardar el 20 de julio de 2002. Si presenta la traducción a más tardar el 20 de julio de 2002, tanto el documento original como la traducción deberán tenerse en cuenta, aun cuando el plazo original para presentar observaciones finalizó el 26 de junio de 2002.
Ejemplo 2
La lengua de procedimiento de oposición es el inglés y el solicitante dispone hasta el 26 de junio de 2002 para presentar observaciones en respuesta al escrito de oposición. Si el 18 de mayo de 2002 presenta sus observaciones en respuesta a la oposición en alemán, deberá presentar su traducción a más tardar el 18 de junio de 2002. No obstante, dado que su plazo vence el 26 de junio de 2002, si no hubiere presentado una traducción el 18 de junio de 2002, podrá todavía presentar válidamente documentos hasta el 26 de junio de 2002. Si entonces presenta la traducción antes de que venza el plazo, la Oficina considerará la traducción como observaciones válidamente presentadas en la lengua de procedimiento dentro del plazo señalado.
Regla 98, apartado 2, del REMC
Si no se presenta ninguna traducción, las observaciones se considerarán no recibidas en la Oficina y no se tomarán en consideración.
4.3.3 Traducción de documentos distintos de las observaciones
Regla 96, apartado 2, del REMC
Todas las pruebas, con excepción de las que el oponente deba presentar en apoyo de la oposición en el plazo establecido, podrán presentarse en cualquiera de las lenguas oficiales de la Comunidad, ya que es aplicable la regla 96, apartado 2, del REMC. Estas pruebas están constituidas por todos los documentos, que no sean observaciones, presentados por las partes después del plazo concedido al oponente para completar su expediente.
Constituyen ejemplos de este tipo de pruebas los catálogos, artículos de revistas, resoluciones de tribunales nacionales o contratos firmados presentados por el solicitante junto con sus observaciones al escrito de oposición.
Respecto de estas pruebas, sólo se requerirá una traducción si la Oficina así lo solicita. Por lo tanto, las partes no tienen una obligación automática de presentar una traducción.
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Regla 98, apartado 2, del REMC
La Oficina ejerce su facultad discrecional del siguiente modo (esta práctica coincide mutatis mutandis con la que se sigue en relación con la prueba del uso).
En principio, la Oficina no pide de oficio una traducción. No obstante, es vital que la parte que recibe los documentos pueda comprender su contenido esencial. Si éste es dudoso o es impugnado por la parte destinataria de los documentos, la Oficina pedirá que se presente una traducción dentro del plazo que determine.
La regla 98, apartado 2 se aplicará únicamente si la Oficina así lo pide, con la consecuencia de que las traducciones presentadas tardíamente y el original a traducir no se tendrán en cuenta.
Al tiempo que le requiere para que presente una traducción, la Oficina advertirá a la parte interesada del hecho de que incumbe a la parte valorar la necesidad de aportar una traducción completa de todas las pruebas presentadas. Con todo, los documentos en cuestión sólo se tendrán en cuenta si se presenta una traducción de los mismos o si los documentos no necesitan explicación, con independencia de sus elementos verbales.
Ejemplo
En el caso de la resolución de un tribunal nacional, puede ser suficiente traducir únicamente aquellas partes que resultan pertinentes para el procedimiento de oposición.
4.3.4 Prueba del uso
Regla 22, apartado 6, del REMC
Con respecto a la prueba del uso, la regla 22, apartado 6, del REMC, constituye una lex specialis en relación con las traducciones. En el caso de que dichas pruebas se presenten en una lengua de la Unión Europea distinta de la lengua de procedimiento, la Oficina podrá exigir al oponente que facilite una traducción de las pruebas a la lengua de procedimiento dentro del plazo que ella determine.
Por consiguiente, la Oficina goza de facultad discrecional para exigir o no una traducción. Al ejercer esta facultad discrecional, la Oficina ponderará los intereses de ambas partes.
Es vital que el solicitante pueda comprender el contenido esencial de las pruebas presentadas. Si éste es dudoso o es impugnado por el solicitante, la Oficina podrá exigir que se presente una traducción dentro de un plazo que ella determine. No obstante, es posible rechazar una petición de estas características cuando, a la vista del significado evidente de la prueba presentada, la petición del solicitante parezca exagerada o incluso abusiva.
Para más información sobre la prueba del uso, véanse las Directrices, Parte C, Oposición, Sección 6, Prueba del uso.
Aspectos procesales
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Regla 22, apartado 2, del REMC
En virtud de la regla 22, apartado 2, del REMC, la oposición será desestimada si (1) no se presenta ninguna prueba del uso en el plazo establecido o (2) si se presenta dentro de dicho plazo pero la Oficina pidió una traducción de la misma, que no se presentó dentro del plazo señalado.
Si el oponente aporta pruebas del uso en una lengua distinta de la lengua de procedimiento dentro del plazo establecido y a continuación, por iniciativa propia, presenta una traducción de estas pruebas a la lengua de procedimiento una vez finalizado ese plazo pero antes de que expire el plazo concedido al solicitante para presentar observaciones de respuesta, dichas pruebas serán tomadas en consideración. Esto se aplica incluso si la Oficina no ha requerido al oponente para que presente una traducción e incluso si el solicitante no ha cuestionado aún las pruebas.
4.3.5 Cambio de lengua durante el procedimiento de oposición
Artículo 119, apartado 7, del RMC Regla 16, apartado 2, del REMC
Con arreglo a lo dispuesto por el artículo 119, apartado 7, del RMC, las partes en el procedimiento de oposición pueden acordar cambiar la lengua de procedimiento y elegir a tal fin otra lengua oficial de la Unión Europea.
La regla 16, apartado 2, del REMC establece las condiciones en que este cambio de lengua puede llevarse a cabo. De acuerdo con esta disposición, la oposición deberá haberse presentado inicialmente en una de las lenguas de la Oficina. Esta disposición prevé que las partes pueden acordar la utilización de una lengua de procedimiento diferente y que deben informar de ello a la Oficina antes de que expire el periodo de reflexión. La Oficina no admitirá una petición de cambio de lengua presentada una vez expirado el periodo de reflexión.
En caso de que, antes del inicio de la fase contradictoria del procedimiento, el oponente y el solicitante acuerden cambiar la lengua de procedimiento, la regla 16, apartado 2, del REMC exige al oponente que «presente una traducción del escrito de oposición a dicha lengua» en el plazo de un mes a partir de la fecha en la que expire el periodo de reflexión.
Si la traducción no se presenta o se presenta fuera de plazo, la lengua de procedimiento seguirá siendo la misma.
Aspectos procesales
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4.4 Documentos ilegibles / remisión a otros expedientes
4.4.1 Documentos ilegibles
Regla 80, apartado 2, del REMC
En el caso de que una comunicación recibida por fax sea incompleta o ilegible o de que la Oficina tenga dudas razonables sobre la exactitud de la transmisión, informará de ello al remitente y le invitará a que, en un plazo que ella establezca, vuelva a transmitir el original por fax o a presentar el original con arreglo a lo dispuesto en la regla 79, letra a), del REMC.
Cuando esta petición sea atendida dentro del plazo señalado, la fecha de recepción de la retransmisión será considerada como la fecha de recepción de la comunicación original.
4.4.2 No devolución de los documentos originales
Los documentos originales pasan a formar parte del expediente y, por lo tanto, no pueden devolverse a la persona que los presentó.
No obstante, la parte siempre tiene la posibilidad de obtener una copia certificada o no certificada de los documentos originales, previo pago de una tasa. Para más información, véase la información publicada en la página web de la Oficina en el apartado: Consulta pública de expedientes y copias.
4.4.3 Información confidencial
Regla 88, letra c), del REMC
En algunos casos, una de las partes solicita a la Oficina que mantenga la confidencialidad de ciertos documentos incluso frente a la otra parte en el procedimiento. Si bien la Oficina puede mantener confidenciales ciertos documentos frente a terceros (consulta pública), no puede bajo ningún concepto mantener documentos confidenciales en relación con la otra parte en los procedimientos inter partes.
Debe salvaguardarse siempre el derecho de defensa de cada una de las partes en el procedimiento. Lo anterior significa que deben tener pleno acceso a todos los documentos presentados por la parte adversa.
De lo anterior resulta que todos los documentos presentados por una de las partes deberán ponerse en conocimiento de la otra parte en el procedimiento. La Oficina tiene la obligación de dar traslado a la otra parte de todos los documentos recibidos. Por tanto, si una de las partes solicita que determinados documentos sean tratados con carácter confidencial sin indicar si la confidencialidad se refiere a terceros, la Oficina presumirá que así es y los trasladará a la otra parte marcándolos como confidenciales en el archivo electrónico.
Aspectos procesales
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Si en el curso del procedimiento de oposición, la Oficina recibe documentos acompañados de una solicitud de que se mantengan confidenciales inter partes, deberá informarse al remitente de la imposibilidad de mantener documentos confidenciales frente a la parte adversa.
A tal fin, se le remitirá una carta explicándole claramente que puede elegir entre la divulgación de los documentos o la retirada de los mismos. Corresponde a la parte decidir cuál de estas opciones resulta más oportuna en su caso concreto.
En el supuesto de que la parte confirme la confidencialidad, los documentos no se comunicarán a la otra parte ni se tomarán en consideración. Habrá de introducirse la mención «confidencial» en el archivo electrónico.
Si la parte desea que los documentos sean tomados en consideración pero que no sean accesibles a terceros, éstos podrán transmitirse a la otra parte pero se introducirá la mención «confidencial» en el archivo electrónico.
Si no respondiera, los documentos no serán transmitidos a la otra parte ni serán tomados en consideración. Habrá de introducirse la mención «confidencial» en el archivo electrónico.
4.4.4 Referencias a documentos o elementos de prueba de otro procedimiento
Regla 79, letra a); y regla 91, del REMC Decisión n° EX-13-4 del Presidente de la Oficina
La Oficina puede recibir observaciones del oponente o del solicitante en las que se remite a documentos o pruebas presentados en otros procedimientos, por ejemplo a la prueba del uso ya presentada en otra oposición.
Tales peticiones son admitidas en cualquier fase del procedimiento cuando el oponente/solicitante identifica claramente los documentos a los que se remite. La parte debe indicar los siguientes datos: (1) el número de la oposición a la que se remite, (2) el título del documento al que se remite, (3) el número de páginas de este documento y (4) la fecha en que fue enviado a la Oficina, por ejemplo «la declaración jurada que fue enviada a la Oficina el dd/mm/aa en el procedimiento de oposición B xxx xxx, junto con los documentos 1 a 8, y compuesta de xx páginas».
Si los documentos a los que se remite el oponente o el solicitante consistieran originalmente en pruebas que no sean hojas sueltas, con arreglo a la regla 79 bis del REMC la parte interesada remitirá por correo una segunda copia para su traslado a la otra parte dentro del plazo inicial. Si no se presenta ninguna copia, estos elementos de prueba no se tomarán en consideración.
Además, cabe señalar que los documentos o pruebas a los que se ha hecho remisión deban traducirse a la lengua del procedimiento de oposición. La regla 19, apartado 4, la regla 22, apartado 6, y la regla 96, del REMC se aplicarán en consecuencia.
No se aceptará una remisión general a documentos o pruebas presentados en otro procedimiento. En ese caso, puede invitarse a la parte que se remite en general a otros documentos o pruebas a que, en el plazo que se señale, sea suficientemente
Aspectos procesales
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específica. Deberá comunicarse a la parte que la Oficina concede ese plazo únicamente para indicar de forma clara y precisa los documentos o pruebas a los que ha remitido y que en ningún caso se concederá una prórroga del plazo inicial. Además, deberá comunicarse también a la parte que si no especifica a qué documentos se remite dentro del plazo fijado, tales documentos no serán tomados en consideración.
Las partes deben tener en cuenta que la documentación presentada en otro procedimiento puede haber sido destruida cinco años después de su recepción, conforme a la regla 91 del REMC y la Decisión nº EX-13-4 del Presidente de la Oficina de 26 de noviembre de 2013 relativa a la conservación de los expedientes. En ese caso, la remisión a documentos o pruebas presentados en otro procedimiento de oposición carecerá de efecto.
4.5 Otros intercambios de alegaciones
Regla 20, apartados 2, 4, 6; regla 22, apartado 5; regla 96, apartado 2; y regla 98, apartado 2, del REMC
La Oficina invitará al solicitante a presentar observaciones en el plazo por ella establecido de conformidad con la regla 20, apartado 2, del REMC.
Cuando proceda, la Oficina podrá invitar a las partes a limitar sus alegaciones a cuestiones concretas. En tal caso permitirá que las partes planteen las demás cuestiones en una fase posterior del procedimiento. Por ejemplo, el solicitante puede pedir una prueba del uso del derecho anterior, que podrá ir acompañada o no de las alegaciones sobre los motivos en los que se basa la oposición. En ese caso, dichas alegaciones podrán presentarse junto con las alegaciones que se formulen en respuesta a la prueba del uso.
Una vez que el solicitante haya presentado sus observaciones de respuesta, se concederá al oponente un plazo final para presentar su réplica, si la Oficina lo considera necesario. A continuación, por regla general concluye la fase contradictoria del procedimiento y la oposición queda lista para su resolución.
Sin embargo, la Oficina podrá conceder la posibilidad de otro intercambio de alegaciones. Este es el caso, por ejemplo, cuando el asunto versa sobre cuestiones complejas o cuando el oponente plantea una nueva cuestión que es admitida en el procedimiento. En este caso, debe brindarse al solicitante la oportunidad de contestar. La Oficina puede decidir discrecionalmente si procede conceder al oponente un nuevo plazo para presentar alegaciones.
Por tanto, sólo podrá admitirse un nuevo intercambio si las alegaciones finales del oponente se limitan estrictamente a responder a las alegaciones del solicitante y se basan en pruebas que no persigan subsanar deficiencias como las relativas a la acreditación; es decir, si el solicitante plantea nuevas cuestiones, tales como la coexistencia de las marcas, la nulidad del derecho anterior o un acuerdo entre las partes. Si el oponente aporta pruebas para acreditar lo contrario, se podrá conceder al solicitante una segunda oportunidad de presentar observaciones adicionales. No obstante, no se trata de una concesión automática, puesto que depende de las circunstancias del caso.
Aspectos procesales
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4.5.1 Prueba adicional de la prueba del uso
La Oficina puede tener en cuenta la prueba adicional de la prueba del uso que se aporte una vez expirado el plazo correspondiente en determinadas circunstancias, en concreto cuando el oponente aporte una prueba pertinente dentro del plazo y la prueba adicional tenga tan sólo carácter complementario (sentencia de 18 de julio de 2013, C-621/11 P, «Fishbone», apartados 28 y 30). La prueba adicional se examinará caso por caso. Si es necesario, se concederá una segunda ronda de observaciones. Para más detalles, véanse las Directrices, Parte C, Oposición, Sección 6, Prueba del uso.
4.6 Observaciones de terceros
Artículo 40 del RMC Comunicación n° 2/09 del Presidente de la Oficina
Los terceros pueden presentar observaciones precisando las razones por las que procede denegar el registro de la solicitud de marca comunitaria, en virtud de uno de los motivos absolutos previstos en el artículo 7 del RMC. Para más información, véanse las Directrices, Parte B, Examen, Sección 4, Motivos de denegación absolutos y Marcas comunitarias colectivas, así como Parte B, Examen, Sección 1, Procedimiento.
Cualquier persona puede presentar observaciones de terceros; incluso el oponente está facultado para ello. Sin embargo, deberá hacerlo de manera que no haya duda de que se trata de observaciones de tercero. Según lo dispuesto en la Comunicación del Presidente de la Oficina mencionada anteriormente, las observaciones deberán presentarse en escrito independiente. No obstante, en la práctica (véase la resolución de 30/11/2004, R 735/2000-2, «Serie A»), el requisito relativo al «escrito independiente» se considera satisfecho cuando las observaciones pueden separarse claramente de los motivos y alegaciones formulados en apoyo de la oposición, aun cuando figuren en el mismo documento. Siempre que el oponente manifieste expresamente que desea formular observaciones en virtud del artículo 40 del RMC, éstas serán admitidas a trámite, aunque no se presenten en un escrito independiente. Con todo, si el oponente aduce en su escrito que la marca comunitaria solicitada debería denegarse con arreglo al artículo 7 del RMC, sin hacer referencia alguna a lo dispuesto en el artículo 40 del RMC, ese escrito no tendrá la consideración de observaciones de terceros a efectos del artículo 40 del RMC.
Cuando un oponente formule observaciones de terceros, la Oficina valorará si las observaciones suscitan serias dudas acerca de la aptitud para el registro de la marca comunitaria solicitada, o si sólo se enviarán al solicitante a título informativo.
En el caso de que las observaciones susciten serias dudas, la Oficina suspenderá el procedimiento de oposición hasta que recaiga una resolución sobre las observaciones. Cuando las observaciones no susciten serias dudas (es decir, cuando sólo se han enviado al solicitante a título informativo), o no se refieran a los productos o servicios impugnados, el procedimiento de oposición no se suspenderá. Si el procedimiento de oposición ha de suspenderse, la suspensión surtirá efecto cuando la Oficina plantee una objeción con arreglo al artículo 7, y el procedimiento seguirá suspendido hasta que recaiga una decisión firme. En casos de que las observaciones de terceros se reciban en el plazo de oposición de tres meses, la Oficina tramitará la admisibilidad de
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la oposición y, una vez que se haya notificado la resolución sobre la admisibilidad, se suspenderá el procedimiento de oposición.
En todas las oposiciones concluidas como consecuencia de observaciones de terceros, la tasa de oposición no se reembolsará nunca, ya que dicho reembolso no está previsto en el Reglamento (véase la regla 18, apartado 5, del REMC).
5 Conclusión del procedimiento
5.1 Conciliación
Regla 18, apartado 2, del REMC
Las partes pueden decidir libremente acerca de la medida que ponga fin al procedimiento de oposición. Del mismo modo que pueden decidir la retirada de la oposición, también pueden limitarse a pedir a la Oficina, sin aducir razones específicas, que concluya el procedimiento. Basta con comunicar a la Oficina el acuerdo escrito y firmado de las partes, el cual no tiene que exponer los motivos. Posteriormente, la Oficina realizará las diligencias necesarias para concluir el procedimiento sobre la base de este acuerdo.
Por lo que respecta a la devolución de las tasas y la decisión sobre las costas en caso de conciliación, véase el punto pertinente a continuación.
Artículo 42, apartado 4, del RMC
Si lo juzga útil, la Oficina invitará a las partes a una conciliación. Por consiguiente, la Oficina, al igual que las partes, puede iniciar un procedimiento de conciliación.
A tal fin, podrá realizar propuestas de conciliación. Dado que, en principio, la Oficina no puede (y no desea) sustituir a las partes, únicamente actuará en los casos muy excepcionales en los que una conciliación entre las partes parezca deseable y si existen buenas razones para considerar que el procedimiento puede concluir con un acuerdo.
Si las partes lo solicitan expresamente, la Oficina puede ofrecer también asistencia en sus negociaciones, en particular actuando como intermediario o prestándoles los recursos materiales que necesiten. Las partes correrán con los gastos generados. La conciliación puede ir precedida de una solicitud de suspensión.
5.2 Limitaciones y retiradas
Artículo 58, apartado 1; artículo 64, apartado 3; y artículo 85, del RMC Regla 18, apartado 2; regla 3; regla 4; regla 95, letra a); y regla 96, apartado 1, del REMC
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5.2.1 Limitaciones y retirada de solicitudes de marca comunitaria
Artículo 43 RMC
El solicitante podrá limitar los productos y servicios de su solicitud o retirar la totalidad de la solicitud en cualquier fase del procedimiento de oposición.
La retirada y la limitación deberán ser expresas e incondicionales. El silencio por parte del solicitante de una marca comunitaria durante el procedimiento nunca se considerará una retirada tácita.
No se aceptará una retirada o limitación condicional o ambigua, y se trasladará a la otra parte simplemente a efectos informativos, comunicándose a las partes que no se tomará en consideración.
La Oficina no admite las limitaciones condicionales. Por ejemplo, en sus observaciones a la oposición, el solicitante alega que los signos no son similares. Sin embargo, el solicitante añade que en caso de que el examinador los considere similares, limitará la lista de productos y servicios de la solicitud de marca comunitaria. En este caso, la limitación no es admisible y deberá comunicarse al solicitante que la limitación ha de ser expresa e incondicional.
Para más información sobre las limitaciones a una solicitud de marca comunitaria, véanse las Directrices, Parte B, Examen, Sección 3, Clasificación, así como Parte B, Examen, Sección 1, Procedimiento, apartado 5.2.
Si no se admite la limitación, deberá informarse de ello al solicitante.
En el caso de que una limitación sea parcialmente admisible y parcialmente inadmisible (por ejemplo, porque constituye una ampliación), la Oficina aceptará la limitación en la parte admisible. No obstante, antes de proceder a la limitación, deberá informar al solicitante acerca de la parte de la limitación que no puede admitirse concediéndole un plazo de dos meses para reaccionar. El oponente deberá enviar una copia de la limitación al solicitante. Si en el plazo de dos meses el solicitante presenta una versión corregida de la lista que resulta admisible, podrá cursarse la limitación teniendo en cuenta la fecha de presentación de la primera petición de limitación. Por otra parte, si el solicitante no reacciona, la limitación sólo se cursará en relación con la parte declarada admisible.
Si el oponente retira la oposición después de que se haya presentado una limitación inadmisible, la retirada no se tendrá en cuenta si se refiere claramente a la limitación inadmisible. Una vez que la limitación resulte admisible, el oponente será informado de la nueva lista de productos y servicios y se le concederá un nuevo plazo para confirmar la retirada de la oposición.
En el caso de que la limitación sea admisible, se remitirá al solicitante una confirmación.
Dependiendo de la fase del procedimiento, la limitación o retirada tiene consecuencias distintas, tal como se describe a continuación.
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5.2.1.1 Retirada o limitación previa al examen de admisibilidad
La limitación afecta a la oposición/retirada en toda su extensión
En el caso de que la solicitud de marca comunitaria sea retirada o limitada a productos y servicios no impugnados antes de que se notifique la oposición, se dará por concluido el procedimiento de oposición y se reembolsará la tasa de oposición. En otras palabras, la tramitación de la retirada o limitación en estos casos goza de prioridad respecto del examen de admisibilidad.
No se dictará resolución sobre las costas.
La limitación no afecta / no parece afectar a la oposición en toda su extensión
En el caso de una limitación que contenga todavía productos y servicios impugnados, se procederá al examen de admisibilidad.
La limitación se notificará al oponente junto con la notificación de la admisibilidad o junto con la comunicación por la que se informa al oponente de que existe una irregularidad de admisibilidad absoluta o relativa.
Si se retira la oposición, se devolverá la tasa de oposición. Lo anterior se aplica incluso en el caso de que existan irregularidades insubsanables.
No se dictará resolución sobre las costas.
5.2.1.2 Limitación y retirada de una solicitud de marca comunitaria antes de que expire el periodo de reflexión
La limitación afecta a la oposición/retirada en toda su extensión
Si resulta completamente manifiesto que la limitación afecta a la oposición en toda su extensión o si se retira la solicitud de marca comunitaria, se informará de ello a las partes y se concluirá el procedimiento. Se reembolsará la tasa de oposición al oponente.
No se dictará resolución sobre las costas.
La limitación no afecta / no parece afectar a la oposición/retirada en toda su extensión
Si no resulta completamente manifiesto que la limitación afecta a la oposición en toda su extensión o si la limitación no afecta a la oposición en toda su extensión, se invitará al oponente a comunicar a la Oficina si desea mantener o retirar su oposición. Su respuesta será notificada a las partes. Si se retira la oposición, se devolverá la tasa de oposición al oponente.
No se dictará resolución sobre las costas.
El momento pertinente para valorar si el procedimiento de oposición se ha concluido durante el periodo de reflexión es la fecha en la que se presentó una solicitud de limitación ante la Oficina.
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5.2.1.3 Limitación o retirada de una solicitud de marca comunitaria después de que expire el periodo de reflexión
La limitación afecta a la oposición/retirada en toda su extensión
En el caso de que resulte manifiesto que la limitación afecta a la oposición en toda su extensión, la Oficina concluirá el asunto y se informará de ello a las partes. Al mismo tiempo, la limitación se remitirá al oponente.
La Oficina dictará una resolución sobre las costas, salvo que las partes presenten un acuerdo sobre este particular. Para información sobre el reparto de costas, véase el apartado 5.5. de las presentes Directrices.
La limitación no afecta / no parece afectar a la oposición/retirada en toda su extensión
Si no resulta completamente manifiesto que la limitación afecta a la oposición en toda su extensión o si la limitación no afecta a la oposición en toda su extensión, se invitará al oponente a comunicar a la Oficina si desea mantener o retirar su oposición. Su respuesta será notificada a las partes. Si se retira la oposición, se dará por concluido el procedimiento de oposición.
La Oficina dictará una resolución sobre las costas, salvo que las partes presenten un acuerdo sobre este particular. Para información sobre el reparto de costas, véase el apartado 5.5 de las presentes Directrices.
5.2.1.4 Limitación y retirada de una solicitud de marca comunitaria tras la adopción de una resolución
De conformidad con la resolución de la Sala de Recurso Ampliada de 27/09/2006, R 331/2006-G, «Optima», la Oficina aceptará una retirada o limitación recibida durante el plazo de recurso después de que se haya dictado una resolución sobre la oposición, incluso si no se ha interpuesto recurso. No obstante, dicha retirada o limitación no afectará a la resolución, que seguirá siendo válida.
Ello significa que la Oficina tomará nota de la retirada y dará por concluido el asunto. Se remitirá a las partes una confirmación de la retirada (no obstante, en dicha comunicación no se incluirá una resolución sobre las costas). La parte de la resolución inicial relativa a las costas seguirá siendo válida y podrá ser ejecutada por la parte vencedora. La base de datos de la Oficina se actualizará en consecuencia para reflejar la retirada de la solicitud de marca comunitaria.
Para más información, véanse las Directrices, Parte B, Examen, Sección 1, Procedimiento, así como Parte E, Operaciones de registro, Sección 2, Transformación.
Cuando la resolución que haya denegado la solicitud de marca comunitaria en su totalidad haya adquirido firmeza, es decir, cuando haya transcurrido el plazo de dos meses fijado para la presentación de recursos, será demasiado tarde para retirar la solicitud de marca comunitaria, dado que no habrá nada que retirar.
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Cuando la resolución haya desestimado la oposición, la solicitud podrá retirarse o limitarse en cualquier momento.
5.2.1.5 Lengua
Durante el procedimiento de oposición, podrá presentarse una limitación en la primera o en la segunda lengua de la solicitud de marca comunitaria (regla 95, letra a), del REMC).
Cuando la limitación se presente en la primera lengua de la solicitud de marca comunitaria, que no sea la lengua de procedimiento, y cuando la limitación no afecte a la oposición en toda su extensión, será notificada al oponente, requiriéndole para que comunique a la Oficina si mantiene o no la oposición. El oponente puede poner objeciones a la lengua utilizada para la limitación y solicitar una traducción de ésta a la lengua de procedimiento, en cuyo caso la Oficina realizará la traducción.
Si se presenta una limitación admisible en la primera y la segunda lengua, el examinador deberá reflejar esta limitación en las dos lenguas en la base de datos de la Oficina y confirmar en las dos lenguas la nueva lista de productos y servicios al solicitante.
5.2.2 Retirada de la oposición
El oponente puede retirar su oposición en cualquier momento en el curso del procedimiento.
La retirada de la oposición debe ser explícita e incondicional. No se aceptará una retirada o limitación condicional o ambigua, y se trasladará al solicitante simplemente a efectos informativos, comunicándose a las partes que no se tomará en consideración.
En caso de que retire la oposición con independencia de cualquier limitación de la solicitud de marca comunitaria, pueden producirse tres situaciones dependiendo del status en que se encuentre la oposición (cuando el oponente retire su oposición debido a una limitación de la solicitud de marca comunitaria, véase supra).
5.2.2.1 Retirada de la oposición antes de que expire el periodo de reflexión
En caso de que se retire la oposición antes de que expire el periodo de reflexión, se informará a las partes al respecto. En el caso de que el oponente retire la oposición durante el periodo de reflexión sin que concurra una limitación de la solicitud de marca comunitaria, la Oficina no reembolsará la tasa de oposición ni adoptará una resolución sobre las costas.
5.2.2.2 Retirada de la oposición una vez expirado el periodo de reflexión
En caso de que la oposición sea retirada una vez expirado el periodo de reflexión, se informará a las partes al respecto. La tasa de oposición no se reembolsará. La Oficina dictará una resolución sobre las costas, salvo que las partes presenten un acuerdo sobre este particular. Para información sobre el reparto de costas, véase el apartado 5.5 de las presentes Directrices.
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5.2.2.3 Retirada de la oposición después de que se dicte una resolución
De conformidad con la resolución de la Sala de Recurso Ampliada de 27/09/2006, R 331/2006-G, «Optima», la Oficina aceptará una retirada de la oposición recibida durante el plazo de recurso después de que se haya dictado una resolución sobre la oposición, incluso si no se ha interpuesto recurso. No obstante, dicha retirada no afectará a la resolución, que seguirá siendo válida.
Ello significa que la Oficina tomará nota de la retirada y dará por concluido el asunto. Se remitirá a las partes una confirmación de la retirada (no obstante, en dicha comunicación no se incluirá una resolución sobre las costas). La parte de la resolución inicial relativa a las costas seguirá siendo válida y podrá ser ejecutada por la parte vencedora. La base de datos de la Oficina se actualizará en consecuencia para reflejar la retirada de la oposición y la solicitud se enviará para su registro.
Para más información, véanse las Directrices, Parte B, Examen, Sección 1, Procedimiento, así como Parte E, Operaciones de registro, Sección 2, Transformación.
5.2.2.4 Lengua
La retirada de la oposición debe presentarse en la lengua de procedimiento. Se aplica la regla 96, apartado 1, del REMC. Si la retirada se presenta en una lengua que no sea la de procedimiento, deberá acompañarse una traducción en el plazo de un mes desde la fecha de envío del documento original de acuerdo con la regla 96, apartado 1, del REMC. En otro caso se desestimará la retirada.
5.2.3 Retirada de una retirada/limitación
Una parte sólo podrá retirar una retirada/limitación presentada previamente si la Oficina recibe la carta de retirada de la retirada/limitación anterior el mismo día en que recibió el primer escrito.
5.3 Resolución sobre el fondo
La resolución sobre el fondo se adoptará una vez que las partes hayan presentado todos los documentos requeridos. Ésta sólo debe referirse a aquellas cuestiones o derechos anteriores que sean pertinentes para el resultado.
Existen dos excepciones:
Derecho anterior no acreditado Cese de la existencia del derecho anterior.
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5.3.1 Derecho anterior no acreditado
Regla 20, apartado 1, del REMC
Si para ninguno de los derechos anteriores invocados se ha presentado debidamente prueba de su existencia y validez, se desestimará la oposición cuando el plazo concedido al oponente para completar su expediente haya finalizado.
No obstante, si sólo algunos derechos anteriores no se han acreditado pero se ha acreditado un derecho anterior, el procedimiento proseguirá normalmente y los derechos no acreditados no se tomarán en consideración en la resolución definitiva sobre el fondo.
5.3.2 Cese de la existencia del derecho anterior
Si, en el curso del procedimiento, dejara de existir el derecho anterior (por ejemplo, porque ha sido declarado nulo o porque no se ha renovado), la resolución definitiva no podrá basarse en dicho derecho. Una oposición solo puede ser estimada en base a un derecho anterior existente en el momento cuando se dicte la resolución. El motivo por el cual el derecho anterior deje de existir es irrelevante. Como la solicitud de MC y el derecho anterior que dejó de existir ya no pueden coexistir, la oposición no puede ser estimada en relación a dicho derecho anterior. Tal decisión sería contraria al derecho (véase la sentencia de 13/09/2006, T-191/04, «METRO/METRO», apartados 33 y 36).
La Oficina sólo puede tener conocimiento de una declaración de nulidad de un derecho anterior, que no sea una marca comunitaria, si una de las partes le informa de ello. Sin embargo, si una de las partes informa de ello a la Oficina, se oirá a la otra parte y, si procede, se desestimará la oposición.
Antes de que se dicte la resolución, la Oficina comprobará si entre tanto ha vencido el plazo de renovación del derecho anterior invocado. De ser así, la Oficina invitará al oponente a que acredite la renovación de la marca. Si el oponente no presentara esta prueba, deberá desestimarse la oposición.
5.4 Reembolso de la tasa
5.4.1 La oposición se considera no presentada
Artículo 41, apartado 3, del RMC Artículo 9, apartado 1, del RTMC Regla 17, apartado 1, del REMC
Cuando una oposición se considere no presentada porque el pago se ha realizado fuera de plazo o éste es insuficiente (véase el apartado 2.2.2 Fecha de pago, supra), la tasa de oposición, incluidos los recargos, deberá devolverse al oponente. Si se hubiere cobrado un recargo, también deberá reembolsarse.
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5.4.1.1 Escrito de oposición y retirada de la oposición presentados el mismo día
Cuando la retirada se presente el mismo día que el escrito de oposición, la Oficina reembolsará la tasa de oposición.
5.4.1.2 Reembolso después de la republicación
En el caso de que, tras la republicación de la solicitud de marca comunitaria en la parte A.2. del Boletín, debido a un error imputable a la Oficina, una persona que presentó oposición contra la primera publicación desee retirar su oposición como consecuencia de la republicación, se dará por concluido el procedimiento. Habida cuenta de que la Oficina cometió un error en la primera publicación, deberá reembolsarse la tasa de oposición.
5.4.2 Reembolso en vista de la retirada/limitación de la solicitud de marca comunitaria
5.4.2.1 Solicitud de marca comunitaria retirada/limitada antes de que expire el periodo de reflexión
Regla 18, apartados 2, 4, 5, del REMC
En el caso de que el solicitante retire la solicitud de marca comunitaria o retire todos aquellos productos y servicios contra los que se dirige la oposición antes o durante el periodo de reflexión, se dará por concluido el procedimiento de oposición, no se dictará resolución sobre las costas y deberá reembolsarse la tasa de oposición.
5.4.2.2 Retirada de la oposición debido a la limitación de la solicitud de marca comunitaria durante el periodo de reflexión
Regla 18, apartados 3, 4, 5, del REMC
Si, durante el periodo de reflexión, el solicitante retira algunos de los productos y servicios contra los que se dirige la oposición, la Oficina invitará a la parte que presente oposición a declarar si mantiene su oposición (y, en caso afirmativo, contra cuáles de los productos y servicios restantes) o si, a raíz de la limitación, la retira.
Si se retira la oposición, se dará por concluido el procedimiento de oposición, no se dictará resolución sobre las costas y se reembolsará la tasa de oposición.
Si la retirada de la oposición se recibe en la Oficina antes de enviar al oponente copia de la notificación oficial de la limitación, la retirada se considerará una consecuencia de la limitación y se reembolsará la tasa de oposición.
No es necesario que la carta del oponente haga referencia expresa a la limitación, siempre que sea posterior a la limitación del solicitante.
La respuesta inicial del oponente a la notificación no es pertinente, siempre que la declaración de retirada tenga lugar posteriormente.
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Ejemplos
El oponente no contesta dentro del plazo que se le ha concedido, pero posteriormente retira la oposición dentro del periodo de reflexión (que se ha prorrogado).
El oponente contesta en el sentido de que mantiene su oposición, pero a pesar de ello retira la oposición todavía dentro del periodo de reflexión.
5.4.3 Pluralidad de oposiciones y reembolso del 50 % de la tasa de oposición
Regla 21, apartado 4, del REMC
En determinados casos especiales relacionados con una pluralidad de oposiciones, es posible reembolsar el 50 % de la tasa de oposición a un oponente. Deben cumplirse dos condiciones:
uno de los procedimientos de oposición concluyó con la denegación de la solicitud de marca comunitaria impugnada en otro procedimiento paralelo. Por ejemplo, en el caso de que se hayan presentado cuatro oposiciones, A, B, C y D (oponentes A, B, C, D), contra la solicitud de marca comunitaria X, y ésta se deniega debido a la oposición A;
las otras oposiciones (B, C y D) habían sido suspendidas en una fase temprana del procedimiento (es decir, antes de que expirara el periodo de reflexión) porque un examen preliminar puso de manifiesto que, probablemente, la solicitud de marca comunitaria X sería denegada íntegramente debido a la oposición A.
En este caso, se reembolsará a los oponentes B, C y D el 50 % de la tasa de oposición.
5.4.4 Casos en los que no se reembolsa la tasa de oposición
5.4.4.1 Retirada de la oposición antes de que expire el periodo de reflexión NO motivada por una limitación
Regla 18, apartados 3, 4, 5, del REMC
Si el oponente retira la oposición antes de que expire el periodo de reflexión sin que concurra una limitación de la solicitud, la Oficina no procederá al reembolso de la tasa de oposición ni adoptará una resolución sobre las costas.
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5.4.4.2 La retirada de la oposición por parte del oponente es anterior
Regla 18, apartados 3 y 5, del REMC
Cuando la oposición se retira antes de que el solicitante limite su solicitud, no se reembolsa la tasa. Por ejemplo, si el solicitante retira su solicitud debido (y en respuesta) a la retirada de la oposición, no se reembolsa la tasa de oposición, dado que se trata de la situación opuesta.
Lo mismo se aplica cuando el solicitante limita la solicitud debido a la retirada parcial de la oposición.
5.4.4.3 Acuerdo entre las partes antes del comienzo del procedimiento
Regla 18, apartados 2, 4, 5, del REMC
En relación con el reembolso de la tasa de oposición, la regla 18, apartado 5 del REMC, alude únicamente a esta posibilidad en caso de que se retire o se limite la solicitud de marca comunitaria. Por lo tanto, si el procedimiento concluye mediante un acuerdo en el que se menciona una retirada o limitación de la solicitud de marca comunitaria, se reembolsará la tasa de oposición. En los demás supuestos, no se reembolsará la tasa de oposición.
5.4.4.4 Conclusión del procedimiento por otros motivos
Artículo 7, artículo 40 y artículo 92, apartado 2, del RMC Regla 17, regla 18 y regla 76, apartados 1 y 4, del REMC
En los casos en los que la solicitud sea denegada de conformidad con:
el artículo 7 del RMC (denegación de una solicitud por motivos absolutos; por la Oficina de oficio o como consecuencia de observaciones de terceros);
el artículo 92, apartado 2, del RMC (representación de solicitantes de países terceros);
la regla 76, apartado 4, del REMC (poderes solicitados expresamente por una de las partes),
no se reembolsará la tasa de oposición puesto que estas situaciones no están contempladas en el REMC como motivo de reembolso de la tasa de oposición.
5.4.4.5 Respuesta a la renuncia a invocar derechos exclusivos
Artículo 37, apartado 2, del RMC
Si el solicitante presenta una renuncia a invocar derechos exclusivos sobre algún elemento de la solicitud de marca comunitaria impugnada por carecer éste de carácter distintivo (disclaimer) y el oponente retira seguidamente la oposición, no se reembolsará la tasa de oposición, dado que esta situación no se recoge en el REMC
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como motivo de reembolso de la misma. La renuncia a invocar derechos exclusivos (disclaimer) no constituye una limitación de la lista de productos y servicios de la solicitud de marca comunitaria.
5.4.5 Reembolso erróneo de la tasa de oposición
En caso de que la tasa de oposición haya sido reembolsada erróneamente por un error técnico de la Oficina y el oponente posea una cuenta corriente, la Oficina procederá automáticamente a un nuevo cargo en esta cuenta.
Para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Tasas, costas y gastos.
5.5 Resolución sobre el reparto de costas
5.5.1 Casos en los que procede adoptar una resolución sobre las costas
Artículo 85 del RMC Regla 18, apartado 4, del REMC
Se adoptará una resolución sobre las costas en todos los procedimientos de oposición que hayan sobrepasado el periodo de reflexión, es decir, cuando haya comenzado la fase contradictoria y haya llegado a su fin. No se dictará una resolución sobre las costas en aquellas oposiciones que hayan concluido antes del periodo de reflexión o en el curso del mismo.
Cuando se dicte una resolución sobre el fondo, la decisión sobre el reparto de costas se adoptará al final de la resolución. En todos los demás casos, la División de Oposición concluirá el asunto y se adoptará una decisión sobre las costas junto con las comunicaciones de conclusión, a menos que las partes hayan informado a la Oficina de un acuerdo sobre las costas.
5.5.2 Casos en los que no procede adoptar una resolución sobre las costas
5.5.2.1 Acuerdo sobre las costas
Artículo 85, apartado 5, del RMC
En el caso de que las partes hayan resuelto el procedimiento de oposición mediante un acuerdo que incluye las costas, la Oficina no dictará una resolución sobre las costas. Lo anterior se aplica asimismo en el caso de que la Oficina reciba información firmada por ambas partes en la que declaran que han llegado a un acuerdo sobre las costas. Dicha información también puede enviarse a la Oficina en dos cartas separadas. Esta información debe ser recibida antes de que la Oficina haya confirmado la conclusión del procedimiento.
Cuando las partes resuelvan la oposición de mutuo acuerdo, podrán no incluir la cuestión de las costas. En caso de que no se indique si las partes han alcanzado un acuerdo sobre las costas, la Oficina adoptará una decisión sobre las costas con
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carácter inmediato, junto con la confirmación de la retirada/limitación. Si las partes comunican a la Oficina que han alcanzado un acuerdo sobre las costas después de la retirada/limitación, la Oficina no revisará la decisión ya dictada sobre las costas. Queda a la discreción de las partes atenerse al acuerdo y no ejecutar la decisión de la Oficina sobre las costas.
5.5.2.2 Información procedente de la «parte potencialmente ganadora»
En el caso de que la parte que tenga derecho a las costas de acuerdo con las disposiciones generales recogidas en el apartado 5.5.3 infra informe a la Oficina de que acepta que cada parte soporte sus propias costas, no será necesario adoptar una resolución sobre las costas. La Oficina se abstendrá de dictar una resolución sobre las costas siempre que la «parte potencialmente ganadora» informe a la Oficina de que está de acuerdo en compartir las costas aun cuando la «parte perdedora» no confirme su acuerdo. Por consiguiente, las últimas cartas de ambas partes habrán de examinarse atentamente antes de dictar una resolución.
No obstante, si la parte perdedora envía dicha petición a la Oficina, simplemente se transmitirá a la otra parte, pero la resolución sobre las costas se dictará de oficio según las normas usuales.
5.5.3 Casos estándar de resoluciones sobre costas
Artículo 85, apartados 1, 2, 3, del RMC Regla 94 del REMC
La regla general es que la parte que ponga fin al procedimiento mediante la retirada (total o parcial) de la solicitud de marca comunitaria o la retirada de la oposición sufragará las tasas abonadas por la otra parte y todos los gastos esenciales al procedimiento en que haya incurrido.
Si ambas partes pierden parcialmente, se acordará un «reparto diferente» de las costas. Como regla general, es equitativo que cada parte soporte sus propias costas.
Si una de las partes da por concluido el procedimiento, se presume que se da por vencida. El resultado hipotético del asunto, en el caso de que hubiese sido necesario adoptar una resolución sobre el fondo, es absolutamente irrelevante.
En los casos estándar, el resultado es el siguiente.
El solicitante retira o limita su solicitud a los productos y servicios no impugnados en la oposición (retirada parcial). En tales casos, el solicitante ha de pagar las costas.
El oponente retira la oposición sin que se lleve a cabo ninguna limitación de la solicitud de marca comunitaria respecto de los productos y servicios impugnados tras el periodo de reflexión. El oponente ha de pagar las costas.
Limitación de la solicitud seguida por una retirada de la oposición (véase la sentencia de 28/04/2004, T-124/02, «VITATASTE», apartado 56). En principio, cada parte carga con sus propias costas.
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No obstante, un reparto diferente podrá estar justificado por motivos de equidad (por ejemplo, si la solicitud sólo se ha limitado en una medida muy pequeña).
La Oficina no tomará en consideración las alegaciones de las partes relativas a quién debe pagar.
5.5.4 Casos en los que procede declarar un asunto sobreseído
5.5.4.1 Pluralidad de oposiciones
Denegación total de la solicitud de marca comunitaria
En el caso de que se presente una pluralidad de oposiciones contra la misma solicitud de marca comunitaria y éstas no hayan sido suspendidas por la Oficina de conformidad con la regla 21, apartado 2, del REMC, y una de ellas determine la denegación de la solicitud, la Oficina no llevará a cabo ninguna actuación en las otras oposiciones hasta que haya vencido el plazo de recurso.
Si el plazo de recurso vence sin que se haya interpuesto un recurso, la Oficina dará por concluidos los otros procedimientos de oposición y los declarará sobreseídos.
En este caso, la División de Oposición fijará libremente las costas (artículo 85, apartado 4, del RMC). La Oficina no está en condiciones de determinar quién es «la parte ganadora o la parte perdedora» y, si el solicitante pierde el procedimiento por una resolución sobre el fondo, no tendrá que cargar con las costas de otros oponentes. Por lo tanto, aplicando el principio de equidad, se condenará a cada parte a que cargue con sus propias costas.
Denegación parcial de la solicitud de marca comunitaria
En el caso de que se presente una pluralidad de oposiciones parcialmente dirigidas contra los mismos productos y servicios de la marca comunitaria impugnada, la resolución sobre la oposición que se dicte en primer lugar puede afectar a las otras oposiciones.
Ejemplo
La oposición A se dirige contra la clase 1 y la oposición B contra las clases 1 y 2 de la solicitud de marca comunitaria impugnada. En la oposición A se adopta una resolución por la que se deniega la solicitud impugnada para la Clase 1. Cuando la resolución se notifica a las partes de la oposición A, la oposición B se suspenderá hasta que la resolución sobre la oposición A sea firme y vinculante. Una vez que la resolución sea firme, se invitará al oponente de la oposición B a comunicar a la Oficina si desea mantener o retirar su oposición a la luz de la modificación de la lista de productos. Si el oponente retira la oposición, el asunto se dará por concluido.
En esta situación, si el asunto se da por concluido después del inicio de la fase contradictoria del procedimiento, la Oficina adoptará una decisión sobre las costas con arreglo al artículo 85, apartado 2, del RMC. El oponente ha retirado su oposición después de la desestimación parcial de la marca impugnada. En esta medida, el oponente ha vencido en sus pretensiones. Sin embargo, la desestimación parcial ha
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sido más limitada que el alcance de la oposición. En esta medida, el solicitante/titular también ha vencido en sus pretensiones. Por consiguiente, es equitativo que cada parte cargue con sus propias costas.
Si el oponente mantiene su oposición después de la desestimación parcial, el procedimiento continuará y en la resolución definitiva sobre el fondo se adoptará una decisión acerca de las costas con arreglo a las normas habituales.
5.5.4.2 Denegación de una solicitud por motivos absolutos o formalidades
Una solicitud de marca comunitaria puede denegarse durante el procedimiento de oposición por motivos de denegación absolutos (bien sobre la base de observaciones de terceros, de conformidad con el artículo 40 del RMC, o incluso de oficio, en caso de reabrirse el asunto) o de formalidades (por ejemplo, en caso de que un solicitante procedente de un país que no es miembro de la UE ya no esté representado en virtud del artículo 92, apartado 2, del RMC).
Una vez que la denegación sea definitiva, el procedimiento de oposición se dará por concluido mediante el envío de una notificación.
En estos casos, la práctica en relación con las costas es la siguiente:
Si la denegación llega a ser definitiva después de que expire el periodo de reflexión, se adoptará una resolución sobre las costas con arreglo al artículo 85, apartado 4 del RMC. Este artículo establece que, en los asuntos que se declaren sobreseídos, las costas se repartirán a discreción de la Oficina. Entonces, cada parte cargará con sus propias costas.
Si se da la misma situación antes de que se inicie la fase contradictoria, no se dictará resolución sobre las costas.
5.5.4.3 Casos de acumulación de asuntos
Regla 21 del REMC
Para más información sobre la acumulación de asuntos, véase más adelante el punto 6.4.3, Acumulación de procedimientos.
En aquellos casos en los que la oposición conjunta sea estimada íntegramente, el solicitante deberá pagar las tasas de oposición abonadas por cada oponente, pero los gastos de representación los pagará sólo una vez. Si vence el solicitante, se le concederá sólo una vez el reembolso de sus gastos de representación, pero todos los oponentes serán responsables del pago de los mismos. En este caso, podría resultar equitativo un reparto diferente de las costas. En los casos de estimación parcial o si resulta equitativo por otros motivos, cada parte deberá cargar con sus propias costas.
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5.5.4.4 Significado de «cargar con las propias costas»
El concepto de costas abarca la tasa de oposición y las costas inherentes al procedimiento, tal como se recoge en el artículo 85, apartado 1, del RMC y en la regla 94, apartados 6 y 7, del REMC. En la mayoría de los casos, las costas comprenden la retribución de un agente dentro de los límites de las escalas establecidas por el Reglamento.
«Cada una de las partes cargará con sus propias costas» significa que ninguna de las partes reclamará el pago de éstas a la otra parte.
5.6 Fijación de las costas
Artículo 85, apartado 6, del RMC Regla 94 del REMC
Cuando las costas se refieran sólo a los gastos de representación y a la tasa de oposición, la resolución por la que se fija la cuantía de las costas se incluirá en la resolución relativa al reparto de costas (es decir, como regla general, en la resolución sobre el fondo).
Lo anterior significa que en la gran mayoría de los casos no será necesario fijar la cuantía de las costas por separado.
Las únicas excepciones son las siguientes:
cuando haya tenido lugar un procedimiento oral;
cuando, por descuido, la fijación de las costas se haya omitido («olvidado») en la resolución principal.
5.6.1 Cantidades que deben reembolsarse/fijarse
El importe reembolsable se fija siempre en euros, con independencia de la moneda en la que la parte en cuestión tuviere que pagar a su representante.
Regla 94, apartado 6, del REMC
Si el oponente es la parte ganadora, se le reembolsará la tasa de oposición, que asciende a 350 EUR.
Regla 94, apartado 3, del REMC
Por lo que respecta a los gastos de representación, el importe se limita a 300 EUR. Esto se aplica tanto para el oponente como para el solicitante, a condición de que esté
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representado en el procedimiento de oposición por un representante profesional de conformidad con el artículo 93, apartado 1, del RMC, independientemente de que hayan incurrido ambos o no en dichos gastos.
Si la parte ganadora estuvo representada en alguna fase del procedimiento por un representante profesional, pero no está ya representada en el momento de adoptarse la decisión sobre las costas, también tendrá derecho a que se le concedan las costas con independencia del momento en el que cesó la representación profesional en el procedimiento.
No se reembolsarán y no se fijarán los gastos de representación de los empleados, aun cuando pertenezcan a otra empresa con vínculos económicos. Dichos gastos no se abordarán en la resolución sobre las costas.
Para más información sobre la representación, véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
En los casos de acumulación de asuntos en virtud de la regla 21, apartado 1, del REMC, cuando los oponentes sean las partes ganadoras, la Oficina fijará las dos tasas de oposición (o la totalidad de esas tasas), una para cada oponente, pero sólo fijará una tasa de representación, en cuyo caso las costas que el solicitante pagará a los oponentes serán de 1 000 EUR.
Por lo que respecta a las costas del procedimiento de oposición, deberá adoptarse una única resolución sobre el reparto y la fijación de las costas para el procedimiento de oposición en su totalidad.
Cuando sea anulada una resolución por la Sala de Recurso y remitida a la División de Oposición, esta última habrá de decidir de nuevo sobre el asunto y fijará las costas del modo habitual.
Si esta resolución es recurrida (y no se devuelve por segunda vez), la Sala adoptará una decisión sobre las costas y las fijará del modo habitual.
5.6.2 Procedimiento aplicable cuando la fijación de costas se incluye en la resolución principal
Regla 94, apartado 3, del REMC
Cuando la resolución por la que se fija la cuantía de las costas forma parte de la resolución sobre el reparto de costas, no es necesario presentar factura ni prueba alguna. La Oficina tiene conocimiento de que la tasa de oposición se pagó y, si existe un representante, se deben abonar los 300 EUR, con independencia de cualesquiera pruebas. Se supone que las costas de representación han sido al menos de 300 EUR.
Por tanto, no es necesario intercambiar correspondencia con las partes sobre la cuantía que debe fijarse, dado que ésta se fijará mediante un procedimiento automático.
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5.6.3 Procedimiento aplicable cuando es necesario fijar la cuantía de las costas por separado
Los siguientes requisitos de procedimiento se aplican en aquellos casos infrecuentes en los que la cuantía de las costas debe fijarse por separado (incluso si se hubiera omitido de manera involuntaria, también en ese caso la parte en cuestión debe cumplir los requisitos aplicables):
admisibilidad; prueba.
5.6.3.1 Admisibilidad
Artículo 85, apartado 6, del RMC
La petición de fijación de costas sólo será admisible una vez que la decisión en relación con la cual se solicita la fijación de las costas sea definitiva y en el plazo de dos meses a partir de esa fecha.
5.6.3.2 Prueba
Regla 94, apartado 3, del REMC
Para obtener el pago de la tasa de oposición no es necesario presentar pruebas.
Para obtener el pago de los gastos de representación según la tarifa normal, bastará con que el representante asegure que ha incurrido en dichos gastos. A fortiori, si se presenta una factura, bastará con que en la misma figure al menos el importe reembolsable, y no importa que vaya o no dirigida a la parte en el procedimiento, dado que presentar una factura equivale a una garantía.
Para todos los demás gastos (que se aplicarán en casos extremadamente raros), es necesario presentar una factura y los correspondientes justificantes, si bien basta con que en los mismos se muestre de forma plausible (sin que sea necesaria una prueba en toda la regla) que los gastos han sido soportados.
5.6.4 Revisión de la fijación de costas
Artículo 85, apartado 6, del RMC Regla 94, apartado 4, del REMC
Cuando una de las partes manifieste su desacuerdo con la cuantía fijada, podrá pedir la modificación de la resolución. La petición deberá indicar las razones en las que se base y presentarse en el plazo de un mes a partir de la notificación de la fijación de las costas. La petición sólo se considerará presentada cuando se haya pagado la tasa de revisión, cuyo importe asciende a 100 EUR.
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No se reembolsarán costas en el procedimiento de revisión (véase la resolución de 16/12/2004, R 0503/2001-4, «BIOLACT/BIO»).
6 Aspectos procesales
6.1 Corrección de errores
Artículo 43, apartado 2, del RMC
6.1.1 Corrección de errores en el escrito de oposición
No hay en los reglamentos disposiciones especiales que se refieran a la corrección de errores en el escrito de oposición. Aplicando por analogía el artículo 44, apartado 2 del RMC, que se refiere a la solicitud de marca comunitaria, pueden corregirse los errores manifiestos en el escrito de oposición.
La Oficina define el «error manifiesto», en relación con el artículo 44, apartado 2, del RMC y la regla 53 del REMC, tal como se recoge en el nº B.16 de las Declaraciones conjuntas del Consejo y la Comisión recogidas en el acta de la sesión del Consejo en la que se adoptó el RMC: «[…] las palabras “error manifiesto” deben entenderse referidas a un error cuya corrección es manifiesta, en el sentido de que no se ha tenido intención de decir nada más que lo que se indica en la corrección».
Por ejemplo, el hecho de que en el apartado donde deberían figurar los datos del representante aparezcan los datos del oponente, puede considerarse un error manifiesto.
6.1.2 Corrección de errores y faltas en las publicaciones
Regla 14 del REMC
Cuando en la publicación de la solicitud se deslice algún error o falta imputable a la Oficina, ésta lo corregirá de oficio o a petición del solicitante.
Se publicarán las correcciones efectuadas en virtud de esta regla. Si la corrección se refiere a errores que no afectan a la oposición, se publicará cuando se registre la marca comunitaria. Cuando la corrección dé lugar a una ampliación de la lista de productos o servicios o se refiera a la representación de la marca, se iniciará un nuevo plazo de oposición, pero sólo en relación con las partes corregidas.
En el caso de que se presenten oposiciones después de la «primera» publicación de la solicitud de marca comunitaria, deberá informarse a los oponentes de la republicación. Las personas que presentaron oposición contra la primera publicación no tendrán que presentar una nueva oposición. Deberá suspenderse el procedimiento hasta que expire el plazo de oposición consecutivo a la «segunda» publicación.
Si una persona que presentó oposición contra la primera publicación desea retirar su oposición como consecuencia de la republicación, se dará por concluido el procedimiento y se reembolsará la tasa de oposición (véase el punto 5.4.1.2 supra)
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6.2 Plazos
Regla 71, apartado 1; regla 79; regla 80, apartado 3; regla 82, apartado 3; y regla 96, apartado 1, del REMC
Los plazos son esenciales para una tramitación ordenada y razonablemente rápida de los procedimientos. Constituyen un tema de orden público y su cumplimiento riguroso es necesario para garantizar la claridad y la seguridad jurídica.
Para información general sobre los plazos y la continuación del procedimiento, véanse las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, Plazos.
6.2.1 Prórroga de plazos en el procedimiento de oposición
6.2.1.1 Plazos prorrogables e improrrogables
Regla 71, apartado 1, del REMC
No podrá prorrogarse un plazo si su duración está establecida en el Reglamento. Los plazos improrrogables son:
Artículo 41, apartado 1, del RMC
El plazo de tres meses para presentar oposición;
Artículo 41, apartado 3, del RMC
El plazo de tres meses para pagar la tasa de oposición;
Artículo 8, apartado 3, letra b), del RTMC
El plazo de un mes para pagar el recargo, cuando el pago se efectúa con retraso y no se ha presentado ninguna prueba que justifique que los trámites de pago se iniciaron al menos 10 días antes de que expirara el plazo fijado para el mismo;
Regla 17, apartado 4, del REMC
El plazo de dos meses para subsanar irregularidades con arreglo a la regla 17, apartado 4, del REMC.
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Regla 71, apartado 1, del REMC
Los plazos prorrogables tendrán la duración que especifique la Oficina. Por ejemplo, el plazo para presentar observaciones al escrito de oposición es un plazo prorrogable.
6.2.1.2 Solicitud presentada dentro del plazo
Nota: la prórroga del periodo de reflexión se rige por un procedimiento especial. Para más información, véase supra el punto 3.2, Prórroga del periodo de reflexión.
Para que se conceda una prórroga, la solicitud debe cumplir las siguientes condiciones:
El plazo debe ser prorrogable; La prórroga ha de ser solicitada por la parte interesada o por ambas partes
conjuntamente; La solicitud debe estar firmada; El plazo original no debe haber expirado todavía; El régimen lingüístico deberá respetarse, es decir, si la solicitud no se presenta
en la lengua de procedimiento, deberá aportarse una traducción en el plazo de un mes a partir de la presentación, de lo contrario no se tendrá en cuenta la solicitud.
Sólo podrá concederse la prórroga de un plazo si la solicitud correspondiente se presenta y se recibe antes del vencimiento de ese plazo (véase el auto de 30/01/2014, C-324/13 P, «Patricia Rocha»). En caso de que la Oficina reciba una solicitud de prórroga una vez vencido el plazo, ésta será denegada.
Toda primera solicitud de una prórroga recibida dentro de plazo se concederá siempre por un periodo de dos meses (o menos, si así se solicita), con independencia de la explicación ofrecida por la parte que la solicita. Sin embargo, cualquier solicitud posterior del mismo plazo será denegada a menos que la parte solicitante explique y justifique debidamente las circunstancias excepcionales que le han impedido atenerse al plazo inicial y a la primera prórroga, así como los motivos por los que resulta necesaria una nueva prórroga. Las explicaciones generales o vagas no justificarán una segunda prórroga. La solicitud se acompañará siempre por pruebas y/o documentación justificativa.
Por otra parte, las circunstancias que están bajo el control de la parte interesada no constituyen «circunstancias excepcionales». Por ejemplo, las negociaciones de última hora con la otra parte no son «circunstancias excepcionales». Están bajo el control de las partes.
La solicitud deberá ser presentada por la parte interesada en el plazo. Por ejemplo, si el solicitante ha de presentar observaciones en contestación al escrito de oposición, sólo podrá pedir la prórroga el solicitante.
Para más información sobre prórroga de plazos, véanse las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, Plazos, punto 3.1.3, Prórroga de plazos.
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6.2.1.3 Prórroga de un plazo por iniciativa de la Oficina
La Oficina puede prorrogar un plazo por iniciativa propia cuando razones especiales lo exijan. Por ejemplo, la Oficina recibe una solicitud de prórroga de un plazo, sin justificación alguna, 20 días antes de que finalice el plazo para presentar observaciones, pero que es tramitada una vez expirado el plazo. Habida cuenta de que la denegación de la solicitud de prórroga tras el vencimiento del plazo lesionará de forma desproporcionada los intereses de la parte que la presentó, la Oficina concederá una prórroga del plazo correspondiente al número de días que dejó transcurrir cuando la parte presentó su solicitud, en este caso 20 días. Esta práctica se basa en las reglas de buena administración.
Cuando se haya presentado y se haya recibido antes del vencimiento de un plazo prorrogable una solicitud de prórroga de dicho plazo (véase el auto de 30/01/2014, C- 324/13 P, «Patricia Rocha»), se concederá a la parte interesada al menos un día, incluso si la solicitud de prórroga se hubiera recibido en el último día de este plazo.
6.2.1.4 Firma
En el caso de que una de las solicitudes no esté firmada, habrá que comprobar si con posterioridad, pero siempre dentro del plazo, se ha recibido una segunda solicitud firmada. Esto sucede porque las partes se olvidan en ocasiones de firmar, pero se percatan de su error después de enviar la solicitud, por lo que la firman y envían de nuevo.
Una solicitud conjunta ha de estar firmada por ambas partes y debe recibirse dentro del plazo cuya prórroga se solicita. Una solicitud firmada por uno de los representantes que asegura a la Oficina que la otra parte está de acuerdo con la prórroga no puede admitirse.
6.3 Suspensión
Regla 20, apartado 7; y regla 21, apartado 2, del REMC
La Oficina puede suspender el procedimiento de oposición de oficio, a petición de ambas partes o de una de ellas.
Según la regla 20, apartado 7, del REMC, la Oficina «podrá» suspender el procedimiento de oposición. Por lo tanto, la resolución de suspensión se toma siempre discrecionalmente por la Oficina.
6.3.1 Suspensión solicitada por ambas partes
Si ambas partes solicitan la suspensión una vez expirado el período de reflexión, no tienen que indicar ningún motivo concreto y se concede la suspensión en todos los casos. En estos supuestos, independientemente del plazo solicitado por las partes, la primera suspensión se concederá por un año, aunque se les da a las partes la posibilidad de poner fin voluntariamente a ella. El procedimiento para poner fin a la suspensión es el mismo que para prórroga del periodo de reflexión: si una de las partes decide poner fin a la suspensión, ésta terminará 14 días después de informar a las partes al respecto. El procedimiento se reanudará el día siguiente y la parte para la
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que estaba corriendo el plazo en el momento de la suspensión tendrá dos meses para presentar observaciones. No es posible poner fin al procedimiento de suspensión durante el último mes del plazo y cualquier solicitud al respecto será desestimada.
No se atenderán las solicitudes conjuntas de suspensión basadas en el mantenimiento de negociaciones en curso que se presenten dentro del período de reflexión, ya que la finalidad de este último es precisamente la de fijar un marco temporal para la negociación antes del comienzo de la fase contradictoria.
En principio, las partes pueden solicitar conjuntamente prórrogas de la suspensión para mantener negociaciones. Estas solicitudes se conceden automáticamente por plazos adicionales de un año. No obstante, transcurridos tres años de suspensión, las partes han de dar una explicación de por qué no han concluido todavía las negociaciones. Para evitar posibles abusos, la Oficina puede proceder discrecionalmente y decidir que no concede más suspensiones del procedimiento.
En principio, las solicitudes presentadas solamente por una de las partes se desestimarán. Es frecuente la negociación de las partes durante el procedimiento de oposición. Sin embargo, es posible que una de las partes solo quiera negociar siempre que las negociaciones no impliquen la demora del procedimiento. Las negociaciones, por tanto, no confieren a ninguna de las partes el derecho a ignorar un plazo pendiente, a obtener una prórroga del mismo o a conseguir una suspensión del procedimiento. Por eso se desestiman tales solicitudes.
6.3.2 Suspensiones por la Oficina de oficio o a instancia de una de las partes
La Oficina puede suspender el procedimiento de oposición de oficio o a instancia de una de las partes en una serie de circunstancias.
El REMC prevé dos supuestos específicos en los que puede suspenderse el procedimiento:
La oposición se basa en una solicitud de registro de marca. La oposición se basa en una solicitud de registro de una indicación geográfica o
denominación de origen.
Además, según el REMC, la oposición puede suspenderse cuando proceda habida cuenta de las circunstancias, por ejemplo en las situaciones siguientes:
El derecho anterior está en peligro (en virtud de oposición o anulación). Hay observaciones de terceros que plantean serias dudas sobre la
registrabilidad de la solicitud de marca (véase la página 51). Hay errores en la publicación de la solicitud impugnada que exigen una
republicación de la marca. Está en curso una cesión de marcas comunitarias anteriores/solicitudes de
marcas comunitarias anteriores o de solicitudes de marcas comunitarias impugnadas.
Retirada del representante.
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Se debe señalar que en ninguno de los casos mencionados existe obligación de suspender el procedimiento. La decisión será adoptada discrecionalmente por la Oficina.
6.3.2.1 Explicación del principio básico, momento de la suspensión
Regla 20, apartado 7, del REMC
En principio, las oposiciones basadas en solicitudes de registro o en derechos anteriores que están en peligro no se suspenden de oficio, al menos no al inicio del procedimiento. Se presume que en la mayor parte de los casos las solicitudes devienen registros y que las acciones de oposición o anulación de derechos anteriores se resolverán durante el procedimiento.
En estos casos, la oposición continuará hasta que esté lista para su resolución. Habrá que considerar entonces si el derecho anterior puede influir, a primera vista, en el resultado de la oposición. Si se estima que la oposición va a tener éxito o va a ser desestimada en cualquier caso, independientemente de la suerte que corra el derecho anterior, el procedimiento no debe suspenderse. En cambio, si este derecho ha de ser tenido en cuenta necesariamente en la resolución de oposición, habrá que suspender el procedimiento. Antes de concluir el procedimiento, deberá comprobarse la situación de la marca anterior o, tratándose de una solicitud nacional o de una marca nacional anterior en peligro, deberá solicitarse al oponente que aporte información sobre la situación de la solicitud o del registro. No obstante, la Oficina podrá suspender el procedimiento si así lo solicita solamente una de las partes y el derecho anterior es una solicitud o está en peligro. Si el derecho anterior es un derecho nacional, las partes deberán aportar pruebas de que la solicitud presenta problemas. En este caso, el resultado del procedimiento sobre la marca anterior puede repercutir en la oposición. Por tanto, deberá tomarse en consideración para decidir sobre la suspensión el resultado probable de la suspensión. Es lo que sucede, en particular, cuando no puede adoptarse la resolución final sobre la oposición sin tener en cuenta la solicitud o el registro anteriores. En tal situación, las circunstancias del caso no permiten a la Oficina decir que, en cualquier caso, se desestimará la oposición (por ejemplo, por no haber riesgo de confusión) o, por el contrario, que será aceptada (por haber otros derechos anteriores que sean suficientes para desestimar la marca impugnada para todos los productos y servicios impugnados).
Cuando una oposición se base en una solicitud de registro, puede ser procedente suspender el procedimiento de oposición, con arreglo a lo dispuesto en la regla 20, apartado 7, del REMC, hasta que se registre la marca anterior del oponente. No obstante, si hay que desestimar una oposición, por razones de forma o de fondo, la suspensión carecería de sentido y tan sólo prolongaría innecesariamente el procedimiento.
En el caso de que no haya otros derechos anteriores que deban tenerse en cuenta (porque no existen o porque no se han acreditado) o cuando la solicitud o el registro deba, no obstante, tomarse en consideración (porque los otros derechos anteriores no parecen determinar el éxito de la oposición), deberá valorarse si la oposición va a prosperar sobre la base de la solicitud, a fin de decidir sobre la suspensión. Sólo se suspenderá el procedimiento si se concluye que la solicitud anterior, si llega a registrarse, determinará la denegación total o parcial de la solicitud de marca comunitaria impugnada
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6.3.2.2 Solicitudes o registros de marca comunitaria anteriores
La oposición se basa en una solicitud, pero el procedimiento no se suspende debido a la existencia de otro derecho anterior (una marca registrada) en virtud del cual puede denegarse la solicitud impugnada. Si el oponente no acredita este otro derecho anterior, la solicitud anterior se torna crucial para la resolución. Cuando, según el expediente, solamente la solicitud anterior presente problemas, la oposición deberá suspenderse.
6.3.2.3 Marcas (solicitudes o registros/derechos) nacionales/internacionales anteriores
La cuestión de la suspensión habrá de ser planteada por las partes (por regla general, por el solicitante). En tal caso, la parte ha de presentar pruebas de que la marca anterior (solicitud o registro/derecho) presenta problemas. Las pruebas deben ser oficiales, han de identificar claramente el procedimiento que determina la suspensión y deben indicar el remedio buscado. En particular, deben dejar tan claras como sea posible las consecuencias para el derecho anterior en el que se basa la oposición. En caso necesario, puede solicitarse a la parte que presente una traducción de las pruebas,
Una vez formulada esta petición, la Oficina considerará si, a la vista de las circunstancias, conviene suspender el procedimiento.
Si nadie plantea la cuestión, se aplicará el principio general y la Oficina sólo habrá de decidir sobre la suspensión si el procedimiento llega al final de la fase contradictoria y no se recibe información de que la solicitud se ha convertido en registro o de que ha concluido el procedimiento nacional contra la marca anterior. En este caso, se requerirá al oponente para que informe a la Oficina sobre la situación en la que se encuentra su solicitud o registro anterior.
6.3.2.4 Ejemplos
He aquí algunos ejemplos en los cuales, según la práctica general antes indicada, la situación no parece requerir una suspensión del procedimiento pero, no obstante, puede acordarse la suspensión si la Oficina lo considera oportuno.
La oposición se basa en una marca francesa y en una solicitud de marca comunitaria, ninguna de las cuales presenta problemas. Ambas se refieren al mismo signo y a los mismos productos, cuya similitud puede inducir a confusión con la solicitud de marca impugnada. Por consiguiente, la oposición puede tramitarse basándose únicamente en la marca francesa. Si el riesgo de confusión sólo puede darse en Estados miembros distintos de Francia, la decisión será más sólida si se basa en la solicitud de marca comunitaria y por tanto procede suspender el procedimiento a la espera del resultado de la solicitud de marca comunitaria.
La solicitud anterior no tiene mucha influencia en el resultado, pero el solicitante pide la suspensión. Si el derecho anterior es una solicitud de marca comunitaria y la Oficina comprueba que presenta problemas o, en el caso de una solicitud
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nacional, si el solicitante aporta pruebas de que la solicitud del oponente presenta problemas, podrá suspenderse el procedimiento.
Los ejemplos que siguen encajan en la categoría de marcas nacionales anteriores en peligro:
el solicitante (o un tercero) ha presentado una demanda o una contestación a la demanda solicitando la invalidación o revocación del registro anterior;
el solicitante (o un tercero) ha presentado una demanda o una contestación a la demanda solicitando la cesión del derecho anterior a su propio nombre.
6.3.3 Pluralidad de oposiciones
Regla 21, apartado 2, del REMC
Salvo en circunstancias extraordinarias en las que una única marca anterior determine claramente la denegación de la marca impugnada que incluya todos los productos y servicios, la Oficina no suspenderá el otro procedimiento hasta que se adopte resolución definitiva.
6.3.3.1 Tras la denegación de la solicitud de marca comunitaria
En el caso de que la solicitud de marca comunitaria sea denegada posteriormente en virtud de una oposición «activa», las oposiciones suspendidas se considerarán resueltas una vez que la resolución adquiera firmeza. Si la resolución ha adquirido firmeza, se comunicará a las partes del otro procedimiento; las oposiciones que fueron suspendidas en una fase temprana (antes del periodo de reflexión) se darán por concluidas y se reembolsará un 50 % de la tasa de oposición a cada oponente, con arreglo a la regla 21, apartado 4, del REMC.
Si se hubiere presentado un recurso contra la resolución, se mantendrá la suspensión de las oposiciones. Si la Sala de Recurso anula la resolución, los procedimientos restantes se reanudarán inmediatamente sin necesidad de esperar a que la resolución sea firme.
6.3.4 Aspectos procesales
Las cartas por las que se suspende el procedimiento siempre deberán indicar la fecha en que surte efecto la suspensión, que, por regla general, es la fecha en que se ha presentado una solicitud válida.
6.3.4.1 Supervisión de los expedientes suspendidos
En los casos en que se suspenda el procedimiento por plazo indefinido, la Oficina supervisará la oposición cada seis meses.
En los casos en que el derecho anterior sea una solicitud de un registro nacional o un registro nacional/internacional que tenga problemas, la reanudación del procedimiento
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dependerá siempre de la reacción de las partes, las cuales habrán de informar a la Oficina sobre cualesquiera cambios en la situación de la solicitud o registro y aportar pruebas al efecto. En todo caso, la Oficina remitirá recordatorios cada seis meses, en los que podrá solicitar a las partes que aporten las pruebas.
6.3.4.2 Reanudación del procedimiento
Se informará a las partes en todos los casos de la reanudación del procedimiento y del plazo pendiente, si procede. El plazo que estuviera pendiente en el momento de la suspensión se fijará de nuevo en dos meses completos, salvo el período de reflexión, que no podrá superar nunca 24 meses, de conformidad con la regla 18, apartado 1, del REMC.
El procedimiento se reanudará tan pronto como se dicte una resolución firme en el procedimiento nacional o se registre o se deniegue la solicitud anterior. Si la resolución recaída en el procedimiento nacional anula, revoca, determina de algún otro modo la extinción del derecho, o la cesión del derecho anterior del oponente, la oposición se considerará no fundada en la medida en que se base en dicho derecho anterior. Si todos los derechos anteriores en los que se basa la oposición han dejado de existir, se concederá al oponente la oportunidad de retirar su oposición. Si no la retira, la Oficina adoptará una resolución por la que se desestimará la oposición.
6.3.4.3 Cálculo de los plazos
En caso de que la suspensión se acuerde por un periodo fijo de tiempo, las cartas habrán de indicar también la fecha en que se reanudará el procedimiento y lo que sucederá a continuación. Cuando la suspensión sea solicitada por ambas partes porque hay negociaciones en curso, el período será siempre de un año, con independencia del plazo solicitado por las partes.
Si el 30 de enero de 2015 se da curso a una solicitud de suspensión por un período de dos meses firmada por ambas partes y presentada el 15 de enero de 2015 (cinco días antes de expirar el plazo de que dispone el oponente para completar la oposición – el 20 de enero de 2015), el resultado será el siguiente:
la Oficina suspende el procedimiento de oposición a petición de ambas partes;
la suspensión surte efecto a partir del 15 de enero de 2015 (la fecha en que la Oficina recibió la solicitud de suspensión) y finalizará el 15 de enero de 2016;
el procedimiento se reanudará el 16 de enero de 2016 (un año, con independencia del plazo solicitado por las partes), sin que la Oficina proceda a una nueva notificación;
el plazo para el oponente será ahora el 15 de marzo de 2016 (dos meses completos para que el oponente complete el expediente);
el plazo para el solicitante será ahora el 15 de mayo de 2016 (dos meses completos después del plazo del oponente).
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6.4 Pluralidad de oposiciones
Regla 21 del REMC
Existe pluralidad de oposiciones en el caso de que se hayan presentado varias oposiciones con respecto a la misma solicitud de marca comunitaria.
En caso de pluralidad de oposiciones, se deben tener en cuenta algunos factores adicionales.
En primer lugar, a menos que se produzca un retraso importante durante la fase de admisibilidad en relación con una de las oposiciones, es práctica habitual notificar al solicitante todas las oposiciones al mismo tiempo. En segundo lugar, la pluralidad de oposiciones puede dar lugar a la suspensión de algunas de ellas por razones de economía procesal. En tercer lugar, una limitación efectuada por el solicitante en el curso de uno de los procedimientos puede tener consecuencias en las otras oposiciones. Además, puede resultar práctico dictar las resoluciones en un cierto orden.
Por último, en determinadas circunstancias, las diversas oposiciones pueden acumularse y tramitarse en un mismo bloque de procedimientos.
6.4.1 Pluralidad de oposiciones y limitaciones
Cuando se hayan presentado varias oposiciones y el solicitante limite los productos y servicios en uno de los procedimientos de oposición, se informará a todos los demás oponentes mediante la carta que resulte apropiada, en la medida en que la limitación afecte a productos o servicios impugnados por las otras oposiciones.
No obstante, si no existe relación entre los productos y servicios contenidos en la limitación y los productos y servicios impugnados, no será necesario informar al oponente.
Por ejemplo, se han presentado cuatro oposiciones contra la misma solicitud de marca comunitaria, en la que se designan productos de las clases 3, 14, 18 y 25. Las oposiciones se dirigen contra las siguientes clases:
Oposición Alcance
N 1 Clase 3
Nº2 Clase 25
Nº3 Clases 18 y 25
Nº4 Clases 14 y 25
El solicitante presenta una limitación en la oposición nº 2, suprimiendo vestidos y sombrerería. Además de las cartas apropiadas en la oposición nº 2, deberán enviarse también las cartas apropiadas en las oposiciones nº 3 y nº 4. Dado que la limitación no afecta a los productos impugnados en la oposición nº 1, no será necesario realizar ninguna actuación en esta oposición.
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6.4.2 Pluralidad de oposiciones y resoluciones
Una vez que la oposición alcanza la fase de resolución, es importante tomar en consideración la posible pluralidad de oposiciones pendientes contra la misma solicitud de marca comunitaria. Antes de que pueda dictarse una resolución sobre la oposición, debe analizarse la fase del procedimiento de la pluralidad de oposiciones, y en función de los casos podrá dictarse una resolución o deberá suspenderse la oposición. El principio general aplicable es que los productos y servicios impugnados no deben ser rechazados en más de una ocasión en diferentes momentos. Las tres situaciones que puedan darse se exponen a continuación.
1. Todas las oposiciones contra la misma solicitud de marca comunitaria están ya listas para resolución en el mismo momento
El orden en que se adopten las resoluciones es una facultad discrecional del examinador. Sin embargo, habrá de tenerse en cuenta lo siguiente.
En caso de que ninguna de las oposiciones prospere, las resoluciones podrán adoptarse en cualquier orden, dado que la desestimación de la oposición no afecta a la solicitud de marca comunitaria. Aun en el supuesto de que una de las resoluciones sea recurrida antes de que se adopten las demás, parece preferible no suspender dado que el procedimiento ante las Salas de Recurso puede durar cierto tiempo.
En caso de que prosperen todas las oposiciones, habrá de dictarse en primer lugar la resolución sobre la oposición que suprima un mayor número de productos y servicios de la solicitud de marca comunitaria (la oposición con mayor extensión), y una vez que sea firme se adoptarán las resoluciones sobre las oposiciones que impugnen productos o servicios distintos de los impugnados por la primera. En el ejemplo mencionado en el punto 6.4.1, la primera resolución deberá adoptarse bien sobre la oposición nº 3 o sobre la oposición nº 4 y después sobre la oposición nº 1.
Supongamos que la primera resolución recae sobre la oposición nº 4, y que se deniegue la solicitud de marca comunitaria para las clases 14 y 25. En este caso, la oposición nº 2 ha de suspenderse.
Si ha expirado el plazo de recurso sin que se haya interpuesto recurso, la oposición nº 2 se considera resuelta, ya que ha quedado sin objeto. Se informará al respecto a las partes y la oposición se tendrá por concluida. El asunto se considerará sobreseído a efectos de lo dispuesto en el artículo 85, apartado 4, del RMC. Por consiguiente, la Oficina fijará discrecionalmente las costas. Si las partes comunican a la Oficina que han llegado a un acuerdo sobre las costas, no se adoptará resolución sobre este extremo. Por regla general, la resolución consistirá en imponer a cada parte el pago de sus propias costas.
2. Sólo una oposición está lista para resolución y las demás oposiciones se encuentran aún en la fase contradictoria del procedimiento
Si procede desestimar la oposición, puede adoptarse una resolución sin efectos adicionales sobre la pluralidad de oposiciones pendientes puesto que la desestimación no tiene ningún efecto sobre la solicitud de marca comunitaria.
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Si la oposición prospera y la resolución deniega la solicitud de marca comunitaria impugnada en su totalidad, la pluralidad de oposiciones pendientes se suspenderán hasta que la resolución sea firme. Si el plazo de recurso ha expirado sin que se presente ningún recurso, la pluralidad de oposiciones se considerarán resueltas, ya que han quedado sin objeto. Se informará al respecto a las partes y la oposición se tendrá por concluida. El asunto se considerará sobreseído a efectos de lo dispuesto en el artículo 85, apartado 4, del RMC. Por consiguiente, la Oficina fijará discrecionalmente las costas. Si las partes comunican a la Oficina que han llegado a un acuerdo sobre las costas, no se adoptará resolución sobre este extremo. Por regla general, la resolución consistirá en imponer a cada parte el pago de sus propias costas.
Lo mismo se aplica si la resolución sobre la oposición desestima parte de los productos y servicios de la solicitud de marca comunitaria impugnada, pero todos los productos y servicios contra los que se dirige la pluralidad de oposiciones.
Sin embargo, la pluralidad de oposiciones se suspenderá si la resolución sobre la oposición desestima parte de los productos y servicios de la solicitud de marca comunitaria impugnada pero sólo parte de los productos y servicios contra los que se dirigen la pluralidad de oposiciones. La suspensión durará hasta que la resolución haya adquirido firmeza. En este caso, se invitará a los oponentes de la pluralidad de oposiciones a comunicar a la Oficina si desean mantener o retirar la oposición. Si se retira la oposición, el procedimiento se dará por concluido, lo que se comunicará a ambas partes. Si el procedimiento concluye después de la expiración del periodo de reflexión, la Oficina decidirá con arreglo al artículo 85, apartado 2, del RMC que cada parte cargue con sus propias costas. Si las partes comunican a la Oficina, antes de la conclusión del procedimiento, que han llegado a un acuerdo sobre las costas, no se adoptará resolución sobre este extremo.
3. Dos o más oposiciones están listas para resolución y otras se encuentran aún en la fase contradictoria del procedimiento
Puede suceder que algunas de las oposiciones contra una solicitud de marca comunitaria estén listas para resolución y otras se encuentren en diferentes etapas de la fase contradictoria. En esta situación, los principios expuestos en los puntos 1 y 2 se aplicarán conjuntamente. Dependiendo del resultado de las resoluciones y del alcance de los asuntos pendientes se decidirá si puede adoptarse una resolución sobre las oposiciones y si han de suspenderse la pluralidad de oposiciones.
6.4.3 Acumulación de procedimientos
Regla 21, apartado 1, del REMC
La regla 21, apartado 1, del REMC permite a la Oficina tramitar una pluralidad de oposiciones en un mismo bloque de procedimientos. En caso de que se acuerde la acumulación de las oposiciones, deberá notificarse a las partes.
La acumulación de oposiciones es posible a solicitud de las partes si se dirigen contra la misma solicitud de marca comunitaria. Es más probable que la Oficina acumule las oposiciones si, además, han sido presentadas por el mismo oponente o si existe un vínculo económico entre los oponentes, por ejemplo una sociedad matriz y una filial.
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Cuando se acuerde acumular las oposiciones, se ha de verificar si los oponentes tienen el mismo representante. De no ser así, se les requerirá para que designen un único representante. Además, los derechos anteriores deberán ser idénticos o muy similares. Si los representantes no responden o no desean designar un único representante, la decisión de acumulación será revocada y las oposiciones deberán tramitarse de forma separada.
Si en cualquier fase del procedimiento dejan de cumplirse estas condiciones, por ejemplo el único derecho anterior en que se basa una de las oposiciones acumuladas es cedido a un tercero, la decisión de acumulación puede revocarse.
A menos que la acumulación sea revocada antes de que recaiga resolución, sólo se dictará una resolución.
6.5 Cambio de partes (cesión, cambio de nombre, cambio de representante, interrupción del procedimiento)
6.5.1 Cesión y procedimiento de oposición
6.5.1.1 Introducción y principio básico
Artículo 17 del RMC
La cesión o transmisión de un derecho anterior consiste en el cambio de titularidad de ese derecho. Para más información, véanse las Directrices, Parte E, Operaciones de registro, Sección 3, Solicitudes de marca comunitaria como objeto de propiedad, Capítulo 1, Cesión.
El principio básico consiste en que el nuevo titular se subroga en la posición del antiguo titular en el procedimiento. La práctica de la Oficina en relación con las cesiones se describe en los puntos 6.5.1.2 (el registro anterior es un registro de marca comunitaria), 6.5.1.3 (el registro anterior es un registro nacional), 6.5.1.4 (los registros anteriores son una combinación de registros de marcas comunitarias y de registros de marcas nacionales) y 6.5.1.5 (cesión de una solicitud de marca comunitaria impugnada durante el procedimiento de oposición).
Una cesión puede realizarse de diversas formas, incluida la simple venta de una marca anterior de A a B, la adquisición de la empresa C (marcas incluidas) por la empresa D, la fusión de las empresas E y F en la empresa G (sucesión universal), la sucesión legal (tras la muerte del titular, sus herederos devienen los nuevos titulares). Esta lista no es exhaustiva.
Cuando una cesión tiene lugar en el curso del procedimiento de oposición, pueden plantearse varias situaciones. Mientras que para los registros o solicitudes de marca comunitaria anteriores en que se basa la oposición el nuevo titular sólo puede devenir parte en el procedimiento (o presentar observaciones) una vez que la Oficina haya recibido la solicitud de inscripción de la cesión en el Registro, para los registros o solicitudes nacionales anteriores, basta con que el nuevo titular presente la prueba de la cesión.
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6.5.1.2 Cesión de una marca comunitaria anterior
Artículo 17, apartados 6, 7, del RMC
Por lo que respecta a las marcas (solicitudes de marcas) comunitarias anteriores, a tenor de lo dispuesto en el artículo 17, apartado 6, del RMC, mientras la cesión no se halle inscrita en el Registro, el cesionario no podrá prevalerse de los derechos que se derivan del registro de la marca comunitaria o solicitud de marca comunitaria. Con todo, durante el periodo comprendido entre la fecha de recepción de la solicitud de inscripción de la cesión y la fecha de inscripción de la cesión, el nuevo titular podrá presentar observaciones ante la Oficina con el fin de respetar los plazos.
Oposición basada en una sola marca comunitaria
Cuando la oposición se base en una sola marca comunitaria anterior y esta última es/haya sido cedida durante el procedimiento de oposición, el nuevo titular se convierte en el nuevo oponente. El nuevo titular se subroga en la posición del antiguo titular.
A tal fin, el antiguo o el nuevo titular informarán a la Oficina sobre la cesión de la marca comunitaria en que se basa la oposición y solicitarán la inscripción de la cesión en el Registro. Como ya se ha señalado, tan pronto como la Oficina reciba la solicitud, el nuevo titular podrá presentar observaciones. Sin embargo, no será parte en el procedimiento mientras que la cesión no conste inscrita en el Registro.
En la práctica, desde el momento en que se comunica a la Oficina que se ha recibido una solicitud de inscripción, el procedimiento puede continuar con el nuevo titular. No obstante, la cesión ha de inscribirse antes de que recaiga resolución sobre la oposición. Si la oposición está lista para resolución pero la cesión no se ha inscrito todavía, la oposición deberá suspenderse.
En caso de que el nuevo titular comunique a la Oficina que no desea continuar el procedimiento, la oposición se considerará retirada.
Cesión parcial de la única marca comunitaria en que se basa la oposición
En los casos de cesión parcial, el titular original conserva una parte de la marca comunitaria anterior, y la parte restante se cede al nuevo titular. A las cesiones parciales se les aplican los mismos principios que a las cesiones de uno o más registros de marca comunitaria en que se basa la oposición. Estos principios se explican en el párrafo inmediatamente siguiente.
Oposición basada en más de una marca comunitaria anterior
Cuando una oposición se base en más de una marca comunitaria anterior y estas marcas sean/hayan sido cedidas al mismo nuevo titular durante el procedimiento de oposición, se aplicarán las reglas anteriormente expuestas. Sin embargo, la situación es distinta si sólo es/ha sido cedida una de las marcas comunitarias anteriores. En este caso, el nuevo titular podrá también convertirse en oponente, de manera que habrá dos oponentes. No obstante, se mantendrá una única oposición. Por regla general, ambos oponentes tendrán el mismo representante.
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Cuando uno de los oponentes desee retirar la oposición, se aceptará su retirada con independencia de que el otro oponente desee continuar. Si el procedimiento continúa, se basará únicamente en los derechos del oponente que no retiró la oposición. No se dictará una resolución separada sobre las costas.
Los nuevos oponentes serán tratados como «cooponentes», lo cual implica que la Oficina continuará tramitando el asunto exactamente como lo venía haciendo, es decir, como una sola oposición, si bien con más de un oponente. Además, la Oficina considerará al representante inicial como el representante «común» de todos los oponentes y no requerirá a los nuevos oponentes para que designen un nuevo representante. Sin embargo, los nuevos oponentes siempre tendrán la posibilidad de designar un representante de su elección.
La representación común no supone que los oponentes no puedan actuar de manera independiente, en la medida en que sus derechos anteriores se mantengan independientes: por ejemplo, si uno de los oponentes alcanza una conciliación con el solicitante, la oposición se considerará parcialmente retirada con respecto a los derechos anteriores de este oponente.
6.5.1.3 Cesión de un registro nacional anterior
Oposición basada en un solo registro nacional
En caso de que la oposición se base en un solo registro nacional anterior y este registro sea/haya sido cedido en el curso del procedimiento de oposición, el nuevo titular deviene también el nuevo oponente. El nuevo titular se subroga en la posición del antiguo titular.
A tal fin, el antiguo o el nuevo titular informarán a la Oficina sobre la cesión del registro nacional anterior en que se basa la oposición y presentará pruebas al respecto, es decir, la escritura de cesión. Dado que existen prácticas nacionales distintas, no será obligatorio presentar una copia de la solicitud de inscripción de la cesión en el Registro de la oficina nacional.
La Oficina no exigirá al nuevo titular que confirme su deseo de continuar el procedimiento. En la medida en que la prueba de la cesión sea válida, se aceptará al nuevo titular como nuevo oponente. Si éste informa a la Oficina acerca de la cesión, pero no aporta (suficientes) pruebas al respecto, el procedimiento de oposición se suspenderá al tiempo que se concede al nuevo titular un plazo de dos meses para presentar pruebas de la cesión.
No obstante, en aquellos Estados miembros en los que la inscripción sea una condición para que la cesión surta efectos frente a terceros, ésta ha de inscribirse en el Registro antes de que recaiga resolución sobre la oposición. Cuando la oposición esté lista para resolución pero la cesión no haya sido inscrita en el Registro, se suspenderá la oposición y se requerirá al oponente para que presente la prueba de la inscripción de la cesión.
Dado que un retraso en el procedimiento es contrario a los intereses del solicitante, debe concederse al nuevo titular un plazo de dos meses para la presentación de dicha prueba.
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Si el nuevo titular no aporta la prueba exigida, el procedimiento deberá continuar con el antiguo titular. Si el antiguo titular sostiene que ya no es el titular, la oposición queda desprovista de fundamento, puesto que el oponente ha dejado de ser el titular del derecho anterior. Se comunicará al titular que se desestimará la oposición a no ser que la retire.
En caso de que el nuevo titular presente la prueba exigida y comunique a la Oficina que no desea continuar el procedimiento, la oposición se considerará retirada.
Será admisible cualquier prueba que demuestre el acuerdo de las partes a la cesión/cambio de titularidad.
Cesión parcial del único registro nacional en que se basa la oposición
En los casos de cesión parcial, el titular original conserva una parte del registro nacional anterior, y el nuevo titular recibe la parte restante. A las cesiones parciales se les aplican los mismos principios que a las cesiones de uno o más registros de marca nacional en que se basa la oposición. Estos principios se explican en el párrafo inmediatamente siguiente.
Oposición basada en más de un registro nacional anterior
Cuando una oposición se base en más de una marca nacional anterior y estas marcas sean/hayan sido cedidas al mismo nuevo titular durante el procedimiento de oposición, se aplicarán las reglas anteriormente expuestas.
Sin embargo, la situación es distinta si sólo es/ha sido cedido uno de los derechos nacionales anteriores. En este caso, el nuevo titular podrá también convertirse en oponente, de manera que habrá dos oponentes. Sin embargo, se mantendrá una única oposición. Por regla general, ambos oponentes tendrán el mismo representante.
Cuando uno de los oponentes desee retirar la oposición, se aceptará su retirada con independencia de que el otro oponente desee continuar. Es evidente que de continuar el procedimiento, se basará únicamente en los derechos del oponente que no retiró la oposición. No se dictará una resolución separada sobre las costas.
En la práctica, los nuevos oponentes serán tratados como «cooponentes», lo cual implica que la Oficina continuará tramitando el asunto exactamente como lo venía haciendo, es decir, como una sola oposición, si bien con más de un oponente. Además, la Oficina considerará al representante inicial como el representante «común» de todos los oponentes y no requerirá a los nuevos oponentes para que designen un nuevo representante. Sin embargo, los nuevos oponentes siempre tendrán la posibilidad de designar un representante de su elección.
6.5.1.4 Oposición basada en una combinación de registros de marca comunitaria y registros nacionales
Cuando una oposición se basa en uno o más registros de marca comunitaria y en uno o más registros nacionales al mismo tiempo, y una de esas marcas es/ha sido cedida al mismo nuevo titular durante el procedimiento de oposición, se aplicará lo siguiente. En este caso, el nuevo titular podrá también convertirse en oponente, de manera que
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habrá dos oponentes. Sin embargo, se mantendrá una única oposición. Por regla general, ambos oponentes tendrán el mismo representante.
En todos estos casos, una vez que la Oficina tenga conocimiento de la transmisión de la titularidad, actualizará la base de datos oficial para que incluya al nuevo oponente/a ambos oponentes, y lo comunicará a las partes exclusivamente a efectos informativos. No obstante, el mero hecho de que los registros anteriores hayan sido cedidos nunca justificará la concesión de un nuevo plazo para presentar observaciones u otros documentos.
6.5.1.5 Cesión de la solicitud de marca comunitaria impugnada
En caso de que la solicitud de marca comunitaria impugnada sea/haya sido cedida durante el procedimiento de oposición, la oposición sigue a la solicitud, es decir, se informa al oponente de la cesión y el procedimiento continúa entre el nuevo titular de la solicitud de marca comunitaria y el oponente.
6.5.1.6 Cesión parcial de una solicitud de marca comunitaria impugnada
Regla 32, apartado 4, del REMC
En caso de cesión parcial de una solicitud de marca comunitaria (impugnada), la Oficina creará un expediente separado para el nuevo registro (solicitud) al que asignará un nuevo número de registro (solicitud).
En este caso, cuando la cesión se inscriba en el Registro y se cree una nueva solicitud de marca comunitaria, el examinador de la oposición creará asimismo un nuevo expediente de oposición(es) contra la nueva solicitud de marca comunitaria, dado que no es posible tramitar una oposición contra dos solicitudes de marca comunitaria separadas.
Conviene señalar, no obstante, que la situación anterior sólo se da cuando algunos de los productos y servicios originalmente impugnados se mantienen en la «antigua» solicitud de marca comunitaria, y otros en la solicitud de marca comunitaria recientemente creada. Por ejemplo: el oponente «X» dirige su oposición contra todos los productos designados en la solicitud de marca comunitaria Y, pertenecientes a la clase 12 para aparatos de locomoción terrestre y aérea, y a la clase 25 para vestidos y calzados. La solicitud de marca comunitaria Y se cede parcialmente, y se divide en la solicitud de marca comunitaria Y’ para aparatos de locomoción terrestre y vestidos, y en la solicitud de marca comunitaria Y" para aparatos de locomoción aérea y calzados.
Artículos 17 y 23, del RMC
Dado que, al tiempo de presentar la oposición, el oponente sólo tenía que abonar una tasa de oposición, no se le requerirá que pague una segunda tasa por la nueva oposición creada tras la división de la solicitud de marca comunitaria.
La cesión sólo podrá oponerse frente a terceros una vez inscrita en la base de datos de la Oficina, aun cuando fuera solicitada antes de que se presentara la oposición. En consecuencia, el pago de una sola tasa de oposición fue realizado correctamente
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porque, al tiempo de su presentación, la oposición se dirigía únicamente contra una solicitud de marca comunitaria (la única). Así pues, la nueva oposición se creará sin que se exija el pago de una nueva tasa de oposición.
Por lo que respecta al reparto de costas, el examinador de la oposición tomará en consideración que sólo se ha pagado una tasa de oposición.
Además, dependiendo de las circunstancias del caso, cabría la posibilidad de acumular los procedimientos (p. ej. cuando el representante de la «antigua» y de la «nueva» solicitud es el mismo).
6.5.2 Identidad de partes después de la cesión
En caso de que como consecuencia de una cesión, el oponente y el solicitante lleguen a ser la misma persona o entidad, la oposición quedará privada de objeto y en consecuencia la Oficina la dará por concluida de oficio.
6.5.3 Cambio de nombre
Tal como se ha mencionado anteriormente, un cambio de nombre no implica un cambio de titularidad.
6.5.4 Cambio de representantes
Artículo 92 del RMC
Cuando tenga lugar un cambio de representante en el curso del procedimiento de oposición, la otra parte será informada al respecto remitiéndosele una copia de la carta y del poder (si se hubiere presentado).
Para información detallada, véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
6.5.5 Interrupción del procedimiento como consecuencia del fallecimiento o de la incapacidad jurídica del solicitante o de su representante
Regla 73 del REMC
La Regla 73 del REMC se refiere a la interrupción del procedimiento. El apartado 1 distingue tres situaciones:
El procedimiento de oposición ante la Oficina se interrumpirá:
1. en caso de fallecimiento o incapacidad jurídica del solicitante de una marca comunitaria ;
2. en caso de que el solicitante de la marca comunitaria esté incurso en un procedimiento concursal u otro semejante;
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3. en caso de fallecimiento o imposibilidad del representante del solicitante para representarle. Para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
La Regla 73 del REMC se refiere únicamente al solicitante y a su representante y no hace alusión alguna a otras partes, como los oponentes. A falta de disposiciones pertinentes, la Oficina aplicará esta disposición únicamente a los supuestos en los que el solicitante (o su representante) no pueda continuar el procedimiento. Por consiguiente, si por ejemplo el oponente es declarado en quiebra, el procedimiento no se interrumpirá (aun en los casos en que el oponente sea el solicitante/titular de una solicitud de marca comunitaria/marca comunitaria anterior). La incertidumbre respecto de la situación legal del oponente o de su representante no irá en detrimento del solicitante. En tal caso, cuando la notificación sea devuelta a la Oficina por no poder entregarse, se aplicarán las reglas normales sobre notificación pública.
6.5.5.1 Fallecimiento o incapacidad jurídica del solicitante
En caso de fallecimiento del solicitante o de la persona autorizada por la legislación nacional a actuar en su nombre, a causa de la incapacidad jurídica del solicitante, sólo se interrumpirá el procedimiento cuando así lo solicite el representante del solicitante o la persona autorizada o cuando el representante renuncie.
6.5.5.2 El solicitante no puede proseguir el procedimiento ante la Oficina por motivos legales (por ejemplo, quiebra)
La Regla 73, apartado 1, letra b), del REMC se aplica desde el momento en que la parte en el procedimiento ya no tiene derecho a disponer del procedimiento, es decir, a disponer de sus activos, y hasta el momento en que se nombre un síndico para que siga representando legalmente a la parte en cuestión.
En el caso de que el solicitante esté representado por un representante profesional que no renuncie, no es necesario interrumpir el procedimiento. La Oficina considera que el representante del solicitante está facultado para representarle hasta que la Oficina sea informada en sentido contrario por el propio representante, por el síndico designado o por el tribunal que conoce del procedimiento judicial de que se trate.
En el caso de que el representante comunique a la Oficina su renuncia, dependerá de si el representante indica también el nombre del síndico o liquidador de la quiebra.
De hacerlo así el representante, la Oficina se comunicará con el síndico o liquidador. Si existieran plazos que afecten al solicitante y que aún no habían expirado cuando fue declarado en quiebra, la Oficina reiniciará dichos plazos. Por lo tanto, en este caso el procedimiento se interrumpe y se reanuda inmediatamente. Por ejemplo, si el solicitante aún disponía de diez días para presentar observaciones cuando fue declarado en quiebra, la nueva carta de la Oficina al síndico concederá un nuevo plazo de dos meses para presentar dichas observaciones.
Cuando no se conozca la identidad del síndico o liquidador, la Oficina habrá de declarar la interrupción del procedimiento. Se remitirá una comunicación en tal sentido al solicitante en quiebra y al oponente. Aunque la Oficina no está obligada a hacer averiguaciones sobre la identidad del síndico, seguirá
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intentando comunicarse con el solicitante en quiebra con el fin de reanudar el procedimiento. Ello se debe a que, si bien el solicitante en quiebra no está autorizado a realizar actos jurídicos vinculantes, suele recibir el correo, o, de no ser así, el correo se entrega automáticamente al síndico, si hubiese sido nombrado. La Oficina podrá tomar en consideración asimismo la información sobre la identidad del síndico facilitada por el oponente.
En caso de que la notificación sea devuelta a la Oficina por no poder entregarse, se aplicarán las reglas normales sobre notificación pública.
Si se presentan pruebas del nombramiento del síndico o liquidador, no se exigirá la traducción de las pruebas a la lengua de procedimiento.
Una vez que la Oficina sea informada de la identidad del síndico o liquidador, se reanudará el procedimiento desde la fecha que determine la Oficina. La otra parte deberá ser informada.
Regla 73, apartado 4, del REMC
Los plazos que no hayan vencido en la fecha de la interrupción empezarán a correr de nuevo a partir del día en que se reanude el procedimiento. Por ejemplo, si el procedimiento se interrumpió diez días antes de que expirara el plazo concedido al solicitante para presentar observaciones, empezará un nuevo plazo de dos meses, no los diez días que restaban en el momento de la interrupción. A efectos aclaratorios, la Oficina fijará un nuevo plazo y lo comunicará a las partes en la carta en la que les comunique la reanudación del procedimiento.
6.5.5.3 Fallecimiento o imposibilidad del representante del solicitante de actuar ante la Oficina por motivos legales
En el supuesto mencionado en la Regla 73, apartado 1, letra c), del REMC, el procedimiento deberá interrumpirse y se reanudará cuando se haya informado a la Oficina del nombramiento de un nuevo representante del solicitante de la marca comunitaria.
Esta interrupción durará un máximo de tres meses y, si no se nombra un representante antes del final de ese plazo, la Oficina reanudará el procedimiento. Al reanudar el procedimiento, la Oficina actuará del siguiente modo:
1. Si el nombramiento de un representante es obligatorio en virtud del artículo 92, apartado 2, del RMC porque el solicitante no tiene su domicilio ni sede en la UE, la Oficina se pondrá en contacto con el solicitante y le informará de que la solicitud de marca comunitaria se considerará retirada si no nombra un representante en un plazo de dos meses. Si el solicitante no nombra un representante antes de que expire el plazo, se considerará retirada la solicitud de marca comunitaria.
2. Si el nombramiento de un representante no es obligatorio con arreglo al artículo 92, apartado 2, del RMC, la Oficina reanudará el procedimiento y remitirá todas las comunicaciones directamente al solicitante.
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En ambos casos, la reanudación del procedimiento supondrá que los plazos pendientes para el solicitante cuando el procedimiento se interrumpió volverán a correr de nuevo al reanudarse el procedimiento.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 2
DOBLE IDENTIDAD Y RIESGO DE CONFUSIÓN
CAPÍTULO 1
PRINCIPIOS GENERALES Y METODOLOGÍA
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Índice
1 Introducción............................................................................................... 3
2 Artículo 8, apartado 1, del RMC................................................................ 4 2.1 Artículo 8, apartado 1, letra a), del RMC – Identidad................................ 4
2.1.1 Identidad como motivo ................................................................................... 4
2.2 Artículo 8, apartado 1, letra b), del RMC – Riesgo de confusión ............5
3 Noción de riesgo de confusión ................................................................ 5 3.1 Introducción................................................................................................ 5 3.2 Riesgo de confusión y riesgo de asociación ...........................................6 3.3 Riesgo de confusión y carácter distintivo elevado..................................8 3.4 Riesgo de confusión: cuestiones de hecho y de derecho ...................... 8
3.4.1 Hecho y derecho – similitud de productos o servicios y de signos ................ 8 3.4.2 Hecho y derecho – prueba ............................................................................. 9
4 Evaluación de los factores considerados para establecer el riesgo de confusión ............................................................................................ 10 4.1 El momento oportuno .............................................................................. 10 4.2 Enfoque metodológico de la Oficina....................................................... 11 4.3 Comparación de productos y servicios.................................................. 11 4.4 Comparación de los signos..................................................................... 12 4.5 Elementos distintivos y dominantes de las marcas .............................. 12 4.6 Carácter distintivo de la marca anterior ................................................. 12 4.7 Público destinatario – nivel de atención................................................. 12 4.8 Otros argumentos, apreciación global y conclusión............................. 13
Anexo I ............................................................................................................ 14
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1 Introducción
Este capítulo presenta una introducción y visión general sobre los conceptos de (i) identidad y de (ii) riesgo de confusión aplicables a situaciones de conflicto entre marcas en procedimientos de oposición en virtud del artículo 8, apartado 1 del Reglamento (CE) nº 207/2009 del Consejo, de 26 febrero de 2009, sobre la marca comunitaria (el «RMC»).
Los apartados siguientes establecen la naturaleza de dichos conceptos y su fundamento jurídico a tenor de la legislación pertinente y la interpretación del Tribunal de Justicia de la Unión Europea (el «Tribunal»)1.
Los conceptos jurídicos de identidad y riesgo de confusión se utilizan a fin de proteger las marcas y, al mismo tiempo, para definir su ámbito de aplicación. Es, por tanto, importante tener en consideración qué aspectos o funciones de las marcas merecen protección. Las marcas tienen varias funciones. La principal es actuar como «indicadores de origen» de la procedencia comercial de bienes o servicios. Esta es su «función esencial». En el asunto «Canon» el Tribunal sostuvo que:
según jurisprudencia reiterada, la función esencial de la marca consiste en garantizar al consumidor o al usuario final la identidad de origen del producto o del servicio que con ella se designa, permitiéndole distinguir sin confusión posible dicho producto o servicio de los que tienen otra procedencia (énfasis añadido).
(Véase la sentencia de 29/09/1998, «Canon», C-39/97, apartado 28.)
Se ha insistido con frecuencia en la función esencial de las marcas como indicadores de origen, la cual se ha convertido en un precepto de la legislación de la UE en materia de marcas (sentencia de 18/06/2002, en el asunto C-299/99, «Philips», apartado 30; y sentencia de 06/10/2005, en el asunto C-120/04, «Medion», apartado 23).
Aunque indicar el origen es la función esencial de las marcas, no es la única. De hecho, el término «función esencial» implica otras funciones. El Tribunal ha aludido a otras funciones de las marcas en varias ocasiones (p.ej. sentencia de 16/11/2004 , en el asunto C-245/02, «Anheuser-Busch», apartado 59 y sentencia de 25/01/2007, en el asunto C-48/05, «Adam Opel», apartado 21), pero se ha referido a ellas directamente en el asunto «L'Oréal» (sentencia de 18/06/2009, en el asunto C-487/07, «L'Oréal», apartados 58-59 y sentencia de 23/03/2010, en los asuntos acumulados C-236/08 a C-238/08, «Google France y Google», apartados 75-79), donde establece que entre las funciones de la marca figuran:
no solo la función esencial de la marca, consistente en garantizar a los consumidores la procedencia del producto o del servicio […], sino también sus demás funciones, como, en particular, la consistente en garantizar la calidad de ese producto o de ese servicio, o las de comunicación, inversión o publicidad (énfasis añadido).
11El Tribunal ha interpretado con frecuencia los artículos 4 y 5 de la Directiva 2008/95/CE del Parlamento Europeo y del Consejo de 22 de octubre de 2008 (la «Directiva»), que a efectos interpretativos son comparables con los artículos 8 y 9, del RMC.
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Al analizar los conceptos de identidad y riesgo de confusión, este capítulo aborda varios temas que se explican exhaustivamente en los capítulos siguientes de las Directrices. El Anexo contiene un resumen de los asuntos clave que tratan los principios y conceptos fundamentales del riesgo de confusión.
2 Artículo 8, apartado 1, del RMC
El artículo 8, del RMC permite al titular de una marca anterior oponerse al registro de solicitudes de MC posteriores en varias situaciones. El presente capítulo se centrará en la interpretación de la identidad y el riesgo de confusión dentro del significado del artículo 8, apartado 1, del RMC.
La oposición a tenor del artículo 8, apartado 1, del RMC podrá basarse en la existencia de registros o solicitudes anteriores (artículo 8, apartado 2, letras a) y b), del RMC) y de marcas anteriores que sean notoriamente conocidas (artículo 8, apartado 2, letra c), del RMC)2.
2.1 Artículo 8, apartado 1, letra a), del RMC – Identidad
El artículo 8, apartado 1, letra a), del RMC regula las oposiciones basadas en la identidad. Establece que, mediando oposición del titular de una marca anterior, en el sentido del artículo 8, apartado 2, del RMC, se denegará el registro de una MC:
cuando sea idéntica a la marca anterior y los productos o los servicios para los que se solicita la marca sean idénticos a los productos o servicios para los cuales esté protegida la marca anterior.
El tenor del artículo 8, apartado 1, letra a), del RMC exige claramente que exista identidad tanto entre los signos controvertidos como los productos o servicios considerados. Esta situación se conoce como «doble identidad». Cuando exista doble identidad deberá constarse jurídicamente mediante una comparación directa de los dos signos en conflicto y los productos o servicios de que se trate3. Si se constata la doble identidad, el oponente no estará obligado a demostrar el riesgo de confusión para oponer su derecho; la protección que confiere el artículo 8, apartado 1, letra a), del RMC es absoluta. Por consiguiente, cuando exista doble identidad, no será necesario llevar a cabo una evaluación del riesgo de confusión, y la oposición se estimará automáticamente.
2.1.1 Identidad como motivo
Aunque las condiciones específicas a tenor del artículo 8, apartado 1, letra a) y artículo 8, apartado 1, letra b), del RMC difieren, están relacionadas. Por tanto, en las
2 Para una mayor orientación sobre marcas anteriores notoriamente conocidas, véanse las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas (artículo 8, apartado 5, del RMC). 3 Para una orientación exhaustiva sobre los criterios para determinar la identidad entre productos y servicios y entre signos, véanse los correspondientes apartados de las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 2, Comparación de productos y servicios y Capítulo 3, Comparación de los signos.
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oposiciones relacionadas con el artículo 8, apartado 1, del RMC, si el único motivo alegado es el artículo 8, apartado 1, letra a), pero la identidad entre los signos y los productos o servicios no se puede establecer, la Oficina seguirá examinando el asunto en virtud del artículo 8, apartado 1, letra b), del RMC, que exige al menos la similitud entre los signos y los productos o servicios y el riesgo de confusión. La similitud incluye situaciones en las que tanto las marcas como los productos o servicios son similares, así como situaciones en las que las marcas son idénticas y los productos o servicios son similares o a la inversa.
Del mismo modo, una oposición que se base únicamente en el artículo 8, apartado 1, letra b), del RMC que cumpla los requisitos establecidos en el artículo 8, apartado 1, letra a), del RMC será examinado en virtud de este último y no a tenor del artículo 8, apartado 1, letra b), del RMC.
2.2 Artículo 8, apartado 1, letra b), del RMC – Riesgo de confusión
El artículo 8, apartado 1, letra b), del CTMR establece que, mediando oposición, se denegará el registro de una MC:
cuando, por ser idéntica o similar a la marca anterior y por ser idénticos o similares los productos o servicios que ambas marcas designan, exista riesgo de confusión por parte del público en el territorio en que esté protegida la marca anterior; el riesgo de confusión incluye el riesgo de asociación con la marca anterior (énfasis añadido).
Por tanto, a diferencia de las situaciones de doble identidad antes mencionadas, en los casos de mera similitud entre los signos y los productos o servicios o de identidad de solo uno de estos factores, una marca anterior podrá oponerse a la solicitud de MC de conformidad con el artículo 8, apartado 1, letra b) únicamente si existe riesgo de confusión.
3 Noción de riesgo de confusión
3.1 Introducción
La apreciación del riesgo de confusión es un cálculo que se aplica a situaciones de conflicto entre marcas en procedimientos de oposición al amparo del RMC, así como en procedimientos de infracción ante los tribunales de la UE. No obstante, ni el RMC ni la Directiva contienen una definición del riesgo de confusión o una disposición que establezca con precisión a qué hace referencia el término «confusión». Por ello, no resulta sorprendente que el significado exacto de la expresión «riesgo de confusión» haya sido objeto de muchos debates y litigios.
Como se muestra a continuación, hace tiempo que se ha establecido jurisprudencia respecto a que el concepto de riesgo de confusión se refiere, fundamentalmente, a situaciones en las que:
(1) el público confunde directamente las marcas en conflicto;
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(2) el público establece una conexión entre las marcas en conflicto y asume que los productos o servicios considerados proceden de la misma empresa o de empresas vinculadas económicamente (riesgo de asociación).
Estas dos situaciones se analizan en mayor detalle más adelante (apartado 3.2). El simple hecho de que una marca posterior recuerde a una marca anterior no constituye riesgo de confusión.
El Tribunal también ha establecido el principio de que «las marcas que tienen un elevado carácter distintivo, bien intrínseco, o bien gracias a lo conocidas que son en el mercado, disfrutan de una mayor protección que las marcas cuyo carácter distintivo es menor» (véase el apartado 3.3).
Por último, el concepto de riesgo de confusión, conforme ha sido desarrollado por el Tribunal, debe ser considerado como un concepto jurídico en lugar de un reflejo puramente realista de la conducta cognitiva del consumidor y sus hábitos de consumo (véase el apartado 3.4).
3.2 Riesgo de confusión y riesgo de asociación
El Tribunal ha analizado de forma exhaustiva el riesgo de confusión en el asunto «SABEL» (sentencia de 11/11/1997, en el asunto C-251/95, «SABEL»). Los equivalentes de la Directiva del artículo 8, apartado 1, letra b), del RMC y el 8º considerando del RMC indican sin lugar a dudas que el riesgo de confusión está vinculado con la confusión sobre la procedencia de los productos o servicios, pero se solicitó al Tribunal que tuviera en cuenta lo que esto significaba con exactitud, debido a que había perspectivas distintas acerca de su significado y la relación entre «riesgo de confusión» y «riesgo de asociación», ambos mencionados en el artículo 8, apartado 1, letra b), del RMC.
Dicho problema debía ser resuelto, dado que se argumentaba que el riesgo de asociación era más amplio que el riesgo de confusión, al poder dar cabida a situaciones en las que una marca posterior recordase a una anterior, pero el consumidor no considerase que los productos o servicios tuvieran la misma procedencia comercial4. Finalmente, el problema en el asunto «SABEL» era si el tenor de «el riesgo de confusión incluye el riesgo de asociación» significaba que «el riesgo de confusión» podía cubrir una situación de asociación entre marcas que no diera lugar a confusión respecto a la procedencia.
En el asunto «SABEL», el Tribunal estableció que el riesgo de asociación no es una alternativa al riesgo de confusión, sino que simplemente sirve para definir su alcance. Por lo tanto, para que se produzca un riesgo de confusión debe existir confusión respecto a la procedencia.
En el asunto «Canon» (apartados 29-30), el Tribunal precisó el alcance de la confusión sobre la procedencia cuando sostuvo:
4El concepto surgió de la jurisprudencia Benelux y se aplica, entre otros, a marcas no renombradas.
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constituye un riesgo de confusión […] el riesgo de que el público pueda creer que los correspondientes productos o servicios proceden de la misma empresa, o, en su caso, de empresas vinculadas económicamente […] la existencia de tal riesgo queda excluida cuando no se pone de manifiesto que el público pueda creer que los productos o servicios considerados proceden de la misma empresa o, en su caso, de empresas vinculadas económicamente (énfasis añadido).
Como se ha visto anteriormente, el riesgo de confusión se refiere a la confusión en cuanto a la procedencia comercial, incluyendo a las empresas vinculadas económicamente. Lo relevante es que el público crea que el control de los productos o servicios considerados se encuentra en manos de una única empresa. El Tribunal no ha ofrecido una interpretación sobre empresas vinculadas económicamente dentro del contexto del riesgo de confusión, pero sí respecto a la libre circulación de productos o servicios. En el asunto «Ideal Standard» el Tribunal sostuvo que:
Son varias las situaciones que contempla: productos puestos en circulación por la misma empresa, o por un licenciatario, o por una sociedad matriz, o por una filial del mismo grupo o, también, por un concesionario exclusivo.
En todos los casos que acaban de referirse existe control por una misma entidad: el grupo de sociedades en el caso de productos puestos en circulación por una filial; el fabricante en el caso de productos comercializados por el concesionario, y el titular de la marca cuando se trate de productos comercializados por un licenciatario. En el caso de licencia, el cedente tiene la posibilidad de controlar la calidad de los productos del licenciatario incorporando al contrato cláusulas que obliguen al licenciatario a respetar sus instrucciones y le den la facultad de garantizar su observancia. La procedencia que a la marca corresponde garantizar es la misma: no se define por el fabricante, sino por el centro desde el cual se dirige la fabricación.
(Véase la sentencia de 22/06/1994, en el asunto C-9/93, «Ideal Standard», apartados 34 y 37.)
Por consiguiente, los vínculos económicos se presumirán siempre que el consumidor asuma que los correspondientes productos o servicios se comercializan bajo el control del titular de la marca. Se puede asumir que tal control existe en el caso de empresas pertenecientes al mismo grupo de sociedades y en el caso de contratos de licencia, comercialización o distribución, así como en cualquier otra situación en la que el consumidor asuma que el uso de una marca es únicamente posible mediante acuerdo con el titular de la misma.
Por tanto, partiendo de dichas premisas, el Tribunal sostuvo que el riesgo de confusión incluye situaciones en las que el consumidor confunde directamente a las propias marcas o en las que establece una conexión entre los signos en conflicto y asume que los productos o servicios considerados proceden de la misma empresa o de empresas vinculadas económicamente.
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De ahí que el simple hecho de que una marca posterior recuerde a una anterior, sin que haya asunción por parte del consumidor de que tienen la misma procedencia comercial, no constituya un riesgo de confusión5.
3.3 Riesgo de confusión y carácter distintivo elevado
Se ha dado gran relevancia al carácter distintivo de la marca anterior para determinar el riesgo de confusión. Las principales conclusiones del Tribunal al respecto son las siguientes:
el riesgo de confusión es tanto más elevado cuanto mayor resulta ser el carácter distintivo de la marca anterior (véase asunto «SABEL», apartado 24).
aquellas marcas que tienen un elevado carácter distintivo, bien intrínseco, o bien gracias a lo conocidas que son en el mercado, disfrutan de una mayor protección que las marcas cuyo carácter distintivo es menor (véase asunto «Canon», apartado 18).
Una consecuencia de estas conclusiones es que se puede establecer el riesgo de confusión entre marcas en conflicto cuando se invoca el elevado carácter distintivo de las marcas anteriores, incluso si el grado de similitud entre los productos o servicios considerados es bajo (véanse las Conclusiones del Abogado General de 21/03/2002, en el asunto C-292/00, «Davidoff», apartado 48)6.
3.4 Riesgo de confusión: cuestiones de hecho y de derecho
El concepto de riesgo de confusión es un concepto jurídico y no una mera evaluación objetiva de los juicios racionales y preferencias emocionales que conforman la conducta cognitiva del consumidor y sus hábitos de consumo. Por lo tanto, la apreciación del riesgo de confusión depende tanto de cuestiones de hecho como de derecho.
3.4.1 Hecho y derecho – similitud de productos o servicios y de signos
La determinación de los factores correspondientes a fin de establecer el riesgo de confusión y si existen es una cuestión de derecho, es decir, estos factores son establecidos por la legislación pertinente, a saber, el RMC y la jurisprudencia.
Por ejemplo, el artículo 8, apartado 1, del RMC establece que la identidad o similitud de los productos o servicios es una condición para el riesgo de confusión. La cuestión de los factores pertinentes para evaluar si esta condición se cumple también es una cuestión de derecho. El Tribunal ha identificado los factores siguientes para determinar si los productos o servicios son similares:
5A pesar de que tal situación podría dar lugar a un aprovechamiento indebido o a un menoscabo del carácter distintivo o de la notoriedad de una marca anterior a tenor del artículo 8, apartado 5, véanse las Directrices, Parte C, Oposición, Sección 5, artículo 8, apartado 5, del RMC. 6 Véanse las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 8, Apreciación global.
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su naturaleza su destino su utilización si tienen o no carácter complementario si tienen o no carácter competidor sus canales de distribución o puntos de venta su público destinatario su origen habitual.
(Véase el asunto C-39/97, «Canon».)
Todos estos factores son conceptos jurídicos y determinar los criterios para evaluarlos es también una cuestión de derecho. No obstante, es una cuestión de hecho si los criterios jurídicos para determinar la «naturaleza» se cumplen, y en qué medida, en un caso determinado.
A modo de ejemplo, la manteca para cocinar no tiene la misma naturaleza que los aceites y grasas lubricantes a base de petróleo, si bien ambos contienen una base de grasa. La manteca para cocinar se utiliza para preparar platos destinados al consumo humano, mientras que los aceites y grasas se emplean para lubricar máquinas. Considerar la «naturaleza» como un factor pertinente para el estudio de la similitud de los productos o servicios es una cuestión de derecho. Por otro lado, es una cuestión de hecho decir que la manteca para cocinar se utiliza para preparar platos destinados al consumo humano y que los aceites y grasas se emplean para lubricar máquinas.
Del mismo modo, en lo que respecta a la comparación de signos, el artículo 8, apartado 1, del RMC establece que la identidad o similitud de los signos es una condición del riesgo de confusión. Es una cuestión de derecho que una coincidencia conceptual entre signos puede hacerlos similares a los efectos del RMC, pero es una cuestión de hecho, por ejemplo, que la palabra «fghryz» no tiene significado alguno para el público español.
3.4.2 Hecho y derecho – prueba
En los procedimientos de oposición, las partes deben alegar y, de ser necesario, probar los hechos que apoyan sus argumentos, como la similitud de productos o servicios. Así se desprende del artículo 76, apartado 1, del RMC, según el cual, en los procedimientos de oposición la Oficina se limitará a examinar los hechos, pruebas y alegaciones presentados por las partes y sus pretensiones.
Por lo tanto, en el ejemplo anterior, el oponente deberá indicar los hechos en los que basa la reclamación de similitud, así como presentar los elementos de prueba sobre los que los sustente. Por ejemplo, si se va a comparar hierro fundido resistente al uso con implantes médicos, no corresponde a la Oficina dilucidar la cuestión de si el hierro fundido resistente al uso se usa efectivamente para implantes médicos. El oponente deberá demostrarlo, ya que parece improbable (resolución de 14/05/2002, en el asunto R 0684/2002-4, «Tinox»).
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La admisión por parte del solicitante de conceptos jurídicos, tales como el riesgo de confusión o similitud de productos o servicios es irrelevante. Ello no libera a la Oficina del análisis y decisión sobre estos conceptos. Esto no es contrario al artículo 76, apartado 1, del RMC, que vincula a la Oficina únicamente respecto a los hechos, prueba y alegaciones, pero no al análisis jurídico de los mismos. Por lo tanto, las partes podrán estar de acuerdo respecto a si los hechos han sido probados o no, pero no podrán determinar si tales hechos son suficientes para establecer los conceptos jurídicos correspondientes, tales como la similitud de los productos o servicios, la similitud de los signos y el riesgo de confusión.
El artículo 76, apartado 1, del RMC no impide a la Oficina tener en consideración, por iniciativa propia, hechos que ya son notorios o bien conocidos o de los que se pueda tener conocimiento a través de fuentes de acceso general, por ejemplo, que PICASSO sea reconocido por los consumidores de la UE como un famoso pintor español (sentencia del 22/06/2004, en el asunto T-185/02, «Picaro», C-361/04P, desestimado). No obstante, la Oficina no podrá citar de oficio nuevos hechos o alegaciones (p.ej. notoriedad o grado de conocimiento de la marca anterior, etc.).
Por otro lado, aunque determinadas marcas se utilizan a veces en la vida diaria como términos genéricos para los productos y servicios que designan, la Oficina no debe considerarlo nunca como un hecho. En otras palabras, nunca se debe designar (o interpretar) a las marcas como un término genérico o una categoría de productos o servicios. Por ejemplo, el hecho de que en la vida diaria parte del público se refiera a «X» al hablar de yogures (siendo «X» una marca registrada para yogures) no debería dar lugar a la utilización de «X» como un término genérico para yogures.
4 Evaluación de los factores considerados para establecer el riesgo de confusión
Una vez establecido lo que se entiende por riesgo de confusión, el presente apartado explica los diversos factores que se examinan con el fin de evaluar si existe o no riesgo de confusión y la interacción entre estos factores.
4.1 El momento oportuno
El momento oportuno para examinar el riesgo de confusión es el momento en que se dicta la resolución.
En caso de que el oponente se base en el carácter distintivo elevado de una marca anterior, las condiciones para esto debían cumplirse en la fecha de presentación de la solicitud de la MC (o cualquier fecha de prioridad) y deben seguir cumpliéndose en la fecha de la resolución. En la práctica, la Oficina presume que se cumplen, a no ser que existan indicios en sentido contrario.
Cuando el solicitante de MC se base en una protección reducida (débil) de la marca anterior, solo será relevante la fecha de la resolución.
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4.2 Enfoque metodológico de la Oficina
En el asunto «SABEL» el Tribunal establece en el apartado 23 que:
Por lo que se refiere a la similitud gráfica, fonética o conceptual de las marcas en conflicto, esta apreciación global debe basarse en la impresión de conjunto producida por las marcas, teniendo en cuenta, en particular, sus elementos distintivos y dominantes. En efecto, de la letra b) del apartado 1 del artículo 4 de la Directiva, cuando se refiere a que «[...] exista por parte del público un riesgo de confusión [...]», se deduce que la percepción de las marcas que tiene el consumidor medio del tipo de producto o servicio de que se trate tiene una importancia determinante en la apreciación global del riesgo de confusión. [...] el consumidor medio normalmente percibe una marca como un todo, cuyos diferentes detalles no se detiene a examinar.
En otras palabras, si existe o no un riesgo de confusión depende de una apreciación global de varios factores interdependientes que incluyen: (i) la similitud de los productos y servicios, (ii) la similitud de los signos, (iii) los elementos distintivos y dominantes de los signos en conflicto, (iv) el carácter distintivo de la marca anterior, y (v) el público destinatario.
El primer paso para apreciar si existe un riesgo de confusión es examinar estos factores (véase el punto 4.3 y siguientes).
El segundo paso es determinar su importancia en una «apreciación global» aparte, en la que una conclusión sobre el riesgo de confusión se determina después de sopesar estos distintos factores que pueden complementarse o compensarse entre sí y que tienen varios grados de importancia relativa en función de las circunstancias específicas.
La metodología de la Oficina en este sentido difiere de los enfoques que aúnan la apreciación de los factores en una evaluación única en el sentido de si las marcas son «confusamente similares». Esta diferencia no debería afectar, en principio, a la «apreciación global» definitiva a la que se pueda llegar de distintas maneras.
4.3 Comparación de productos y servicios
La similitud y/o identidad de productos o servicios es una conditio sine qua non para determinar si existe riesgo de confusión. Se puede encontrar una orientación exhaustiva sobre la comparación de productos o servicios en las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 2, Comparación de los productos y servicios.
Si no hay un grado de similitud entre los productos o servicios, el examen finalizará en ese momento en lo que respecta al riesgo de confusión.
De lo contrario, si existe al menos cierto grado de similitud, se procederá al examen de otros factores.
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4.4 Comparación de los signos
También es condición necesaria que exista cierto grado de similitud entre los signos para determinar si existe riesgo de confusión. La comparación de signos implica una apreciación global de sus características gráficas, fonéticas o conceptuales. Si existe únicamente similitud en uno de estos tres aspectos, se considerará que los signos son similares. Si los signos son lo suficientemente similares para dar lugar a un riesgo de confusión es objeto de análisis en la apreciación global del riesgo de confusión. Se puede encontrar una orientación exhaustiva sobre la comparación de signos en las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 3, Comparación de los signos.
Únicamente se considerará que los signos no son similares si no se puede detectar similitud alguna en ninguno de los tres aspectos indicados.
Si no hay un grado de similitud entre los signos, el examen finalizará en ese momento en lo que respecta al riesgo de confusión.
De lo contrario, si existe al menos cierto grado de similitud, se procederá al examen de otros factores.
4.5 Elementos distintivos y dominantes de las marcas
La apreciación global de las marcas en conflicto debe basarse en la impresión de conjunto producida por las marcas, teniendo en cuenta, en particular, sus elementos distintivos y dominantes. Se puede encontrar una orientación exhaustiva sobre el análisis de los elementos distintivos y dominantes en las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo y Capítulo 5, Carácter dominante.
4.6 Carácter distintivo de la marca anterior
Cuando un oponente expresamente afirma que una marca anterior es especialmente distintiva por un uso intensivo o su renombre, dicha afirmación deberá examinarse y evaluarse. Se puede encontrar una orientación exhaustiva sobre el carácter distintivo de la marca anterior en las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo.
4.7 Público destinatario – nivel de atención
El público destinatario desempeña un importante papel al apreciar otros elementos del riesgo de confusión (p.ej. la comparación de los productos y servicios, la comparación de los signos, la apreciación del carácter distintivo). Por otro lado, uno de los factores que puede inclinar la balanza a favor o en contra de la existencia del riesgo de confusión es el nivel de atención del público. Se puede encontrar una orientación exhaustiva sobre el público destinatario y el nivel de atención en las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 6, Público destinatario y nivel de atención.
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4.8 Otros argumentos, apreciación global y conclusión
La apreciación global:
establece y evalúa otros factores y principios pertinentes para la evaluación del riesgo de confusión (tales como una familia de marcas, la coexistencia o la forma de adquirir los productos o servicios);
evalúa la importancia relativa de todos los factores interdependientes, que pueden complementarse o compensarse entre sí, a fin de resolver sobre el riesgo de confusión. Por ejemplo, las marcas pueden ser distintivas para algunos productos o servicios, pero no para otros y, de este modo, el riesgo de confusión puede existir únicamente para los productos y servicios para los que se considera que la marca anterior tiene carácter distintivo.
Se puede encontrar una orientación exhaustiva sobre otros factores y la apreciación global en las Directrices, Parte C, Oposición, Sección 2, Doble Identidad y riesgo de confusión, Capítulo 7, Otros factores; y Capítulo 8, Apreciación global.
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Anexo I
Principios generales procedentes de la jurisprudencia7
Sentencia de 11/11/1997, en el asunto C-251/95, «SABEL»
- El riesgo de confusión debe apreciarse globalmente, teniendo en cuenta todos los factores del supuesto concreto que sean pertinentes (apartado 22).
- La apreciación del riesgo de confusión depende de numerosos factores y, en particular, del conocimiento de la marca en el mercado, de la asociación que el público puede hacer de ella entre las dos marcas y del grado de similitud entre los signos y los productos (apartado 22).
- Por lo que se refiere a la similitud gráfica, fonética o conceptual de las marcas en conflicto, esta apreciación global debe basarse en la impresión de conjunto producida por las marcas, teniendo en cuenta, en particular, sus elementos distintivos y dominantes (apartado 23).
- El consumidor medio normalmente percibe una marca como un todo, cuyos diferentes detalles no se detiene a examinar (apartado 23).
- El riesgo de confusión es tanto más elevado cuanto mayor resulta ser el carácter distintivo de la marca anterior (apartado 24).
- No puede excluirse que la similitud conceptual derivada del hecho de que dos marcas utilicen imágenes que concuerdan en la idea representada pueda crear un riesgo de confusión en caso de que la marca anterior posea un carácter distintivo particular, bien intrínseco, o bien gracias a la notoriedad de que goza entre el público (apartado 24).
- Sin embargo, cuando la marca anterior no goza de una especial notoriedad y consiste en una imagen que contiene pocos elementos imaginarios, la mera similitud conceptual entre las marcas no basta para crear un riesgo de confusión (apartado 25).
- El concepto de riesgo de asociación no es una alternativa al concepto de riesgo de confusión, sino que sirve para precisar el alcance de éste (apartado 18).
- La mera asociación entre dos marcas que el público podría hacer por medio de la concordancia en su contenido conceptual no basta, por sí sola, para deducir la existencia de un riesgo de confusión (apartado 26).
Sentencia de 29/09/1998, en el asunto C-39/97, «Canon»
- Constituye un riesgo de confusión el riesgo de que el público pueda creer que los correspondientes productos o servicios proceden de la misma empresa o, en su caso, de empresas vinculadas económicamente (apartado 29).
- Por el contrario, la existencia de tal riesgo queda excluida cuando no se pone de manifiesto que el público pueda creer que los productos o servicios considerados proceden de la misma empresa o, en su caso, de empresas vinculadas económicamente (apartado 30).
- Para apreciar la similitud entre los productos o los servicios designados, como han recordado los Gobiernos francés y del Reino Unido, así como la Comisión, procede tener en cuenta todos los factores pertinentes que caracterizan la relación entre los productos o servicios (apartado 23).
- Estos factores incluyen, en particular, su naturaleza, su destino, su utilización y su carácter competidor o complementario (apartado 23).
- La apreciación global del riesgo de confusión implica una cierta interdependencia entre los factores tomados en consideración, y en particular, la similitud entre las marcas y la existente entre los productos o los servicios designados. Un bajo grado de similitud entre los productos o servicios designados puede ser compensado por un elevado grado de similitud entre las marcas, y a la inversa (apartado 17).
- Aquellas marcas que tienen un elevado carácter distintivo, bien intrínseco, o bien gracias a lo conocidas que son en el mercado, disfrutan de una mayor protección que las marcas cuyo carácter distintivo es menor (apartado 18).
- Puede ser procedente denegar el registro de una marca, a pesar de que exista un mínimo grado de similitud entre los productos o servicios designados, cuando las marcas tienen una gran similitud y el carácter distintivo de la marca anterior, y, en particular, su renombre, es fuerte (apartado 19).
- El carácter distintivo de la marca anterior, y, en particular, su renombre, debe tenerse en cuenta para apreciar si la similitud entre los productos o los servicios designados por las dos marcas es suficiente para generar un riesgo de confusión (apartado 24).
- Puede existir un riesgo de confusión, incluso cuando el público atribuye los correspondientes productos y servicios a lugares de producción diferentes (apartado 30).
7 Éstas no corresponden a citas directas.
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Sentencia de 22/06/1999, en el asunto C-342/97, «Lloyd Schuhfabrik Meyer»
- El nivel de atención del consumidor medio, que se supone que es un consumidor normalmente informado y razonablemente atento y perspicaz, puede variar en función de la categoría de productos o servicios contemplada (apartado 26).
- No obstante, debe tenerse en cuenta la circunstancia de que el consumidor medio rara vez tiene la posibilidad de comparar directamente las marcas, sino que debe confiar en la imagen imperfecta que conserva en la memoria (apartado 26).
- A fin de apreciar el grado de similitud que existe entre las marcas controvertidas, puede ser apropiado evaluar la importancia que debe atribuirse a estos diferentes elementos, teniendo en cuenta la categoría de productos o servicios contemplada y las condiciones en las que estos se comercializan (apartado 27).
- Es posible que la mera similitud fonética de las marcas pueda crear un riesgo de confusión (apartado 28).
- Para determinar el carácter distintivo de una marca y, por consiguiente, evaluar si posee un elevado carácter distintivo, el órgano jurisdiccional nacional debe apreciar globalmente la mayor o menor aptitud de la marca para identificar los productos o servicios para los cuales fue registrada atribuyéndoles una procedencia empresarial determinada (apartado 22).
- Al realizar la apreciación mencionada, procede tomar en consideración, en particular, las cualidades intrínsecas de la marca, incluido el hecho de que ésta carezca, o no, de cualquier elemento descriptivo de los productos o servicios para los que ha sido registrada, la cuota de mercado poseída por la marca, la intensidad, la extensión geográfica y la duración del uso de esta marca, la importancia de las inversiones hechas por la empresa para promocionarla, la proporción de los sectores interesados que identifica los productos o servicios atribuyéndoles una procedencia empresarial determinada gracias a la marca, así como las declaraciones de Cámaras de Comercio e Industria o de otras asociaciones profesionales (apartado 23).
- No puede indicarse de forma general, por ejemplo mediante porcentajes determinados relativos al grado de conocimiento de la marca en los sectores interesados, cuándo una marca tiene un fuerte carácter distintivo (apartado 24).
Sentencia de 22/06/2000, en el asunto C-425/98, «Marca Mode»
- El renombre de una marca no permite presumir la existencia de un riesgo de confusión por el mero hecho de que exista un riesgo de asociación en sentido estricto (apartado 41).
- El artículo 5, apartado 1, letra b) de la Directiva no puede interpretarse en el sentido de que • si una marca, bien intrínsecamente, o bien gracias a la notoriedad de que goza entre el público,
posee un carácter distintivo particular y • un tercero, sin el consentimiento del titular de la marca, utiliza en el tráfico económico, para
productos o servicios idénticos o similares a aquellos para los cuales está registrada la marca, un signo que coincide con la marca hasta tal punto que exista la posibilidad de asociarlo con la marca, el titular de la marca tiene el derecho exclusivo de prohibir al referido tercero el uso del signo cuando el carácter distintivo de la marca es tal que no está excluido que dicha asociación pueda producir confusión (apartado 42).
Sentencia de 06/10/2005, en el asunto C-120/04, «Medion»
- Puede existir un riesgo de confusión para el público, en caso de identidad de los productos o de los servicios, cuando el signo controvertido está formado mediante la yuxtaposición, por una parte, de la denominación de la empresa del tercero y, por otra, de la marca registrada, dotada de un carácter distintivo normal, y esta última, aunque no determina por sí sola la impresión de conjunto del signo compuesto, ocupa en dicho signo una posición distintiva y autónoma (apartado 37).
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 2
DOBLE IDENTIDAD Y RIESGO DE CONFUSIÓN
CAPÍTULO 2
COMPARACIÓN DE PRODUCTOS Y SERVICIOS
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Índice
1 Introducción............................................................................................... 6 1.1 Pertinencia..................................................................................................6 1.2 Clasificación de Niza: un punto de partida............................................... 7
1.2.1 Su carácter como instrumento de clasificación .............................................. 7 1.2.2 Su estructura y metodología........................................................................... 7 1.2.3 Conclusiones que deben extraerse de la estructura de la Clasificación de
Niza................................................................................................................. 8 1.2.4 Cambios en la clasificación de los productos y servicios............................... 8
1.3 La base de datos de la OAMI para la comparación de los productos y servicios...................................................................................................9
1.4 Definición de los productos y servicios (Terminología).......................... 9 1.4.1 Productos........................................................................................................ 9 1.4.2 Servicios ....................................................................................................... 10 1.4.3 Productos...................................................................................................... 10
1.5 Determinación de los productos y servicios.......................................... 11 1.5.1 El texto correcto............................................................................................ 11 1.5.2 Alcance pertinente ........................................................................................ 12 1.5.3 El significado de los productos y servicios ................................................... 13
1.6 Enfoque objetivo ...................................................................................... 14 1.7 Declaración de los motivos ..................................................................... 14
2 Identidad................................................................................................... 15 2.1 Principios generales ................................................................................ 15 2.2 Identidad total: términos idénticos o sinónimos.................................... 15 2.3 Identidad parcial ....................................................................................... 16
2.3.1 La marca anterior incluye los productos y servicios de la marca impugnada .................................................................................................... 16
2.3.2 La marca impugnada incluye los productos y servicios de la marca anterior.......................................................................................................... 17
2.3.3 Solapamiento................................................................................................ 18
2.4 Práctica de uso de las indicaciones generales de los títulos de clase 19
3 Similitud entre los productos y servicios.............................................. 21 3.1 Principios generales ................................................................................ 21
3.1.1 Factores de similitud..................................................................................... 21 3.1.2 Definición de los factores pertinentes .......................................................... 22
3.2 Los factores específicos de la similitud ................................................. 23 3.2.1 Naturaleza .................................................................................................... 23 3.2.2 Destino.......................................................................................................... 26 3.2.3 Utilización ..................................................................................................... 26 3.2.4 Carácter complementario ............................................................................. 27 3.2.5 Carácter competidor ..................................................................................... 31 3.2.6 Canal de distribución .................................................................................... 31
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3.2.7 Público destinatario ...................................................................................... 32 3.2.8 Origen habitual (productor / proveedor) ....................................................... 33
3.3 Relación entre los distintos factores ...................................................... 36 3.3.1 Interrelación entre los factores ..................................................................... 36 3.3.2 La importancia de cada factor ...................................................................... 37 3.3.3 Los diferentes tipos de comparación: productos frente a productos,
servicios frente a servicios y productos frente a servicios ........................... 38 3.3.4 Grado de similitud......................................................................................... 38
Anexo I ............................................................................................................ 40
1 Partes, componentes y piezas ............................................................... 40
2 Materias primas y alimentos semielaborados ...................................... 41
3 Accesorios ............................................................................................... 41
4 Servicios de instalación, mantenimiento y reparación ........................ 42
5 Servicios de asesoramiento ................................................................... 43
6 Alquiler y leasing..................................................................................... 44 6.1 Alquiler/arrendamiento financiero frente a los servicios relacionados 44 6.2 Alquiler/arrendamiento financiero frente a los productos: en
principio, siempre distintos..................................................................... 45
Anexo II ........................................................................................................... 46
1 Productos químicos, productos farmacéuticos y cosméticos............ 46 1.1 Productos químicos (clase 1) frente a productos químicos (clases 3
y 5)............................................................................................................. 46 1.2 Productos farmacéuticos frente a productos farmacéuticos................ 47 1.3 Productos farmacéuticos frente a sustancias dietéticas para uso
médico....................................................................................................... 48 1.4 Productos farmacéuticos frente a cosméticos ...................................... 48 1.5 Productos farmacéuticos frente a servicios........................................... 48
2 Industria del automóvil ........................................................................... 49
3 Aparatos/instrumentos eléctricos.......................................................... 49
4 Industria textil y de la moda ................................................................... 50 4.1 Materias primas o semielaboradas frente a productos acabados ........ 50 4.2 Productos textiles (clase 24) frente a prendas de vestir (clase 25) ...... 50 4.3 Prendas de vestir, calzado y artículos de sombrerería (clase 25) ........ 51 4.4 Accesorios de moda ................................................................................ 51
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4.5 Ropa de deporte, calzado y artículos de sombrerería (clase 25) frente a artículos de gimnasia y deporte (clase 28) ............................... 52
4.6 Diseño de moda (clase 42), servicios de sastrería (clase 40) frente a prendas de vestir (clase 25)..................................................................... 52
5 Alimentación, bebidas y servicios de restaurantes ............................. 53 5.1 Ingredientes de los alimentos preparados ............................................. 53 5.2 Ingrediente principal ................................................................................ 53 5.3 Bebidas no alcohólicas (clase 32) frente a bebidas alcohólicas
(excepto cervezas) (clase 33) .................................................................. 53 5.4 Cervezas (clase 32), bebidas alcohólicas (excepto cervezas)
(clase 33)................................................................................................... 54 5.5 Suministro de comida y bebidas frente a comida y bebidas................. 54
6 Servicios de apoyo a otras empresas.................................................... 54
7 Servicios de venta al por menor ............................................................ 56 7.1 Servicios de venta al por menor frente a cualquier producto: no
similares.................................................................................................... 57 7.2 Servicios de venta al por menor de productos específicos frente a
los mismos productos específicos: bajo grado de similitud ................ 57 7.3 Servicios de venta al por menor de productos específicos frente a
los productos específicos diferentes o similares: no similares ........... 57 7.4 Servicios de venta al por menor frente a los servicios de venta al por
menor de productos específicos: idénticos ........................................... 58 7.5 Servicios de venta al por menor de productos específicos frente a
los servicios de venta al por menor de otros productos específicos: similares.................................................................................................... 58
7.6 Servicios a los que se aplican los mismos principios........................... 58 7.7 Servicios a los que no se aplican los mismos principios ..................... 58
8 Servicios financieros............................................................................... 59 8.1 Servicios bancarios (clase 36) frente a servicios de seguros
(clase 36)................................................................................................... 59 8.2 Negocios inmobiliarios (clase 36) frente a operaciones financieras
(clase 36)................................................................................................... 60 8.3 Tarjetas de crédito (clase 9) frente a operaciones financieras
(clase 36)................................................................................................... 60
9 Transporte, embalaje y almacenamiento............................................... 61 9.1 Transporte de mercancías (clase 39) frente a cualquier producto ....... 61 9.2 Embalaje y almacenamiento de mercancías (clase 39) frente a
cualquier producto ................................................................................... 61
10 Tecnología de la información ................................................................. 61
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10.1 Ordenadores frente a software................................................................ 62 10.2 Software frente a aparatos que usan software....................................... 62 10.3 Software, aplicaciones informáticas descargables y publicaciones
electrónicas descargables....................................................................... 62 10.4 Software específico frente a software específico .................................. 63 10.5 Ordenadores y software (clase 9) frente a programación informática
(clase 42)................................................................................................... 63 10.6 Aparatos para el registro, la transmisión o reproducción de sonido o
imágenes, ordenadores y software (clase 9) frente a servicios de telecomunicaciones (clase 38) ................................................................ 64
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1 Introducción
1.1 Pertinencia
La comparación de los productos y servicios tiene una importancia primordial para la apreciación de la identidad con arreglo al artículo 8, apartado 1, letra a), del RMC y el riesgo de confusión con arreglo a la letra b) del apartado 1 de dicho artículo. Uno de los principales requisitos del artículo 8, apartado 1, letra a), del RMC es la identidad de los productos y servicios, mientras que el artículo 8, apartado 1, letra b) exige la identidad o la similitud de los productos y servicios. Por consiguiente, si se considera que todos los productos y servicios son diferentes, no se cumple uno de los requisitos establecidos en el artículo 8, apartado 1, del RMC, por lo que la oposición debe desestimarse, sin abordar el resto de apartados de la resolución1.
Los criterios para apreciar la identidad o la similitud también pueden jugar un papel cuando se ha exigido la prueba de uso y deben valorarse las pruebas para determinar si el oponente demostró un uso como el registrado para los mismos productos y servicios. En concreto, es importante determinar si los productos y servicios para los que se ha utilizado la marca pertenecen a la categoría de productos y servicios para los que se ha registrado la misma o si sólo son similares o incluso distintos (véanse las Directrices relativas a la oposición, Parte 6, Prueba del uso).
De igual modo, la prueba de uso de los productos y servicios también podría resultar pertinente al examinar una reivindicación de carácter distintivo elevado. En dichos casos, con frecuencia es necesario que el examinador responda a la pregunta de si el carácter distintivo elevado abarca a los productos y servicios para los que la marca anterior goza de protección y que son relevantes para el caso específico, es decir, que han sido considerados idénticos o similares a los productos y servicios de la marca comunitaria impugnada (véanse las Directrices relativas a la oposición, Parte 2, Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo).
Asimismo, el resultado de la comparación de los productos y servicios juega un papel importante a la hora de definir la parte del público respecto del que se aprecia un riesgo de confusión. El público destinatario también se tiene en cuenta para los productos y servicios que se consideran idénticos o similares (véanse las Directrices relativas a la oposición, Parte 2, Identidad y riesgo de confusión, Capítulo 6, Público destinatario y grado de atención).
La comparación de los productos y servicios también puede ser pertinente con arreglo al artículo 8, apartado 3, del RMC que exige que la identidad o «estrecha relación o equivalencia desde el punto de vista comercial» de los productos y servicios (véanse las Directrices relativas a la oposición, Parte 3, Marca presentada por un agente – artículo 8, apartado 3, del RMC) y con arreglo a las disposiciones aplicables de la legislación nacional con arreglo al artículo 8, apartado 4, del RMC, ya que la identidad o la similitud de los productos y servicios suele ser un requisito por el que se prohíbe el uso de una marca posterior (véanse las Directrices relativas a la oposición, Parte 4, Derechos en virtud del artículo 8, apartado 4, del RMC).
1 De igual modo, la comparación de los productos y servicios es pertinente en el procedimiento de nulidad, dado que de conformidad con el artículo 53, apartado 1, letra a), del RMC una marca comunitaria se declarará nula cuando se cumplan las condiciones enunciadas en el artículo 8, apartado 1, del RMC.
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1.2 Clasificación de Niza: un punto de partida
Los productos y servicios que se compararán se incluyen en categorías con arreglo a la Clasificación de Niza, actualmente compuesta por 34 clases (1-34) para clasificar los productos y de 11 clases (35-45) para clasificar los servicios.
1.2.1 Su carácter como instrumento de clasificación
La Clasificación de Niza se estableció con el propósito de armonizar las prácticas de clasificación nacionales. La primera edición de las mismas entró en vigor en 1961 y, aunque se han llevado a cabo varias revisiones, en ocasiones se ven superadas por los rápidos cambios en el desarrollo de productos de los mercados. Asimismo, los textos de los títulos en ocasiones son poco claros e inexactos.
La regla 2, apartado 4, del Reglamento de Ejecución establece explícitamente que la Clasificación de Niza servirá exclusivamente a efectos administrativos y, por lo tanto, no permite extraer conclusiones en lo concerniente a la similitud de los productos y servicios.
El hecho de que los productos o servicios respectivos aparezcan agrupados en la misma clase de la Clasificación de Niza no constituye, por sí solo, un indicio de similitud.
Ejemplos
Animales vivos son distintos a flores (clase 31). Publicidad es distinta a trabajos de oficina (clase 35).
Ni siquiera el hecho de que dos servicios o productos específicos estén comprendidos en la misma indicación general de un título de clase hacen que sean similares de forma intrínseca: los coches y las bicicletas – aunque ambos están comprendidos en la expresión vehículos de la clase 12 – no se consideran similares.
Asimismo, los productos y/o servicios clasificados en clases distintas no se consideran necesariamente distintos (véase la sentencia de 16/12/2008, T-259/06, «Manso de Velasco», apartado 30 y 31).
Ejemplos
Extractos de carne (clase 29) son similares a especias (clase 30). Organización de viajes (clase 39) es similar a hospedaje temporal (clase 43).
1.2.2 Su estructura y metodología
Sin perjuicio de lo establecido en la regla 2, apartado 4, del REMC, la clasificación puede servir como instrumento para identificar las características comunes de determinados productos y servicios.
Muchas de las clases de la Clasificación de Niza están estructuradas con arreglo a factores como la función, composición y/o finalidad de uso que pueden ser pertinentes en la comparación de los productos y servicios. Por ejemplo:
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La clase 1 comprende principalmente productos químicos basados en sus propiedades químicas (naturaleza), en lugar de en su aplicación específica. En cambio, la clase 3 abarca todos los componentes, ya sean preparaciones para limpiar o para la higiene o de belleza. Aunque por su naturaleza también puedan clasificarse como productos químicos, es su finalidad específica la que permite la distinción y, por tanto, una clasificación diferente.
Igualmente, es debido a su naturaleza que la mayoría de los artículos de cuero se clasifican en la clase 18, mientras que la ropa de cuero se incluye en la clase 25, ya que tiene una finalidad muy específica, en concreto, está destinada a vestir a las personas y como protección frente a los elementos.
1.2.3 Conclusiones que deben extraerse de la estructura de la Clasificación de Niza
La estructura de los títulos de clase no es uniforme y no sigue una misma lógica. Algunas clases sólo están compuestas por una indicación general, cuya definición ya comprende a casi todos los productos y servicios incluidos en esta clase (clase 15 Instrumentos musicales; clase 38 Telecomunicaciones). Otras incluyen muchas indicaciones generales, que o bien son muy amplias o bien muy específicas. Por ejemplo, el título de la clase 9 incluye más de 30 términos que van desde los aparatos e instrumentos científicos a los extintores.
De manera excepcional, existen títulos de clase que incluyen indicaciones generales que comprenden otra indicación general y, por lo tanto, son idénticos, como por ejemplo, el material para emplastos de la clase 5 que incluyen los emplastos de la clase 5. Este es el caso específico cuando una indicación específica en un título de clase sólo se menciona para aclarar que no pertenece a otra clase, aunque ya esté incluida en otra indicación más amplia del título de clase. Ejemplo: Adhesivos para la industria están incluidos en productos químicos para la industria de la clase 1. Su referencia es principalmente para distinguirlos de los adhesivos clasificados en la clase 16 que se utilizan para la papelería o el hogar.
Para concluir, la Clasificación de Niza da indicaciones que pueden utilizarse en la apreciación de la identidad o similitud de los productos y servicios, aunque su estructura y contenido no sean coherentes. Por lo tanto, cada título o término específico debe analizarse de acuerdo con la clase específica en la que está incluido. Tal como se ha indicado anteriormente, la Clasificación de Niza sirve principalmente para clasificar en categorías los productos y servicios a efectos administrativos y no resulta decisiva para la comparación de los mismos.
1.2.4 Cambios en la clasificación de los productos y servicios
Por lo general, en cada revisión de la Clasificación de Niza se producen cambios en la clasificación de los productos y servicios (en especial, la transferencia de productos y servicios entre las diversas clases) o en el texto de los títulos. En dichos casos, la lista de los productos y/o servicios de la marca anterior impugnada debe interpretarse con arreglo a la edición de la Clasificación de Niza que esté vigente en el momento de su presentación.
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Ejemplo
Servicios jurídicos se transfirieron de la clase 42 a la clase 45 en la 8ª edición de la Clasificación de Niza, aunque la naturaleza de dichos servicios no se haya visto modificada.
1.3 La base de datos de la OAMI para la comparación de los productos y servicios
La base de datos sobre la comparación de los productos y servicios es una herramienta de búsqueda de ayuda y apoyo a los examinadores para la apreciación de la similitud de los productos y servicios. La base de datos, que debe ser objeto de consulta, sirve al propósito de armonizar la práctica de la apreciación de la similitud de los productos y servicios y garantizar la coherencia de las resoluciones de oposición.
La base de datos está basada en la comparación de los pares específicos de productos y servicios. Un «par» compara dos «expresiones». Una «expresión» está compuesta por un número de clase de la Clasificación de Niza ( 1- 45) y un elemento de texto, es decir, un producto o servicio específico (incluidas las categorías de productos y servicios, como «prendas de vestir» o «educación»). Existen cinco posibles resultados de la búsqueda: identidad, grado de similitud elevado, similitud, grado de similitud bajo y diferenciación. En el caso de los diversos grados de similitud, la base de datos indica los criterios aplicados a su resultado.
La base de datos se actualiza constantemente y, si es necesario, se revisa para crear una fuente de referencia completa y fiable.
Dado que la base de datos ofrece u ofrecerá respuestas a comparaciones específicas, las Directrices se concentran en la definición de los principios generales y su aplicación en la práctica.
1.4 Definición de los productos y servicios (Terminología)
1.4.1 Productos
El Reglamento no ofrece una definición de los productos y servicios. Aunque la Clasificación de Niza ofrece algunas explicaciones generales al efecto en sus observaciones preliminares, evita establecer de forma clara los criterios para distinguir los productos y servicios.
En principio, un producto es cualquier clase de artículo susceptible de comercialización. Los productos incluyen las materias primas (materias plásticas en estado bruto de la clase 1), los productos semielaborados (materias plásticas semielaboradas para su uso en la fabricación de la clase 17) y los productos acabados (recipientes de plástico para uso doméstico de la clase 21). Se incluyen los productos naturales y manufacturados, como los productos agrícolas de la clase 31 y las máquinas y las máquinas herramientas de la clase 7.
Sin embargo, en ocasiones no queda claro si los productos sólo comprenden productos físicos tangibles a diferencia de los servicios que son intangibles. La definición y, por tanto, el ámbito de protección son especialmente relevantes en cuanto
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a los «productos» como la «electricidad» que es intangible. Esta cuestión ya ha quedado respondida durante el examen relativo a la clasificación y normalmente no planteará ningún problema respecto de la comparación de los productos y servicios.
1.4.2 Servicios
Un servicio es cualquier actividad o prestación que una parte puede ofrecer a otra, que tiene naturaleza intangible y que no da como resultado la transferencia de la propiedad de ningún objeto físico.
Ejemplo
La reparación de coches es un servicio.
Al contrario que los productos, un servicio siempre es un activo intangible. Los servicios incluyen las actividades económicas proporcionadas por terceros que no entran dentro de la producción, la fabricación y la venta de productos. Anunciar los propios bienes no es un servicio, pero gestionar una agencia
publicitaria (diseñar campañas publicitarias para terceros) sí lo es. Por lo tanto, los términos que figuran en la lista, como la publicidad, deben referirse sólo a la definición de los servicios citados.
Vender o distribuir los propios productos no es un servicio. El término servicios de venta al por menor se refiere a los servicios que prestan apoyo a la venta real de productos (p. ej., ofrecer al cliente la oportunidad de ver, comparar o probar los productos).
Para que una indicación de la actividad se considere un servicio de acuerdo con la legislación de marcas debe tener un valor económico independiente, es decir, que se ofrezca alguna forma de compensación (económica). Por otro lado, podría ser solo una simple actividad auxiliar ofrecida junto con o después de la compra de un producto específico.
Ejemplo
La entrega, incluido el transporte de muebles que se hayan comprado con anterioridad, no constituye un servicio independiente contemplado en los servicios de transporte de la clase 39.
Sin embargo, la intención de obtener beneficios no es necesariamente un criterio para definir si una actividad puede calificarse como «servicio» (véase la sentencia de 09/12/2008, C-442/07, «Radetzky», apartados 16 a 18). Es más una cuestión de si el servicio tiene clientes y un ámbito de mercado independientes en lugar de la manera o la forma en que se realiza la compensación.
1.4.3 Productos
En el lenguaje general la palabra «productos» se utiliza para designar tanto los productos como los servicios, p. ej., «productos financieros» en lugar de «servicios financieros». El hecho de que, en el lenguaje general, se utilice la palabra “producto” para describir un término no es relevante a la hora de clasificarlo como un bien o como un servicio.
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1.5 Determinación de los productos y servicios
1.5.1 El texto correcto
Como cuestión preliminar, procede identificar el texto correcto de la lista de productos y/o servicios en cuestión
1.5.1.1 Marcas comunitarias
Las solicitudes de marca comunitaria han de publicarse en todas las lenguas oficiales de la Comunidad Europea (artículo 120, apartado 1, del RMC). Asimismo, todas las inscripciones en el Registro de marcas comunitarias han de efectuarse en todas esas lenguas (artículo 120, apartado 2, del RMC). Las solicitudes y las inscripciones en el Registro se publican en el Boletín de Marcas Comunitarias (regla 85, apartados 1 y 2, del REMC).
Ocasionalmente, pueden existir discrepancias entre:
la traducción del texto de la lista de productos y/o servicios de una marca comunitaria (solicitud o registro) publicada en el Boletín de Marcas Comunitarias; y
el texto original tal como fue presentado.
De existir tal discrepancia,
si la primera lengua es una de las lenguas oficiales de la Oficina, dará fe la primera lengua.
si la primera lengua de la solicitud no es ninguna de las cinco lenguas oficiales de la Oficina, dará fe el texto redactado en la segunda lengua indicada por el solicitante (artículo 120, apartado 3, del REMC).
Esto se aplica con independencia, tanto si la marca comunitaria (o solicitud de marca comunitaria) es el derecho anterior como si es la solicitud impugnada.
1.5.1.2 Marcas nacionales anteriores y registros nacionales anteriores
La lista de productos y servicios de las marcas anteriores en los que está basada la oposición debe presentarse en la lengua del procedimiento de la oposición (regla 19, apartado 3, del REMC). La Oficina no exige una traducción certificada y acepta traducciones sencillas, que hayan sido redactadas por el oponente o su representante. Normalmente, la Oficina no hace uso de la facultad que se le otorga en virtud de la regla 98, apartado 1, 2ª frase del REMC para exigir una traducción jurada certificada por un traductor jurado u oficial. Siempre que el representante incluya una declaración en la que se constate que la traducción es fiel al original, la Oficina no lo pondrá en duda. La otra parte podrá cuestionar, sin embargo, si la traducción es correcta durante la parte contradictoria del procedimiento. Asimismo, dado que la traducción debe reproducir la estructura del documento original (regla 98, apartado 1, del REMC), el examinador también podrá observar las discrepancias obvias (por ejemplo, la lista en
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la lengua original que se compone de tres expresiones mientras que la traducción tiene dos páginas, etc.). En dichos casos, el examinador deberá aclarar esta cuestión en la decisión final.
Por lo que respecta a los registros internacionales en virtud del Protocolo o el Arreglo de Madrid, la lengua en la que se haya realizado el registro internacional (francés, inglés o español) es definitiva. No obstante, cuando la lengua del procedimiento de oposición no sea la misma que la utilizada en el registro internacional, debe facilitarse una traducción.
1.5.2 Alcance pertinente
La comparación de los productos y servicios debe basarse en el texto que figura en la lista de productos y/o servicios respectiva. El uso real o previsto de los productos y servicios no contemplados en la lista es irrelevante para el examen (véase la sentencia de 16/06/2010, T-487/08, «Kremezin», apartado 71).
No obstante, cuando se solicite válidamente la prueba de uso de la marca anterior y la prueba presentada sólo sea suficiente para parte de los productos y servicios de la lista, la marca anterior sólo se considerará registrada para esos productos y servicios (artículo 42, apartado 2, del RMC) y, por lo tanto, el examen se limitará a tales productos y servicios (véase asimismo la Sección 6 – Prueba del uso).
Además, en el caso de la marca anterior, sólo son pertinentes los productos y servicios en los que se basa válidamente la oposición. En consecuencia, no se tomarán en consideración los productos o servicios que:
no puedan tenerse en cuenta por razones de admisibilidad,
no hayan sido debidamente acreditados (p. ej., sólo se ha presentado una traducción parcial de la lista de productos y/o servicios), o
sobre los que (ya) no se base la oposición.
Del mismo modo, sólo se tendrán en cuenta aquellos productos y servicios de la solicitud impugnada contra los que se dirige la oposición. Por lo tanto, las limitaciones efectuadas en el curso del procedimiento, bien de la lista de productos y/o servicios de la solicitud, bien del alcance de la oposición, o de ambos, reducirán los productos y servicios a comparar.
Por lo demás, puede ser necesario un análisis del texto de la lista de productos y/o servicios para determinar el alcance de protección de dichos productos y servicios. Lo anterior resulta especialmente cierto cuando se emplean términos como «en particular», “«en concreto», u otro equivalente con la finalidad de demostrar la relación de un producto individual con una categoría más amplia.
La expresión en concreto (o «por ejemplo», «tales como», «incluido» u otra equivalente) indica que los productos y servicios específicos no son más que ejemplos de artículos incluidos en esa categoría, y que la protección no se circunscribe sólo a ellos. Dicho de otro modo, introduce una lista de ejemplos no exhaustiva (sobre el uso, véase en especial una referencia en la sentencia de 09/04/2003, T-224/01, «NU- TRIDE»).
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En cambio, el término a saber (o «exclusivamente» u otro equivalente) es excluyente y restringe el alcance del registro a los productos enumerados específicamente.
Por ejemplo, en el caso de productos químicos destinados a la industria, a saber bases para plásticos sólo las bases para plásticos tienen que compararse con los productos de la otra marca.
Cabe recordar que el uso de comas en la lista de productos y servicios sirve para separar los elementos de una categoría igual o similar. El uso de punto y coma significa una separación entre los términos. La separación de términos a través de una puntuación diferente puede implicar cambios en su significado y puede llevar a realizar una evaluación distinta al comparar los productos y servicios.
Por ejemplo, en programa informático para uso en máquinas industriales; extintores de la clase 9, la introducción de un punto y coma significa que el término extintores debe considerarse como una categoría de productos independiente, con independencia de si la intención fue proteger el programa informático que se utilizará en el ámbito de las máquinas industriales y los extintores.
1.5.3 El significado de los productos y servicios
Una vez identificada la denominación de los productos y servicios a considerar, procede determinar su significado.
En ciertos casos, el significado exacto se deduce de forma inmediata de las listas de productos y/o servicios de las marcas, en las que con frecuencia se aporta una descripción más o menos detallada de los productos y servicios. Por ejemplo, el texto cinturones (que sean prendas de vestir) excluye por definición los cinturones de seguridad y los cinturones industriales.
En caso de duda sobre el significado exacto de los términos empleados en la lista de productos y/o servicios, habrán de interpretarse a la luz de la Clasificación de Niza y también desde una perspectiva comercial.
Por lo tanto, la inclusión de cinturones en la clase 25 obedece a su clasificación como prendas de vestir.
En caso de que el significado de los términos en los contextos semántico, comercial y/o en virtud de la Clasificación de Niza sea ambiguo o plantee dudas, prevalecerá este último.
El término prendas de vestir, por ejemplo, hace referencia a «ropa de manera colectiva» (traducción de la definición del Oxford English Dictionary) y, por lo tanto, se refiere a los artículos que se llevan para cubrir el cuerpo, como camisas, vestidos, pantalones, etc. Aunque la definición que se encuentra en los diccionarios estándares no excluye de manera explícita a calzado, el hecho de que éste aparezca en la Clasificación de Niza como un elemento separado en la misma clase 25 lleva a la conclusión de que prendas de vestir y calzado no son idénticos, sino similares (confirmado por la sentencia de 13/07/2004, T-115/02, «(letra) “a”», apartado 26).
Sin embargo, esto no implica que dos indicaciones generales de un título de clase nunca puedan considerarse idénticas. Tal como se ha mencionado anteriormente, la
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estructura de los títulos de clase no es uniforme. Algunas indicaciones generales incluidas en los títulos de clase pueden comprender a otras.
Ejemplo
Carne y carne de ave son idénticas (clase 29).
1.6 Enfoque objetivo
La comparación de los productos y servicios en cuestión debe apreciarse sin tener en cuenta el grado de similitud de los signos en conflicto o el carácter distintivo de la marca anterior. Los examinadores tendrán en cuenta todos los factores pertinentes sólo en la apreciación global de una resolución.
La clasificación de los productos y servicios no resulta concluyente, ya que productos y servicios similares pueden clasificarse en distintas clases, mientras que productos y servicios distintos pueden estar comprendidos en la misma clase.
La identidad o la similitud entre los productos y servicios deben determinarse sobre una base objetiva.
Es preciso basar las conclusiones en las realidades del mercado, es decir, en las costumbres arraigadas en el sector industrial o comercial de que se trate. Estas costumbres, en particular, las prácticas comerciales, son dinámicas y están en continuo cambio. Por ejemplo, hoy en día los teléfonos móviles combinan muchas funciones, tanto siendo una herramienta de comunicación como un dispositivo fotográfico.
En algunos casos, el examinador sólo podrá basar su decisión en los hechos y las pruebas presentadas por las partes. No debe especularse o no debería investigarse ampliamente de oficio con lo que no se derive de las pruebas presentadas o que no se conocen comúnmente (véase la sentencia de 09/02/2011, T-222/09, «ALPHAREN», apartados 31-32).
1.7 Declaración de los motivos
Se le exige al examinador que motive en su decisión el resultado de la comparación (identidad, similitud o diferenciación) para cada uno de los productos y servicios especificados en la solicitud del registro, con independencia del modo en que se formuló dicha solicitud. Sin embargo, cuando se da una misma conclusión para una categoría o grupo de productos o servicios, el examinador sólo podrá usar una justificación general para todos los productos o servicios afectados siempre que estos productos presenten características análogas (véase por analogía el auto de 18/03/2010, C-282/09, «PAYWEB CARD», apartados 37 a 38; sentencia de 12/04/2011, T-28/10, «EURO AUTOMATIC PAYMENT», apartado 54y sentencia de 17/10/2013, C-529/12P, «ZEBEXIR», apartados 26-27).
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2 Identidad
2.1 Principios generales
La identidad se define por lo general como «la calidad o condición de tener una sustancia, composición, naturaleza, propiedades iguales o, en especial, las cualidades que se consideran» (traducción de la definición del Oxford English Dictionary).
La identidad no solo existe si los productos y servicios coinciden completamente (se utilizan los mismos términos o sinónimos), sino también cuando y en la medida en que los productos y servicios de la marca impugnada entran dentro de la categoría más amplia de la marca anterior o, cuando y en la medida en que – por el contrario – un término más amplio de la marca impugnada incluye los productos y servicios más específicos de la marca anterior. Asimismo, puede existir identidad cuando dos categorías amplias que se comparan coinciden parcialmente («se solapan»). De ahí que puedan diferenciarse los casos de «identidad total» y de «identidad parcial».
La identidad no debe establecerse basándose en los factores de similitud (véase el apartado 3.1.1 infra).
2.2 Identidad total: términos idénticos o sinónimos
La identidad entre los productos o servicios controvertidos debe determinarse a partir del texto de las partes pertinentes de las listas de productos y/o servicios de las dos marcas que se han identificado con arreglo a los principios establecidos supra. La identidad es obvia cuando los productos y servicios objeto de comparación figuran en ambas listas utilizando exactamente los mismos términos.
Ejemplo
Vehículos son idénticos a vehículos.
Cuando éste no sea el caso, los términos de las listas de productos y/o servicios respectivas habrán de interpretarse a fin de demostrar que, de hecho, son sinónimos, es decir, que tienen el mismo significado. La interpretación puede llevarse a cabo basándose en las definiciones del diccionario, las expresiones de la Clasificación de Niza y, en especial, teniendo en cuenta la perspectiva comercial.
Ejemplos
Bicicleta es un sinónimo de ciclo, por lo que los productos son idénticos.
El significado de las palabras artículos para fumadores de la clase 34 hace referencia a objetos individuales que se utilizan en estrecha relación con el tabaco y los productos del tabaco. En ediciones anteriores de la Clasificación de Niza estos productos se llamaban “requisitos para fumadores”. Por lo tanto, a pesar de que se utilice un término diferente en el actual título, estos productos son idénticos.
Desde una perspectiva comercial servicios de estaciones termales y servicios de bienestar son los mismos y, por tanto, idénticos.
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Sin embargo, si se utiliza una redacción idéntica, pero los productos se clasifican en clases distintas, esto significa por lo general que estos productos no son idénticos:
Ejemplos
Taladros (máquinas herramientas) de la clase 7 no son idénticos a taladros (herramientas de mano) de la clase 8.
Láseres (que no sean para uso médico) de la clase 9 no son idénticos a láseres (con fines curativos) de la clase 10.
Aunque puedan ser similares, la clasificación en diferentes clases indica que tienen una naturaleza, un destino y una utilización, etc., distintos.
Este argumento no es aplicable si la clasificación diferente se debe únicamente a la revisión de la Clasificación de Niza o si los productos y servicios están obviamente mal «clasificados», debido a un error evidente, por ejemplo, un error de transcripción.
Ejemplos
Naipes (clase 16 – 7ª edición) son idénticos a naipes (clase 28 – 10ª edición). Productos farmacéuticos (clase 15 – error de mecanografía evidente) son
idénticos a productos farmacéuticos (clase 5).
2.3 Identidad parcial
2.3.1 La marca anterior incluye los productos y servicios de la marca impugnada
Si la lista de productos y/o servicios del derecho anterior incluye una indicación general o una categoría amplia que comprende los productos y servicios de la marca impugnada en su totalidad, los productos y servicios serán idénticos (véase la sentencia de 17/01/2012, T-522/10 «Hell», apartado 36).
Ejemplos
Hospedaje temporal (derecho anterior, clase 43) incluye servicios de albergues juveniles (marca impugnada, clase 43), por lo que los servicios son idénticos.
Pasta (derecho anterior, clase 30) incluye espaguetis (marca impugnada, clase 30), por lo que los productos son idénticos.
Marca anterior
Marca impugnada
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2.3.2 La marca impugnada incluye los productos y servicios de la marca anterior
Cuando los productos y servicios que designe la marca anterior estén incluidos en una indicación general o en una categoría más general de la marca impugnada, dichos productos y servicios se considerarán idénticos ya que la Oficina no puede examinar de oficio la categoría más general de los productos y servicios del solicitante/titular (véase la sentencia de 07/09/2006, T-133/05, «PAM-PIM’S BABY-PROP», apartado 29).
Ejemplos
Pantalones vaqueros de la marca anterior (clase 25) están incluidos en prendas de vestir (marca impugnada, clase 25), por lo que los productos se consideran idénticos.
Bicicletas de la marca anterior (clase 12) están incluidas en vehículos (marca impugnada, clase 12), por lo que los productos se consideran idénticos.
El solicitante/titular podrá, en cambio, limitar la lista de productos y servicios de forma que se excluya la identidad, aunque todavía se pueda establecer la similitud (véase la sentencia de 24/05/2011, T-161/10, «E-Plex», apartado 22).
Pantalones vaqueros de la marca anterior (clase 25) están incluidos en prendas de vestir (clase 25). Si el solicitante/titular limita la lista a prendas de vestir, excluyendo pantalones vaqueros, los productos ya no serán idénticos sino similares.
Bicicletas de la marca anterior (clase 12) están incluidas en vehículos (marca impugnada, clase 12). Si el solicitante/titular limita la lista a vehículos, en concreto automóviles, los productos ya no serán ni idénticos ni similares.
Si el solicitante/titular no limita la lista de productos y servicios, o lo hace en una medida insuficiente, la Oficina tratará el término amplio/la categoría amplia contenido/a en la solicitud como una sola unidad y considerará que existe identidad.
Si la marca impugnada incluye una indicación general o un término o una categoría más general, así como los artículos específicos incluidos en los mismos, será necesario que se compare todo con los productos y servicios anteriores específicos. El resultado de identidad que se determina gracias a la indicación general o a la categoría más general no abarca automáticamente los artículos específicos.
Marca anterior
Marca impugnada
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Ejemplo
La marca impugnada comprende vehículos (indicación general) así como bicicletas, aeronaves, trenes (incluidos en vehículos). Cuando la marca anterior esté protegida para bicicletas, la identidad se declarará con respecto a vehículos y bicicletas, pero no para aeronaves o trenes.
Sin embargo, si la marca impugnada incluye una indicación general o un término o categoría más general y términos específicos que no están incluidos de forma independiente, sino sólo como ejemplos, la comparación es distinta en la medida en que sólo debe compararse la indicación general o el término/categoría más general.
Ejemplo
La marca impugnada incluye vehículos, en concreto bicicletas, aeronaves, trenes. La marca anterior goza de protección para bicicletas, por lo que los productos en conflicto se consideran idénticos.
El solicitante/titular puede evitar este resultado suprimiendo la categoría general vehículos, la expresión en concreto y la categoría específica bicicletas.
Cuando la lista de productos y/o servicios de la marca impugnada indica vehículos, en concreto bicicletas, aeronaves, trenes, la comparación es distinta en la medida en que sólo deben compararse los elementos específicos. En este caso, sólo las bicicletas impugnadas son idénticas a los productos anteriores.
2.3.3 Solapamiento
Cuando dos categorías de productos y servicios coinciden parcialmente («se solapan») puede existir identidad si:
a. están clasificados en la misma clase, b. están comprendidos en la misma indicación general del título de clase, y c. es imposible separar de forma clara los dos productos y servicios.
Marca anterior Marcaimpugnada
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Ejemplos
Productos anteriores Productos impugnados Parte coincidente
Prendas de vestir exteriores para mujer. Vestidos de cuero
Prendas de vestir exteriores de cuero para mujer
Componentes y piezas de recambio de vehículos terrestres
Asientos de vehículos 2
Asientos de vehículos terrestres
Pan Productos de panadería de larga duración. Pan de larga duración
Utensilios de cocina eléctricos
Termómetros 3
Termómetros de cocina eléctricos
Lo mismo es aplicable si una indicación general de un título de clase está parcialmente incluida en otra indicación general del mismo título de clase.
Ejemplos
Productos anteriores Productos impugnados Parte coincidente
Jabón Preparaciones para limpiar Jabones para limpiar
Instrumentos científicos Instrumentos ópticos Instrumentos ópticos científicos, p. ej., microscopios
Fungicidas Preparaciones farmacéuticas
Fungicidas farmacéuticos
En dichos casos, a la Oficina le resulta imposible filtrar los productos de las categorías citadas. Dado que la Oficina no puede examinar de oficio la categoría más general de los productos del solicitante/titular, éstos se consideran idénticos.
En el primer ejemplo indicado, el resultado varía, por supuesto, si jabón se limita a jabones para uso personal. En este caso, los productos ya no están incluidos en el título preparaciones para limpiar de la clase 3, ya que estas últimas están únicamente destinadas a uso doméstico.
2.4 Práctica de uso de las indicaciones generales de los títulos de clase
Siguiendo lo indicado en la Comunicación del Presidente nº 2/12 de 20 de junio de 2012, la Oficina no pone objeciones a que se utilicen cualquiera de las indicaciones generales de los títulos de las clases siempre que dicha identificación sea lo suficientemente clara y precisa.
De conformidad con la Comunicación mencionada, la Oficina interpreta el uso de todas las indicaciones generales en el título de clase de la siguiente manera:
Las solicitudes de marca comunitaria presentadas a más tardar el 20 de junio de 2012: Por lo que a las marcas comunitarias registradas se refiere y
2 Sentencia de 09/09/2008, T-363/06, «MAGIC SEAT», apartado 22. 3 Sentencia de 19/01/2011, T-336/09, ‘«TOPCOM», apartado 34.
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las solicitudes presentadas antes de la entrada en vigor de la Comunicación mencionada4 que utilicen todas las indicaciones generales incluidas en el título de clase de una clase en particular, la Oficina considera que la voluntad del solicitante fue comprender todos los productos y servicios incluidos en la lista alfabética de dicha clase en la edición de la Clasificación de Niza en vigor en el momento en que se llevó a cabo la presentación y no sólo el significado literal de dichas indicaciones generales.
En la sentencia T-66/11 «Babilu» de 31/10/2013, apartados 49 a 50, el TG confirmó esta interpretación del alcance de la protección de las marcas comunitarias anteriores.
Las solicitudes de marca comunitaria presentadas el 21 de junio de 2012 o más tarde: Los solicitantes de una marca que utilicen todas las indicaciones generales de un título de clase en particular de la clasificación de Niza para identificar los productos o servicios para los que se solicita la protección deberán especificar si la solicitud de registro pretende comprender todos los productos o servicios incluidos en la lista alfabética de una clase determinada o sólo algunos de los productos o servicios de una clase determinada o sólo algunos de los productos o servicios de dicha clase. Si el solicitante no indica dicha voluntad, se interpretará que las indicaciones generales (siempre que éstas respeten los requisitos de claridad y precisión) siguen un enfoque literal.
La OAMI y todas las Oficinas nacionales de marcas de la Unión Europea emitieron una Comunicación conjunta sobre la aplicación de la sentencia «IP Translator» (en lo sucesivo, «Comunicación conjunta sobre la aplicación de IP Translator»). De acuerdo con este comunicado, la OAMI interpreta el alcance de la protección de las marcas nacionales con títulos de clases, de la siguiente manera:
Marcas nacionales anteriores presentadas antes de la sentencia «IP Translator»: En principio, la OAMI acepta la práctica de registro de todas las oficinas nacionales de marcas de la Unión Europea. Las marcas nacionales presentadas antes de la sentencia «IP Translator» tienen el alcance de protección concedido por la oficina nacional. La mayoría de las oficinas nacionales interpretan los títulos de las clases de sus marcas en sentido literal. Para dichas marcas, la OAMI interpreta también los títulos de las clases basándose en el significado natural y habitual de cada indicación general.
Sólo ocho oficinas nacionales de marcas no interpretan los títulos de clase de sus propias marcas registradas antes de la sentencia «IP Translator» atendiendo a su significado natural y habitual: Bulgaria, Finlandia, Grecia, Hungría, Italia, Lituania, Malta y Rumanía (véase el cuadro 1 de la Comunicación conjunta). La OAMI interpreta que dichas marcas nacionales cubren los títulos de clase más la lista alfabética de la edición de Niza en el momento de la presentación (incluso si la Oficina nacional interpreta que el título de clase abarca todos los productos y servicios de la clase).
Marcas nacionales anteriores presentadas después de la sentencia «IP Translator»: La OAMI interpreta todos los productos y servicios cubiertos por
4 Dicha Comunicación entró en vigor el 21 de junio de 2012.
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las marcas nacionales atendiendo a su significado natural y habitual (véase el cuadro 5 de la Comunicación conjunta).
Para determinar el alcance de la protección deben aplicarse los principios mencionados anteriormente. Al llevar a cabo la comparación entre los productos y servicios sólo se tendrán en cuenta los productos o servicios cubiertos por estos principios.
3 Similitud entre los productos y servicios
3.1 Principios generales
3.1.1 Factores de similitud
En general, dos artículos se definen como similares cuando tienen algunos rasgos en común.
La similitud entre los productos y servicios es una cuestión que ha abordado la jurisprudencia del Tribunal de Justicia en el asunto «Canon» (sentencia de 29/09/1998, C-39/97, «Canon»). El Tribunal de Justicia declaró que para apreciar la similitud entre los productos procede tener en cuenta todos los factores pertinentes que caracterizan la relación entre los productos. Estos factores incluyen, en particular, su naturaleza, su destino, su utilización y su carácter competidor o complementario (apartado 23).
La expresión en particular, revela que la lista de los factores mencionados por el Tribunal es meramente indicativa. La similitud entre los productos y servicios no puede depender de un número fijo y limitado de criterios que, generalmente, pueden determinarse por adelantado y que surten el mismo efecto en todos los casos. Pueden concurrir otros factores además de o en lugar de los enumerados por el Tribunal que pueden resultar pertinentes en el caso concreto.
Esto lleva a la conclusión de que deben tenerse en cuenta los siguientes factores.
Factores establecidos en la sentencia «Canon»:
naturaleza, destino, utilización, carácter complementario, carácter competidor.
Factores adicionales:
canales de distribución, público destinatario, origen habitual de los productos o servicios.
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Estos factores que se explicarán con más detalle a continuación (véase el punto «Los factores específicos de la similitud») también se utilizan en la base de datos de la Oficina para la comparación de los productos y servicios. Cabe señalar, sin embargo, que aunque la base de datos se limite a estos ocho factores, pueden existir casos específicos en que sean pertinentes otros criterios.
3.1.2 Definición de los factores pertinentes
La comparación debe centrarse en identificar los factores pertinentes que caractericen de forma específica los productos y/o servicios que serán objeto de comparación. Por lo tanto, la pertinencia de un factor particular depende de los respectivos productos y/o servicios objeto de comparación.
Ejemplo
Al comparar esquís y botas de esquí es obvio que no coinciden en su naturaleza ni en su utilización o carácter competidor. Por lo tanto, la comparación debería centrarse en su destino, su carácter complementario, sus canales de distribución, su origen habitual y/o el público destinatario.
Por lo tanto, los factores pertinentes y las propiedades que caracterizan un producto o servicio pueden ser diferentes dependiendo de los productos y servicios con los que deben compararse.
No es necesario indicar la lista con todos los posibles factores, sino que lo que importa es si los vínculos entre los factores pertinentes son lo suficientemente estrechos para considerar que existe similitud.
Podrían formularse las siguientes preguntas:
¿Cómo se utilizarán los productos y servicios? ¿Cuál es su destino? ¿Qué probabilidad hay de que tengan el mismo productor? ¿Normalmente se encuentran en el mismo punto de venta, centro comercial o en
la misma sección de un supermercado?
En caso de que los factores no estén definidos en el texto de los productos y servicios, es posible obtener información adicional en las entradas de los diccionarios. Sin embargo, las entradas de los diccionarios deben analizarse en comparación con la realidad comercial y, en especial, teniendo en cuenta la Clasificación de Niza.
Ejemplo
Según el diccionario ice (hielo) es el singular de ices (helados) y significa, en particular, «(an) ice cream» (un helado cremoso) o «water ice» (helado de hielo) (según el Oxford English Dictionary, edición electrónica). Si la comparación de ices (helados) y ice (hielo) de la clase 30 se llevara a cabo atendiendo sólo a la definición del diccionario, esto nos llevaría a la conclusión errónea de que ice es idéntico a ices. Sin embargo, dado que tanto ices como ice se mencionan en la
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lista de productos de la clase 30, ices pueden entenderse como «helados comestibles», mientras que ice debe entenderse como «hielo para refrigerar». Aunque tienen una composición que coincide en la medida en que ambos están compuestos (parcialmente) de agua helada, su naturaleza comercial es diferente, mientras que uno es un alimento, el otro es un producto auxiliar para conservar y/o refrigerar alimentos. Lo anterior demuestra que la Clasificación de Niza junto con la perspectiva comercial prevalece sobre la definición del diccionario.
Una vez que se han identificado los factores pertinentes, el examinador deberá determinar la relación entre los factores así como la importancia atribuida a los factores pertinentes (véase infra el punto «Relación entre los distintos factores»).
3.2 Los factores específicos de la similitud
Las siguientes secciones definen e ilustran los diversos factores relacionados con la similitud entre los productos y servicios.
3.2.1 Naturaleza
La naturaleza de un producto o servicio puede definirse como las cualidades o características esenciales por las que el producto o servicio es reconocido. La naturaleza suele corresponder a una clase o tipo determinado de producto o servicio o categoría específica a la que pertenece dicho producto o servicio y que se emplea habitualmente para definirlo. Dicho de otro modo, es la respuesta a la pregunta: «¿Qué es esto?»
Ejemplos
Yogur es un producto lácteo. Automóvil es un vehículo. Loción corporal es un cosmético.
3.2.1.1 Valor indicativo de los títulos de clase y las categorías
El hecho de que los productos y servicios a comparar estén comprendidos en la misma indicación general de un título de clase o de una categoría más general no significa automáticamente que tengan la misma naturaleza. Un ejemplo de categoría amplia es alimentos para consumo humano.
Ejemplos
Por un lado fruta fresca (clase 31) y café, harina y pan (clase 30), por el otro, tienen distinta naturaleza a pesar de ser alimentos.
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Carne, pescado, aves y caza (clase 29) son alimentos de origen animal. Frutas y verduras (clase 31) son alimentos de origen vegetal. Esta ligera conexión, en concreto, que sean alimentos no excluye su diferente naturaleza.
El hecho de que los productos y servicios a comparar estén comprendidos en una indicación general de un título de clase que sea lo suficientemente restringida aboga en favor de la identidad o similitud de la naturaleza.
Ejemplo
Leche condensada y queso (ambos en clase 29) comparten la misma naturaleza porque pertenecen a la misma familia de productos, a saber, a productos lácteos, que es una subcategoría de alimentos (véase la sentencia de 04/11/2003, T-85/02, «Castillo», apartado 33)
3.2.1.2 Propiedades de los productos que definen su naturaleza
El que los productos en cuestión posean diversas propiedades puede resultar de utilidad para determinar su naturaleza, entre las que se incluyen las siguientes.
Composición: p. ej., ingredientes, materiales de que están constituidos los productos.
Ejemplo
Yogur (clase 29) es un producto lácteo (la naturaleza del yogur puede definirse a través de su ingrediente básico).
La composición puede ser el criterio más pertinente para definir la naturaleza. Sin embargo, una composición idéntica o similar de los productos no constituye por sí misma un indicador de que éstos posean la misma naturaleza.
Ejemplo
Silla (clase 20) y muñeca (clase 28) pueden estar hechas de plástico, pero no tienen la misma naturaleza, ya que una es un mueble y otra es un juguete, por lo que pertenecen a categorías diferentes.
Principio de funcionamiento: p. ej., el funcionamiento mecánico, con o sin motor, el funcionamiento óptico, eléctrico, biológico, o químico.
Ejemplo
Telescopio (clase 9) es un dispositivo óptico (la naturaleza de un telescopio puede definirse mediante su principio de funcionamiento que es óptico).
Aunque el principio de funcionamiento puede ayudar a definir la naturaleza de algunos productos, no siempre reviste un carácter concluyente. Hay casos en que los
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productos, en especial si están relacionados con la tecnología, aun teniendo el mismo principio de funcionamiento tienen una naturaleza distinta.
Ejemplo
Batidora y cepillo eléctrico tienen el mismo principio de funcionamiento de
rotación, aunque no tienen la misma naturaleza.
En cambio, hay productos con principios de funcionamiento diferentes, pero con la misma naturaleza.
Ejemplo
El principio de funcionamiento de lavadoras que utilizan detergente en polvo es
químico, lo que no es lo mismo que el principio de funcionamiento de lavadoras
que lavan con ondas magnéticas. Sin embargo, estos productos tienen la misma
naturaleza, ya que ambos son lavadoras.
Estado físico: p. ej., líquido/sólido, duro/blando, flexible/rígido
El estado físico es otra propiedad de los productos que puede utilizarse para definir la naturaleza, aunque, como ocurría con el principio de funcionamiento, no es un rasgo concluyente.
Ejemplos
Todas las bebidas son líquidas. Tienen una naturaleza distinta a la de los alimentos sólidos. No obstante, al comparar dos bebidas diferentes, su estado físico no debe ser concluyente: leche (clase 29) no tiene la misma naturaleza que una bebida alcohólica (clase 33).
Yogur se comercializa tanto de forma sólida como líquida. No obstante, la naturaleza de este producto no está definida por su estado físico, sino, como ya se ha mencionado, por su ingrediente básico (la leche). En ambos casos, la naturaleza de un yogur sólido y la de un yogur líquido es la misma (un producto lácteo).
3.2.1.3 Naturaleza de los servicios
Al definir la naturaleza de los servicios no pueden utilizarse las propiedades (composición, principio de funcionamiento, estado físico), ya que los servicios son intangibles.
La naturaleza de los servicios puede definirse, en especial, por el tipo de actividad que se ofrece a terceros. En la mayoría de casos, es la categoría, en la que está incluida el servicio, la que define su naturaleza.
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Ejemplo
Servicios de taxi (clase 39) tienen la misma naturaleza que servicios de autobús (clase 39), ya que ambos son servicios de transporte.
3.2.1.4 Naturaleza de los productos frente a la naturaleza de los servicios
Por su propia naturaleza los productos suelen no ser similares a los servicios. Esto obedece a que los productos son artículos de comercio, mercancías o inmuebles. Su venta implica normalmente la transmisión de la propiedad de un objeto físico, es decir, un mueble o un inmueble. En cambio, los servicios consisten en la realización de actividades intangibles.
3.2.2 Destino
El destino se suele definir como el motivo para lo que se hace o se crea un objeto, o para lo que existe un objeto (traducción del Oxford Dictionary Online).
Como factor establecido en la sentencia «Canon», el destino es el uso previsto para los productos y servicios, y no cualquier otro uso.
Ejemplo
Bolsa de plástico puede utilizarse como protección contra la lluvia. Sin embargo,
su destino es llevar objetos.
El destino se define por la función de los productos y servicios, dicho de otro modo, responde a las preguntas: «¿Qué necesidad satisfacen estos productos y servicios? ¿Qué problema solucionan?»
En ocasiones, es difícil definir el nivel de abstracción que resulta apropiado para determinar el destino. Como ocurre en la definición de la naturaleza, el destino debe definirse de un modo lo suficientemente restringido.
Ejemplo
En el caso de vinagre, el destino no debe definirse como «consumo humano» (que es el destino general que comparten todos los alimentos), sino como «aderezo corriente».
3.2.3 Utilización
La utilización determina la forma en que los productos y servicios se utilizan para alcanzar su destino.
La pregunta que cabe formular es: «¿Cómo se utilizan los productos y servicios?»
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A menudo la utilización se deduce directamente de la naturaleza y/o del destino de los productos y servicios y, por lo tanto, tiene poca o ninguna importancia por sí misma en el análisis de la similitud.
Ejemplo
La utilización de los periódicos y los libros es la misma en el sentido de que los dos se utilizan para leer. Sin embargo, puede concluirse que existe similitud basándose en el hecho de que ambos son artículos de imprenta (misma naturaleza) y de que ambos tienen como fin entretener o informar (mismo destino).
No obstante lo anterior, la utilización puede ser importante, con independencia de la naturaleza y el destino, cuando caracteriza los productos:
Ejemplo
Productos farmacéuticos para el tratamiento de enfermedades de la piel de la clase 5 pueden adoptar la forma de cremas. Tienen la misma utilización que cremas cosméticas de la clase 3.
Con todo, incluso cuando la utilización caracterice los productos objeto de comparación y sea idéntica para ambos productos, este hecho por sí solo no será suficiente para determinar la similitud.
Ejemplo
Chicle (clase 30) y tabaco de mascar (clase 34) tienen una utilización idéntica, aunque este solo hecho no los convierte en similares.
3.2.4 Carácter complementario
Los productos (o servicios) son complementarios cuando existe una estrecha conexión entre ellos, en el sentido de que uno es indispensable (esencial) o importante (significativo) para el uso del otro, de manera que los consumidores podrían pensar que la responsabilidad de la producción de tales productos o la prestación de tales servicios la tiene la misma empresa (véase la sentencia de 11/05/2011,, T-74/10, «Flaco», apartado 40; la sentencia de 21/11/2012, T-558/11, «Artis», apartado 25, y la sentencia de 04/02/2013, T-504/11, «Dignitude», apartado 44).
La relación complementaria entre los productos y servicios puede ser, por ejemplo, funcional.
Ejemplo
Alojamiento de sitios de Internet (clase 42) no puede existir sin servicios de programación para ordenadores (clase 42). Hay una relación complementaria entre estos servicios que, por su naturaleza, pertenecen al ámbito de la tecnología de la información. Además, están dirigidos al mismo público y utilizan
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los mismos canales de distribución. En consecuencia, son similares (véase la sentencia de 29/09/2011, T-150/10, «Loopia», apartados 36 y 43).
Por definición, los productos destinados a públicos distintos no pueden ser complementarios (véase la sentencia de 22/06/2011, T-76/09, «FARMA MUNDI FARMACEUTICOS MUNDI», apartado 30; y la sentencia de 12/07/2012, T-361/11, «Dolphin», apartado 48). Véase también el apartado 3.3.1, Interrelación entre los factores.
Ejemplo
Productos textiles (clase 24) dirigidos al público en general, y servicios relacionados con el tratamiento de los productos textiles (clase 40), destinados a profesionales, no pueden ser complementarios (véase la sentencia de 16/05/2013, T-80/11, «Ridge Wood», apartados 28 a 32). Estos productos y servicios no son similares.
El grado de complementariedad no es concluyente por sí solo para encontrar una similitud entre los productos y/o los servicios. Aunque puede haber cierto grado de complementariedad, los productos y/o servicios son diferentes.
Ejemplo
Hay un grado de complementariedad entre vino (clase 33) y copas de vino (clase 21) en la medida en que éstas sirven para beber vino. No obstante, la complementariedad no es lo suficientemente marcada como para concluir que son similares. Además, estos productos no tienen la misma naturaleza, ni el mismo origen habitual ni suelen compartir canales de distribución (véase la sentencia de 12/07/2007, T-105/05, «Waterford Stellenbosch», apartado 34, confirmada por la sentencia de 07/05/2009, C-398/07 P, «Waterford Stellenbosch», apartado 45).
Sin embargo, si se ha identificado complementariedad entre los productos y servicios, junto con otros factores, como «origen habitual» y/o «canal de distribución», puede considerarse que existe similitud.
Ejemplos
Esquís (clase 28) y botas de esquí (clase 25) son complementarios, porque los unos resultan indispensables para utilizar los otros. El público destinatario podrá pensar que dichos productos proceden de la misma empresa. Además, comparten el mismo público destinatario y los canales de distribución, por lo que estos productos se consideran similares.
Material de enseñanza de la clase 16 (como artículos de imprenta, soportes de datos pregrabados y casetes vídeos y sonoros) resulta fundamental y, por lo tanto, complementario a cursos de educación de la clase 41. En general, el
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material lo publica la misma empresa; comparten el mismo público destinatario y los canales de distribución. Estos productos son similares a los servicios en cuestión (véase, por ejemplo, la sentencia de 23/10/2002, T-388/00, «ELS»).
Servicios de arquitectos (diseño de edificios) (clase 42) son indispensables para construcción de edificios (clase 37). Estos servicios se suelen ofrecer juntos a través de los mismos canales de distribución, los mismos proveedores y el mismo público destinatario. Por consiguiente, estos servicios son complementarios y similares (véase la sentencia de 09/04/2014, T-144/12 «Comsa», apartados 65 a 67).
3.2.4.1 Uso conjunto: no complementario
La complementariedad debe diferenciarse de forma clara del uso conjunto cuando los productos y servicios simplemente se emplean juntos, ya sea por elección o conveniencia (p. ej., pan y mantequilla), lo cual significa que no son esenciales entre sí (véase la resolución de 16/12/2013, R 634/2013-4, «ST LAB», apartado 20). En dichos casos, la similitud sólo puede apreciarse atendiendo a otros factores, pero no al carácter complementario.
Ejemplo
Aunque el funcionamiento de las correas de transmisión (clase 12) puede medirse con ayuda de un dispositivo para pruebas de vehículos de motor (clase 9), no significa que los productos sean complementarios. Tal vez sea conveniente en ciertos casos medir el rendimiento de un parámetro o del otro, pero la mera conveniencia no es suficiente para determinar que uno de los productos es indispensable para el otro (véase la resolución de 03/10/2013, R 1011/2012-4, «SUN», apartado 39).
El Tribunal determinó que ciertos productos, que se suelen coordinar entre sí aunque no estén comprendidos en el alcance de otros factores de similitud, poseen una «complementariedad estética» (véase la sentencia de 01/03/2005, T-169/03, «SISSI ROSSI», apartado 62; sentencias de 11/07/2007, T-150/04, «TOSCA BLU», apartados 35 a 39 y T-443/05, «PiraÑAM», apartados 49 a 50; sentencia de 20/10/2011, T-214/09, «COR», apartados 32 a 37). Esta relación entre los productos está comprendida en la definición existente de complementariedad.
Ejemplo
Bolsos de mano (clase 18) y prendas de vestir (clase 25) están estrechamente relacionados, aunque no son complementarios, ya que uno no es esencial para el uso del otro, sino que simplemente se suelen utilizar combinados. Sin embargo, son similares, ya que cabe la posibilidad de que sean distribuidos por las mismas empresas o empresas relacionadas, compradas por el mismo público y estos productos pueden hallarse en las mismas tiendas.
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3.2.4.2 Productos y servicios accesorios: no complementarios
Si determinados productos y/o servicios solo apoyan o complementan a otro producto o servicio, no se consideran complementarios con arreglo al significado de la jurisprudencia. Los productos accesorios se utilizan típicamente para los envases (p. ej., botellas, cajas, latas, etc.) o para la promoción (p. ej., folletos, carteles, listas de precios, etc.). De igual modo, los productos y servicios ofrecidos gratuitamente durante una campaña de «merchandising» no suelen ser similares al producto o servicio principal.
Ejemplos
Organización y realización de exposiciones no es similar a productos de imprenta, incluidas notas de eventos (clase 16), ya que estos productos solo sirven para promover y anunciar el evento específico. Estos productos y servicios no son complementarios.
Los suplementos dietéticos de hierbas (clase 5) no son indispensables o importantes para el uso de cervezas, agua mineral y gaseosa y otras bebidas no alcohólicas, bebidas de frutas y zumos de frutas, siropes y otros preparados para
la elaboración de bebidas de la clase 32. El consumo de estos productos combinados es meramente secundario. En consecuencia, no son productos complementarios. Además, dado que su finalidad, canales de distribución y productores habituales son diferentes y no son competidores entre sí, no son similares (véase la sentencia de 23/01/2014, T-221/12, «Sun Fresh», apartado 84).
3.2.4.3 Materias primas: no complementarias
Por último, si los productos afectan a materias primas, el criterio de complementariedad no es aplicable en el análisis de la similitud.
Las materias primas como elemento básico con una importancia significativa de un producto final pueden considerarse similares a dicho producto, aunque no solo atendiendo a la complementariedad (véase también Anexo I, puntos 1 y 2, y Anexo II, puntos 5.1 y 5.2).
Ejemplo
Leche (clase 29) y queso (clase 29) no son similares atendiendo a la complementariedad, aunque la leche es la materia prima para hacer queso. La similitud debe considerarse, sin embargo, atendiendo al hecho de que ambos comparten la misma naturaleza, canales de distribución, público destinatario y productor.
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3.2.5 Carácter competidor
Los productos y servicios son competidores cuando uno puede sustituir al otro, lo cual implica que tienen un destino igual o similar así como los mismos clientes reales y potenciales. En tal caso, los productos y servicios así definidos pueden ser «intercambiables» (véase la sentencia de 04/02/2013, T-504/11, «DIGNITUDE», apartado 42)
Ejemplos
Papeles pintados (clase 27) y pinturas (clase 2) son productos competidores, porque ambos cubren o decoran las paredes.
Alquiler de películas (clase 41) y servicios de cine (clase 41) son servicios competidores, porque ambos ofrecen el visionado de películas.
Los productos y/o servicios que son competidores entre sí están con frecuencia en la misma franja de precios o su precio general no difiere sustancialmente si se calcula correctamente.
Ejemplo
Máquinas de afeitar eléctricas y cuchillas de afeitar (ambas en clase 8) son productos competidores, porque tienen el mismo destino. Teniendo en cuenta el tiempo de vida de una máquina de afeitar eléctrica, podría ser globalmente más barata que el número de cuchillas de afeitar que se necesitan para sustituirla. La diferencia de precio inicial se compensa con una mayor duración.
Sin embargo, en algunos casos, el precio de los productos y servicios competidores puede diferir de forma significativa.
Ejemplo
Joyería de oro y bisutería de moda (ambas en clase 14) son productos competidores, aunque su precio (y valor) pueda ser muy diferente.
3.2.6 Canal de distribución
Aunque la sentencia del asunto «Canon» no menciona explícitamente el «canal de distribución», este elemento es ampliamente utilizado a escala nacional e internacional a la hora de apreciar si dos productos o servicios son similares. Diversas sentencias de los tribunales europeos (véase, entre otros, la sentencia de 21/04/2005, T-164/03, «monBeBé», apartado 53) lo han tenido cuenta como factor adicional, por los motivos que se exponen a continuación.
Si los productos y servicios se distribuyen a través de los mismos canales, es más probable que el consumidor suponga que los productos o servicios pertenecen al
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mismo sector del mercado y que pueden ser fabricados por la misma empresa y viceversa.
El término «canal de distribución» no se refiere tanto a la forma de venta o promoción del producto de una empresa, sino más bien al lugar de distribución. Para el análisis de la similitud de los productos y servicios, el sistema de distribución (ya sea directo o indirecto) no tiene una importancia decisiva, sino que la pregunta que cabe formularse es:
«¿Tienen los productos o servicios los mismos puntos de venta o normalmente se suministran y ofrecen en los mismos lugares o en lugares similares?»
No debe ponerse, sin embargo, demasiado énfasis en este factor, pues los modernos supermercados, drugstores y grandes almacenes venden productos de todas clases. El público destinatario es consciente de que los productos vendidos en estos lugares proceden de muchas empresas independientes. En consecuencia, el punto de venta es menos decisivo a la hora de decidir si el público destinatario considera que los productos poseen un origen común por el mero hecho de que se venden en el mismo punto de venta.
Sólo cuando los productos en cuestión se ofrezcan en la misma sección de dichas tiendas, en las que se venden juntos productos homogéneos, existirá un factor a favor de la similitud. En tales casos debe poderse identificar la sección mediante la separación territorial y funcional de otras secciones (p. ej., la sección de lácteos de un supermercado, la sección de cosméticos en un gran almacén).
De igual modo, este factor puede ser válido cuando los productos se venden exclusiva o habitualmente en establecimientos especializados. En tal caso, los consumidores pueden inclinarse a creer que los productos tienen un origen común si ambos se venden en las mismas tiendas especializadas y a negarles ese origen común en caso de que no suelan venderse en las mismas tiendas.
Y a la inversa, diferentes puntos de venta pueden abogar en contra de la similitud de los productos.
Ejemplo
Sillas de ruedas frente a bicicletas:
Aunque ambos están comprendidos en vehículos de la clase 12, estos productos no se encuentran en los mismos puntos de venta. Bicicletas se suelen vender en tiendas especiales para bicicletas o en establecimientos de venta al por menor de material de deporte. En cambio, los canales de distribución de las sillas de ruedas son distribuidores especializados de equipos y aparatos médicos que suministran a hospitales y tiendas especializadas que venden aparatos para personas con discapacidades físicas.
3.2.7 Público destinatario
El público destinatario, es decir, los clientes reales y potenciales de los productos y servicios en litigio, constituye otro factor que debe tenerse en cuenta en el análisis de
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la similitud (véanse las Directrices, Parte C, Capítulo 2, Sección 6, Público destinatario y grado de atención).
El público destinatario puede estar compuesto por:
el público en general; o el público profesional (clientes profesionales o público especializado).
No necesariamente tiene que significar el usuario final, p. ej., los usuarios finales de la comida para animales de la clase 31 son los animales, no el público destinatario. En este caso, el público destinatario serían los consumidores en general.
El simple hecho de que los clientes potenciales coincidan no supone automáticamente un indicio de similitud. El mismo grupo de clientes puede necesitar productos o servicios de muy distinto origen y naturaleza. El hecho de que, por ejemplo, los aparatos de televisión, los automóviles y los libros sean adquiridos por el mismo público destinatario, a saber, el gran público, carece de incidencia en el análisis de la similitud. En muchos casos, uno o ambos tipos de productos o servicios que se comparan están destinados al gran público, pero el destino (la necesidad satisfecha de los consumidores) en cada caso es diferente. Estas circunstancias abogan en contra de la similitud.
Si bien la coincidencia del público pertinente no es necesariamente un indicio de similitud, la amplia divergencia de públicos aboga claramente en contra de la similitud.
Una divergencia de consumidores puede darse en los casos en que:
a) los productos y servicios de ambas listas están destinados al gran público que pueden clasificarse, en cambio, por sus distintas necesidades (personales), edades, etc.
Ejemplo: sillas de ruedas frente a bicicletas (clase 12).
b) los productos y servicios de ambas listas están destinados a clientes profesionales que actúan, en cambio, en un sector del mercado muy distinto.
Ejemplo: productos químicos utilizados en silvicultura frente a disolventes para su uso en la industria de las lacas (clase 1).
c) un público destinatario está compuesto por consumidores en general y el otro por clientes profesionales.
Ejemplo: estuches para lentes de contacto (clase 9) frente a aparatos e instrumentos quirúrgicos (clase 10).
3.2.8 Origen habitual (productor / proveedor)
Aunque el Tribunal de Justicia no se ha referido expresamente a este factor en la sentencia «Canon», del concepto general de riesgo de confusión se deriva que el origen habitual de los productos y servicios reviste una especial importancia para el
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análisis de la similitud. Como el Tribunal ha declarado «constituye un riesgo de confusión […] el riesgo de que el público pueda creer que los correspondientes productos o servicios proceden de la misma empresa o, en su caso, de empresas vinculadas económicamente» (sentencia «Canon», apartado 29). Por lo tanto, constituye un fuerte indicio de similitud el que, según la percepción del público destinatario, los productos y servicios posean habitualmente el mismo origen.
Sin embargo, esto no debería malinterpretarse en el sentido de invertir el examen del riesgo de confusión y de similitud de los productos y servicios: establecer un riesgo de confusión depende de muchos otros factores (como la similitud de los signos, el carácter distintivo de la marca anterior) y no viene determinado exclusivamente por el origen habitual que como tal es sólo un factor del análisis de la similitud entre los productos y servicios.
La conclusión de que los consumidores no se confundirán sobre el origen de los productos y servicios no es un argumento adecuado para comparar los productos y servicios. Lo anterior también debería quedar recogido en la apreciación global del riesgo de confusión. El origen, en este contexto, hace referencia principalmente al sector de fabricación (industria) o al tipo de empresa que fabrica los productos u ofrece los servicios en cuestión en lugar de a la identidad del productor.
El «origen» no se define simplemente por el lugar real de producción/prestación (p. ej., fábrica, taller, instituto y laboratorio), sino principalmente teniendo en cuenta quién dirige y/o controla la producción/prestación de los productos o servicios. Dicho de otro modo, la pregunta que cabe formular es: «¿quién es el responsable de fabricar el producto o de prestar el servicio?»
El origen geográfico (p. ej., China) no es pertinente para apreciar la similitud entre los productos y servicios.
En la sentencia del asunto «ELS», el Tribunal declaró que incluso los productos y servicios pueden poseer el mismo origen si es común que el mismo tipo de empresa sea responsable de la producción/prestación de ambos. Se consideró que libros de texto educativos (clase 16) poseían el mismo origen que cursos por correspondencia (clase 41), ya que «las empresas que ofrecen cursos de todo orden dan a menudo a sus alumnos los citados productos, como material pedagógico de apoyo» (sentencia de 23/10/2002, T-388/00, «ELS», apartado 55).
El criterio «origen habitual» debe aplicarse de forma restrictiva para evitar que quede diluido. Si se considera que todos los productos y servicios de una gran empresa o holding (multinacional) tienen el mismo origen, este factor perdería su importancia.
Ejemplo
Cosméticos (clase 3) y alimentos (clases 29 a 31) pueden producirse bajo el paraguas de una empresa, pero esto no refleja un uso comercial común con arreglo al cual estos tipos de productos deban tener productores distintos, dado que cada uno pertenece a un sector industrial específico.
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3.2.8.1 Propiedades que definen un origen común
A la hora de determinar el origen habitual de un producto o servicio, pueden ser pertinentes las siguientes propiedades.
Lugares de producción
Ejemplo
Barnices, lacas, materias tintóreas y mordientes (clase 2) suelen fabricarse en las mismas empresas, normalmente empresas químicas especializadas.
El lugar de producción puede ser un indicio serio de que los productos o servicios en cuestión proceden de la misma fuente. Sin embargo, mientras la identidad del lugar de producción es un indicio de origen habitual común, la fabricación en lugares distintos no excluye que los productos procedan de la misma empresa o de empresas vinculadas económicamente. Por ejemplo, libros (clase 16) y soportes electrónicos (clase 9) (productos competidores, los soportes electrónicos sustituyen a los libros) son ambos productos de una editorial.
Métodos de fabricación
Ejemplo
Cinturones de cuero (clase 25) y bolsos de cuero (clase 18) no solo se fabrican en los mismos lugares, p. ej., los talleres del cuero, sino que también se utilizan las mismas herramientas y máquinas para el tratamiento del cuero.
Conocimientos (técnicos)
Ejemplo
Servicios de protección informática antivirus (clase 42) y diseño de software (clase 42) implican unos conocimientos técnicos en el ámbito de la tecnología de la información.
Uso comercial arraigado conocido por el público
Un uso comercial arraigado, como cuando los productores amplían su actividad a mercados adyacentes, resulta de especial importancia para llegar a la conclusión de que los productos y servicios de distinta naturaleza poseen el mismo origen. En estos supuestos es necesario determinar si tal ampliación es corriente en la industria o, por el contrario, si sólo puede darse en casos excepcionales.
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Ejemplo en el cual la ampliación ha devenido habitual
Zapatos (clase 25) y bolsos (clase 18): Es corriente en el mercado que los productores de zapatos con frecuencia participen también en la fabricación de bolsos.
Ejemplo en el cual la ampliación (todavía) no es habitual
Ropa (clase 25) y perfumes (clase 3): Aunque algunos diseñadores de moda también venden perfumes al amparo de sus marcas, ésta no es la norma general en la industria de la confección, sino que más bien es una práctica de los diseñadores de éxito (desde el punto de vista económico).
3.3 Relación entre los distintos factores
Los criterios del asunto «Canon» fueron enumerados en la correspondiente sentencia sin que la misma estableciera una jerarquía (relevancia) entre ellos ni indicara la relación entre los mismos, sino que fueron considerados uno por uno. Sin embargo, estos criterios no pueden considerarse de manera independiente, ya que algunos de ellos están interrelacionados y algunos criterios son más importantes que otros, con independencia de que se comparen productos con productos, servicios con servicios y productos con servicios. Como resultado de la ponderación de estos factores con arreglo a su correspondiente importancia respecto de los productos y servicios en cuestión, la similitud podrá diferir en el grado (véase el apartado 3.3.4 infra).
3.3.1 Interrelación entre los factores
Procede señalar que, en muchos casos, los vínculos se solaparán en el sentido de que cuando concurra uno de los factores otro también lo hará.
Ejemplos
Basándose en el destino, es posible determinar quiénes son los clientes reales y potenciales, es decir, el público destinatario.
El destino, junto con el público destinatario, también puede revelar si los productos y servicios son competidores.
El mismo canal de distribución va acompañado del mismo público. Dicho de otro modo, cuando los canales de distribución son diferentes, el público también puede ser distinto.
Los productos y servicios destinados a distintos públicos pueden no ser complementarios (véase la sentencia de 11/05/2011, T-74/10, «FLACO»,
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apartado 40; y la sentencia de 22/06/2011, T-76/09, «FARMA MUNDI FARMACEUTICOS MUNDI», apartado 30).
La utilización suele depender de la naturaleza y del destino de los productos.
En ciertos supuestos será difícil establecer una distinción entre los diversos factores. Lo anterior es, en especial, cierto en lo que a la «naturaleza», el «destino» y la «utilización» se refiere. Cuando el examinador se enfrenta a tales dificultades, será suficiente abordar estos factores de forma conjunta.
Ejemplo
Motor es una máquina que transforma cualquiera de las diversas formas de energía en fuerza y movimiento mecánicos. En tal caso, resulta difícil diferenciar la naturaleza del destino de dicho producto, por lo que no es necesaria una distinción entre lo que (en este caso) es naturaleza y lo que es finalidad.
3.3.2 La importancia de cada factor
Al apreciar la similitud de los productos y servicios, deben tenerse en cuenta todos los factores pertinentes que caracterizan la relación entre los productos y servicios. Sin embargo, en función del tipo de productos y servicios un criterio determinado puede resultar más o menos importante. Dicho de otro modo, los diversos criterios no tienen un valor estándar sino que su importancia específica deberá determinarse en el contexto de cada caso.
En términos generales, la importancia de cada factor dependerá de la influencia que pueda tener sobre un posible riesgo de confusión del origen. Los criterios que sugieran de forma clara que los productos o servicios proceden o no proceden de la misma empresa o de empresas vinculadas económicamente deben tener prioridad respecto de los factores que sólo parecen revestir una importancia secundaria.
Factores generalmente considerados importantes
el origen habitual (porque tiene una fuerte influencia en el riesgo de confusión) el destino (porque es decisivo para la elección del cliente que compra o
selecciona los productos y servicios) la naturaleza (porque define las cualidades y características esenciales de los
productos y servicios) el carácter complementario (porque la estrecha relación entre el uso de los
productos y servicios hace que el público crea que tienen el mismo origen) el carácter competidor (normalmente los productos y servicios que son
competidores tienen el mismo destino y están dirigidos al mismo público).
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Factores considerados menos importantes
la utilización (incluso los productos distintos pueden utilizarse del mismo modo, p.ej., cochecitos de bebés y carritos de la compra);
los canales de distribución [incluso los productos distintos pueden venderse en la misma sección de las tiendas en función de las distintas prácticas de exposición, p. ej., chicles (clase 30) y cigarrillos (clase 34)];
el público destinatario (en especial cuando los productos y servicios están destinados al público general).
3.3.3 Los diferentes tipos de comparación: productos frente a productos, servicios frente a servicios y productos frente a servicios
En principio, en la comparación de productos con productos se aplican los mismos factores que en la comparación de servicios con servicios. Con todo, al aplicar estos factores, debe tenerse en cuenta la principal diferencia entre productos y servicios (tangibles frente a intangibles).
Asimismo, en la comparación entre productos y servicios son válidos los mismos principios que se aplican en la comparación de productos con productos y de servicios con servicios.
Por su propia naturaleza los productos suelen no ser similares a los servicios. No obstante, pueden ser complementarios. Los servicios pueden también tener el mismo destino que los productos y, por lo tanto, ser competidores de los mismos. De lo que antecede se deduce que, en determinadas circunstancias, puede declararse la similitud entre productos y servicios.
3.3.4 Grado de similitud
Los productos y/o servicios pueden ser similares en distintos grados (bajo, medio, elevado) en función de cuántos factores compartan y la importancia atribuida a cada uno de ellos. El grado de similitud entre los productos y servicios es importante a la hora de decidir sobre el riesgo de confusión.
Por lo general, un solo factor no resulta suficiente para determinar un grado de similitud bajo entre los productos y servicios, incluso si se trata de un factor que se considera importante.
Ejemplos de diferenciación
Automóviles y bicicletas (ambos en clase 12) comparten el mismo destino (trasladar una persona del lugar A al lugar B), pero esto no los convierte en similares.
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Aunque cristales para ventanas (clase 19) y cristales de gafas (clase 9) tienen la misma naturaleza, no son similares, ya que no coinciden en otros factores relevantes, como el destino, el productor, el canal de distribución y el público destinatario.
Es la combinación de diversos factores y la importancia de los mismos los que permitirán alcanzar una conclusión final sobre la similitud. La combinación de dos factores considerados importantes, como la naturaleza y el productor, o la combinación de un factor importante y dos menos importantes con frecuencia conduce a establecer la similitud. Por el contrario, la combinación de dos factores débiles, como el canal de distribución y el público destinatario, en principio no resultan concluyentes para apreciar similitud entre los productos y servicios.
Ejemplos de similitud
Leche y queso (ambos en clase 29) tienen un destino y una utilización distintos, no son competidores ni complementarios. Sin embargo, el hecho de que tengan la misma naturaleza (productos lácteos) y un origen habitual (empresa láctea) resulta decisivo para apreciar similitud.
Productos farmacéuticos y emplastos (ambos en clase 5) tienen distinta naturaleza, poseen un destino similar, es decir, la cura de las enfermedades, discapacidades o lesiones. Asimismo, tienen los mismos canales de distribución y público destinatario, por lo que son similares.
La cantidad de factores que coinciden junto con su importancia/relevancia es lo que establece el grado de similitud. Hablando en términos generales, cuanto mayor sea el número de factores comunes, mayor será el grado de similitud. La similitud que se ha apreciado atendiendo sólo a dos factores generalmente no será elevado, al contrario de lo que ocurre en los casos en que los productos y servicios coinciden en cuatro o más factores importantes.
Sin embargo, no se trata de un análisis matemático, ya que siempre depende de las circunstancias específicas de cada caso.
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Anexo I
Cuestiones específicas en relación con la similitud de los productos y servicios
Esta parte no establece nuevos criterios de apreciación de la similitud de los productos y servicios, sino que simplemente ayuda a aclarar la forma de comparar grupos específicos de productos y servicios a los que, además de los criterios del asunto «Canon», se les aplica algunas normas y excepciones generales.
1 Partes, componentes y piezas
El solo hecho de que un producto determinado pueda tener varios componentes no implica automáticamente que exista similitud entre el producto acabado y sus piezas (véase la sentencia de 27/10/2005, T-336/03, «MOBILIX», apartado 61).
Ejemplos de diferenciación
Aspas de ventilador (clase 7) y secador de pelo (clase 11) Cable eléctrico (clase 9) y lámpara (clase 11) Botones (clase 26) y prendas de vestir (clase 25)
La similitud únicamente se establecerá en casos excepcionales y exige que se cumpla al menos algunos de los principales factores para apreciar la similitud, como el producto, el público y/o el carácter complementario.
Dicha excepción se basa en el hecho de que las partes y piezas sean fabricadas y/o vendidas por la misma empresa que fabrica el producto final y vayan destinadas al mismo grupo de consumidores, como es el caso de las piezas de recambio. Dependiendo del producto de que se trate, el público puede esperar también que el componente se fabrique por el fabricante «original» o bajo el control de éste, lo que constituye un indicio de que los productos son similares.
Por regla general, en cada caso concreto pueden ser significativos diversos factores. Por ejemplo, el hecho de que el componente también se venda de forma independiente, o que sea de particular importancia para el funcionamiento de la máquina, aboga en favor de la similitud.
Ejemplos de similitud
Cepillos de dientes eléctrico (clase 21) y cabezales de cepillos de repuesto (clase 21)
Impresoras (clase 9) y cartuchos de chorro de tinta (clase 2) Máquinas de coser (clase 7) y pies para máquinas de coser (clase 7)
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2 Materias primas y alimentos semielaborados
En relación con las materias primas y los alimentos semielaborados se sigue un enfoque similar, por un lado, y los productos acabados, por el otro.
En la mayoría de los casos el mero hecho de que un producto sea utilizado para la fabricación de otro producto no será suficiente para determinar la similitud de los productos, ya que su naturaleza, su destino, su público destinatario y sus canales de distribución pueden ser bastante distintos (véase la sentencia de 13/04/2011, T-98/09, «T TUMESA TUBOS DEL MEDITERRANEO S.A.», apartado 49 a 51). Por lo general, las materias primas están destinadas a su uso en la industria más que a su adquisición directa por el consumidor final.
Ejemplos de diferenciación
Cuero, pieles de animales (clase 18) y prendas de vestir (clase 25) Metales preciosos (clase 14) y joyería (clase 14)
No obstante, la conclusión final puede depender de las circunstancias específicas del asunto, tales como el grado de transformación de la materia prima o si ésta es el componente básico del producto final. Cuanto mayor sea la importancia de la materia prima para el producto final, mayor será la probabilidad de similitud entre los productos. Por consiguiente, la similitud podría establecerse cuando la materia prima o el alimento semielaborado pueda ser decisivo para la forma, el carácter, la calidad o el valor del producto acabado. En estos casos, la materia prima con frecuencia puede obtenerse de forma separada del producto acabado a través de los mismos canales de distribución.
Ejemplo de similitud
Piedras preciosas (clase 14) y joyería (clase 14). Al contrario de los metales preciosos, las piedras preciosas pueden obtenerse en las tiendas de joyería, de forma independiente del producto final.
Una subcategoría de las materias primas son los ingredientes utilizados para la elaboración de alimentos (véase infra el punto «Ingredientes»).
3 Accesorios
Un accesorio es algo extra que mejora o completa el producto principal al que se añade. A diferencia de las partes, componentes y piezas, un accesorio no constituye una parte integral del producto principal aunque normalmente se utiliza en estrecha relación. Un accesorio normalmente tiene un destino técnico o decorativo útil.
Las normas respecto de las partes, componentes y piezas se aplican también, en cierta medida, a los accesorios. El mero hecho de que un determinado producto se utilice junto con otro producto no dará lugar necesariamente a una declaración de similitud.
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Ejemplos de diferenciación
Prendas de vestir (clase 25) y adornos para el cabello (clase 26) Parasoles para automóviles (clase 12) y vehículos (clase 12)
No obstante, es algo común que algunos accesorios también hayan sido producidos por el fabricante del producto principal. Por consiguiente, el consumidor puede esperar que el producto principal y los accesorios se fabriquen bajo el control de la misma entidad, en especial cuando se distribuyen a través de los mismos canales comerciales. En dichos casos, existe un fuerte indicio de similitud.
Ejemplos de similitud
Bicicletas (clase 12) y alforjas para bicicletas (clase 12) Gafas (clase 9) y estuches para gafas (clase 9)
4 Servicios de instalación, mantenimiento y reparación
Estos servicios pertenecen a la categoría de servicios relacionados con los productos.
Dado que según su naturaleza los productos y los servicios son distintos, solo puede establecerse la similitud entre los productos y su instalación, mantenimiento y reparación cuando:
en el sector del mercado de referencia fuera frecuente que los fabricantes de los productos prestaran también dichos servicios, y
el público destinatario coincidiera, y la instalación, mantenimiento y reparación de dichos productos se proporcionara
de forma independiente de la compra de los productos (que no sean servicios de postventa).
La instalación de prácticamente todos los productos se clasifica en la clase 37, como por ejemplo instalación de aparatos de acondicionamiento de aire, aparatos eléctricos, ascensores, alarmas de incendio, equipos de congelación, aparatos de cocina y maquinaria. Instalación y reparación de hardware también está en la clase 37, ya que se trata de una actividad de reparación e instalación física. Sin embargo, el servicio instalación y reparación de software está clasificado en la clase 42, ya que implica programación informática sin instalación ni reparación física.
Ejemplos de similitud
Equipo para el tratamiento de la información y ordenadores (clase 9) y la instalación y reparación de aparatos electrónicos (clase 37)
Aparato de aire acondicionado (clase 11) y servicios de instalación, mantenimiento y reparación (clase 37)
Distribuidores automáticos (clase 7) y servicios de mantenimiento (clase 37)
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Ejemplos de diferenciación
Materiales de construcción (clase 19) y servicios de instalación (clase 37) Calzado (clase 25) y reparación de calzado (clase 37) Vehículos (clase 12) y eliminación de abolladuras de vehículos de motor
(clase 37) (véase la sentencia de 15/12/2010, T-451/09, «Wind», apartado 28 a 30)
5 Servicios de asesoramiento
En la 8ª edición de la Clasificación de Niza, los servicios consultas profesionales de la clase 42 fueron suprimidos y desde entonces los servicios de consultoría (así como los servicios de información y asesoramiento) se clasifican en la clase del servicio que corresponde al objeto de la consulta. Por ejemplo, consultoría en relación con el transporte pertenece a la clase 39, asesoramiento en dirección de negocios entra dentro de la clase 35, consultoría financiera se clasifica en la clase 36 y consultoría y asesoramiento en materia de belleza en la clase 44. La prestación de asesoramiento, información o consultoría por medios electrónicos (p. ej., teléfono, ordenador) no afecta a la clasificación de estos servicios.
Los servicios de asesoramiento, consultoría y similares, en principio, son siempre similares a los servicios relacionados.
Ejemplos
Asesoramiento en materia de software informático (clase 42) es similar a instalación y mantenimiento de software (clase 42)
Servicios de información financiera (clase 36) están incluidos en asuntos financieros (clase 36) y, por tanto, son idénticos (véase la sentencia de 27/02/2008, T-325/04, «WORDLINK», apartado 58).
En cuanto a la comparación de los servicios de asesoramiento, consultoría y similares con los productos, puede declararse la similitud en condiciones parecidas a las mencionadas con respecto al mantenimiento, instalación y reparación (véase el punto 4).
Ejemplos de similitud
Servicios de asesoramiento en relación con tecnologías informáticas (hardware y
software) (clase 42) y software informático (clase 9)
Consultoría y asesoramiento en materia de belleza (clase 44) y cosméticos (clase 3)
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Ejemplos de diferenciación
Servicios de información relativos a la compra de artículos de moda (información
de guía de compras) (clase 35) y vestidos, calzado y sombrerería (clase 25), ya que en el mercado no es frecuente que el fabricante de artículos de la clase 25 proporcione dichos servicios de información.
Facilitación de información en materia de esparcimiento (clase 41) y juguetes (clase 28), ya que en el mercado no es frecuente que el fabricante de juguetes de la clase 28 preste dichos servicios de información.
6 Alquiler y leasing
Los servicios de alquiler se clasifican en las mismas clases que el servicio que prestan los objetos arrendados:
alquiler de teléfonos es de la clase 38 porque los servicios de telecomunicaciones están en dicha clase;
alquiler de coches es de la clase 39 porque los servicios de transporte están en dicha clase.
Los servicios de leasing son análogos a los servicios de alquiler y, por lo tanto, se clasifican del mismo modo. No obstante, el leasing o arrendamiento financiero con opción a compra se clasifica en la clase 36 como un servicio financiero.
A partir del presupuesto de que «leasing» en inglés significa «alquiler», estos servicios deben diferenciarse de los servicios financieros. La comparación de los servicios de alquiler y de arrendamiento financiero lleva a la siguiente conclusión.
6.1 Alquiler/arrendamiento financiero frente a los servicios relacionados
Aunque los servicios de alquiler están clasificados en las mismas clases que el servicio que se presta a través de los objetos arrendados, dichos servicios no son automáticamente idénticos al servicio. La comparación entre dichos servicios debe llevarse a cabo aplicando los criterios normales para la identidad y la similitud.
Ejemplos
Existe identidad entre alquiler de pisos (clase 36) y agencias inmobiliarias (clase 36) porque alquiler de pisos está incluido en agencias inmobiliarias.
El mismo razonamiento no puede aplicarse a alquiler de bulldozers (clase 37) y a los servicios relacionados con construcción de edificios (clase 37). Alquiler de bulldozers no está incluido en construcción de edificios y, por lo tanto, estos servicios no se consideran idénticos.
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6.2 Alquiler/arrendamiento financiero frente a los productos: en principio, siempre distintos
Alquiler de vehículos (clase 39) y vehículos (clase 12) Alquiler de películas (clase 41) y DVDs (clase 9)
Existen excepciones en las que es frecuente que el fabricante de los productos también proporcione servicios de alquiler.
Alquiler y arrendamiento de programas informáticos (clase 42) y software (clase 9). Se considera que son escasamente similares.
Alquiler de distribuidores automáticos (clase 35) y distribuidores automáticos (clase 7). Se considera que son escasamente similares.
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Anexo II
Industrias específicas
1 Productos químicos, productos farmacéuticos y cosméticos
1.1 Productos químicos (clase 1) frente a productos químicos (clases 3 y 5)
Aunque la mayoría de las empresas químicas participan normalmente en la producción de todo tipo de productos químicos básicos, productos químicos especiales, productos de ciencias de la vida, incluidos los productos farmacéuticos y pesticidas, así como productos destinados al consumo, como las preparaciones para limpiar y los cosméticos, al comparar estos productos el solo hecho de que su naturaleza coincida, ya que todos ellos pueden clasificarse ampliamente como productos químicos, no es suficiente declarar que son similares. Cabe destacar en particular su destino específico, así como su público y su canal de distribución. Lo que se ha establecido respecto de las materias primas, los productos semielaborados y acabados es aplicable en especial a estos productos. Por consiguiente, aunque los productos de la clase 3 y de la clase 5 normalmente son combinaciones de varios productos químicos, no se consideran similares a los productos incluidos en la clase 1. Su destino como producto acabado suele diferenciarse de los productos de la clase 1 que están principalmente en estado bruto, no acabado y que todavía no se ha mezclado con otros productos químicos y vehículos inertes en un producto final. Los productos acabados de la clase 3 y 5 también suelen estar destinados a un público diferente y no comparten los mismos canales de distribución.
Por otra parte, no puede excluirse que productos como productos químicos utilizados en la agricultura, horticultura y silvicultura requieren pocos procesos de transformación para poder considerarse productos acabados, como los fungicidas. Puede considerarse que tales productos químicos ya comparten el destino inherente con los fungicidas: matar o inhibir los hongos o las esporas de hongos, en particular si contienen el principio activo del fungicida. Además, las mismas empresas (agro)químicas pueden fabricar los productos semielaborados y el producto acabado. En consecuencia, hay un escaso grado de similitud entre los productos químicos utilizados en la agricultura, horticultura y silvicultura y los fungicidas (véase la resolución de 08/10/2012, R 1631/2012-1, «QUALY / QUALIDATE», apartados 27 y 28).
Por otra parte, hay también productos de la clase 1 que no son meros productos químicos, sino productos semielaborados e incluso acabados con una finalidad de uso específica que es un factor importante que ha de tenerse en cuenta al comparar productos de la clase 1 con los de otras clases.
Por ejemplo, abonos de la clase 1, por un lado, y pesticidas, fungicidas y herbicidas de la clase 5, por otro, no son solo productos químicos, sino que también son productos acabados con un uso específico en la industria agrícola. Son similares en su destino, ya que los productos específicos de la clase 5 pueden considerarse que fomentan el
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crecimiento, porque previenen las enfermedades que pueden inhibir el crecimiento vegetal.
1.2 Productos farmacéuticos frente a productos farmacéuticos
Un producto farmacéutico hace referencia a cualquier tipo de medicina, es decir, una sustancia o conjunto de sustancias para tratar o prevenir enfermedades en los seres humanos o en los animales. A partir de su definición, ya puede concluirse que los productos veterinarios – aunque se menciona de forma separada en el título de clase – están incluidos en el término más general de productos farmacéuticos, por lo tanto son idénticos.
Lo mismo es aplicable a las medicinas homeopáticas y a base de plantas, ya que están incluidas en el término más general de productos farmacéuticos.
De igual modo, los productos para ensayo, es decir los reactivos químicos para fines médicos incluso veterinarios, también están comprendidos en la indicación general de productos farmacéuticos.
Los productos farmacéuticos específicos se consideran similares a otros productos farmacéuticos específicos. Esto es así porque, por regla general, se cumplen diversos criterios de similitud, si no todos: comparten la misma naturaleza porque son productos químicos específicos; su destino es, en sentido amplio, sanar y/o curar; se venden en los mismos lugares, en particular, las farmacias; y proceden de la misma fuente, que es la industria farmacéutica. Esta industria fabrica una gran variedad de fármacos con indicaciones terapéuticas distintas; el público general es consciente de ello. Asimismo, su utilización podría ser la misma y podrían ser competidores entre sí (véase la sentencia de 17/11/2005, T-154/03, «ALREX», apartado 48).
Sin embargo, el grado de similitud entre los productos farmacéuticos específicos puede variar en función de las indicaciones terapéuticas específicas.
Ejemplo 1
Productos farmacéuticos para el tratamiento de alergias frente a crema antihistamínica. Estos productos farmacéuticos son muy similares.
Ejemplo 2
Medicamentos antiepilépticos frente a productos farmacéuticos, excepto medicamentos destinados a tratar enfermedades relacionadas con el sistema nervioso central. Estos productos farmacéuticos se consideran similares (véase la sentencia de 24/05/2011, T-161/10, «E-PLEX», apartado 26).
Ejemplo 3
Anticonceptivos frente a colirios. Se considera que estos productos farmacéuticos son escasamente similares. En este sentido cabe señalar que sólo debe establecerse un escaso grado de similitud en casos excepcionales, p. ej., cuando pueda establecerse claramente que tienen indicaciones distintas y diferentes utilizaciones.
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El hecho de que un producto farmacéutico específico se venda con receta no reviste una importancia especial para la comparación de los productos. En cambio, tiene un papel en la apreciación global del riesgo de confusión, en especial en el grado de atención del público destinatario. Asimismo, cabe destacar que la necesidad de receta depende en gran medida de los distintos sistemas legislativos nacionales. Por lo tanto, un medicamento con receta por lo general se considera similar a las medicinas libres de prescripción por los motivos que se han establecido anteriormente.
1.3 Productos farmacéuticos frente a sustancias dietéticas para uso médico
Sustancias dietéticas y suplementos alimenticios para uso médico son sustancias preparadas para necesidades dietéticas especiales con el fin de tratar o prevenir una enfermedad. Teniendo esto en cuenta, su destino es similar al de productos farmacéuticos (sustancias empleadas en el tratamiento de enfermedades) en la medida en que se utilizan para mejorar el estado médico de los pacientes. El público destinatario coincide y estos productos tienen, por lo general, los mismos canales de distribución. Por los motivos anteriores, estos productos se consideran similares.
1.4 Productos farmacéuticos frente a cosméticos
Las categorías generales productos farmacéuticos y cosméticos deben considerarse similares. Los cosméticos incluyen una lista de productos utilizados para mejorar o proteger la apariencia o el olor del cuerpo humano. Los productos farmacéuticos, por otro lado, comprenden productos como los productos para el cuidado de la piel o del cabello con propiedades médicas. Pueden tener un destino coincidente con los cosméticos. Además, comparten los mismos canales de distribución, ya que pueden encontrarse en farmacias y otras tiendas especializadas, se dirigen al mismo público y con frecuencia están fabricados por las mismas empresas.
No obstante, cuando se comparan productos farmacéuticos específicos con cosméticos solo pueden mostrar un escaso grado de similitud o incluso pueden ser completamente distintos. En dichos casos, esto dependerá del medicamento específico y de su destino específico (indicación/efecto médico) o su utilización.
Ejemplo
Un analgésico es distinto al esmalte de uñas.
1.5 Productos farmacéuticos frente a servicios
Aunque las empresas farmacéuticas participan en gran medida en actividades de investigación y desarrollo, por lo general no ofrecen estos servicios a terceros. Por consiguiente, los productos de la clase 5 son generalmente distintos a todos los servicios comprendidos en la clase 42.
La diferenciación también puede determinarse al comparar productos farmacéuticos con servicios médicos (incluidos los veterinarios) de la clase 44. Incluso cuando no puede negarse un determinado vínculo debido al objetivo común de tratar
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enfermedades, las diferencias en la naturaleza y, especialmente, en el origen habitual contrarrestan de forma clara cualquier similitud. El público destinatario no espera que un médico desarrolle ni comercialice una medicina.
2 Industria del automóvil
La industria del automóvil es una industria compleja en la que participan diversos tipos de empresas, incluidas las empresas de fabricación de automóviles, así como los proveedores que suministran materias primas al fabricante de automóviles (metal, aluminio, materiales plásticos, pinturas), piezas, módulos o sistemas completos. Deben diferenciarse varios ámbitos de producción: ingeniería de transmisión, chasis, electrónica, interiores y exteriores.
Esto dificulta mucho el examen de una similitud entre el producto acabado (p. ej., un automóvil) y las diversas piezas o materiales empleados para su producción. Asimismo, al comprar un vehículo el público general percibe este hecho y sabe que hay muchos componentes que proceden de muchas fuentes y que el fabricante del vehículo podría montar los componentes que han sido fabricados por terceras empresas. Sin embargo, los productos se ofrecen por lo general bajo un solo signo, lo que hace que sea casi imposible que el público general identifique al resto de fabricantes o diferencie el origen de producción. Una excepción son las baterías para automóviles, en donde otros signos son por lo general visibles.
Al igual que ocurre con otras industrias específicas, resultan aplicables los criterios de la sentencia «Canon» y, en particular, deberán tenerse en cuenta los principios generales establecidos para la comparación de las partes, componentes y piezas.
Debe tenerse en cuenta en especial que hay productos que sólo puede adquirir la industria automovilística sin que exista la posibilidad de que sean obtenidos o comprados por parte del público general (consumidor final) (p. ej., el metal común de la clase 6 utilizado para construir el chasis). Se diferencian claramente del producto final, así como probablemente del resto de partes, componentes y piezas. En cuanto a las piezas de recambio que pueden ser compradas por el público general para fines de reparación o mantenimiento, la apreciación de la similitud de los productos dependerá principalmente del hecho de si el fabricante de automóviles suele fabricar la pieza de recambio específica.
3 Aparatos/instrumentos eléctricos
No puede interpretarse que la expresión aparatos e instrumentos eléctricos de la clase 9 comprenda todos los aparatos que funcionen con electricidad. De hecho, hay aparatos eléctricos de varias clases. Debe entenderse que el término aparato eléctrico incluido en la lista de productos de la clase 9 comprende los aparatos y los instrumentos de conducción, conmutación, conversión, acumulación, regulación o control de la electricidad (véase la sentencia de 01/02/2012, T-353/09, «mtronix», apartado 33).
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4 Industria textil y de la moda
Los productos clasificados en las clases 22, 23, 24 y 25 están relacionados con el sector textil. Existe una cierta progresión entre estas clases: materiales textiles fibrosos en bruto, es decir, fibras (clase 22) están compuestas por hilos (clase 23), tejidos, p. ej., tejidos para uso textil (clase 24) y hasta productos textiles acabados (clase 24) o prendas de vestir (clase 25).
Asimismo, los productos de la clase 18 como artículos de cuero e imitaciones de cuero también están relacionados con las industrias textiles y de la moda.
4.1 Materias primas o semielaboradas frente a productos acabados
Dado que la relación entre las clases mencionadas con frecuencia está basada en el hecho de que un producto se emplea en la fabricación del otro (p. ej., los tejidos de la clase 24 se emplean en la fabricación de las prendas de vestir de la clase 25), en las comparaciones de este tipo son aplicables las normas generales relativas a las materias primas (véase supra el punto «Materias primas y alimentos semielaborados»).
Por ejemplo, las materias primas como el cuero e imitaciones de cuero, pieles de animales (clase 18) son distintas de los vestidos, calzado y sombrerería (clase 25). El mero hecho de que el cuero sea utilizado para la fabricación de calzado (zapatos de piel) no será suficiente para determinar la similitud de los productos, ya que su naturaleza, su destino y su público destinatario son bastante distintos: las materias primas están destinadas a su uso en la industria más que a su adquisición directa por el consumidor final.
Sin embargo, un bajo grado de similitud se determina entre tejidos y productos textiles como sábanas, manteles de la clase 24. En dichos casos, el grado de transformación necesario desde la materia prima al producto final no suele ser significativo: el tejido simplemente se corta y se le da una forma y/o se cose para obtener el producto acabado. Asimismo, muchos establecimientos permiten a los consumidores adquirir el material básico o los cojines ya preparados, etc. elaborados a partir de dicho material. Por lo tanto, el público destinatario puede esperar que estos productos procedan de las mismas empresas.
4.2 Productos textiles (clase 24) frente a prendas de vestir (clase 25)
El principal punto de conexión entre los productos textiles de la clase 24 y las prendas de vestir de la clase 25 es que ambos se fabrican a partir de material textil. No obstante, esto no es suficiente para justificar que se aprecie similitud, puesto que tienen destinos completamente diferentes. Prendas de vestir son para que la gente las lleve puestas, o sirven como artículo de moda, mientras que productos textiles se destinan principalmente a uso doméstico y a la decoración de interiores. Por lo tanto, su utilización es distinta. Asimismo, los canales de distribución y los puntos de venta de productos textiles y prendas de vestir son distintos y el público destinatario no considerará que proceden de la misma empresa. En consecuencia, productos textiles se consideran distintos a prendas de vestir (véanse las resoluciones de 31/05/2012, R 1699/2011-4, «GO GLORIA ORTIZ», apartado 16; de 26/07/2012, R 1367/2011-1,
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«PROMO TEXTILE/Promodoro», apartado 17; y de 01/08/2012, R 2353/2010-2, «Refrigue for cold/RefrigiWear et al.», apartado 26).
4.3 Prendas de vestir, calzado y artículos de sombrerería (clase 25)
Los productos de la clase 25, a saber, prendas de vestir, calzado y artículos de sombrerería tienen una naturaleza idéntica o muy similar, tienen el mismo destino ya que se utilizan para cubrir y proteger de los elementos diversas partes del cuerpo humano. También son artículos de moda y con frecuencia se encuentran en los mismos puntos de venta al por menor. Cuando los consumidores van a comprar vestimenta, esperan encontrar calzado en la misma sección o tienda y viceversa. Además, numerosos fabricantes y diseñadores fabrican y diseñan ambos productos. Por lo tanto, estos productos son similares entre sí.
4.4 Accesorios de moda
Tal como se ha explicado en el punto «Accesorios» (véase supra), el mero hecho de que un determinado producto se utilice junto con otro producto no dará lugar necesariamente a una declaración de similitud. No obstante, es algo común que algunos accesorios también hayan sido producidos por el fabricante del producto principal. Por consiguiente, el consumidor puede esperar que el producto principal y los accesorios se fabriquen bajo el control de la misma entidad, en especial cuando se distribuyen a través de los mismos canales comerciales. En dichos casos, existe un fuerte indicio de similitud. Por lo tanto, no todos los productos que se consideran accesorios de moda se declararán similares a prendas de vestir, calzado y artículos de sombrerería (clase 25).
La categoría amplia de artículos de cuero e imitaciones de cuero de la clase 18 incluye productos como bolsos (de mano), bolsas de deporte, maletines, carteras, monederos, llaveros, etc. Estos productos están relacionados con artículos de prendas de vestir, calzado y artículos de sombrerería de la clase 25, en el sentido de que es muy probable que los consumidores consideren accesorios estéticos que complementan a los artículos de prendas de vestir exteriores, sombrerería e incluso calzado porque se coordinan estrechamente con estos artículos y cabe la posibilidad de que sean distribuidos por las mismas empresas o empresas relacionadas y es habitual que los fabricantes de ropa produzcan y comercialicen directamente dichos productos. Además, estos productos pueden hallarse en los mismos puntos de venta al por menor. Por lo tanto, estos productos se consideran similares a prendas de vestir, calzado y artículos de sombrerería.
Por el contrario, accesorios para el cabello como horquillas para el cabello y cintas son distintos a prendas de vestir. Aun cuando estos productos pudieran tener una relación distante con el mercado de la moda, el mero hecho de que alguien quisiera combinar horquillas para el cabello con prendas de vestir no es suficiente para determinar que estos productos sean complementarios y, por lo tanto, similares. Los productos solo pueden considerarse complementarios cuando existe una estrecha conexión entre ellos, en el sentido de que uno es indispensable o importante para el uso del otro y no meramente auxiliar o accesorio. En el presente caso, estas condiciones no se cumplen, por lo tanto, la naturaleza y la utilización de estos productos son diferentes, y no son competidores entre sí. La producción de estos productos implica unos conocimientos diferentes, no pertenecen a la misma categoría de productos y no siempre se
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consideran componentes de una variedad general de productos que potencialmente tengan el mismo origen comercial (véase la resolución de 03/10/2011, R 1501/2010-4, «Wild Nature/WILD NATURE», apartado 18).
De igual modo, los productos de lujo tales como gafas (clase 9) y joyería (clase 14) se consideran distintos a las prendas de vestir, calzado y artículos de sombrerería. La naturaleza y el principal destino de estos productos son distintos. La principal función de la ropa es vestir al ser humano mientras que el principal destino de las gafas es mejorar la vista, y de las joyas es ser utilizadas como adorno personal. No utilizan los mismos canales de distribución, ni son competidores ni complementarios (véanse las resoluciones de 30/05/2011, R 0106/2007-4, «OPSEVEN2/7Seven et al.», apartado 14; de 12/09/2008, R 0274/2008-1, «PENALTY/PENALTY», apartado 20; de 05/10/2011, R 0227/2011-2, «OCTOPUSSY/OCTOPUSSY et al.», apartados 23 a 26).
El mismo razonamiento es aplicable a los productos de lujo como los perfumes (clase 3) – el principal destino es proporcionar un olor duradero para el cuerpo, artículos de papelería, etc. – y los productos como bolsos de viaje (clase 18) para llevar objetos mientras se viaja. Aunque actualmente algunos diseñadores de moda también venden perfumes, accesorios de moda (tales como gafas y joyería) y accesorios de viaje dentro de sus marcas, ésta no es la norma general, sino que más bien es una práctica de los diseñadores de éxito (desde el punto de vista económico).
4.5 Ropa de deporte, calzado y artículos de sombrerería (clase 25) frente a artículos de gimnasia y deporte (clase 28)
La categoría general de prendas de vestir, calzado y artículos de sombrerería incluye la ropa deportiva, calzado y artículos de sombrerería que son prendas o artículos de ropa diseñados especialmente para realizar una actividad o deporte. Aunque la naturaleza de estos productos es distinta de artículos para la gimnasia y el deporte que son artículos y aparatos para todo tipo de deportes y gimnasia, como pesos, cabestros, raquetas de tenis, bolas y equipos para el ejercicio físico, hay empresas que fabrican tanto artículos de gimnasia y deporte también como ropa deportiva/calzado deportivo. En consecuencia, los canales de distribución pueden ser los mismos. Existe un bajo grado de similitud cuando se compara ropa deportiva/calzado deportivo con artículos para la gimnasia y el deporte.
4.6 Diseño de moda (clase 42), servicios de sastrería (clase 40) frente a prendas de vestir (clase 25)
Existe un escaso grado de similitud entre la vestimenta y el diseño de moda y servicios de sastrería, ya que comparten el mismo público destinatario y pueden coincidir en el mismo origen habitual (productor/proveedor). Los productores de la ropa de confección (en especial los trajes y los vestidos de boda) con frecuencia ofrecen servicios de sastrería que están estrechamente relacionados con el diseño de moda, que es un paso previo en el proceso de producción de ropa.
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5 Alimentación, bebidas y servicios de restaurantes
5.1 Ingredientes de los alimentos preparados
Los ingredientes utilizados para la preparación de alimentos son una subcategoría de materias primas y reciben el mismo trato que las materias primas en general. Por consiguiente, el mero hecho de que un ingrediente sea necesario para la preparación de un alimento no bastará por sí solo para determinar la similitud de los productos, incluso si éstos están comprendidos en la categoría general de alimentos (véase la sentencia de 26/10/2011, T-72/10, «NATY’S», apartados 35 y 36).
Ejemplos de diferenciación
Huevos (clase 29) y helado cremoso (clase 30) Levadura (clase 30) y pan (clase 30)
5.2 Ingrediente principal
Cuando el ingrediente puede considerarse como ingrediente principal del plato preparado, la similitud solo existirá si los productos comparten algún otro criterio o criterios pertinente(s), en particular su origen habitual, naturaleza, destino o utilización.
Ejemplos de diferenciación (ingrediente principal + otro(s) criterio/criterios)
Leche (clase 29) y yogur (clase 29) Pescado (clase 29) y palitos de pescado (clase 29) Masa (clase 30) y pizzas (clase 30)
Véase asimismo la sentencia del Tribunal General de 04/05/2011, T-129/09, «APETITO», en la que el Tribunal confirma la determinación de similitud entre un alimento en concreto y las comidas preparadas que están compuestas principalmente por el mismo tipo de alimento en concreto.
Cabe recordar que no existe complementariedad en estos casos simplemente porque un ingrediente es necesario para la producción/preparación de otro alimento. La complementariedad solo es aplicable al uso de productos y no a su proceso de producción (véase el capítulo «Carácter complementario» y sentencia de 11/05/2011, T-74/10, «FLACO», apartado 40 y la resolución de 11/12/2012, R 2571/2011-2, «FRUITINI», apartado 18).
5.3 Bebidas no alcohólicas (clase 32) frente a bebidas alcohólicas (excepto cervezas) (clase 33)
Bebidas no alcohólicas, por un lado, y bebidas alcohólicas (excepto cervezas) se venden conjuntamente en las tiendas, bares y en los menús de bebidas, etc. Estos productos se dirigen al mismo público y pueden ser competidores, por lo que debe determinarse que estos productos son escasamente similares (véase la sentencia de 05/10/2011, T-421/10, «Rosalia de Castro», apartado 31).
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5.4 Cervezas (clase 32), bebidas alcohólicas (excepto cervezas) (clase 33)
Existe similitud entre distintas bebidas alcohólicas de la clase 33, así como entre la categoría amplia bebidas alcohólicas y cerveza de la clase 32. Aunque sus procesos de producción son distintos, todos estos productos pertenecen a la misma categoría (naturaleza) de bebidas alcohólicas destinadas al público en general. Estas bebidas pueden servirse en restaurantes y bares y están a la venta en supermercados y tiendas de comestibles. Estas bebidas pueden encontrarse en la misma zona de los supermercados, incluso se puede hacer alguna distinción entre ellos respecto de su correspondiente subcategoría, por ejemplo. Asimismo, algunas bebidas alcohólicas pueden proceder de las mismas empresas.
Ejemplos
Cervezas son similares a bebidas alcohólicas (excepto cervezas). Vinos son similares a bebidas alcohólicas (excepto vinos).
5.5 Suministro de comida y bebidas frente a comida y bebidas
Los servicios de suministro de comida y bebida de la clase 43 abarcan principalmente los servicios de un restaurante o servicios similares, tales como servicios de catering, cafeterías y bares de comida rápida. Estos servicios se destinan a servir alimentos y bebidas destinados directamente al consumo.
El mero hecho de que la comida y las bebidas se consumen en un restaurante no basta para determinar la similitud entre ellos (véase la sentencia de 09/03/2005, T-33/03, «Hai», apartado 45; y la resolución de 20/10/2011, R 1976/2010-4, «THAI SPA/SPA et al.», apartados 24 a 26).
La realidad del mercado muestra que algunos productores de comida y/o bebidas también prestan servicios de restaurante con su marca (p. ej., café y sus cafeterías, helados y sus heladerías, cervezas y sus pubs); no obstante no se trata de un uso comercial arraigado, sino que más bien es una práctica de las empresas de éxito (desde el punto de vista económico). Estas circunstancias deben examinarse caso por caso.
6 Servicios de apoyo a otras empresas
Todos los servicios incluidos en la lista del título de clase de la clase 35 están destinados a dar apoyo y ayudar a otras empresas o a mejorar su negocio. Por lo tanto, en principio están destinados al público profesional.
Al comparar los servicios específicos comprendidos en la clase 35 resulta muy útil centrarse en la siguiente cuestión: ¿Quién presta este tipo de servicio? ¿Se trata de una agencia de publicidad, un consultor de gestión, un asesor de recursos humanos, un contable, un auditor, un agente de ventas o un asesor fiscal? Una vez que se ha
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determinado el origen habitual es más fácil determinar la indicación general a la que pertenece el servicio específico.
Los servicios de publicidad consisten en proporcionar asistencia a otras empresas en la venta de sus productos y servicios, haciendo promoción de su lanzamiento y/o venta, o reforzando la posición en el mercado del cliente y adquiriendo una ventaja competitiva a través de la publicidad. Para conseguir este objetivo, pueden utilizarse muchos medios y productos distintos. Estos servicios son ofrecidos por empresas especializadas que estudian las necesidades de sus clientes y proporcionan toda la información y consejos necesarios para la comercialización de sus productos y servicios, creando una estrategia personalizada relativa a la publicidad de sus productos y servicios a través de diarios, sitios web, vídeos, Internet, etc. Cabe mencionar que la naturaleza y el destino de los servicios de publicidad son esencialmente distintos de la fabricación de productos o de la prestación de muchos otros servicios. Por lo tanto, la publicidad es, en general, distinta a los productos y servicios publicitados. Lo mismo es aplicable a la comparación de los servicios de publicidad frente a los productos que pueden utilizarse como medio de difusión de la publicidad, como DVDs, programas informáticos, artículos de imprenta, folletos y catálogos.
Los servicios de gestión de negocios comerciales son servicios que normalmente prestan empresas especializadas en este ámbito específico como los consultores empresariales. Obtienen información y proporcionan instrumentos y conocimientos especializados que permiten que sus clientes lleven a cabo su actividad o proporcionan el apoyo necesario a las empresas para adquirir, desarrollar y ampliar su cuota de mercado. Participan en actividades como la búsqueda y valoración de empresas, el análisis de costes y el asesoramiento de organizaciones. Estos servicios también incluyen cualquier actividad de «consultoría», «asesoramiento» y «asistencia» que pueda ser útil en la gestión de una empresa, como la asignación eficiente de los recursos humanos y financieros, la forma de mejorar la productividad, aumentar la cuota de mercado, tratar a los competidores, reducir los pagos de impuestos, desarrollar nuevos productos, comunicarse con el público, llevar a cabo la comercialización, investigar las tendencias de los consumidores, lanzar nuevos productos y crear una identidad corporativa, etc.
Cuando se compara gestión de negocios comerciales con publicidad debe señalarse que la publicidad es un instrumento esencial de la gestión de empresas, porque da a conocer a la propia empresa en el mercado. Tal como se ha indicado anteriormente, la finalidad de los servicios de publicidad es «reforzar la posición (de la empresa) en el mercado» y la finalidad de los servicios de gestión de empresas es ayudar a las empresas a «adquirir, desarrollar y expandir su cuota de mercado». No existe una diferencia clara entre «reforzar la posición en el mercado de una empresa» y «ayudar a una empresa a desarrollar y ampliar su cuota de mercado». El profesional que ofrece asesoramiento sobre el modo eficiente de gestionar una empresa puede incluir razonablemente en dicho asesoramiento las estrategias de publicidad, porque no cabe duda de que la publicidad juega un papel esencial en la gestión de negocios comerciales. Asimismo, los consultores empresariales podrán ofrecer asesoramiento sobre publicidad (y marketing), como parte de sus servicios y, por lo tanto, el público destinatario puede creer que los dos servicios tienen el mismo origen profesional. Por consiguiente, los dos servicios anteriores se consideran escasamente similares (véase la resolución R 2163/2010-1, «INNOGAME/InnoGames», apartados 13 a 17).
Los servicios de administración comercial consisten en organizar a las personas y a los recursos de manera eficaz para dirigir las actividades hacia metas y objetivos
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comunes. Estos servicios incluyen actividades como la selección de personal, la elaboración de nóminas, la redacción de estados contables y la preparación de impuestos. La línea entre ambos títulos, la gestión de negocios comerciales y la administración comercial, es borrosa y en ocasiones es muy difícil (si no imposible) distinguirlos entre sí. Ambos están comprendidos en una categoría de servicios empresariales más amplia. Como regla general puede decirse que los servicios de administración comercial se realizan para organizar y gestionar una empresa, mientras que la gestión de negocios comerciales sigue un enfoque superior que tiene por objeto establecer las metas comunes y el plan estratégico de una empresa comercial.
Los trabajos de oficina comprenden los servicios destinados a realizar las operaciones diarias necesarias para que una empresa logre su finalidad comercial. Estos servicios comprenden principalmente las actividades que ayudan al funcionamiento de una empresa comercial, así como las actividades típicas de los servicios de secretaría, como la taquigrafía y la mecanografía, al igual que los servicios de apoyo, como el arrendamiento de máquinas y equipos de oficina.
7 Servicios de venta al por menor
Se define la expresión «al por menor» como la acción o la actividad de vender productos o materias primas en cantidades relativamente pequeñas para su uso o consumo en lugar de revender (en contraposición a «al por mayor» que consiste en la venta de materias primas en cantidades normalmente para su reventa).
No obstante, debe señalarse que la venta de productos no es un servicio, en el sentido de la Clasificación de Niza. Por lo tanto, la actividad de vender productos al por menor como servicio para el que puede obtenerse protección de una marca no consiste en el mero acto de vender los productos, sino en que los servicios prestados relacionados con la venta real de productos, que se definen en la nota explicativa de la clase 35 de la Clasificación de Niza con los términos “el agrupamiento, por cuenta de terceros, de productos diversos (excepto su transporte), para que los consumidores puedan examinarlos y comprarlos a su conveniencia”.
Asimismo, el Tribunal ha dictaminado que el objetivo del comercio al por menor es la venta de productos a los consumidores, que además del negocio jurídico de la compraventa, este tipo de comercio comprende toda la actividad desarrollada por el operador para incitar a la conclusión de dicho negocio. Esta actividad consiste, en particular, en la selección de un surtido de productos que se ponen a la venta y en la prestación de diversos servicios con los que se pretende convencer al consumidor para que concluya la venta con el comerciante de que se trate y no con un competidor (sentencia de 07/07/2005, C-418/02, «Praktiker Bau- und Heimwerkermärkte», apartado 34).
Los servicios de venta al por menor permiten que los consumidores satisfagan sus distintas necesidades de compra en un solo lugar y generalmente están destinados al consumidor en general. Pueden tener un lugar determinado, como un gran almacén, supermercado, tienda o quiosco, o en forma de un comercio al por menor sin tienda, es decir, a través de Internet, por catálogo o de venta por correo.
En lo concerniente a la cuestión de la similitud entre los productos y servicios se aplican los siguientes principios.
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7.1 Servicios de venta al por menor frente a cualquier producto: no similares
Los servicios de venta al por menor en general5 (es decir, la especificación no limitada a la venta de productos especiales) no son similares a cualesquiera productos que se puedan vender al por menor. Aparte de tener naturalezas distintas, dado que los servicios son intangibles mientras que los productos son tangibles, responden a diferentes necesidades. Por lo tanto, la utilización de dichos productos y servicios es diferente, ni son competidores ni necesariamente complementarios entre sí.
La especificación de los servicios al por menor de la venta de productos que utilizan términos tales como «incluido, en concreto, por ejemplo, con, específicamente, (tales) como» no es lo suficientemente precisa, ya que todos estos términos significan, en principio, «por ejemplo». No limitan los productos que siguen. Por consiguiente, formulaciones tales como «servicios de venta al por menor, en particular de calzado» deberán tratarse del mismo modo que «servicios de comercio al por menor en general», sin ninguna especificación.
7.2 Servicios de venta al por menor de productos específicos frente a los mismos productos específicos: bajo grado de similitud
Los servicios de venta al por menor relativos a la venta de productos particulares son (escasamente) similares a estos productos determinados (véase la sentencia de 05/10/2011, T-421/10, «ROSALIA DE CASTRO», apartado 33). Aunque la naturaleza, el destino y la utilización de dichos productos y servicios no sean los mismos, cabe señalar que presentan similitudes, visto el hecho de que son complementarios y que estos servicios generalmente se ofrecen en los mismos lugares donde se ofrecen para la venta los productos. Asimismo, se dirigen al mismo público.
Los productos comprendidos de los servicios del venta al por menor y los productos específicos comprendidos en la otra marca deben ser idénticos para determinar la similitud, es decir, deben ser exactamente los mismos productos o entrar dentro del significado natural y habitual de la categoría (p. ej., «venta al por menor de gafas» frente a «gafas» y «venta al por menor de aparatos ópticos» frente a «gafas»).
7.3 Servicios de venta al por menor de productos específicos frente a los productos específicos diferentes o similares: no similares
Los servicios de venta al por menor relacionados con la venta de productos particulares y otros productos no son similares. Debe recordarse que, en principio, los productos no son similares a los servicios. Se concederá una protección demasiado amplia a los servicios de venta al por menor si se determina la similitud en que los productos vendidos al por menor solo son muy similares o similares a los productos comprendidos por la otra marca.
5 «Los servicios de venta al por menor» como tales no son admisibles a efectos de clasificación por la OAMI salvo ulterior
especificación (ver Directrices Parte B, sección 3, examen de la clasificación).
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7.4 Servicios de venta al por menor frente a los servicios de venta al por menor de productos específicos: idénticos
Los servicios de venta al por menor en general, es decir, que no se limitan a la lista de venta de productos particulares, son idénticos a los servicios de venta al por menor en general o relacionados con la venta de productos específicos.
7.5 Servicios de venta al por menor de productos específicos frente a los servicios de venta al por menor de otros productos específicos: similares
Los servicios de venta al por menor relacionados con productos específicos se consideran similares a los servicios de venta al por menor relacionados con otros productos específicos, con independencia de si existe o no similitud entre los productos de que se trate. Los servicios que se comparan poseen la misma naturaleza por ser servicios de venta al por menor, tienen el mismo destino que permite a los consumidores satisfacer de forma conveniente sus distintas necesidades de compra, así como la misma utilización. Asimismo, en función de los productos que se venden de esta forma, éstos pueden coincidir en el público destinatario y los canales de distribución.
7.6 Servicios a los que se aplican los mismos principios
Se aplicarán los citados principios a los servicios prestados con respecto a otras modalidades relacionadas exclusivamente con la venta de productos, como los servicios de venta al por menor, servicios de venta al por mayor, servicios de venta por Internet, o los servicios de venta por catálogo o por correo, etc. (en la medida en que éstos estén incluidos en la clase 35).
7.7 Servicios a los que no se aplican los mismos principios
Por el contrario, no se aplicarán los citados principios a otros servicios que no se limiten a los servicios que giran en torno a la venta de productos, o que no estén comprendidos en la clase 35, como los servicios de importación y exportación (clase 35), los servicios de distribución (clase 39), transporte o reparación (clase 37), etc.
Ejemplo
Servicios de importación y exportación
Los servicios de importación y exportación no se consideran un servicio de ventas y, por tanto, no se pueden aportar los mismos argumentos que respecto de la comparación de productos con servicios de venta al por menor.
Los servicios de importación y exportación se refieren al movimiento de productos y, por lo general, requieren la participación de las autoridades de aduanas tanto del país de importación como del país de exportación. Estos servicios con frecuencia están
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sometidos a cuotas de importación, aranceles y acuerdos de comercio. Como están clasificados en la clase 35 estos servicios se considera que están relacionados con la administración comercial. Estos servicios no están relacionados con la venta efectiva al por menor y al por mayor de los productos, sino que son preparatorios o auxiliares para la comercialización de dichos productos. Por estos motivos, los productos deben considerarse distintos a los servicios de importación y exportación de dichos productos. El hecho de que el objeto de los servicios de importación/exportación y los productos en juego sea el mismo no es un factor pertinente para determinar la similitud.
Ejemplo
Importación y exportación de los productos de tabaco (clase 35) es distinta a productos de tabaco (clase 34).
La sentencia de 09/06/2010, T-138/09, «Riojavina», determinó un bajo grado de similitud entre la importación/exportación de vinagre y de vino.
8 Servicios financieros
Los servicios financieros hacen referencia a los servicios prestados por parte del sector financiero. El sector financiero abarca una amplia gama de organizaciones que tratan la gestión, inversión, transferencia y préstamo de dinero. Entre estas organizaciones están, por ejemplo, los bancos, las empresas de tarjetas de crédito, las compañías de seguros, las empresas de financiación al consumo, las compañías de corretaje y los fondos de inversión.
8.1 Servicios bancarios (clase 36) frente a servicios de seguros (clase 36)
La prestación de servicios bancarios consiste en prestar todos esos servicios llevados a cabo con fines comerciales o de ahorro respecto de la recepción, préstamo, intercambio, inversión y garantía de dinero, con la emisión de notas y la transacción de otras actividades financieras.
La prestación de servicios de seguros consiste en aceptar la responsabilidad de determinados riesgos y sus correspondientes pérdidas. Las compañías aseguradoras normalmente proporcionan compensaciones monetarias y/o asistencia en caso de determinadas contingencias, tales como el fallecimiento, accidente, enfermedad, incumplimiento de contrato y, en general, cualquier acontecimiento capaz de provocar daños.
Los servicios de seguros tienen distintas funciones, desde los servicios que normalmente prestan los bancos, como la provisión de crédito o la gestión de activos, los servicios de tarjeta de crédito, la evaluación financiera o el corretaje en bolsa y de fondos. Sin embargo, también existen algunos puntos de contacto significativos.
Los servicios de seguros poseen una naturaleza financiera y las compañías aseguradoras están sujetas a normas de licencia, supervisión y solvencia similares a las de los bancos y otras entidades que prestan servicios financieros. La mayoría de bancos también ofrecen servicios de seguros, incluidos los seguros de vida o actúan
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como agentes para las compañías aseguradoras con las que con frecuencia están económicamente vinculados. Además, es habitual ver que las entidades financieras y una compañía de seguros están en el mismo grupo económico.
Por lo tanto, aunque los servicios de seguros y los servicios bancarios tienen finalidades diferentes, poseen, en cambio, la misma naturaleza, pueden ser ofrecidos por la misma empresa o por empresas vinculadas y comparten los mismos canales de distribución. Estas circunstancias muestran que los servicios de seguros son similares a los servicios bancarios.
8.2 Negocios inmobiliarios (clase 36) frente a operaciones financieras (clase 36)
Los negocios inmobiliarios abarcan la gestión de las propiedades inmobiliarias, las agencias inmobiliarias y la evaluación de dichas propiedades, así como la consultoría y la provisión de información relacionada con dichas propiedades. Esto implica principalmente encontrar un inmueble, ponerlo a disposición de los potenciales compradores y actuar como intermediario. Los consumidores diferencian claramente los servicios de los agentes inmobiliarios de los de las entidades financieras. No esperan que un banco les encuentre alojamiento ni que un agente inmobiliario gestione sus finanzas.
El mero hecho de que las propiedades inmobiliarias puedan financiarse a la hora de comprarlas no basta para determinar la similitud entre los negocios inmobiliarios y las operaciones financieras. Aunque los servicios financieros pueden ser importantes para la adquisición de propiedades inmobiliarias, los consumidores por lo general acuden en primer lugar a una agencia inmobiliaria cuando buscan una propiedad y, en segundo, a una institución financiera para la financiación del bien inmobiliario.
Cualquier otra conclusión significaría que toda transacción de naturaleza no financiera sujeta a financiación sería complementaria de un servicio financiero. En consecuencia, debe concluirse que estos servicios no son similares aun cuando los servicios financieros son esenciales o importantes para el uso del bien inmobiliario. Los consumidores no presumirían que la responsabilidad de ambos servicios incumbe a la misma empresa. (ver sentencia de 11/07/2013, T-197/12, «GRUPOMETROPOLIS», apartados 47-51).
8.3 Tarjetas de crédito (clase 9) frente a operaciones financieras (clase 36)
Las tarjetas de créditos son pequeñas tarjetas de plástico que los usuarios utilizan como sistema de pago. Estas tarjetas permiten a su titular comprar productos y servicios basados en la promesa del mismo de que pagará dichos productos y servicios. El emisor de la tarjeta crea una cuenta rotativa y concede una línea de crédito al consumidor (o al usuario) de la que el usuario puede tomar prestado dinero para el pago a un comerciante o como anticipo de efectivo al usuario.
Las entidades como los bancos prestan servicios financieros para facilitar diversas transacciones financieras y otras actividades relacionadas con el mundo de las finanzas.
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Aunque las tarjetas de crédito están, de algún modo, relacionadas con los servicios financieros, por ejemplo, sirven para retirar efectivo de un cajero automático de un banco, esta conexión está demasiado alejada para que los productos y servicios sean similares. Los consumidores serán conscientes de que las entidades financieras no son responsables de los aspectos tecnológicos de la edición de tarjetas magnéticas o tarjetas con chip (véase la resolución de 07/05/2012, R 1662/2011-5, «CITIBANK», apartado 29).
9 Transporte, embalaje y almacenamiento
9.1 Transporte de mercancías (clase 39) frente a cualquier producto
Los servicios de transporte no se consideran similares a los productos. Estos servicios son prestados por empresas de transporte especialistas cuya actividad no es la fabricación y la venta de dichos productos. Respecto de la naturaleza de los productos y servicios, los servicios de transporte hacen referencia a la flota de camiones o naves utilizadas para desplazar mercancías de un punto A a un punto B.
Ejemplo
Pastelería y repostería es diferente de servicios de transporte. Son diferentes por lo que respecta a su naturaleza, destino y método de uso; no son complementarios ni competidores. Todas estas diferencias explican por qué los servicios de transporte y los productos de pastelería y repostería van destinados a consumidores diferentes. El transporte se dirige fundamentalmente a profesionales (personas que necesitan trasladar mercancías), mientras que la pastelería y repostería tienen como público destinatario a clientes no profesionales (personas corrientes que quieren comida) (véase la resolución de 07/01/2014, R 1006/2012-G, «PIONONO», apartado 28 a 36).
9.2 Embalaje y almacenamiento de mercancías (clase 39) frente a cualquier producto
De igual modo, servicios de embalaje y almacenamiento sólo hacen referencia al servicio en que los productos de una empresa o cualquier persona están embalados y se conservan en un lugar determinado pagando una tarifa. Estos servicios no son similares a ningún tipo de producto, incluido cualquiera de los productos que pueden embalarse y almacenarse (véase la sentencia de 07/02/2006, T-202/03, «CompUSA»; la sentencia de 22/06/2011, T-76/09, «FARMA MUNDI FARMACEUTICOS MUNDI», apartado 32; y la resolución de 07/01/2013, R 1006/2012-G, «PIONONO», apartado 38).
10 Tecnología de la información
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10.1 Ordenadores frente a software
Lo que se entiende por ordenador es en realidad un «sistema», una combinación de componentes que funcionan juntos. Los dispositivos de hardware son los componentes físicos del sistema. El hardware está diseñado para funcionar conjuntamente con los programas informáticos, a los que se denomina software. Las empresas que fabrican hardware también fabrican software, comparten los mismos canales de distribución y pueden estar destinados al público profesional (p. ej., utilización en la banca y las finanzas, la educación, la medicina, el mundo empresarial y el del esparcimiento/ocio), o al público en general. Además, son complementarios (véase el apartado 10.2 infra). Estos productos se consideran similares.
10.2 Software frente a aparatos que usan software
En la sociedad actual, de un elevado nivel tecnológico, prácticamente todos los aparatos electrónicos o digitales funcionan con el software que llevan integrado. No obstante, no cabe deducir de lo anterior que el software es similar a los productos que utilizan software para poder funcionar correctamente (véase también el anexo I, apartado 1, Partes, componentes y piezas).
Ejemplo de diferenciación
Aunque una báscula digital funciona a partir del software que lleva integrado, no debe deducirse que software y básculas son similares. Se podría argumentar que el software es importante para el uso de la báscula; no obstante, no son complementarios, ya que no están dirigidos al mismo público. Mientras que la báscula digital es para el público en general, el software se dirige al fabricante de las básculas. Los productores no son los mismos, ni los canales de distribución, y su destino no es el mismo.
Sin embargo, cuando el software no es una parte integrada en el aparato, se puede comprar por separado y sirve, por ejemplo, para que éste pueda ofrecer más funciones u otras distintas, se puede considerar que hay similitud entre ambos.
Ejemplo de similitud
Una cámara digital y el software para ampliar sus funciones están dirigidos al mismo público, y las empresas productoras son las mismas o están relacionadas. Sus canales de distribución son los mismos y el uso de uno es indispensable para el uso del otro. En consecuencia, cámaras digitales y software (que incluye, p. ej., el destinado a aumentar las funciones de las cámaras digitales) se consideran similares.
10.3 Software, aplicaciones informáticas descargables y publicaciones electrónicas descargables
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Software de aplicaciones, conocido también como «aplicaciones», es software informático diseñado para ayudar a los usuarios a realizar diversas tareas en sus ordenadores. El software de aplicaciones se diferencia del software de sistemas en que el primero permite que el usuario acceda a él y lo ejecute en su equipo. El diseño del software de aplicaciones suele estar dirigido a los usuarios. La nueva definición de aplicación se utiliza para referirse a las pequeñas aplicaciones diseñadas para los teléfonos móviles; no obstante, la definición cubre todas las aplicaciones para teléfonos inteligentes, tabletas y ordenadores. En consecuencia, software, software de aplicaciones y aplicaciones descargables se consideran idénticos.
Publicaciones electrónicas descargables son versiones electrónicas de medios tradicionales, como libros electrónicos, diarios electrónicos, revistas en línea, periódicos en línea, etc. Una práctica cada vez más común es distribuir libros, revistas y periódicos a los consumidores a través de dispositivos de lectura (tabletas) por medio de las denominadas aplicaciones en forma de publicaciones electrónicas. Por consiguiente, hay una relación complementaria entre el software/las aplicaciones y las publicaciones electrónicas descargables. Los productores pueden ser los mismos, se distribuyen por los mismos canales y su público destinatario es en general el mismo. De modo que estos productos se consideran similares.
10.4 Software específico frente a software específico
Hay muchos tipos de software y, aunque su naturaleza es la misma (conjunto de instrucciones que permiten al ordenador realizar las operaciones), no lo es su destino. Es decir, que hay software muy específico que podría ser diferente de otro tipo de software
Ejemplo
El ámbito de aplicación del software de juegos de ordenador no es el mismo que el del software para aparatos utilizados para el diagnóstico de enfermedades. Dadas estas diferencias notables en el ámbito de aplicación, los conocimientos especializados necesarios para desarrollar estos tipos de software no son los mismos, ni tampoco los usuarios finales o los canales de distribución. Por consiguiente, estos productos son diferentes.
10.5 Ordenadores y software (clase 9) frente a programación informática (clase 42)
La programación informática es, por ejemplo, el proceso de escribir código fuente (véase la sentencia de 29/03/2012, T-417/09, «Mercator Studios», apartado 26), y un programa informático es un conjunto de instrucciones codificadas que permiten a una máquina, especialmente un ordenador, realizar la secuencia de operaciones que se desea.
Ordenadores son dispositivos que ordenan, especialmente, a las máquinas electrónicas que son programables que realicen operaciones matemáticas o lógicas a gran velocidad o que reúnan, almacenen, correlacionen o que de otro modo procesen información. Los ordenadores necesitan programas para poder funcionar.
Software está compuesto por programas, rutinas y lenguajes simbólicos que controlan el funcionamiento del hardware y dirigen su funcionamiento.
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Por lo tanto, servicios de programación están estrechamente vinculados a ordenadores y software. Esto es porque en el campo de las ciencias informáticas, los fabricantes de ordenadores y/o de software con frecuencia suelen prestar servicios informáticos y/o relacionados con el software (tales como los medios para mantener actualizados los sistemas, por ejemplo).
En consecuencia, y a pesar del hecho de que la naturaleza de los productos y servicios no es la misma, tanto los usuarios finales como los fabricantes/proveedores de los productos y servicios coinciden. Asimismo, son productos y servicios que son complementarios. Por estos motivos, estos productos y servicios se consideran similares.
10.6 Aparatos para el registro, la transmisión o reproducción de sonido o imágenes, ordenadores y software (clase 9) frente a servicios de telecomunicaciones (clase 38)
Aparatos para el registro, transmisión o reproducción de sonido o imágenes son aparatos y dispositivos que se utilizan para comunicar información sonora o en formato de vídeo a distancia a través de ondas de radio, señales ópticas, etc., o a través de una línea de transmisión.
Servicios de telecomunicaciones son servicios que permiten a las personas comunicarse entre sí a través de medios remotos.
Desde la década de 1990, la frontera entre equipos de telecomunicaciones y hardware/software de TI se ha difuminado como consecuencia del crecimiento de Internet y su papel cada vez mayor en la transmisión de datos de telecomunicación. Se considera que los equipos que se utilizan para fines relacionados con las telecomunicaciones (como módem, teléfono móvil, teléfono fijo, contestador automático, fax, buscapersonas, enrutador, etc.) también cubren el software de control de las telecomunicaciones que debe utilizarse como base de las actividades de telecomunicación. Cualquier software que facilite la realización de operaciones de telecomunicación puede considerarse software de control de las telecomunicaciones.
Hay una relación clara entre los productos anteriores de la clase 9 y los servicios de telecomunicaciones de la clase 38. Tales productos y servicios son similares, habida cuenta de su carácter complementario, y aunque su naturaleza es diferente, su destino y sus canales de distribución son los mismos (véase la sentencia de 12/11/2008, T-242/07, «Q2web», apartados 24 a 26).
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 2
DOBLE IDENTIDAD Y RIESGO DE CONFUSIÓN
CAPÍTULO 3
COMPARACIÓN DE LOS SIGNOS
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Índice
1 Introducción............................................................................................... 4 1.1. Resumen .....................................................................................................4 1.2. Principios generales .................................................................................. 4
1.2.1. Comparación objetiva..................................................................................... 4 1.2.2. Tres aspectos: visual, fonético y conceptual .................................................. 5 1.2.3. Signos que deben compararse....................................................................... 5 1.2.4. Resultados posibles de la comparación......................................................... 5 1.2.5. Territorio de referencia y público destinatario ................................................ 6
2. Identidad de los signos............................................................................. 6 2.1. El concepto de identidad ...........................................................................6 2.2. Umbral para la constatación de identidad................................................ 7 2.3. Identidad entre marcas denominativas..................................................... 8 2.4. Marcas denominativas y marcas figurativas ............................................9 2.5. Identidad de marcas figurativas .............................................................. 10 2.6 Identidad de una marca anterior en blanco y negro o en escala de
grises con una solicitud de marca en color ........................................... 11
3. Similitud entre los signos ....................................................................... 13 3.1. El concepto de similitud .......................................................................... 13 3.2. Umbral para la existencia de similitud.................................................... 13 3.3. Elementos insignificantes ....................................................................... 13 3.4. Comparación visual ................................................................................. 15
3.4.1 Comparación visual de las marcas denominativas ...................................... 15 3.4.1.1. Comparación entre marcas denominativas ...............................................15 3.4.1.2. Comparación entre una marca denominativa y una marca figurativa con
elementos denominativos..........................................................................16 3.4.2. Comparación visual sin marcas denominativas ........................................... 17
3.4.2.1. Comparación entre signos exclusivamente figurativos..............................18 3.4.2.2. Comparación visual entre dos marcas figurativas con elementos
denominativos ...........................................................................................19 3.4.2.3. Comparación visual entre un signo figurativo con elementos
denominativos y un signo exclusivamente figurativo.................................20 3.4.2.4. Casos particulares al comparar signos figurativos ....................................21 3.4.2.5. Comparación visual de marcas de «color per se».....................................22 3.4.2.6. Comparación visual de marcas tridimensionales (3D) ..............................22
3.5. Comparación fonética.............................................................................. 23 3.5.1. Criterios prácticos ......................................................................................... 23 3.5.2 Signos y elementos de éstos que deben examinarse.................................. 25 3.5.3. Sonidos idénticos/similares en distinto orden .............................................. 28 3.5.4. Signos formados por palabras en lenguas extranjeras o inventadas, o
que las incluyen............................................................................................ 29
3.6. Comparación conceptual: criterios prácticos ........................................ 31 3.6.1 Definición de contenido semántico............................................................... 31
3.6.1.1. El contenido semántico de las palabras ....................................................31 3.6.1.2. El contenido semántico de partes de las palabras ....................................34
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3.6.1.3. El contenido semántico de palabras escritas erróneamente .....................36 3.6.1.4. El contenido semántico de nombres y apellidos........................................37 3.6.1.5. El contenido semántico de signos figurativos, símbolos, formas y
colores.......................................................................................................39 3.6.1.6. El contenido semántico de números y letras .............................................40 3.6.1.7. El contenido semántico de nombres geográficos ......................................41 3.6.1.8. El contenido semántico de onomatopeyas................................................41
3.6.2. Cómo hacer una comparación conceptual ................................................... 42 3.6.2.1. Ambas marcas comparten una palabra y/o expresión ..............................43 3.6.2.2. Dos palabras o términos tienen el mismo significado, pero en lenguas
distintas .....................................................................................................45 3.6.2.3. Dos palabras se refieren a la misma idea representada o variaciones
de ella........................................................................................................45 3.6.2.4. Dos signos figurativos, símbolos o formas representan el mismo objeto
o la misma idea .........................................................................................46 3.6.2.5. Cuando existe un signo denominativo o un signo figurativo, símbolo,
forma o color que representan el concepto que encierra la palabra..........47
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1 Introducción
1.1. Resumen
Subsiste un riesgo de confusión (en particular un riesgo de asociación) si existe riesgo de que el público retenga que los productos o servicios en cuestión proceden de la misma empresa o, en su caso, de empresas vinculadas económicamente al suponer que llevan las mismas marcas.
La existencia de un riesgo de confusión depende de la apreciación global de varios factores interdependientes, que incluyen: (i) la similitud de los productos y servicios, (ii) la similitud de los signos, (iii) los elementos distintivos y dominantes de los signos en conflicto, (iv) el carácter distintivo de la marca anterior y (v) el público destinatario.
El primer paso para apreciar si existe riesgo de confusión consiste en determinar estos cinco factores. El segundo paso es determinar su relevancia.
El presente capítulo se ocupa de la comparación de los signos. La finalidad de la comparación de los signos es determinar si son idénticos (punto 2 de este capítulo), similares (punto 3 de este capítulo) o distintos.
La similitud de los signos es una condición necesaria para que se determine que existe riesgo de confusión a efectos de lo dispuesto en el artículo 8, apartado 1, letra b), del RMC (sentencia de 23 de enero de 2014, en el asunto C-558/12-P, «Western Gold», apartado 44). Si los signos se diferencian claramente, el examen del riesgo de confusión se detendrá en este punto.
1.2. Principios generales
1.2.1. Comparación objetiva
La comparación de los signos consiste en una comparación objetiva, en el sentido de que toma en consideración todos los elementos de los signos, independientemente de su carácter distintivo o dominante. Por ello, en el método gradual que utiliza la Oficina, la apreciación de la similitud de los signos se mantiene separada en principio de la apreciación del carácter distintivo de los elementos que lo componen1.
Sin embargo, la existencia de similitud entre los signos no debe considerarse concluyente para decidir la existencia de un riesgo de confusión. La comparación objetiva de la Oficina establece que, al menos, existe cierto grado de similitud entre los signos, que es necesario para que se ponga en marcha la apreciación global (y que se tendrá en cuenta en la misma), en el ámbito en el que se consideran todos los factores que permiten evaluar globalmente el riesgo de confusión2.
Este método contrasta con otros enfoques que ponderan el carácter distintivo de los diversos elementos de la marcas y examinan al mismo tiempo la similitud de los signos. Aunque se trata únicamente de una diferencia de método que no afecta en
1Directrices de oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 4, Carácter distintivo, y Capítulo 5, Elementos dominantes. 2Directrices de oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 8, Apreciación global.
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última instancia la determinación de un riesgo de confusión, la Oficina utiliza el método descrito en primer lugar por motivos de coherencia de formato.
El mismo método se aplica al examen de la identidad de los signos, identidad que requiere una coincidencia objetiva de todos los elementos, independientemente de que sean distintivos o dominantes.
1.2.2. Tres aspectos: visual, fonético y conceptual
Los signos siempre se comparan a tres niveles, a saber, a nivel visual (punto 3.4. de este capítulo), fonético (punto 3.5 de este capítulo) y conceptual (punto 3.6 de este capítulo), debido a que los signos se pueden percibir visual y fonéticamente (la comparación a través del gusto, el olfato o el tacto resulta menos pertinente, por diversos motivos, o simplemente no es posible), y debido a que los signos pueden evocar una imagen o concepto similar. Únicamente cuando no sea posible realizar la comparación a uno de los niveles (por ejemplo, la comparación fonética si la marca es exclusivamente figurativa) se dejará a un lado este aspecto.
1.2.3. Signos que deben compararse
Al examinar la identidad o similitud, los signos tienen que compararse en su forma protegida, es decir, en la forma en que figuran en el registro o la solicitud. La posibilidad de utilizar las marcas registradas en otras formas o su uso efectivo con dichas formas no resulta pertinente para la comparación de los signos (sentencia de 9 de abril de 2014 en el asunto T- T-623/11 ‘Sobieraj (MILANÓWEK CREAM FUDGE)’ apartado 38)3.
La comparación debe abarcar a los signos en su totalidad. Por ello no es correcto saltarse la comparación de elementos de los signos tan solo porque, por ejemplo, son más pequeños que otros elementos de los signos (a menos que sean insignificantes, como se explica más adelante) o porque carecen de carácter distintivo(sentencia de 12 de junio de 2007 en el asunto C-334/05 P, «LIMONCHELO», apartados 41 y 42, sentencia de 13 de diciembre de 2011, T-61/09, «Schinken King», apartado 46).
1.2.4. Resultados posibles de la comparación
La comparación de los signos da lugar a uno de los siguientes resultados: identidad, similitud o diferencia. Este resultado es determinante para el posterior examen de la oposición, pues tiene las siguientes implicaciones:
la existencia de identidad entre los signos da lugar a una protección absoluta en virtud del artículo 8, apartado 1, letra a), del RMC, si los productos o servicios también son idénticos;
la existencia de similitud da lugar a la apertura del examen de riesgo de confusión con arreglo al artículo 8, apartado 1, letra b), del RMC;
la existencia de diferencia excluye el riesgo de confusión y ya no es necesario examinar los otros requisitos previos del artículo 8, apartado 1, letra b), del RMC.
3En relación con las renuncias a reivindicar derechos exclusivos, véanse las Directrices de oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 4, Carácter distintivo.
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1.2.5. Territorio de referencia y público destinatario
Debe examinarse la similitud en el territorio en que está protegida la marca anterior. El territorio de referencia debe indicarse. Por otra parte, el público destinatario desempeña un papel importante en la comparación de los signos4.
Si la marca anterior es una marca nacional, es necesario analizar los criterios correspondientes en relación con el público destinatario de este Estado miembro de la UE (o Estados miembros en el caso de las marcas del Benelux). La percepción de similitud puede variar de un Estado miembro a otro debido a diferencias de pronunciación y/o significado/comprensión.
Si la marca anterior es una marca comunitaria registrada, este análisis debe extenderse en principio a toda la UE. Sin embargo, en aquellas situaciones en que exista riesgo de confusión en al menos un Estado miembro y si así lo justifica la economía de procedimiento (por ejemplo evitar el examen de pronunciaciones o significados específicos de las marcas en varias lenguas), el análisis de la Oficina no tiene que extenderse a toda la UE, sino que puede concentrarse en la parte o las partes en que exista riesgo de confusión.
El carácter unitario de la marca comunitaria implica que una marca comunitaria anterior puede servir de fundamento en los procedimientos de oposición para oponerse a la solicitud de registro de una marca comunitaria que pueda afectar negativamente a la protección de la primera marca, incluso tan solo en relación con la percepción de los consumidores de una parte de la Unión Europea (sentencia de 18 de septiembre de 2008, en el asunto C-514/06 «Armacell», apartados 56-57 y jurisprudencia consiguiente, inter alia, sentencia de 18 de septiembre de 2012, T- 460/11 «BÜRGER», apartado 52 y jurisprudencia citada).
2. Identidad de los signos
2.1. El concepto de identidad
Como ya se ha indicado, la existencia de identidad entre los signos da lugar al éxito de la oposición con arreglo al artículo 8, apartado 1, letra a), del RMC, si los productos y servicios también son idénticos.
Las diferencias entre el artículo 8, apartado 1, letra a), del RMC y la protección en caso de riesgo de confusión con arreglo al artículo 8, apartado 1, letra b), del RMC deben tenerse en cuenta a la hora de comprender el concepto de identidad y los requisitos que conlleva.
La protección contemplada en el artículo 8, apartado 1, letra a), del RMC es absoluta, pues el registro de un signo posterior idéntico para productos y servicios idénticos comprometería la función de la marca anterior como medio para identificar el origen comercial. Si se han registrado signos o marcas absolutamente idénticos para productos o servicios idénticos, resulta imposible concebir las circunstancias en que se puede excluir todo riesgo de confusión. No es necesario examinar otros factores, como el grado de atención del público o el carácter distintivo de la marca anterior.
4Directrices de oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 6, Público destinatario y grado de atención.
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Por otra parte, con arreglo al artículo 8, artículo 1, letra b), del RMC, la marca anterior está protegida contra el riesgo de confusión, pues incluso si las marcas difieren en algunos elementos, su similitud - en combinación con otros elementos que deben apreciarse de forma global - puede llevar a suponer que los productos correspondientes proceden de la misma empresa o de una empresa asociada económicamente.
Debido a la protección absoluta que concede el artículo 8, apartado 1, letra a), del RMC, el concepto de identidad entre las marcas debe interpretarse de manera estricta. La protección absoluta en el caso de una solicitud de marca comunitaria «que es idéntica a la marca [anterior] para productos o servicios idénticos a aquellos para los que ésta se registró [con arreglo al artículo 8, apartado 1, letra a), del RMC], no puede extenderse más allá de las situaciones para las que se ha previsto, en particular, a las situaciones a las que protege más específicamente el [artículo 8, apartado 1, letra b), del RMC]» (sentencia de 20 de marzo de 2003, en el asunto C-291/00, «LTJ Diffusion» (ARTHUR ET FÉLICIE), apartados 50-54 en relación con las disposiciones correspondientes de la Directiva sobre marcas).
2.2. Umbral para la constatación de identidad
La propia definición de identidad implica que los dos signos deben ser iguales en todos los aspectos. Por consiguiente existe identidad entre las marcas si la solicitud de marca comunitaria reproduce, sin modificaciones ni adiciones, todos los elementos que constituyen la marca anterior.
Sin embargo, como la percepción de la identidad entre el signo y la marca no siempre es resultado de una comparación directa de todas las características de los elementos comparados, el consumidor medio puede pasar por alto diferencias insignificantes entre las marcas.
Por ello, la solicitud de marca comunitaria debe considerarse idéntica a la marca anterior «cuando reproduce, sin modificaciones ni adiciones, todos los elementos que constituyen la marca o cuando, considerado en su conjunto, contiene diferencias tan insignificantes que pueden pasar desapercibidas a los ojos de un consumidor medio» (sentencia de 20 de marzo de 2003, en el asunto C- 291/00, «LTJ Diffusion» (ARTHUR ET FÉLICIE), apartados 50-54).
Una diferencia insignificante entre dos marcas es una diferencia que un consumidor razonablemente observador solo percibirá tras examinar la marca por todos sus ángulos. «Insignificante» no es un término objetivo y su interpretación depende del nivel de complejidad de las marcas comparadas. Son diferencias insignificantes aquellas que, por referirse a elementos muy pequeños o que se pierden dentro de una marca compleja, el ojo humano no puede detectar con facilidad al observar la marca de que se trate, teniendo en cuenta que el consumidor medio no realiza un examen analítico de una marca, sino que la percibe en su conjunto.
La decisión de que un elemento es «insignificante» debe ir acompañada de un razonamiento suficiente acerca de su falta de impacto en la percepción general de la marca.
De la definición de identidad que figura más arriba se desprende que las siguientes condiciones deben cumplirse para que las marcas se consideren idénticas con arreglo al artículo 8, apartado 1, letra a), del RMC:
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Identidad total de los signos en su conjunto. La identidad parcial no es suficiente de acuerdo con el artículo 8, apartado 1, letra a), del RMC; sin embargo, una coincidencia en cualquier parte de la marca puede dar lugar a una similitud entre los signos y debe tenerse en cuenta al realizar el examen contemplado en el artículo 8, apartado 1, letra b), del RMC.
Cualquier elemento adicional es suficiente para concluir que las marcas no son idénticas, independientemente de que el elemento añadido sea una palabra, una forma figurativa o una combinación de ambas.
Por consiguiente, dos marcas denominativas no se considerarán idénticas si una está contenida en la otra, pero va acompañada de otros caracteres (véase el punto 2.4) o palabras, independientemente de su posible carácter distintivo o descriptivo.
Signo anterior Signo impugnado y observaciones Asunto
millenium
MILLENIUM INSURANCE COMPANY LIMITED
Se dictaminó que «los signos obviamente no eran idénticos», a pesar de que los términos «Insurance company limited» describen en lengua inglesa los servicios correspondientes.
R 0696/2011-1
INDIVIDUAL R 0807/2008-4
Identidad a todos los niveles de la comparación. Debe existir identidad entre los signos a todos los niveles de comparación de la marca, es decir, a nivel visual, fonético y conceptual. Si las marcas son idénticas en algunos aspectos (visuales, fonéticos o conceptuales), pero no en otros, no son idénticas en su conjunto. En tal caso pueden ser similares y, por lo tanto, debe examinarse el riesgo de confusión.
2.3. Identidad entre marcas denominativas
Las marcas denominativas son idénticas si ambas son marcas formadas exclusivamente por palabras y coinciden exactamente en la sucesión de letras o números. Las marcas denominativas son aquellas formadas por letras, números y otros signos (por ejemplo, «+», «@», «!») reproducidos en el tipo de letra ordinario utilizado por la oficina respectiva. Esto significa que no reivindican un elemento figurativo o apariencia particular. Si ambas marcas están registradas como marcas denominativas, el tipo de letra utilizado por la oficina respectiva en la publicación oficial (por ejemplo, el Boletín) carece de importancia. Las diferencias en el uso de minúsculas o mayúsculas tampoco tienen importancia, incluso si minúsculas y mayúsculas se alternan.
Las siguientes marcas denominativas son idénticas:
Signo anterior Signo impugnado Asunto
MOMO MoMo B 1 802 233
BLUE MOON Blue Moon R 0835/2010
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GLOBAL CAMPUS Global Campus R 0719/2008-2
ZEUS Zeus R 0760/2007-1
JUMBO Jumbo R 0353/2007-2
DOMINO Domino R 0523/2008-2
apetito APETITO T-129/09
Por lo general debe comprobarse si el signo se ha registrado como marca denominativa. Por ejemplo, si se examina únicamente la representación gráfica de la marca (por ejemplo, en el sistema de Madrid), el resultado puede ser engañoso, pues una marca reivindicada como marca denominativa puede incluir elementos o tipos de letra figurativos o estilizados, dependiendo de la representación gráfica de los signos utilizada en los certificados, boletines, etc. En estos casos, la declaración prevalecerá sobre la reproducción exacta en el certificado, boletines, etc.
Las marcas no escritas con caracteres latinos deben considerarse marcas denominativas en las jurisdicciones designadas en las que se utilicen oficialmente estos caracteres (por ejemplo, caracteres cirílicos en el caso de una marca comunitaria o un registro internacional que designe a Bulgaria o a la UE, de conformidad con la categoría nº 28.05 «inscripciones de caracteres cirílicos» de la Clasificación de Viena de elementos figurativos).
Signo anterior Signo impugnado Asunto
B 1 827 537
Una diferencia en tan solo una letra es suficiente para que no exista identidad. Lo mismo ocurre con un espacio o signo de puntuación (por ejemplo, un guión, un punto y aparte), ya que su presencia puede modificar la forma en que se percibe el signo (véase el primer ejemplo a continuación). Las siguientes marcas denominativas no son idénticas:
Signo anterior Signo impugnado Asunto
She , SHE S-HE T-391/06
TELIA teeli B 13 948
NOVALLOY NOVALOY B 29 290
HERBO-FARMA HERBOFARM R 1752/2010-1
2.4. Marcas denominativas y marcas figurativas
Una marca denominativa y una marca figurativa, incluso si ambas consisten en la misma palabra, no serán idénticas a menos que las diferencias puedan pasar desapercibidas para el público destinatario.
En los siguientes ejemplos resulta evidente que los signos no son idénticos:
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Signo anterior Signo impugnado Asunto
IHotel T-277/11
ELCO R 0803/2008-1
eClear R 1807/2010-1
BIG BROTHER R 0932/2010-4
Sin embargo, declarar que las marcas no son idénticas puede resultar más difícil si la marca figurativa está escrita con un tipo de letra normal. No obstante, en los ejemplos siguientes se consideró que las marcas no eran idénticas:
Signo anterior Signo impugnado Asunto
THOMSON R 0252/2008-1
Klepper R 0964/2009-1
2.5. Identidad de marcas figurativas
Existe identidad entre dos marcas figurativas cuando ambos signos coinciden en todos sus elementos figurativos (forma, colores, contraste, sombreado, etc.).
No hace falta decir que el uso de la misma palabra, cuando el elemento figurativo no es el mismo, no basta para que exista identidad. Las siguientes marcas no son idénticas:
Signo anterior Signo impugnado Asunto
R 0558/2011-1
R 1440/2010-1
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7078 C
Sin embargo, como en el siguiente caso la diferencia en la presentación de las letras «TEP» en cursiva pasa desapercibida para el público, las marcas se consideraron idénticas:
Signo anterior Signo impugnado Asunto
B 2 031 741
2.6 Identidad de una marca anterior en blanco y negro o en escala de grises con una solicitud de marca en color5
En el marco de la Red europea de marcas, dibujos y modelos, la Oficina y varias oficinas de marcas de la Unión Europea han convenido en una práctica común relativa al alcance de la identidad de marcas anteriores en blanco y negro o en escala de grises con las versiones coloreadas del mismo signo.
Con arreglo a esta práctica convergente, las diferencias entre una marca anterior en blanco y negro o en escala de grises y una versión coloreada del mismo signo serán percibidas normalmente por el consumidor medio, con la consecuencia de que las marcas en cuestión no se consideran idénticas. Únicamente en circunstancias excepcionales los signos se considerarán idénticos; a saber, cuando las diferencias en los colores o en el contraste de los matices sean tan insignificantes que un consumidor razonablemente atento las percibirá solo mediante un examen de las marcas colocadas una junto a la otra. En otras palabras, para determinar la identidad, las diferencias en el color de los signos en cuestión deberán ser apenas apreciables por un consumidor medio.
Ejemplos inventados de diferencias significativas, con la consecuencia de la ausencia de identidad:
Signo anterior Signo impugnado
5 Modificado el 2.06.2014
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Ejemplos inventados de diferencias insignificantes, con la consecuencia de la existencia de identidad:
Signo anterior Signo impugnado
En relación con las anteriores conclusiones, la cuestión de si una marca registrada en blanco y negro debe considerarse que cubre todos los colores, ha sido abordada por el Tribunal en una sentencia ulterior (sentencia de 9 de abril de 2014, T-623/11 ‘Sobieraj (MILANÓWEK CREAM FUDGE)’:
Signo anterior Signo impugnado Asunto
et al.
T-623/11
El Tribunal consideró que el hecho de que “el titular de la marca puede utilizarla en un solo color o en una asociación de colores y obtener, en su caso, la protección que ofrecen los textos pertinentes aplicables (…). Ello no puede significar, (…) que el registro de una marca que no designe ningún color en particular cubra ««todas las combinaciones de colores incluidas en la representación gráfica” (apartado 39)
En el caso particular, el Tribunal consideró que la Sala correctamente encontró que “una diferencia entre la marca solicitada y las marcas anteriores primera y segunda residía en el hecho de que la marca solicitada estaba formada, en parte, por un fondo amarillo con bandas verticales blancas” (apartado 40).
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3. Similitud entre los signos
3.1. El concepto de similitud
Según la jurisprudencia, dos marcas son similares cuando desde la perspectiva del público destinatario, entre otras cosas, son parcialmente idénticas en uno o varios aspectos importantes (sentencia de 23 de octubre de 2002 en el asunto T-6/01, «Matratzen», apartado 30 (C-03/03 P); sentencia de 12 de noviembre de 2008 en el asunto T-281/07, «BLUE», apartado 26). La apreciación global del riesgo de confusión debe basarse, por lo que se refiere a la similitud visual, fonética o conceptual de las marcas de que se trate, en la impresión de conjunto producida por las marcas, teniendo en cuenta, en particular, sus elementos distintivos y dominantes (sentencia de 11 de noviembre de 1997 en el asunto C- 251/95, «SABEL», apartado 23).
3.2. Umbral para la existencia de similitud
Si existe similitud en uno o varios de los tres niveles, los signos son similares (sentencia de 2 de diciembre de 2009 en el asunto T-434/07, «Volvo», apartados 50- 53). La cuestión de si los signos son lo suficientemente similares como para provocar una probable confusión deberá abordarse en otra sección de la decisión («La apreciación global») y no en la sección que aborda la comparación de los signos.
Una consecuencia lógica de que este umbral sea tan bajo es que la existencia de similitud no da lugar automáticamente a la existencia de riesgo de confusión, incluido el riesgo de asociación, incluso si los productos y servicios son similares o idénticos. Como ya se ha indicado, el riesgo de confusión, incluido el riesgo de asociación, depende de numerosos factores que primero deben examinarse por separado6.
Puesto que no siempre resulta fácil definir la línea que separa lo similar de lo diferente, estos conceptos se abordan conjuntamente en cada una de las comparaciones: la comparación visual, la comparación fonética y la comparación conceptual.
3.3. Elementos insignificantes
Como se menciona en el punto 1.2.1., la comparación debe abarcar la totalidad de los signos. Sin embargo, si se trata de elementos insignificantes, la Oficina puede obviar la comparación de estos elementos desde un principio, tras haber razonado detenidamente por qué se consideran insignificantes (véase la sentencia de 12 de junio de 2007 en el asunto C-334/05 P, «LIMONCHELO», apartado 42). Esto es especialmente importante cuando el elemento insignificante es el elemento común de los signos. La noción de elementos insignificantes debe interpretarse estrictamente y, en caso de duda, la decisión debe cubrir los signos en su integridad.
La Oficina considera que un elemento insignificante se refiere a un elemento que, debido a su tamaño o posición, no puede percibirse a primera vista o que forma parte de un signo complejo con numerosos otros elementos (por ejemplo, etiquetas de bebidas, embalajes, etc.) y, por consiguiente, es muy probable que pase desapercibido para el público destinatario.
6Directrices de oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 8, Apreciación global.
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Ejemplos:
Signo anterior Signo impugnado Asunto
(GREEN BY MISSAKO)
T-162/08
Las palabras «by missako» son casi ilegibles, ya que su tamaño y tipo de letra hacen que resulte difícil descifrarlas.
LUNA
R 2347/2010-2
El elemento «Rótulos Luna S.A.» se consideró insignificante.
MATHEUS MÜLLER
R 0396/2010-1
La Sala no examinó el aspecto fonético o conceptual de los elementos «30 cl» «30% vol.» «ANNO» o «1857».
MAGNA
R 1328/2005-2
La Sala describió el signo impugnado en su totalidad, pero los elementos insignificantes como «70%» no se incluyeron en la comparación de los tres aspectos.
T-472/08
Los elementos distintos a «cachaça»/«pirassununga» y «51», este último escrito en color blanco dentro de un círculo situado parcialmente dentro de una amplia franja que transcurría de un lado a otro del signo, son insignificantes en la impresión de conjunto creada por estas marcas (véase apartado 65).
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3.4. Comparación visual
3.4.1 Comparación visual de las marcas denominativas
Si se trata de una marca formada por al menos una palabra, dicha palabra goza de protección como tal, pero no su forma escrita.
Según la jurisprudencia, una marca denominativa es una marca constituida exclusivamente por letras, palabras o asociaciones de palabras, escritas en caracteres de imprenta de tipo normal, sin elemento gráfico específico (sentencia de 20 de abril de 2005, en el asunto T-211/03 «Faber», apartado 33, y la sentencia de 13 de febrero de 2007, en el asunto T-353/04, «CURON», apartado 74). La protección que ofrece el registro de una marca denominativa se aplica al término formulado en la solicitud de registro y no a las características gráficas o estilísticas particulares que podría poseer la marca (sentencia de 22 de mayo de 2008, en el asunto T-254/06, «RadioCom», apartado 43).
Por consiguiente, el hecho de que la palabra esté representada en minúsculas o mayúsculas resulta irrelevante:
Signo anterior Signo impugnado Asunto
BABIDU babilu T-66/11 (apartado 57)
BALLYMANOR BallyM R 0391/2010-1
3.4.1.1. Comparación entre marcas denominativas
En el caso de las marcas denominativas, la comparación visual se basa en un análisis del número y secuencia de las letras/caracteres, la posición de las palabras/caracteres coincidentes, el número de palabras y la estructura de los signos (por ejemplo, los elementos denominativos están separados o unidos mediante guiones).
No obstante, el consumidor medio normalmente percibe un signo en su conjunto y no procede a analizar sus diversos detalles. Por ello, las pequeñas diferencias en (el número de) las letras a menudo no bastan para excluir la existencia de una similitud visual, sobre todo cuando los signos tienen una estructura común.
En los siguientes casos, las marcas se consideraron similares visualmente:
Signo anterior Signo impugnado Asunto
CIRCULON CIRCON T-542/10
MEDINETTE MESILETTE T-342/10
FORTIS FORIS R 0049/2002-4
ARTEX ALREX T-154/03
BALLYMANOR BallyM R 0391/2010-1
MARILA MARILAN R 0799/2010-1
EPILEX E-PLEX T-161/10
CHALOU CHABOU T-323/10
Las siguientes marcas denominativas son diferentes visualmente:
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Signo anterior Signo impugnado Asunto
CAPOL ARCOL C-193/09 P y T-402/07
La Sala determinó que, aunque las marcas comparten la letra «a» y la terminación en «ol», claramente difieren visualmente. El Tribunal General convino con esta determinación. Estableció que el mismo número de letras en las dos marcas no posee, per se, relevancia particular alguna para el público destinatario, ni tan siquiera para un público especializado. Puesto que el alfabeto se compone de un número limitado de letras que, además, no se utilizan todas con la misma frecuencia, es inevitable que muchas palabras posean el mismo número de letras, y que, incluso, compartan algunas de ellas, pero no pueden considerarse, solo por esa razón, visualmente similares. Por otra parte, el público, en general, no es consciente de la cifra exacta de letras de una marca denominativa y, en consecuencia, no se dará cuenta, en la mayoría de los casos, de que las dos marcas en conflicto poseen el mismo número de letras (apartados 81 y 82). El Tribunal determinó asimismo que lo que importa en la apreciación de la similitud visual de dos marcas denominativas es la presencia, en cada una de ellas, de varias letras en el mismo orden (apartado 83). La terminación en «ol» de las marcas en cuestión constituye un elemento común de las mismas, pero se sitúa en su parte posterior y viene precedida de grupos de letras completamente diferentes («arc» y «cap», respectivamente), por lo que la Sala de Recurso concluyó correctamente que tal elemento común no dota a las marcas de similitud visual (apartado 83). El Tribunal de Justicia respaldó tal apreciación desde una perspectiva visual (apartado 74).
3.4.1.2. Comparación entre una marca denominativa y una marca figurativa con elementos denominativos
Si se comparan visualmente marcas figurativas con elementos denominativos y marcas denominativas, lo importante es si los signos comparten un número significativo de letras en la misma posición y si el elemento denominativo de la marca figurativa se encuentra sumamente estilizado. Puede existir similitud a pesar de que las letras se representen gráficamente con diferentes tipos de letra, en cursiva o en negrita, en mayúsculas o minúsculas, o de colores.
En principio, si las mismas letras se describen en el mismo orden, cualquier variación de estilo debe ser muy marcada para que exista diferencia visual.
Las siguientes marcas se consideraron similares visualmente porque no presentaban una gran variación de estilo en los elementos denominativos de las marcas figurativas y porque el elemento denominativo se podía reconocer y leer fácilmente:
Signo anterior Signo impugnado Asunto
VITAFIT T-552/10
Hella T-522/10
vitafresh R 0399/2009-1
COTO DE IMAZ R 0409/2009-1
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vendus sales & communication group R 0994/2009-4
OPENDOOR R1309/2008-4
VITESSE R 0636/2008-4
EMERGEA T-172/04
Sin embargo, en los casos en que el elemento denominativo de la marca figurativa está sumamente estilizado, las marcas deben considerarse visualmente diferentes, como en los siguientes ejemplos:
Signo anterior Signo impugnado Asunto
NEFF R 1242/2009-2
NODUS R 1108/2006-4
3.4.2. Comparación visual sin marcas denominativas
Cuando ninguno de los signos que deben compararse es una marca denominativa, es necesario distinguir entre los elementos exclusivamente figurativos de las marcas y los elementos denominativos:
Al comparar los signos en conflicto por sus elementos exclusivamente figurativos, la Oficina considera estos últimos como imágenes: de modo que si coinciden en un elemento reconocible por separado o tienen el mismo contorno o uno similar, es probable que exista cierta similitud visual.
Al comparar los signos por sus elementos denominativos, la Oficina considera que los signos son similares en la medida en que compartan un número significativo de letras en la misma posición, si no están sumamente estilizados o si presentan el mismo estilo o uno similar. Puede existir similitud a pesar de que las letras se representen gráficamente con tipos de letra diferentes, en cursiva o negrita, en mayúsculas o minúsculas, o de colores (sentencia de 18 de junio de 2009 en el asunto T-418/07, «LiBRO» y sentencia de 15 de noviembre de 2011, en el asunto T-434/10, «ALPINE PRO SPORTSWEAR AND EQUIPMENT», recurso C-42/12 P desestimado).
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En términos generales existen tres tipos de comparación visual:
Comparación entre signos exclusivamente figurativos: los signos son visualmente similares si coincide cualquiera de sus elementos.
Comparación entre signos figurativos con elementos denominativos: los signos son visualmente similares si sus elementos figurativos coinciden o bien si comparten palabras o letras escritas con el mismo tipo de letra o uno similar o un tipo de letra que no esté sumamente estilizado.
Comparación entre signos figurativos con elementos denominativos y signos exclusivamente figurativos: los signos son visualmente similares si coincide cualquiera de sus elementos figurativos.
Estos tres tipos de comparaciones se exponen con más detalle a continuación y al final se describen algunas situaciones particulares.
3.4.2.1. Comparación entre signos exclusivamente figurativos
Como ya se ha explicado, los signos pueden ser visualmente similares si coinciden o su contorno es similar.
Los siguientes signos exclusivamente figurativos se consideraron similares visualmente.
Signo anterior Signo impugnado Asunto
T-379/08
B 1 157 769
T-523/08
Los siguientes signos exclusivamente figurativos se consideraron diferentes visualmente:
Signo anterior Signo impugnado Asunto
B 1 572 059
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T-502/11
3.4.2.2. Comparación visual entre dos marcas figurativas con elementos denominativos
Como ya se ha señalado, en caso de que ambos signos contengan elementos denominativos, habrá similitud si estos elementos coinciden en el orden de las letras no sumamente estilizadas, incluso si las letras se representan gráficamente de forma diferente, pero no presentan tipos de letra sumamente estilizados, ya sea en cursiva o en negrita, en mayúsculas o minúsculas, o de colores (sentencia de 18 de junio de 2009 en el asunto T-418/07 «LiBRO» y sentencia de 15 de noviembre de 2011 en el asunto T-434/10, «ALPINE PRO SPORTSWEAR & EQUIPMENT», recurso C-42/12 P desestimado).
En los ejemplos a continuación, las marcas se consideraron similares visualmente porque comparten algunas palabras o secuencias de letras, y el tipo de letra no se consideró sumamente estilizado:
Signo anterior Signo impugnado Asunto
T-418/07
T-434/10 (recurso desestimado)
R 1148/2008
T-460/09
T-204/09
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T-383/12
Sin embargo, en los siguientes ejemplos, las marcas se consideraron diferentes visualmente, a pesar de que compartían algunas palabras, letras o elementos figurativos, debido a que las letras comunes estaban sumamente estilizadas, estaban colocadas en un lugar diferente o aparecían elementos figurativos adicionales:
Signo anterior Signo impugnado Asunto
T-390/03
T-106/06
R 1109/2008-1
R 0576/2010-2 (confirmada por la sentencia en
el asunto T-593/10)
R 0111/2010-4
3.4.2.3. Comparación visual entre un signo figurativo con elementos denominativos y un signo exclusivamente figurativo
Una coincidencia en un elemento figurativo que se perciba visualmente de forma idéntica o similar puede dar lugar a una similitud visual.
En los siguientes ejemplos existían similitudes visuales debido a la coincidencia entre elementos figurativos:
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Signo anterior Signo impugnado Asunto
T-81/03, T-82/03 y T-103/03
(i)
(ii) R 0144/2010-2
R 1022/2009-2
En el ejemplo a continuación, los elementos figurativos son diferentes y los signos se consideraron diferentes visualmente:
Signo anterior Signo impugnado Asunto
B 134 900
Las marcas se consideraron diferentes visualmente.
3.4.2.4. Casos particulares al comparar signos figurativos
Al comparar visualmente signos figurativos es posible encontrar similitud visual incluso si los elementos figurativos son diferentes (es decir, no coinciden ni tienen el mismo contorno o uno similar) y los elementos denominativos son diferentes. Existirá similitud cuando el estilo, la estructura y la combinación de colores en su conjunto hagan que los signos resulten similares visualmente en su conjunto.
El siguiente ejemplo ilustra hasta qué punto una estructura, estilo y combinación de colores similares pueden hacer que dos signos sean visualmente similares.
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Signo anterior Signo impugnado Asunto
B 1 220 724
Los signos se consideraron visualmente similares.
3.4.2.5. Comparación visual de marcas de «color per se»
Al comparar marcas compuestas exclusivamente por colores, existirá similitud visual en la medida en que contengan los mismos colores o combinaciones de colores o tonos similares.
Ejemplo:
Signo anterior Signo impugnado Asunto
Indicación del color: Curry (ocre) amarillo RAL 6003- HR/verde olivo RAL 1027-HR.
Indicación del color: Amarillo, Pantone PMS 142, verde
RAL 6001
B 1 229 790
Los signos se consideraron visualmente similares en la medida en que ambos contenían tonalidades similares de verde y amarillo.
3.4.2.6. Comparación visual de marcas tridimensionales (3D)
Al comparar signos tridimensionales con signos bidimensionales deben aplicarse los mismos principios básicos que al comparar marcas bidimensionales. Aunque la rareza comparativa del signo tridimensional generalmente influirá ante todo en la impresión visual del signo, este hecho debe considerarse en relación con la impresión de conjunto.
En cambio, existe un bajo grado de similitud visual entre las siguientes marcas:
Signo anterior Signo impugnado Asunto
R 0806/2009-4
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T-24/08
Las siguientes marcas son visualmente diferentes:
Signo anterior Signo impugnado Asunto
R 0806/2009, apartado 34
3.5. Comparación fonética
3.5.1. Criterios prácticos
Si la oposición se basa en signos anteriores que gozan de protección en diferentes Estados miembros de la UE, deben tenerse en cuenta, en principio, todas las formas en que el público destinatario pronuncia los signos en todas las lenguas oficiales de dichos Estados miembros. Los acentos locales no se toman en consideración. No obstante, como ya se ha mencionado, si la marca es una marca comunitaria, este análisis debe extenderse en principio a toda la UE. Sin embargo, en aquellas situaciones en que exista riesgo de confusión en al menos un Estado miembro y si así lo justifica la economía de procedimiento (como evitar el examen de pronunciaciones o significados específicos de las marcas en varias lenguas), no es necesario que el análisis de la Oficina se extienda a toda la UE, sino que puede concentrarse en la parte o las partes en las que exista riesgo de confusión.
El número y el orden de las sílabas de un signo ejercen una importante influencia en la impresión fonética general que produce. El ritmo y entonación común de los signos desempeñan un importante papel en la forma en que los signos se perciben fonéticamente. El diccionario «Collins English Dictionary» define el término «ritmo» como «el arreglo de palabras en un orden más o menos regular de sílabas acentuadas y no acentuadas o largas y cortas». «Entonación» se define como «la pauta sonora de frases y oraciones producida por una variación del tono de la voz».
Por consiguiente, los elementos clave para determinar la impresión fonética general de una marca son las sílabas y su orden y acento particulares. El examen de las sílabas comunes reviste una especial importancia al comparar marcas fonéticamente, ya que
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una impresión fonética general similar estará determinada en la mayoría de los casos por dichas sílabas comunes y su combinación idéntica o similar.
Las siguientes marcas son diferentes fonéticamente:
Signo anterior Signo impugnado Territorio dereferencia Asunto
CAPOL ARCOL UE C-193/09
CLENOSAN ALEOSAN ES R 1669/2010-2
GULAS MARGULIÑAS ES R 1462/2010-2
Las siguientes marcas son similares/idénticas fonéticamente:
Signo anterior Signo impugnado Territorio dereferencia Asunto
FEMARA UE
R 0722/2008-4
BX R 0166/2010-1
DE R 1071/2009-1 similar en bajo
grado
Portugués: «[U]na parte importante de ese público dispone
al menos de conocimientos básicos de esa lengua que le
permiten entender y pronunciar palabras inglesas tan básicas
y comunes como “forever” o
pronunciar en inglés números menores
que diez»(apartado 68)
«[H]abida cuenta […] del muy extendido
uso del denominado “lenguaje SMS”, el
número 4 se asocia a una palabra en
inglés, generalmente se lee también en
inglés (apartado 69).
T-528/11
Las marcas compuestas por una sola letra pueden compararse fonéticamente. Las siguientes marcas son fonéticamente idénticas, en la medida en que ambas reproducen la letra «A»:
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Marca anterior Signo impugnado Asunto
T-115/02
3.5.2 Signos y elementos de éstos que deben examinarse
Por definición, una marca figurativa sin elementos denominativos no puede pronunciarse. Como mucho, su contenido visual o conceptual puede describirse oralmente (sentencia de 7 de febrero de 2012 en el asunto T-424/10, «Figura de rectángulo con elefantes», apartado 46).
En otras palabras, las marcas exclusivamente figurativas (es decir, aquellas que no contienen elementos denominativos) no son objeto de un examen fonético. El «significado» que la imagen evoca debe examinarse únicamente desde una perspectiva visual y conceptual.
En los ejemplos a continuación no pudo realizarse una comparación fonética debido a que las marcas son exclusivamente figurativas:
Signo anterior Signo impugnado Asunto
R 0131/2010-4
R 0403/2009-2
T-424/10
Por otra parte, si uno de los signos tiene elementos que puedan leerse y el otro solo tiene elementos figurativos que no pueden ser objeto de un examen fonético, no podrá efectuarse una comparación fonética. Por ejemplo:
Signo anterior Signo impugnado Asunto
(KUNGFU)
R 0144/2010-2
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En cuanto a la pronunciación de elementos figurativos que recuerdan una letra, cabe señalar que el público destinatario suele leer dichos elementos figurativos únicamente si están relacionados con una palabra conocida por dicho público o una parte de ella, como en los siguientes ejemplos:
Signo anterior Signo impugnado Asunto
OLI SONE B 1 269 549
ROCK T-146/08
Por último, aunque las palabras, letras y números siempre deben ser objeto de un examen fonético, algunos símbolos y abreviaturas plantean dudas.
Por ejemplo, el logograma «&» (código de signo) generalmente se lee y pronuncia y, por lo tanto, debe incluirse en la comparación fonética. Sin embargo, la pronunciación de determinados símbolos puede diferir entre distintas lenguas.
Signo anterior Signo impugnado Asunto
DNG
R 0160/2010-2 El símbolo «&» se pronunciará en la mayoría de las lenguas de la Unión Europea y se reconoce como la traducción correspondiente a la conjunción «y».
Otro tanto ocurre con el carácter tipográfico @, que en principio se pronuncia. Como es obvio, la pronunciación de determinados símbolos puede variar entre distintas lenguas.
Signo anterior Signo impugnado Asunto
R 1421/2010-4 @ se pronuncia como «at» o
«arrobas» en el Benelux (apartado 21).
En el caso precedente, no puede negarse que una parte significativa del público destinatario -en particular el de habla inglesa- lee el símbolo como «at» y, de este modo, pronuncian la marca como «at home». Por lo tanto, esta posibilidad debe tomarse en cuenta, junto con otras posibilidades, como «a home» o simplemente «home». Como es lógico, el símbolo puede leerse en otras lenguas de una manera distinta (por ejemplo, «arroba» en español y portugués).
Sin embargo, comparemos esto con:
Signo anterior Signo impugnado Asunto
R 0719/2010-1 (T-220/11 desestimado, C-524/12 P desestimado)
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El símbolo @ será percibido como la letra «a» (al menos) por el público de habla inglesa (apartado 25).
El público destinatario puede pronunciar los símbolos «más» (+) y «menos/guión» (-), dependiendo de las circunstancias. El símbolo «menos» puede pronunciarse si se usa en combinación con un número, por ejemplo «-1», pero no se pronuncia si se usa como guión (como en «G-Star»).
En los siguientes ejemplos, el símbolo «+» de la solicitud de marca comunitaria impugnada se pronunciaría como «más».
Signo anterior Signo impugnado Asunto
AirPlus International T-321/07
(C-216/10 P desestimado)
T-400/06
Los símbolos de divisas («€»,«$», «₤», etc.) también pueden pronunciarse cuando se lee en voz alta la marca correspondiente. He aquí un ejemplo (ficticio), en el Reino Unido: el signo «₤20» se pronunciaría como «20 libras». Por consiguiente, los signos «₤20», «20 libras» y «veinte libras» son fonéticamente idénticos.
Sin embargo, en ocasiones, la forma en que se usan los símbolos -o letras- hace que resulte ilusorio suponer que se leerán y pronunciarán, por ejemplo, cuando en una marca figurativa un símbolo se repite para crear una pauta, se encuentra muy distorsionado o no puede leerse con claridad. Este hecho se ilustra en los siguientes ejemplos:
Marca Explicación
T-593/10
En esta marca figurativa se puede leer la letra «B». Por lo tanto, la marca debe examinarse fonéticamente.
T-593/10
En esta marca figurativa, la letra «B» está tan distorsionada que el Tribunal estableció que, para parte del público, resulta difícil determinar claramente si se trata de la letra «b» o del número «8».
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R 1779/2010-4
Resulta muy difícil determinar la pronunciación del signo. Por ello, una comparación fonética puede arrojar resultados muy divergentes, desde la identidad hasta la diferencia.
B 1 127 416
En esta marca figurativa, la letra «H» puede leerse y, por lo tanto, debe examinarse fonéticamente.
B 1 127 416
En este signo, la pauta hace que sea poco probable que los consumidores lean una letra "«H» (o mejor dicho, varias letras «H»). Esta marca no puede examinarse fonéticamente.
T-282/12 El Tribunal determinó que, aunque resultan apenas legibles a primera vista, los términos FREE y STYLE en los dos signos se pronuncian de manera idéntica, con independencia de la lengua del público en cuestión.
En resumen, el hecho de que un símbolo o letra pueda pronunciarse o no depende del tipo de carácter de que se trate, de la forma en que se representa y de la manera en que se combina con otros elementos del signo.
3.5.3. Sonidos idénticos/similares en distinto orden
Si las marcas en conflicto están formadas por sílabas o palabras que son idénticas o muy similares, pero que se presentan en un orden distinto, de modo que con tan solo cambiar de lugar una de las sílabas o palabras los signos serían idénticos o muy similares fonéticamente, la conclusión debe ser que los signos son similares fonéticamente.
Por ejemplo:
Signo anterior Signo impugnado Asunto
SAT-COM COM S.A.T B 361 461
VITS4KIDS Kids Vits T-484/08 (C-84/10 Pdesestimado)
T-67/08
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3.5.4. Signos formados por palabras en lenguas extranjeras o inventadas, o que las incluyen
Si un signo contiene palabras extranjeras, cabe suponer en principio que el público destinatario desconoce la forma en que sus hablantes nativos pronuncian su propia lengua. Por consiguiente, el público suele pronunciar una palabra en lengua extranjera de acuerdo con las reglas fonéticas de su propia lengua.
Signo anterior Signoimpugnado Asunto
LIDL LIFEL
R 0410/2010-1 Las primeras dos letras y la última son idénticas en ambas marcas. Fonéticamente, la similitud es aún más marcada debido a que «LIDL» se pronunciará con frecuencia como si se deletrease «LIDEL». Por razones fonológicas, «D» y «L» son de casi imposible pronunciación en la mayoría de las lenguas sin insertar una vocal entre ellas. En consecuencia, las marcas deben pronunciarse «LIFEL» y «LIDE»L en lenguas como el español, italiano, alemán y francés.
KAN-OPHTAL PAN-OPHTAL BAÑOFTAL
T-346/09 El territorio de referencia es Alemania. El Tribunal dictaminó la existencia de similitud fonética. El consumidor alemán probablemente pronunciará las letras «N» y «Ñ» de la misma manera. Además, las letras «P» y «B» se pronuncian con ambos labios y su sonido puede confundirse si están acompañadas de la misma vocal, por lo que los signos «PAN- OPHTAL» y «BAÑOFTAL» son muy similares fonéticamente.
GLANZ GLÄNSA
T-88/10 El Tribunal General dictaminó que la metafonía no modifica la impresión fonética general para las personas de habla inglesa, francesa y española, ya que estas lenguas no tienen la letra «ä» (apartado 40).
Sin embargo, no será éste el caso si el público destinatario está familiarizado con una palabra, como en los siguientes casos:
Si es un hecho demostrado que el público destinatario conoce una lengua extranjera. Por ejemplo, el Tribunal ha confirmado que el público comprende al menos en general la lengua inglesa en los países escandinavos, los Países Bajos y Finlandia (sentencia de 26 de noviembre de 2008 en el asunto T-435/07, «NEW LOOK», apartado 23).
Cuando el público destinatario conoce claramente cierta terminología para determinadas clases de productos o servicios. Por ejemplo, los profesionales y científicos de las tecnologías de la información generalmente conocen mejor el uso del vocabulario técnico y básico de la lengua inglesa que el consumidor medio, independientemente del territorio de que se trate (sentencia de 27 de noviembre de 2007 en el asunto T-434/05, «ACTIVITY Media Gateway», apartados 38 y 48 para el ámbito de las TI (C-57/08 P desestimado) y la sentencia de 09 de marzo de 2012, T-207/11, «EyeSense», apartados 21 y 22 para profesionales alemanes en el ámbito médico).
Cuando palabras básicas, como las palabras inglesas «baby», «love», «one», «surf», «pizza», etc., se entienden en todos los Estados miembros.
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Marca anterior Signo impugnado Asunto
Babylove Baby Love R 0883/2010-2
Por último, cuando una de las partes presenta pruebas convincentes de que dicha palabra es conocida por una parte significativa del público destinatario.
Si una parte significativa del público destinatario pronuncia la palabra en lengua extranjera correctamente, pero otra parte aplica las reglas de su lengua materna, el examen de la similitud fonética debe indicar ambas pronunciaciones y presentar un razonamiento. Por ejemplo:
Signo anterior Signo impugnado Asunto
WRITE RIGHT
(Se trata únicamente de un ejemplo.) Inglés: muy similar fonéticamente.
Español: diferentes fonéticamente.
ZIRH
T-355/02 (recurso C-206/04 P desestimado.) Similar en países de habla inglesa y en España.
En relación con las palabras inventadas o de fantasía (palabras que no corresponden a una palabra existente en la UE), el consumidor de referencia podría pronunciarlas no solo como sonarían de acuerdo con las reglas de pronunciación de su lengua materna, sino también tal como están escritas.
Signo anterior Signoimpugnado Asunto
BAMIX KMIX
T-444/10 El Tribunal General señaló que el elemento denominativo «kmix» no corresponde a una palabra que exista en la Unión Europea y que una parte del público destinatario puede pronunciarlo como se escribe, es decir, como una sola sílaba. Sin embargo, también consideró posible que la marca solicitada se pronunciara como una palabra de dos sílabas, a saber, «ka» y «mix». En algunas lenguas de la Unión Europea (en particular en francés y alemán), la letra «k» se pronuncia como «ka» y la pronunciación «km» no es habitual (apartado 32).
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3.6. Comparación conceptual: criterios prácticos
3.6.1 Definición de contenido semántico
Dos signos son idénticos o conceptualmente similares cuando se percibe que representan la misma idea o una análoga (sentencia de 11 de noviembre de 1997 en el asunto, C-251/95, «SABEL» , apartado 24). El «contenido semántico» de una marca es lo que significa, lo que evoca o, cuando se trata de una imagen o una forma, lo que representa. En este texto, las expresiones «contenido semántico» y «concepto» se utilizan indistintamente.
Si una marca está formada por varios elementos (por ejemplo, una palabra y un elemento figurativo) es necesario definir el concepto de cada uno de ellos. No obstante, si la marca está compuesta por una expresión significativa (formada por dos o más palabras), lo que importa es el significado de la expresión en su conjunto y no el de cada una de las palabras por separado.
No es necesario definir todos los conceptos: solo importan aquellos que puede conocer el público destinatario definido por el territorio de referencia. Por ejemplo, si el territorio de referencia es España, el hecho de que la palabra tenga un significado en polaco normalmente es irrelevante.
Por regla general, los productos y servicios no influyen en la comparación conceptual. Sin embargo, si un término tiene muchos significados y uno de ellos reviste una importancia especial para los productos y servicios de que se trate, la comparación conceptual puede concentrarse en este significado. En todo caso, lo importante es la forma en que el público destinatario percibe el término. No debe imponerse o construirse artificialmente un vínculo entre los productos y servicios, por una parte, y lo que el signo significa, evoca o representa, por otra parte. Por ejemplo, si los productos se refieren a alumbrado y el signo está formado por el elemento «LED» o lo contiene, entonces «diodo luminiscente» es una de los distintos significados de «LED». Por lo tanto, la comparación conceptual puede centrarse en este significado.
3.6.1.1. El contenido semántico de las palabras
Cuando la marca está formada por una palabra o la contiene, el primer paso que debe dar el examinador es buscar la acepción de esa palabra en diccionarios o enciclopedias en la lengua o las lenguas del territorio de referencia. Si la palabra se encuentra en el diccionario o enciclopedia, el significado descrito será la idea representada.
Cabe señalar, como punto de partida, que se considera que el público destinatario de los distintos Estados miembros de la UE habla principalmente las lenguas predominantes en sus respectivos territorios (sentencia de 23 de octubre de 2002, en el asunto T-6/01, «MATRATZEN», apartado 27). Normalmente se trata de las lenguas oficiales de dicho territorio.
Marca anterior Signo impugnado Asunto
HALLOUMI HELLIM T
«Hellim» es la traducción al turco del término griego «halloumi» (un tipo de queso). El territorio de referencia era Chipre. El Tribunal dictaminó que, aunque el turco no es una lengua oficial de la UE, es una de las lenguas oficiales de la República de Chipre. Por consiguiente, una parte de la población
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chipriota comprende y habla la lengua turca (apartado 38). Por este motivo, el Tribunal consideró que el consumidor medio de Chipre, país en el que tanto el griego como el turco son lenguas oficiales, comprende que las palabras «HALLOUMI» o «HELLIM» se refieren al mismo queso especialidad de Chipre. Por consiguiente, existe cierta similitud conceptual entre estas palabras (apartado 41).
Sin embargo, el Tribunal dejó claro igualmente que esta norma se refiere únicamente al significado lingüístico primario del público de dichos territorios. No es una norma inflexible. No debe suponerse automáticamente que la lengua materna del público destinatario es la lengua predominante en el Estado miembro de que se trate o que dicho público tenga conocimientos particulares de otras lenguas (auto de 3 de junio de 2009, en el asunto C-394/08 P, «ZIPCAR», apartado 51).
Por ejemplo, en los siguientes casos deben tenerse en cuenta lenguas distintas a la predominante:
Cuando la palabra en otra lengua es muy parecida a la palabra equivalente en la lengua oficial del territorio de referencia. Por ejemplo, la palabra inglesa «bicycle» se entiende en España porque es muy parecida a la palabra equivalente española, «bicicleta».
Cuando la palabra en una lengua extranjera se utiliza habitualmente en el territorio de referencia. Por ejemplo, la palabra española «bravo» se usa habitualmente como término elogioso, en el sentido de «bien hecho» en Alemania.
Cuando se sabe que el público destinatario está familiarizado con una lengua extranjera. Por ejemplo, el Tribunal ha confirmado que el público comprende al menos en general la lengua inglesa en los países escandinavos, los Países Bajos y Finlandia (sentencia de 26 de noviembre de 2008 en el asunto T-435/07 «NEW LOOK», apartado 23).
Cuando se sabe que el público destinatario está familiarizado con una lengua determinada en relación con algunas clases de productos o servicios. Por ejemplo, el público destinatario para productos informáticos comprende normalmente los términos informáticos en inglés, independientemente del territorio.
Palabras básicas, como las palabras inglesas «love», «one», «surf», «pizza», «baby», etc. se entienden en todos los Estados miembros porque se han hecho de uso internacional.
Por último, cuando una de las partes presenta pruebas de que dicha palabra es conocida por una parte importante del público destinatario.
Los siguientes son ejemplos de los conceptos que encierran las palabras:
Marca Territorio Concepto Asunto
Mirto ES
[en inglés: «myrtle»] en español describe un arbusto de la familia de las mirtáceas, que alcanza una altura de dos a tres metros.
T-427/07
Peer EN Lord T-30/09
Storm EN Mal tiempo T-30/09
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--- STAR
SNACKS
UE
No solo las personas de habla inglesa, sino también la mayor parte del público destinatario entenderá que los términos «star snacks» y «star foods» hacen referencia a alimentos de calidad.
T-492/08 (Star foods I) T-333/11 (Star Foods II)
-
UE
Existe un cierto grado de similitud conceptual, basada en el prefijo «Mc» y las palabras «baby» y «kids», ambas referidas a niños (apartado 42).
T-466/09
Como se muestra en algunos de los ejemplos anteriores, no siempre es necesario presentar una definición completa de diccionario de lo que significa una palabra. Basta con usar un sinónimo, como «Peer=Lord» o «Storm=mal tiempo».
Asimismo, cuando una parte del público percibe el concepto y otra no lo hace o percibe un significado diferente, debe hacerse la distinción correspondiente.
Si la marca consiste en una expresión que tiene un significado propio, el significado de la expresión en su conjunto, a condición de que se entienda como tal por el público destinatario, y no la de cada palabra, será la pertinente para la comparación conceptual (no obstante, véase más abajo la excepción relativa a las expresiones en lenguas extranjeras). Ejemplo ficticio: «KING’S DOMAIN» respecto a «KING SIZE».
Apreciación errónea: «KING» significa «soberano», «DOMAIN» significa «un territorio que se gobierna o controla» y «SIZE» significa «las dimensiones físicas, proporciones, magnitud o alcance de un objeto». Las marcas son conceptualmente similares por compartir el concepto «king» (rey).
Apreciación correcta: «KING’S DOMAIN» significa «un territorio controlado por un rey», «KING SIZE» significa «más grande o largo que el tamaño habitual o normal». Las marcas son conceptualmente diferentes a pesar de compartir la palabra «KING». Este hecho se ilustra en los siguientes ejemplos, en los que se consideró que las marcas eran conceptualmente diferentes:
Signo anterior Signo impugnado Asunto
MOUNTAIN BIKER MOUNTAIN B 1 950
Goldband GoldGips R 0975/2009-4
ALTA FIDELIDAD ALTA B 112 369
La norma antes mencionada sobre la expresión significativa tiene la siguiente excepción: cuando los signos están en una lengua extrajera, una parte importante del público destinatario puede tener un conocimiento limitado de dicha lengua y, por lo tanto, podría no poder distinguir la diferencia de significado entre ambas expresiones. En estos casos es posible que el significado de una expresión como tal no se perciba,
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comprendiéndose solamente los significados de sus distintos elementos. Por ello, puede existir similitud en la medida en que el público comprenda únicamente la parte común. En el ejemplo anterior, si se considera que el público (o una parte de éste) comprende únicamente la palabra «KING», existirá similitud conceptual entre los signos.
Marca anterior Signo impugnado Asunto
ICEBERG ICEBREAKER T-112/09
El Tribunal General consideró que únicamente la parte del público italiano que domina la lengua inglesa comprendería la palabra «icebreaker». Sin embargo, la palabra «iceberg» es una palabra común que tiene un significado obvio inmediato para el público destinatario. Por ello, la marca anterior ICEBERG tiene un significado claro para el público italiano, en tanto que la marca solicitada ICEBREAKER carecería de un significado claro para dicho público.
El Tribunal General indicó igualmente que las marcas en conflicto tienen en común el prefijo «ice» y consideró que esta es una palabra inglesa básica, que puede comprender la mayoría del público destinatario. Concluyó que, puesto que el prefijo «ice» tenía un cierto poder de evocación, debe considerarse que limita la diferencia conceptual entre las marcas en conflicto, al actuar como «puente semántico» (apartados 41 y 42).
A las expresiones que incluyen una combinación de términos técnicos que solo comprende una parte del público destinatario (por ejemplo, palabras en latín, palabras pertenecientes a una jerga altamente especializada) y palabras usadas comúnmente se aplican consideraciones similares. En tales casos es posible que solo se perciba el significado de las palabras usadas comúnmente y no el de la expresión como tal.
3.6.1.2. El contenido semántico de partes de las palabras
A este respecto, el Tribunal observó que, si bien es cierto que el consumidor medio percibe normalmente una marca como un todo, cuyos diferentes detalles no se detiene a examinar, no lo es menos que, al percibir un signo denominativo, lo descompondrá en elementos denominativos que le sugieran un significado concreto o que se parezcan a palabras que conozca (sentencia de 13 de febrero de 2007 en el asunto T- 256/04, «RESPICUR», apartado 57).
Por consiguiente, aunque la norma establece que las marcas se perciben como un todo, la excepción a esta norma dice que, en determinadas circunstancias, los consumidores pueden descomponerlas en partes más pequeñas. Puesto que se trata de una excepción, debe aplicarse de forma restrictiva.
Se aplicará en los siguientes casos:
cuando el propio signo esté dividido visualmente en varias partes (por ejemplo, mediante el uso de mayúsculas, como en AirPlus);
cuando todas las partes indiquen un significado concreto que conoce el público destinatario (por ejemplo, Ecoblue), o bien
cuando solo una parte tienga un significado evidente (por ejemplo, Dermaclin).
Ejemplos de signos divididos visualmente:
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Signo Territorio Concepto Asunto
VITS4KIDS UE La marca contiene «VITS» (que alude a«vitaminas») y «KIDS». T-484/08
AirPlus UE Existen dos significados, «Air» y «Plus», que pueden percibirse visualmente debido a que la palabra «Plus» comienza con una letra mayúscula.
T-321/07 (C-216/10P, recurso desestimado)
UE «AGRO»: referencia a agricultura «HUN»: referencia a Hungría «UNI»: referencia a universal o unión
T-423/08
RNAiFect UE El público destinatario, en particular el especializado, percibirá las primeras letras como una referencia a la abreviatura inglesa de «ácido ribonucleico».
T-80/08
nfon UE
El público destinatario aislará la sílaba «fon» en el signo «nfon» y percibirá este término como relacionado igualmente con los términos «telephone» o «phone» (apartado 60).
T-283/11 (C-193/13 P
desestimado)
Ejemplos de signos no desglosados visualmente, pero en los que todas las partes indican un significado concreto conocido por el público destinatario:
Signo Territorio Concepto Asunto
Ecoblue UE
El elemento denominativo «eco» es un prefijo o abreviatura común en muchas lenguas habladas en la Unión Europea, mientras que la palabra «blue» significa en inglés el color azul y forma parte del vocabulario inglés básico que conoce el público destinatario.
T-281/07 (C-23/09P, recurso desestimado)
Solfrutta / FRUTISOL UE
Los elementos «sol» y «frut» pueden reconocerse en general y entenderse como una alusión a «sol» y «fruta» respectivamente.
T-331/08
RIOJAVINA UE El término «riojavina» que aparece en la marca solicitada se refiere directamente, en cuanto al público destinatario, a productos de la viña y, más concretamente, a vino de La Rioja.
T-138/09 (C-388/10P, recurso desestimado)
Por último, los casos en que solo una parte tiene un significado evidente generalmente son aquellos que tienen un prefijo o sufijo común, por ejemplo:
Signo Territorio Concepto Asunto
DE «DERMA» puede entenderse como una referencia a productos dermatológicos.
B 1 249 467
Como ya se ha explicado, las tres excepciones deben aplicarse estrictamente; por ello, cuando no resulta obvio que una parte o partes indican un significado concreto conocido para el público destinatario, los examinadores deben abstenerse de buscar ex officio estos significados. En los ejemplos a continuación no se encontró concepto alguno en los signos:
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Signo Territorio Concepto Asunto
ATOZ DE, ES, FR,IT, AT
La marca no se percibirá como «de A a Z». Las letras «to» (que corresponden a una preposición inglesa) no destacan de modo alguno respecto a las letras «a» y «z».
T-100/06 (C-559/08P, recurso desestimado)
SpagO BX
La palabra «SpagO» es una palabra inventada que no tiene significado en ninguna de la lenguas oficiales de los países del Benelux. No debe considerarse una combinación formada por «SPA» + «GO».
T-438/07
CITRACAL ---
CICATRAL ES
Los elementos denominativos «cica» y «citra» carecen de un significado concreto, al igual que las terminaciones «tral» y «cal». Por ello, no es probable que el público divida los signos en conflicto en elementos denominativos que tengan un significado concreto o se parezcan a palabras conocidas y que, juntas, formen un conjunto coherente que dé un significado a cada uno de los signos o a uno de ellos.
T-277/08
3.6.1.3. El contenido semántico de palabras escritas erróneamente
No es necesario que una palabra esté escrita correctamente para que el público destinatario perciba la idea que representa. Por ejemplo, aunque la palabra escrita «XTRA» visualmente difiere de la palabra «correcta» «EXTRA», el concepto de la palabra «correcta» (extra) normalmente será transferido a la palabra mal escrita (xtra), debido a que son fonéticamente idénticas.
Los siguientes ejemplos ilustran este aspecto:
Signo Territorio Concepto Asunto
UE Una parte del público destinatario la considerará una referencia a la palabra inglesa «store», que significa «tienda, almacén».
T-309/08
CMORE EN
En vista de la práctica común de enviar mensajes de textos, una parte importante del público en general de Dinamarca y Finlandia probablemente asociará la palabra «CMORE» con una abreviatura o una forma ortográficamente incorrecta del verbo «to see» (ver) en inglés, y el concepto se percibirá como «see more» (ver más).
T-501/08 «SEE MORE / CMORE»
EN El público destinatario puede asociar la palabra «ugli» de la marca anterior con la palabra inglesa «ugly».
T-488/07
UE
El término incluido en la marca evocará en la mente de los consumidores la idea de «yogur», es decir, «un alimento semisólido, ligeramente agrio, elaborado a partir de leche fermentada mediante la adición de bacterias».
B 1 142 688
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ES
Las palabras «KARISMA» y «C@RISMA» hacen referencia a «carisma», es decir, a una cualidad o competencia de una persona investida de la capacidad para influir o inspirar a un gran número de personas.
B 1 012 857
En cualquier caso, los examinadores deben proceder con cautela a la hora de atribuir un significado a una palabra mal escrita, pues es probable que el significado no sea transferido si las palabras no son idénticas (fonéticamente) o si el elemento mal escrito no puede percibirse por separado.
Marca Territorio Concepto Asunto
Bebimil UE
La marca solicitada no contiene la palabra «baby», sino una palabra de fantasía, que se aleja de ésta y carece de un significado evidente y específico, a saber: «bebi».
T-221/06
3.6.1.4. El contenido semántico de nombres y apellidos
El Tribunal General ha aceptado que los nombres poseen un concepto. Por ello es necesario realizar una comparación conceptual si los signos en conflicto están formados por nombres (véanse los ejemplos a continuación).
No obstante, en unas cuantas situaciones, el hecho de que una marca incluya un apellido tiene significado conceptual. En particular, la similitud conceptual no puede ser resultado del simple hecho de que ambas marcas incluyan un nombre, incluso el mismo tipo de nombre (apellido celta, nombre neerlandés, etc.).
Marca Territorio Concepto Asunto
MCKENZIE / McKINLEY UE
El público destinatario reconoce que el prefijo «Mc» significa «hijo de», ya que se trata de un prefijo que figura en muchos apellidos escoceses o irlandeses. Por ello, ese público considerará que los elementos denominativos de las marcas en conflicto son apellidos celtas sin significado conceptual, a menos que el apellido goce de especial notoriedad por pertenecer a una persona famosa.
T-502/07
VANGRACK / VAN GRAF DE
El hecho de que ambas marcas puedan percibirse como nombres alemanes o neerlandeses comunes carece de relevancia en sí mismo para la comparación.
R 1429/2010-4
El simple hecho de que dos nombres puedan agruparse en un término genérico común de «nombres» no constituye similitud conceptual. Por ejemplo, si se comparan FRANK y MIKE, el hecho de que ambos sean nombres no da lugar a la existencia de similitud conceptual, ya que es poco probable que el público establezca un vínculo conceptual entre ambas palabras. En cambio, el hecho de que FRANK y FRANKIE sean el mismo nombre, pero el segundo sea el diminutivo del primero, sí es relevante y debería dar lugar al establecimiento de similitud conceptual.
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Marcas Territorio Concepto Asunto
SILVIAN HEACH (FIG.)/ H. EICH
Italia y otros territorios
Mientras que «HEACH» se percibiría como un apellido de origen anglosajón, el elemento «EICH» se percibiría como un apellido de origen alemán (apartado 66). En vista de ello, los consumidores se darían cuenta de que estos nombres distinguen a personas distintas. Los signos son conceptualmente diferentes (apartado 69).
T-557/10
El hecho de que una marca incluya un nombre puede tener repercusiones en la comparación conceptual en las siguientes situaciones:
(a) Cuando se trata del nombre o apellido de una persona famosa (CERVANTES, MARCO POLO, PICASSO):
Marca Territorio Concepto Asunto
PICASSO UE
El signo denominativo PICASSO representa una idea clara y específica para el público destinatario. El pintor Pablo Picasso goza de tal notoriedad que no resulta plausible considerar, a falta de pruebas específicas que indiquen lo contrario, que el signo PICASSO como marca para vehículos de motor anularía el nombre del pintor en la percepción del consumidor medio.
T-185/02 (C-361/04 P desestimado
‘
(b) Cuando las dos marcas representan el mismo nombre, pero en versiones diferentes (FRANK, con FRANKIE como diminutivo) o lenguas diferentes, como en los siguientes ejemplos:
Marcas Territorio Concepto Asunto
--- ELISE
UE
Es seguro que el público destinatario considerará que estos son nombres femeninos muy parecidos que tienen la misma raíz. En algunos Estados miembros, sobre todo el Reino Unido, Irlanda, Alemania y Austria, el público destinatario los considerará diminutivos del nombre completo «Elizabeth».
T-130/09
PEPEQUILLO / PEPE ES
El público español entenderá el nombre «Pepequillo» como un diminutivo de «Pepe», lo que da lugar a identidad conceptual.
T-580/08
JAMES JONES / JACK JONES UE
Se puede entender que ambas marcas hacen referencia a la misma persona. T-11/09
(c) Cuando puede entenderse que ambas marcas hacen referencia a la misma persona, en particular si la marca anterior está compuesta exclusivamente por un apellido. Por ejemplo cuando un nombre es más importante que el otro:
Marca Territorio Concepto Asunto
Marca ES La marca comunitaria solicitada contiene un T-40/03
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comunitaria solicitada:
Julián Murúa Entrena
Marca anterior: MURUA
nombre español (un nombre y dos apellidos). El primer apellido, que es el más importante para el público español, coincide con la marca anterior.
Marca comunitaria solicitada:
MANSO DE VELASCO
Marca anterior: VELASCO
ES Velasco es un apellido español. Puede entenderse que la marca comunitaria solicitada está compuesta por dos apellidos.
T-259/06
Marca comunitaria solicitada:
Antonio Basile
Marca anterior: BASILE
IT Los signos son similares conceptualmente, puescomparten el mismo apellido (apartado 60). T-133/09 y T- 134/09
(d) Si el nombre que figura en las marcas tiene significado en alguna lengua, la coincidencia en este significado puede dar lugar a similitud conceptual:
Marca Territorio Concepto Asunto
peerstorm / PETER STORM
UE, Reino Unido
Los consumidores de habla inglesa asociarán el nombre «Storm» al mal tiempo (apartado 67). T-30/09
3.6.1.5. El contenido semántico de signos figurativos, símbolos, formas y colores
Los conceptos de las marcas formadas por elementos figurativos o que los contienen, y las marcas consistentes en formas (marcas tridimensionales) serán los que representen dichos elementos figurativos o formas, como en los ejemplos que figuran a continuación:
Marca Territorio Concepto Asunto
BX, DE, ES, FR, IT, AT,
PT
La representación de un tazón rojo sobre un lecho de granos de café.
T-5/08 a T- 7/08
DE Una parte del público destinatario puede reconocer aun pavo real. T-361/08
BX La marca impugnada se describirá como un hombre denegocios jugando al fútbol. R 0403/2009-2
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Por consiguiente, cuando una marca contiene tanto palabras como imágenes, deben examinarse todos los conceptos.
Marca Territorio Conceptos Asunto
EN
El público destinatario puede asociar la palabra «ugli» de la marca anterior con la palabra inglesa «ugly». Un perro bulldog con un cítrico frente a él.
T-488/07
UE
El término «Rioja» de la marca anterior, que se refuerza conceptualmente con la representación de un racimo de uvas y una hoja de vid, hace referencia directamente a productos de la vid y, más concretamente, a vinos de la Rioja.
T-138/09 (C-388/10 P, recurso desestimado)
BL, BX, CY, DE, ES, FR, HU, RO, SK, IT
La marca describe un tipo de pez (un tiburón). La mayoría de los hablantes de la lengua de referencia entenderán que el término «SPAIN» que aparece en la marca impugnada se refiere a España. La palabra «Tiburón» está clara en español, pero no será comprendida así por el resto del público destinatario. El resto del término, «SHARK», probablemente será comprendido por los consumidores de habla inglesa de los territorios de referencia.
B 1 220 724
Por último, el contenido semántico (concepto) de las marcas de color per se es la del color que reproducen.
3.6.1.6. El contenido semántico de números y letras
El concepto de una palabra que representa un número es la cifra que identifica, como en el ejemplo que figura a continuación:
Marca Territorio Significado Asunto
DE La palabra «cero» evoca el número cardinal 0. T-400/06
TV2000 (fig.)/TV1000 LT
Los signos son conceptualmente similares en la medida en que ambos comparten la idea de «televisión» combinada con un número redondo de cuatro dígitos, que se relacionan entre sí además por tratarse de millares (apartado 47).
R 2407/2011-2
7 (fig.)/7 (fig.) UE La Sala de Recurso dictaminó que «7» tenía un significado (apartado 25).
R 0782/2011-2
El concepto de una cifra es el número que identifica, a menos que sugiera otro concepto, como un año determinado.
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La Oficina ha adoptado un enfoque según el cual las letras por sí solas pueden tener un significado conceptual independiente. El Tribunal ha confirmado este enfoque (sentencia de 8 de mayo de 2012 en el asunto T-101/11, «G/G+», apartado 56, desestimado como C-341/12 P), encontrando identidad conceptual cuando ambas marcas pueden percibirse como una misma letra:
Marca Territorio Significado Asunto
/ DE
Para la parte del público destinatario que interpreta los signos como la letra «e» y la parte del público destinatario que los interpreta como la letra «c», los signos son idénticos conceptualmente (apartado 99).
T-22/10
/
et al.
UE Los signos se consideraron idénticosconceptualmente (apartados 60 y 61). T-187/10
3.6.1.7. El contenido semántico de nombres geográficos
Los nombres de ciudades, pueblos, regiones y otras zonas geográficas evocan un concepto que puede ser importante para la comparación conceptual si es probable que el público destinatario los reconozca como tales. Normalmente, el público europeo en general conoce los nombres de capitales y ciudades importantes, así como de los destinos de vacaciones o viajes. Si la percepción del público en un Estado miembro determinado es pertinente, puede suponerse que también se conocen los nombres de las pequeñas ciudades y pueblos.
La falta de pruebas o indicios de que el público destinatario reconoce el nombre geográfico no influye en la comparación conceptual. Véase el ejemplo siguiente:
Marca Territorio Concepto Asunto
c/ DE
El resultado de la comparación conceptual es neutro. No es posible inferir de las alegaciones del recurrente que el nombre «Chtaura» designe una zona agrícola del Líbano conocida por sus productos agrícolas y que también sea conocida por el público especializado de Alemania.
R 1213/2008-4
3.6.1.8. El contenido semántico de onomatopeyas
El análisis de la idea representada por onomatopeyas sigue las normas generales de la comparación conceptual, es decir que su concepto será el representado por la onomatopeya de que se trate, a condición de que pueda demostrarse que el público
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destinatario la reconocerá como tal. Por ejemplo, «WOOF WOOF» representa el ladrido de un perro para las personas de habla inglesa y «MUUU» representa el mugido de una vaca para los hispanoparlantes.
En algunos casos, el contexto en que se usa la onomatopeya puede ser decisivo para determinar si el público destinatario reconocerá su significado. Por ejemplo, en el caso siguiente, la Sala consideró que el público destinatario no interpretaría el signo «PSS» como una onomatopeya en el contexto de los servicios de tecnologías de la información:
Marca Territorio Concepto Asunto
PSS ES
La alegación del solicitante, según la cual la marca anterior también podría pronunciarse como una onomatopeya [para hacer que otra persona guarde silencio], carece de fundamento en vista de los servicios de tecnología de la información incluidos en la marca y del público destinatario, que está acostumbrado, como señala el propio solicitante, a los acrónimos en este ámbito (apartado 42).
R 1433/2007-2
3.6.2. Cómo hacer una comparación conceptual
En esencia, al hacer una comparación conceptual, el examinador debe determinar en primer lugar si los signos presentan un concepto de acuerdo con los principios que se describen en la sección anterior.
Si ninguno de los signos tiene un concepto, el resultado será que no es posible hacer una comparación conceptual.
Si solo uno de los signos evoca un concepto, el resultado será que los signos no son conceptualmente similares.
Cuando ambos signos tengan un concepto, se efectuará la comparación entre los dos, a fin de determinar si los signos son idénticos o similares conceptualmente (es decir, si se refieren a conceptos idénticos o similares) o si son diferentes (es decir, los signos hacen referencia a conceptos distintos).
Los signos serán conceptualmente diferentes cuando incluyan dos palabras para las cuales exista un término genérico que abarque ambas o bien cuando los dos signos formen parte de la misma categoría general de signos. Si las ideas representadas son demasiado diferentes, los signos pueden compartir un concepto general, pero tan amplio que la relación conceptual no resulta relevante. En estos casos no existirá similitud conceptual. Por ejemplo:
El mero hecho de que las dos palabras o símbolos puedan agruparse en un término genérico común no constituye de ninguna manera un argumento de similitud conceptual. Por ejemplo, en el caso de «jaguar» frente a «elefante», el hecho de que ambos sean animales no da lugar a la existencia de similitud
Marca Territorio Concepto Asunto
CLICK DE
Desde un punto de vista conceptual, la marca impugnada «CLICK» es una onomatopeya inglesa que expresa un sonido breve y agudo. Esta palabra se entenderá fácilmente en Alemania, ya que en alemán existe un equivalente parecido, «Klick»"(apartado 45).
R 1394/2006-2
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conceptual, ya que es poco probable que el público establezca un vínculo conceptual entre ambas palabras. De hecho, debido a que las palabras se refieren a animales distintos, deben considerarse diferentes conceptualmente.
Otro tanto ocurre cuando los signos pertenecen al mismo tipo de marca o palabra: el hecho de que «TDI» y «LNF» sean abreviaturas de tres letras carece de relevancia conceptual. Estos signos deben considerarse conceptualmente diferentes.
Otro ejemplo de signos «que pertenecen a la misma categoría» se refiere a los nombres (lo que se relaciona con lo mencionado en el punto 3.6.1.4). Si se comparan FRANK y MIKE, el hecho de que ambos sean nombres carece de relevancia conceptual (puesto de que se encuentran a niveles totalmente diferentes); en cambio, el hecho de que FRANK y FRANKIE sean el mismo nombre, pero el segundo sea el diminutivo del primero, resulta relevante y debería dar lugar a la existencia de similitud conceptual en este caso.
En particular, las marcas serán conceptualmente idénticas o similares en los siguientes casos:
3.6.2.1. Ambas marcas comparten una palabra y/o expresión
Cuando las dos marcas comparten la misma palabra o expresión, las marcas serán conceptualmente similares, como en los siguientes ejemplos:
Signo anterior Signo impugnado Nº de oposición
B 1 209 618 (ES)
Similar: Las marcas comparten el concepto de SOL (=sol: «la estrella que es fuente de luz y calor para los planetas del sistema solar»).
Signo anterior Signo impugnado Asunto
BLUE ECOBLUE T-281/07
(C-23/09P, recurso desestimado) (UE)
Las marcas en conflicto son similares conceptualmente porque ambas se refieren al color azul.
Signo anterior Signo impugnado Nº de oposición
T-MUSIC B 1 081 167 (UE)
Estas marcas son similares conceptualmente porque ambas se refieren al concepto de MÚSICA («el arte de distribuir sonidos en el tiempo para producir una composición continua, unificada y evocativa a través de melodía, armonía, ritmo y timbre»).
Signo anterior Signo impugnado Nº de oposición
B 1 220 724(BL, BX, CY, CZ, DE, ES, FR,
HU, RO, SK e IT)
Las marcas precedentes son similares conceptualmente porque ambos signos presentan una imagen
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del mismo pez (un tiburón) y una referencia a la palabra «SHARK» (tiburón = «cualquiera de las numerosas especies de peces carnívoros de la clase Chondrichthyes (clasificación inferior Elasmobranchii)… »).
Signo anterior Signo impugnado Asunto
EL CASTILLO CASTILLO T-85/02 (ES)
El Tribunal dictaminó que los signos eran casi idénticos conceptualmente.
Signo anterior Signo impugnado Asunto
Servus et al. SERVO SUO T-525/10 (UE; IT enparticular)
Los signos son conceptualmente similares desde la perspectiva del consumidor italiano medio en la medida en que ambos hacen referencia a «sirviente». El Tribunal confirmó la resolución de la Sala de Recurso que establecía que el público italiano probablemente percibiría el significado de la palabra latina «SERVUS», debido a su proximidad con la palabra italiana «SERVO».
Como ya se ha indicado, las palabras mal escritas también pueden representar una idea y, en tales casos, pueden compararse, como en los siguientes ejemplos:
Marca anterior Signo impugnado Asunto
T-485/07 (ES)
Para el público destinatario español ambos signos invocan el concepto de una aceituna. No existen pruebas que indiquen que el consumidor español medio entenderá la palabra inglesa «live».
Signo anterior Signo impugnado Nº de oposición
B 1 142 688 (UE)
Ambas marcas se refieren a la palabra yogur y, por consiguiente, comparten el concepto de «un producto lácteo elaborado mediante fermentación bacteriana de la leche».
Signo anterior Signo impugnado Nº de oposición
B 1 012 857 (ES)
Las marcas anteriores son similares conceptualmente porque ambas se refieren al concepto de «carisma» («la capacidad para desarrollar impulsar o inspirar en otras personas un compromiso ideológico respecto a un punto de vista determinado»).
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3.6.2.2. Dos palabras o términos tienen el mismo significado, pero en lenguas distintas
Es posible que el público destinatario asigne una similitud conceptual o incluso una identidad en casos de marcas con elementos en lenguas diferentes, siempre que el significado de los términos en dichas lenguas sea conocido para el público.
En el siguiente ejemplo se determinó que las marcas eran conceptualmente idénticas, porque una parte sustancial del público portugués comprende los términos que constituyen las marcas en cuestión, teniendo en cuenta que (i) la notable cercanía entre el término inglés «vitamin» y su equivalente portugués «vitamina»; que (ii) «water» es un término inglés básico, que probablemente entiende esa parte del público portugués que posee un conocimiento suficiente de la lengua inglesa; que (iii) «aqua» es una expresión generalizada en latín que se parece al término equivalente en portugués «água» (apartados 56-60):
Marca anterior Signo impugnado Asunto
VITAMINWATER
(territorio de referencia, Portugal) T-410/12
Como lo que importa es la interpretación efectiva del público destinatario, el simple hecho de que un término constituya objetivamente el equivalente en una lengua extranjera del otro puede no ser relevante en absoluto en la comparación conceptual:
Marca anterior Signo impugnado Asunto
LE LANCIER T-265/09
El territorio de referencia es España. «El lancero» (en español) significa «le lancier» en francés. Desde una perspectiva conceptual, el Tribunal General concluyó que el español medio solo tenía un conocimiento limitado del francés y que la expresión «le lancier» no pertenecía al vocabulario básico de esa lengua. Los signos no son similares conceptualmente.
3.6.2.3. Dos palabras se refieren a la misma idea representada o variaciones de ella
Existe identidad conceptual cuando se trata de sinónimos, es decir, cuando existen dos palabras con el mismo significado semántico (ejemplos inventados en los que el inglés es la lengua de referencia: bagaje/equipaje, bicicleta/bici, caballo/corcel).
Se determinó la existencia de similitud conceptual en los casos siguientes:
Marca anterior Marca impugnada Asunto
SECRET PLEASURES PRIVATE PLEASURES R 0616/1999-1
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ORPHAN INTERNATIONAL R 1142/2009-2
3.6.2.4. Dos signos figurativos, símbolos o formas representan el mismo objeto o la misma idea
Cuando dos marcas están formadas por elementos figurativos o formas, o los contienen, y representan los mismos objetos o las mismas ideas, u objetos o ideas similares, los signos serán conceptualmente idénticos o similares.
En los siguientes casos se consideró que existía identidad o similitud conceptual:
Earlier mark Contested mark Case No
T-168/04 (confirmado
C-488/06) (similar)
R0703/2011-2 (identidad)
R1107/2010-2 (identidad)
Sin embargo, el hecho de que ambos signos contengan el mismo objeto no da lugar a la existencia de similitud conceptual, si la manera en que se describe el objeto en las marcas en conflicto es diferente:
Marca anterior Marca impugnada Asunto
T-593/10
El Tribunal General consideró que la Sala tenía razón al dictaminar que los signos eran conceptualmente diferentes, en vista de que la marca anterior podía evocar un boomerang debido a su elemento figurativo y a la forma en que se representaba la letra «b», algo que no hacía la marca solicitada (apartado 36).
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3.6.2.5. Cuando existe un signo denominativo o un signo figurativo, símbolo, forma o color que representan el concepto que encierra la palabra
También existe identidad conceptual entre una palabra y una imagen que muestra lo que representa la palabra (ejemplos ficticios: la marca denominativa «TIGER» comparada con una marca figurativa que describe un tigre, o la marca denominativa «naranja» y una marca de color per se de dicho color).
Marca anterior Marca impugnada Asunto
T-389/03 (UE, identidad para parte
del público)
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 2
DOBLE IDENTIDAD Y RIESGO DE CONFUSIÓN
CAPÍTULO 4
CARÁCTER DISTINTIVO
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Índice
1 Observaciones generales ......................................................................... 3
2 Apreciación del carácter distintivo .......................................................... 5 2.1 Apreciación del carácter distintivo: aspectos generales ........................ 6
2.1.1 ¿Qué constituye un «componente» o «elemento» de un signo?................... 6 2.1.2 ¿Qué es el carácter distintivo? ....................................................................... 6 2.1.3 Aspectos del carácter distintivo que deben examinarse ................................ 8 2.1.4 Fecha relevante .............................................................................................. 9 2.1.5 Productos y servicios pertinentes................................................................. 10
2.2 Examen del carácter distintivo intrínseco .............................................. 10 2.2.1 Principios generales ..................................................................................... 10
2.2.1.1 Ejemplos de elementos descriptivos .........................................................13 2.2.1.2 Ejemplos de elementos laudatorios...........................................................14 2.2.1.3 Ejemplos de elementos evocadores..........................................................14 2.2.1.4 Ejemplos de marcas anteriores intrínsecamente débiles (en conjunto) ....15
2.2.2 Temas específicos........................................................................................ 15 2.2.2.1 Signos compuestos por una sola letra, signos numéricos y signos
cortos.........................................................................................................15 2.2.2.2 Elementos cotidianos y triviales ................................................................16 2.2.2.3 Renuncias a reivindicar derechos exclusivos ............................................17 2.2.2.4 Marcas comunitarias colectivas.................................................................17
2.3 Examen del carácter distintivo superior................................................. 18
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1 Observaciones generales
Existe riesgo de confusión (incluido el riesgo de asociación) si hay un riesgo de que el público pueda creer que los productos o servicios en cuestión, asumiendo que llevan las marcas correspondientes, proceden de la misma empresa o, si fuera el caso, de empresas vinculadas económicamente.
Si existe o no un riesgo de confusión depende de una apreciación global de varios factores interdependientes que incluyen: (i) la similitud de los productos y servicios, (ii) la similitud de los signos, (iii) el carácter distintivo y los elementos dominantes de los signos en conflicto, (iv) el carácter distintivo de la marca anterior y (v) el público destinatario y su grado de atención.
El primer paso para apreciar si existe un riesgo de confusión es determinar estos cinco factores. El segundo paso es determinar su relevancia.
El Tribunal de Justicia de la Unión Europea (en lo sucesivo, el «Tribunal») sostiene en su sentencia de 29/09/1998, C-39/97, «Canon», apartados 18 y 24:
aquellas marcas que tienen un elevado carácter distintivo, bien intrínseco, o bien gracias a lo conocidas que son en el mercado, disfrutan de una mayor protección que las marcas cuyo carácter distintivo es menor;
el carácter distintivo de la marca anterior, y, en particular, su renombre, debe tenerse en cuenta para apreciar si la similitud entre los productos o los servicios designados por las dos marcas es suficiente para generar un riesgo de confusión.
En su sentencia de 11/11/1997, C-251/95, «SABEL», apartado 23, el Tribunal sostuvo asimismo:
Por lo que se refiere a la similitud gráfica, fonética o conceptual de las marcas en conflicto, esta apreciación global debe basarse en la impresión de conjunto producida por las marcas, teniendo en cuenta, en particular, sus elementos distintivos y dominantes.
Por ello, tanto el grado del carácter distintivo de la marca anterior, así como, separadamente, el carácter distintivo de los distintos elementos de las marcas complejas, son criterios importantes que se deben determinar antes de realizar una apreciación global del riesgo de confusión.
En un principio es importante distinguir entre (i) el análisis del carácter distintivo de la marca anterior en su conjunto, lo que determina el ámbito de protección conferido a la marca y (ii) el análisis del carácter distintivo que posee un elemento de la marca, lo que determina si los signos en conflicto coinciden en un elemento que es distintivo (y, por tanto, si la similitud está relacionada con un elemento importante) o en un elemento débil (y, por tanto, si la similitud está relacionada con un elemento de menor importancia).
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Por ejemplo:
Componentes o elementos de una marca
Marca en su conjunto (suponiendo que no haya adquirido carácter distintivo)
Virgin Cola (bebidas no alcohólicas)
«Cola» es un elemento débil respecto a las bebidas de cola o mezclas de ésta porque tiene un carácter descriptivo o evocador en relación con estos productos.
El elemento «Virgin» tiene carácter distintivo normal para tales productos.
Se trata de un carácter distintivo normal porque, debido al elemento «Virgin», la marca en su conjunto no tiene carácter descriptivo, evocador o de otro modo débil.
(productos electrónicos)
«Productos», aunque ligeramente estilizado, es un elemento débil porque describe una amplia gama de productos.
El elemento «Billy’s» tiene carácter distintivo normal para tales productos.
Se trata de un carácter distintivo normal porque, según se muestra el elemento «Billy's» y el diseño específico de la marca, ésta, en su conjunto, no tiene carácter descriptivo, evocador o de otro modo débil.
(preparaciones hechas a base de cereales)
«Premium» es un elemento débil por su significado laudatorio respecto a algo que es excelente.
El cuadrado de color gris oscuro con una extensión hacia la izquierda, en la parte central, da la impresión general de una etiqueta con un diseño sencillo.
Para los preparados a base de cereales, la imagen de una espiga de trigo tiene carácter descriptivo o evocador.
Tiene un carácter distintivo inferior al normal porque todos los elementos son débiles y la representación general es banal.
Aunque se debe apreciar el carácter distintivo de los elementos tanto de la marca anterior como de las marcas impugnadas, el carácter distintivo de la marca en su conjunto se aprecia únicamente respecto a la marca anterior1. El carácter distintivo de la marca impugnada en su conjunto carece de relevancia, como tal, respecto a la apreciación de riesgo de confusión, según se explicará más detalladamente en el punto 2.1.3. Por ello, cualquier referencia que se haga más adelante al carácter distintivo de la marca en su conjunto se referirá exclusivamente a la marca anterior.
La metodología paso a paso que utiliza la Oficina inicialmente distingue entre la apreciación objetiva de la similitud entre los signos y la apreciación del carácter distintivo de sus elementos2. No obstante, posteriormente, en la apreciación global, se tienen en cuenta todos los factores para determinar una apreciación general del riesgo de confusión3. Esto contrasta con otros enfoques que sopesan el carácter distintivo de los distintos elementos de las marcas al mismo tiempo que aprecian la similitud entre
1 Véase asimismo el Objetivo 1 de la Práctica común sobre el impacto de los componentes carentes de carácter distintivo o con un carácter distintivo débil en el riesgo de confusión, acordada en el marco de la Red Europea de Marcas, Dibujos y Modelos. 2 Véanse las Directrices, Parte C, Oposición, Sección 2, Doble identidad y riesgo de confusión, Capítulo 3, Comparación de los signos. 3 Véanse las Directrices, Parte C, Oposición, Sección 2: Doble identidad y riesgo de confusión, Capítulo 8, Apreciación global.
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los signos. Aunque la diferencia es únicamente metodológica y no debería, en principio, afectar a la conclusión final sobre el riesgo de confusión, la Oficina sigue el primer método descrito.
En cuanto al efecto del carácter distintivo de la marca anterior en su conjunto, no entra en juego hasta que se realiza la apreciación global, puesto que el Tribunal sostiene que no procede tomar en consideración el eventual bajo o alto grado del carácter distintivo de las marcas anteriores en la fase de la apreciación de la similitud entre los signos (sentencias de 23/01/2014, C-558/12, «Western Gold», apartados 42 a 45, de 25/03/2010, T-5/08 a T-7/08, «Golden Eagle», apartado 65, y de 19/05/2010, T-243/08, «EDUCA Memory game», apartado 27).
2 Apreciación del carácter distintivo
Resulta de utilidad destacar de nuevo que la apreciación del carácter distintivo se divide en dos partes diferentes: (i) el carácter distintivo de los elementos de un signo y (ii) el carácter distintivo de la marca anterior en su conjunto. Según se explicará más adelante, la finalidad de estas apreciaciones separadas es distinta.
Carácter distintivo de los elementos
Al apreciar el riesgo de confusión, se lleva a cabo un análisis acerca de si los elementos coincidentes tienen carácter descriptivo, evocador o, por el contrario, débil, a fin de determinar en qué medida estos elementos coincidentes tienen mayor o menor capacidad de indicar la procedencia empresarial. Este análisis reconoce que es más probable que el consumidor considere que un elemento con carácter descriptivo, evocador o, por el contrario, débil de una marca no se utiliza para identificar a una empresa en concreto y que de este modo distinga sus productos o servicios de los de otras empresas.
Por consiguiente, aunque los titulares de una marca utilicen normalmente elementos con carácter descriptivo, evocador o, por el contrario, débil como parte de la marca para informar a los consumidores de determinadas características de los productos o servicios pertinentes, puede resultar más difícil determinar que el público puede confundir la procedencia como consecuencia de similitudes que únicamente corresponden a los elementos débiles.
Se debe examinar el carácter distintivo de los elementos de la marca anterior y de la marca impugnada.
Carácter distintivo de la marca anterior en su conjunto
La sentencia en el asunto «Canon» deja claro que (i) el riesgo de confusión es tanto más elevado cuanto mayor resulte ser el carácter distintivo de la marca anterior y que (ii) las marcas anteriores que tienen un elevado carácter distintivo, bien intrínseco, o bien gracias al renombre que tienen en el mercado, disfrutan de una mayor protección que las marcas cuyo carácter distintivo es menor. Por consiguiente, el carácter distintivo de la marca anterior en su conjunto determina la fortaleza y amplitud de su protección y se debe tener en consideración a los efectos de apreciar el riesgo de confusión (pero no para apreciar la similitud entre marcas, véase a tal fin las sentencias «Western Gold» y otras, indicadas anteriormente).
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2.1 Apreciación del carácter distintivo: aspectos generales
2.1.1 ¿Qué constituye un «componente» o «elemento» de un signo?
El Tribunal no ha definido lo que se debe considerar como «elemento» de un signo. Es fácil identificar elementos cuando un signo está visualmente dividido en diversas partes (p. ej., elementos figurativos y denominativos separados). No obstante, el término «elemento» incluye más que tales distinciones visuales. Por último, la percepción del signo por el público de referencia es decisiva y un elemento existe siempre que el público destinatario lo percibe. Por ejemplo, el público destinatario con frecuencia considerará que los signos compuestos de un vocablo están integrados por distintos elementos, en particular, cuando una parte tiene un significado claro y evidente mientras el resto carece de significado o tiene un significado distinto (p. ej., en la marca EUROFIRT, se entenderá que «Euro» hace referencia a Europa, mientras que «Firt» carece de significado, dotando a esta palabra de dos elementos: «Euro» y «Firt»). En tales casos, los elementos contenidos en signos formados por un vocablo podrían considerarse como «elementos» en la terminología del Tribunal.
No obstante, las marcas denominativas no deberían diseccionarse artificialmente. La disección no es adecuada a menos que el público destinatario perciba claramente los componentes como elementos separados. Es precisa una apreciación caso a caso acerca de si la división de un signo en elementos es artificial (p.ej., si dividir la palabra «LIMEON» para fruta en los elementos «LIME» y «ON» podría ser artificial o no)4.
2.1.2 ¿Qué es el carácter distintivo?
El Tribunal ha definido el carácter distintivo de la manera siguiente:
Para determinar el carácter distintivo de una marca y, por consiguiente, evaluar si posee un elevado carácter distintivo, el órgano jurisdiccional nacional debe apreciar globalmente la mayor o menor aptitud de la marca para identificar los productos o servicios para los cuales fue registrada atribuyéndoles una procedencia empresarial determinada (énfasis añadido).
(Véase la sentencia de 22/06/1999, C-342/97, «Lloyd Schuhfabrik Meyer», apartado 22).
Es importante destacar que, el carácter distintivo es una cuestión de grado, al analizarlo se aplica una escala gradual por la que un signo o elemento de un signo puede carecer completamente de carácter distintivo, tener un elevado carácter distintivo o estar en un punto intermedio.
4 Esto se explica con más detalle en las Directrices, Parte C, Oposición, Sección 2, Doble identidad y riesgo de confusión, Capítulo 3, Comparación de los signos.
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Un signo o elemento de un signo carece de carácter distintivo si tiene un carácter exclusivamente descriptivo de los propios productos o servicios o de las características de tales productos o servicios (tales como su calidad, valor, finalidad, procedencia, etc.) y/o si su uso en el comercio es común para tales productos o servicios. Del mismo modo, un signo o elemento de un signo que sea genérico (como la forma común de un envase o un color común) también carecerá de carácter distintivo.
Un signo o elemento de un signo puede tener un escaso carácter distintivo si evoca las características de los productos y servicios (pero no tiene un carácter exclusivamente descriptivo de éstas). Si la evocación de los productos y servicios es suficientemente imaginativa o hábil, el simple hecho de que haya una evocación de las características de los productos puede no afectar sustancialmente al carácter distintivo. Por ejemplo:
«Billionaire», en inglés, en relación con servicios de juegos, es un término evocador de un modo que puede afectar al carácter distintivo, porque implica, por ejemplo, la posibilidad de convertirse en millonario.
«Billy O’Naire», que en inglés suena igual que «billionaire», puede ser evocador de servicios de juegos como un hábil juego de palabras sobre nombres irlandeses de un modo que no afecta sustancialmente al carácter distintivo; puede considerarse que posee un grado «normal» de carácter distintivo.
Se considera que un signo o elemento de un signo que no tiene un carácter descriptivo o evocador posee un grado «normal» de carácter distintivo intrínseco. Esto significa que el signo o elemento de un signo en cuestión posee un carácter totalmente distintivo, en el sentido de que su aptitud para identificar los productos o servicios para los cuales fue registrado, atribuyéndoles una procedencia empresarial determinada, no se ha visto disminuida o perjudicada.
El titular de la marca anterior deberá demostrar cualquier grado de carácter distintivo superior que ésta haya adquirido bien a través del uso, o bien porque es muy original, inusual o única presentando las pruebas pertinentes (véase también el punto 2.3). Una marca no adquirirá automáticamente un grado superior de carácter
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distintivo simplemente porque no haya un vínculo conceptual con los productos y servicios cubiertos (auto de 16/05/2013, C-379/12, «H. Eich.», apartado 71.
Del mismo modo, un solicitante de marca comunitaria puede alegar que el signo o elemento de un signo anterior tiene un escaso carácter distintivo . Una de las alegaciones que los solicitantes aducen con más frecuencia es que la marca anterior, o uno de sus elementos, tiene un escaso carácter distintivo, porque existen muchas marcas que contienen o incluyen el elemento en cuestión. Cuando el solicitante respalda esta afirmación únicamente con referencia a los registros de marca, la Oficina considera que la existencia de varios registros de marca no es por sí misma particularmente concluyente, dado que no tiene por qué reflejar la situación del mercado. En otras palabras, únicamente sobre la base de los datos del registro no se puede suponer que todas las marcas se hayan utilizado de manera efectiva.
De ello se desprende que la prueba presentada debe demostrar que los consumidores han estado expuestos a un uso generalizado y que se han acostumbrado a marcas que incluyen el elemento en cuestión, a fin de demostrar que éste tiene un escaso carácter distintivo.
Cuando se analiza el carácter distintivo de la marca anterior en su conjunto, siempre se debe considerar que tiene al menos un mínimo grado de carácter distintivo intrínseco. Las marcas anteriores, ya sean comunitarias o nacionales, gozan de una «presunción de validez». El Tribunal ha dejado claro en su sentencia de 24/05/2012, C-196/11, «F1-LIVE», apartados 40-41, que «en un procedimiento de oposición a una solicitud de registro de una marca comunitaria no puede cuestionarse la validez de las marcas nacionales». El Tribunal añadió que «debe señalarse que la caracterización de un signo como descriptivo o genérico equivale a negar el carácter distintivo de éste».5
2.1.3 Aspectos del carácter distintivo que deben examinarse
El carácter distintivo debe apreciarse con respecto a todas las características de las marcas y sus elementos. Por ello, la apreciación debe tener en cuenta la capacidad de las palabras, los elementos figurativos, los colores y/o aspectos tridimensionales de los signos para identificar los productos o servicios como procedentes de una determinada empresa.
La Oficina examina los principales aspectos del carácter distintivo de la manera siguiente:
1. El primer aspecto consiste en examinar si, y en qué medida, los elementos tienen carácter descriptivo, laudatorio o de otro modo no distintivo. La finalidad es determinar si las partes comunes de los signos son los elementos (más) distintivos o no (véase el punto 2.2).
2. El segundo aspecto consiste en comprobar el carácter distintivo de la marca anterior en su conjunto. En esta fase, la Oficina debe considerar, en un primer paso, el carácter distintivo intrínseco general de la marca anterior (véase el apartado 2.2 siguiente) y, en un segundo paso, si se reclama y es relevante para el resultado, si la marca anterior ha adquirido un carácter distintivo superior como
5 Véase asimismo el Objetivo 1 de la Práctica común sobre el impacto de los componentes carentes de carácter distintivo o con un carácter distintivo débil en el riesgo de confusión, acordada en el marco de la Red Europea de Marcas, Dibujos y Modelos.
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consecuencia del uso que el oponente ha hecho de la misma (véase el punto 2.3).
El grado de carácter distintivo intrínseco del signo anterior es uno de los factores a tener en consideración en la apreciación global (sentencia de 11/11/1997, C-251/95, «SABEL», apartado 23). Se trata de una cuestión de derecho que la Oficina debe examinar aun cuando las partes no hagan ningún comentario al respecto. Por el contrario, el carácter superior adquirido por el uso del signo anterior es una cuestión de derecho y de hecho que la Oficina no puede examinar, salvo que el oponente lo alegue y fundamente.
El carácter distintivo intrínseco de la marca impugnada en su conjunto no se examina en el marco del procedimiento de oposición, puesto que lo que es relevante a los efectos del riesgo de confusión es el ámbito de protección de la marca anterior. Análogamente, también el carácter distintivo superior del signo impugnado carece de relevancia, porque el riesgo de confusión exige una consideración del ámbito de protección de la marca anterior y no de la marca que se solicita. Si se reconoce que una marca anterior tiene un ámbito más amplio de protección por su carácter distintivo superior, el renombre adquirido por la marca solicitada carece de relevancia, por principio, a los efectos de apreciar el riesgo de confusión (sentencia de 03/09/2009, C-498/07P, «La Española», apartado 84).
2.1.4 Fecha relevante
Se debe analizar el carácter distintivo intrínseco de los signos (o de sus elementos) en la fecha de adopción de la resolución. El carácter distintivo superior de la/s marca/s anterior/es (si reivindicado) debe existir (i) en el momento de presentación de la solicitud de la marca comunitaria impugnada (o en cualquier fecha de prioridad) y (ii) en la fecha de adopción de la resolución.
Es importante establecer el momento preciso en el tiempo para apreciar el carácter distintivo, porque el carácter distintivo de la marca anterior no es constante sino variable, en función de la percepción que el público tenga de la misma. La percepción del público puede cambiar no solo a causa del elevado o escaso renombre de que goce la marca concreta, sino también a causa de otros factores (estos elementos solo pueden analizarse a partir de las pruebas presentadas por las partes). Este puede ser el caso, en particular, cuando la marca o alguno de sus elementos haya sido utilizada entretanto de un modo similar por diversas marcas en el sector del mercado de que se trate. Dicho uso común de un signo puede erosionar la singularidad de un signo y, por consiguiente, su facultad para indicar la procedencia de los productos y servicios. En este contexto, importa también analizar detenidamente si las situaciones mencionadas se dan en todas las zonas geográficas pertinentes y en relación con todos los productos y servicios pertinentes.
Por ejemplo, debido a los cambios tecnológicos en el campo de la informática, se ha producido un aumento de solicitudes en las que elementos tales como «I» (Internet), «E» (electrónico) y «M» (móvil) se utilizan junto a una palabra dotada de significado. En el contexto de las comunicaciones electrónicas, actualmente se consideran descriptivos (resolución de 19/04/2004, R 0758/2002-2, «ITUNES», apartado 11), aunque antes se consideraban distintivos.
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2.1.5 Productos y servicios pertinentes
Únicamente se lleva a cabo la apreciación del carácter distintivo intrínseco de los signos (o sus elementos) con respecto a los productos o servicios que se han considerado idénticos o similares, esto es:
Se evalúa la marca anterior en relación con los productos o servicios registrados que se han considerado idénticos o similares a los productos y servicios impugnados.
Se evalúa la marca impugnada en relación con los productos o servicios registrados que se han considerado idénticos o similares a los de la marca anterior.
Al determinar el alcance de la comparación de los productos y servicios de los signos en conflicto, ha de tenerse en consideración en qué grado difiere el carácter distintivo del signo (o elemento) anterior en función de los productos o servicios de que se trate. Por ejemplo, aun cuando exista identidad entre los productos o servicios controvertidos y algunos de los productos o servicios de la marca anterior para los que el grado de carácter distintivo de ésta (o un elemento común a ambos signos en conflicto) se considere inferior al normal, la Oficina debe tener en consideración otros productos o servicios de la marca anterior que sean similares (no idénticos) a los de la marca impugnada, excepto aquellos cuyo carácter distintivo (o elemento considerado) sea normal (o mayor).
A modo de ejemplo, una marca anterior incluye el elemento «$tilettos» para designar calzado para señora y artículos de sombrerería, siendo los productos impugnados calzado. El elemento «$tilettos» tiene un carácter distintivo débil para designar el calzado para señora, que es idéntico a los productos impugnados. En cambio, el elemento «$tilettos» tiene un carácter distintivo normal para designar artículos de sombrerería de la marca anterior, que son similares a los productos impugnados. La Oficina deberá sopesar estos factores interrelacionados en la apreciación global.
Únicamente se lleva a cabo la apreciación del carácter distintivo superior de la marca anterior respecto a los productos o servicios protegidos por el signo para el que se reivindica un carácter distintivo superior.
Asimismo, lo relevante es la percepción del público destinatario para estos productos y servicios (p. ej., si un público especializado está implicado o no).
2.2 Examen del carácter distintivo intrínseco
2.2.1 Principios generales
El primer paso al examinar el carácter distintivo de la marca anterior en su conjunto y de un elemento de los signos a comparar es examinar su carácter distintivo intrínseco.
El examen del carácter distintivo intrínseco se lleva a cabo, a su vez, en dos fases: en primer lugar, se debe determinar si el público destinatario reconoce el contenido semántico de la marca en cuestión y, en segundo lugar, si el contenido semántico percibido está o no relacionado con y/o se utiliza comúnmente en el comercio respecto a los productos y servicios idénticos o similares.
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Respecto a la primera fase, esto es, si el público destinatario reconoce un contenido semántico, se evalúa en la comparación conceptual de los signos, que se describe en detalle en otro capítulo de estas Directrices6.
El carácter distintivo de las marcas o sus elementos se debe evaluar teniendo en consideración (cada una) de las zonas geográficas pertinentes y sus distintos contextos lingüísticos y culturales. Como tal, el público en algunas partes del territorio pertinente podrá no entender el contenido descriptivo que una marca puede tener en otras partes. En tales casos, el carácter distintivo de la marca en una zona no queda afectado por el hecho de que pueda ser percibida de forma diferente en otras zonas.
A continuación ofrecemos un ejemplo de un caso en el que las consideraciones lingüísticas eran esenciales con respecto al carácter distintivo.
Marca anterior Marca impugnada Asunto
FRUTISOL Solfrutta T-331/08
Productos y servicios: clases 29, 30 y 32 Territorio: UE Apreciación de los elementos «frut» y «sol»: «es preciso distinguir entre la percepción del público en aquellos Estados miembros, tales como Italia y España, en los que los elementos «sol» y «frut» se reconocen con carácter general y se puede entender que aluden a «sol» y a «fruta», respectivamente, y la percepción del público en aquellos Estados miembros, tales como Hungría, Finlandia y Lituania, en los que dichos elementos no tienen un equivalente tan próximo en sus lenguas nacionales.» En la primera categoría de Estados Miembros, los consumidores son capaces de asociar ambas marcas con las nociones de ‘fruta’ y ‘sol’. Habrá, consecuentemente, un cierto grado de similitud conceptual entre ellas… En los Estados Miembros de la segunda categoría, los consumidores no percibirán similitud conceptual alguna entre los signos, puesto que las partes constitutivas de cada uno de los signos no se asociarán a ningún significado. (apartados 21 al 24).
La segunda fase consiste en correlacionar cualquier significado que el público perciba en las marcas con los productos o servicios idénticos o similares en conflicto. Si el público destinatario percibe tal significado como descriptivo, laudatorio o evocador (de una manera que afecte sustancialmente al carácter distintivo), etc., para dichos productos y servicios, se reducirá su carácter distintivo en consecuencia. Puede ser necesario distinguir entre los distintos productos y servicios en cuestión, porque la conclusión de que carezcan o cuenten con un carácter distintivo limitado podría afectar únicamente a parte de esos productos o servicios.
Los criterios aplicados al examen del carácter distintivo intrínseco de un signo o elemento de un signo son los mismos que los principios pertinentes aplicados al examinar marcas en atención a la existencia de motivos absolutos7 No obstante, en litigios en atención a la existencia de motivos relativos, lo que se cuestiona no es meramente si un signo o elemento tiene carácter distintivo o no (esto es, si alcanza el umbral mínimo de carácter distintivo para registrarlo), sino también en qué grado de carácter distintivo se encuentra dentro de la escala móvil antes mencionada. Por tanto, como ejemplo, un término que no sea descriptivo sino meramente evocador para los productos o servicios considerados podría ser lo suficientemente distintivo para superar la prueba de los motivos absolutos, pero seguiría teniendo un carácter distintivo inferior al normal a los efectos de los motivos relativos.
6 Véanse las Directrices, Parte C, Oposición, Sección 2, Doble identidad y riesgo de confusión, Capítulo 3, Comparación de los signos: Comparación conceptual. 7 Estos se describen en las Directrices, Parte B, Examen. Véase asimismo el Objetivo 2 de la Práctica común sobre el impacto de los componentes carentes de carácter distintivo o con un carácter distintivo débil en el riesgo de confusión, acordada en el marco de la Red Europea de Marcas, Dibujos y Modelos.
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Se supone que las marcas registradas anteriores tienen al menos un grado mínimo de carácter distintivo intrínseco8. Cuando se presentan pruebas para rebatir esta suposición y la prueba resulta suficiente, únicamente se conferirá a la marca anterior un ámbito de protección muy restringido, pero no se denegará la protección completamente. Si el solicitante de marca comunitaria demuestra que ha iniciado una acción de anulación contra la marca registrada anterior, podrá ser necesario suspender el procedimiento de oposición en espera del resultado de dicha acción.
El resultado del examen del carácter distintivo intrínseco puede ser uno de los siguientes:
Elementos
El elemento tiene un carácter distintivo inferior al normal o carece de él porque es descriptivo, evocador o laudatorio de las características de los productos o servicios idénticos o similares (o porque es débil de otro modo). A continuación se muestran algunos ejemplos. Véase el cuadro que figura más abajo:
El elemento tiene un carácter distintivo normal porque no es descriptivo, evocador o laudatorio (o porque no es débil de otro modo) respecto a los productos o servicios idénticos o similares.
La marca anterior en su conjunto
El elemento tiene un carácter distintivo inferior al normal o carece de él porque es evocador (de una manera que afecta sustancialmente al carácter distintivo) o laudatorio de las características de los productos o servicios idénticos o similares (o porque es débil de otro modo). Como se indica anteriormente, la Oficina no concluirá que una marca anterior en su conjunto es descriptiva y/o no distintiva)
La marca anterior tiene un carácter distintivo normal porque, en su conjunto, no es descriptivo, evocador (de una manera que afecte sustancialmente al carácter distintivo) o laudatorio (o porque no es débil a otro respecto) respecto a los productos o servicios idénticos o similares.
Cabe señalar que la práctica de la Oficina es considerar que, cuando la marca anterior (o el elemento) no es descriptiva (o no es distintiva de otro modo), se entiende que tiene un grado normal de carácter distintivo intrínseco. Como se indicó anteriormente, este grado de carácter distintivo puede ser mayor si se presentan las pruebas adecuadas que demuestren que la marca anterior ha adquirido un mayor grado de carácter distintivo por el uso o porque es muy original, inusual o única.
Como se indicaba en el punto 2.1, las marcas denominativas que consisten en un único vocablo pueden contener varios elementos, algunos de los cuales pueden ser más distintivos que otros (véase el asunto T-331/08, «Solfrutta», antes mencionado).
8 Véase la sentencia en el asunto C-196/11, «F1-LIVE», citada en el punto 2.1.2.
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2.2.1.1 Ejemplos de elementos descriptivos
Signo anterior Signo impugnado Asunto
BYLY T-514/08
Productos y servicios : clase 3 Territorio: UE Apreciación del elemento «productos»: «el término “products”, no tiene carácter distintivo suficiente para que el consumidor lo tenga en cuenta» (apartado 39).
Signo anterior Signo impugnado Asunto
T-490/08
Productos y servicios: clase 36 Territorio: UE Apreciación de «CAPITAL MARKETS»: «el público relevante, compuesto por consumidores muy atentos, bien informados y familiarizados con la terminología financiera inglesa básica, concederá muy poca importancia al significado de los términos «capital» y «markets», que son descriptivos de los referidos servicios y no le permiten identificar la procedencia empresarial de las marcas en litigio» (apartado 59).
Signo anterior Signo impugnado Asunto
R 0834/2009-1
Productos y servicios: clases 3 y 5 Territorio: UE Apreciación de la marca anterior: Aun cuando los signos tienen algunas similitudes, la expresión «NATURAL BRONZE» es descriptiva respecto a los productos (bronceador) en relación con los productos de la clase 3 (apartado 31).
Signo anterior Signo impugnado Asunto
(CINEDAY et al.) CINETAIN R 1306/2009-4
Productos y servicios: clases 38 y 41 Territorio: España Apreciación del elemento «CINE»: La palabra «cine» tiene un significado descriptivo en el sentido de «cine (película)». Por tanto, este elemento solo tiene una relevancia limitada en la percepción de los signos (apartado 36).
Signo anterior Signo impugnado Asunto
NATURAL BEAUTY FROM WITHIN R 0991/2010-2
Productos y servicios: clases 3 y 5 Territorio: Alemania Apreciación del elemento «NATURAL BEAUTY»: El elemento «NATURAL BEAUTY» es una indicación clara y esencial del tipo y calidad de los productos. El público alemán entiende el significado de estas dos palabras básicas así como la combinación de las mismas (apartados 31
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a 35).
2.2.1.2 Ejemplos de elementos laudatorios
Signo anterior Signo impugnado Asunto
MAGIC SEAT T-363/06
Productos y servicios: clase 12 Territorio: España Apreciación del elemento «MAGIC»: El público destinatario percibirá el término «magic» como mero calificativo de la palabra «seat» debido a su parecido con el término español «mágico», que es meramente laudatorio (apartado 39).
Signo anterior Signo impugnado Asunto
STAR SNACKS T-492/08
Productos y servicios: clases 29, 30 y 32 Territorio: UE Apreciación del elemento «STAR»: El elemento denominativo «STAR» es laudatorio, porque constituye únicamente (junto con el resto de elementos de los signos) una referencia a productos alimentarios de gran calidad (apartado 52)
2.2.1.3 Ejemplos de elementos evocadores
Signo anterior Signo impugnado Asunto
EL COTO T-332/04
Productos y servicios: clases 33, 35, 39 Territorio: UE Apreciación del carácter distintivo de la imagen en la solicitud de marca comunitaria impugnada: En la medida en que el componente figurativo de la marca solicitada evoca un viñedo, este componente tiene un escaso valor distintivo para los vinos (apartado 38).
Signo anterior Signo impugnado Asunto
WORLDLINK T-325/04
Productos y servicios: clase 36 Territorio: UE Apreciación del elemento «LINK»: el elemento «LINK» no es inmediatamente descriptivo de, entre otros, los «servicios bancarios de entrega de cantidades en metálico, transferencias y servicios de pago, servicios de información financiera» (clase 36) designados por la marca anterior, sino que es meramente evocador respecto a ellos.
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2.2.1.4 Ejemplos de marcas anteriores intrínsecamente débiles (en conjunto)
Signo anterior Signo impugnado Asunto
R 522/2010-1 (confirmado T-60/11))
Productos y servicios: clases 30, 31 y 42 Territorio: UE Apreciación del carácter distintivo del signo anterior: «la Sala considera que el signo anterior es una marca con un carácter distintivo muy débil. Como se ha descrito anteriormente, la impresión general de este signo no equivale a nada más que al dibujo simplificado de una etiqueta en la que la palabra «PREMIUM» es llamativa visualmente. Esta palabra es una referencia elogiosa a algo excelente (por ejemplo, la calidad de un producto) y debido a su carácter generalizado y al uso común de la misma en la comercialización de los distintos productos y servicios, la mayoría del público europeo la entenderá» (apartado 38).
Signo anterior Signo impugnado Asunto
KID R 0249/2002-3
Productos y servicios: clase 28 Territorio: España Apreciación del carácter distintivo del signo anterior: Apreciación del carácter distintivo del signo KID. Esa palabra significa persona joven, niño. Aplicada a los juegos y juguetes de la clase 28, el término es claramente descriptivo. Indica, de manera directa e inmediata, el destino de los productos designados por el registro anterior. Por ello, la marca del oponente tiene un carácter distintivo muy débil (apartado 16).
2.2.2 Temas específicos
2.2.2.1 Signos compuestos por una sola letra, signos numéricos y signos cortos
El Tribunal, en su resolución de 9 de septiembre de 2010, C-265/09P, «α», sostuvo que el carácter distintivo de las marcas de una sola letra ha de valorarse realizando un examen basado en los hechos, referido a los productos y servicios de que se trate y siguiendo los mismos criterios que se aplican a otras marcas denominativas (apartados 33-39). Aunque esta sentencia se ocupa de los motivos absolutos, la Oficina considera que el principio establecido por el Tribunal (es decir, que la aplicación del criterio del carácter distintivo debe ser igual para todas las marcas) se aplica también en casos inter partes, cuando se trata de determinar el carácter distintivo de las marcas formadas por una sola letra.
El Tribunal, si bien reconoció que puede resultar más difícil establecer el carácter distintivo de las marcas formadas por una sola letra que el de otras marcas denominativas, sostuvo que estas circunstancias no justifican que se fijen criterios específicos que sustituyan o establezcan excepciones al criterio del carácter distintivo tal y como ha sido interpretado en la jurisprudencia.
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La Oficina considera que esta sentencia significa que, al establecer el carácter distintivo de una marca anterior, no es correcto apoyarse en presunciones, como la afirmación a priori de que los consumidores no tienen el hábito de percibir letras aisladas como marcas comerciales, o sobre argumentos genéricos, como el relativo a la disponibilidad de los signos, dado el número limitado de letras existente.
El Tribunal General ha declarado desde entonces en varios asuntos que una marca constituida por una sola letra o número puede tener carácter distintivo intrínseco (véase la sentencia de 08/052012, T-101/11, «G», apartado 50, la sentencia de 06/06/2011, T-176/10, «Seven for all Mankind», apartado 36, y la sentencia de 05/11/2013, T-378/12, «X», apartados 37-51).
En su sentencia de 10/05/2011, T-187/10, «G Line», el Tribunal General no aceptó el argumento del solicitante en el sentido de que las letras únicas están generalmente desprovistas de carácter distintivo per se y que, por consiguiente, solo puede protegerse su representación gráfica (véanse los apartados 38 y 49).
En consecuencia, mientras que las marcas anteriores registradas consistentes en una sola letra (o número) representados en caracteres estándar disfrutan de una presunción de validez, su grado de carácter distintivo intrínseco habrá de ser valorado con referencia a los productos y/o servicios concernidos.
De presentarse la correspondiente afirmación, deberán tenerse en cuenta las pruebas aportadas por la oponente consistentes en una sola letra de que ha adquirido un mayor carácter distintivo. Esta circunstancia podría dotar a la marca anterior de un mayor ámbito de protección.
Las anteriores consideraciones se aplican tanto a las letras/marcas numéricas únicas representadas en caracteres estándar (por ejemplo, marcas denominativas) como a las letras/marcas numéricas únicas representadas en caracteres estilizados.
Por otra parte, de conformidad con la sentencia «α» relativa a los signos de dos letras, y salvo que la combinación de letras por sí sea intrínsecamente no distintiva para los productos y servicios (por ejemplo, «XL» para los productos de la clase 26), estos signos no son necesariamente distintivos solo en un grado reducido. Las mismas reglas se aplican a los numerales.
2.2.2.2 Elementos cotidianos y triviales
Hay casos en los que los signos están formados por uno o varios elementos verbales distintivos y uno o varios elementos figurativos que el público destinatario percibe como cotidianos o triviales. Dichos elementos figurativos suelen consistir en una forma geométrica simple (p. ej., marcos, etiquetas) o colores normalmente utilizados en el sector del mercado (p. ej., rojo para los extintores, amarillo, rojo o naranja para el sector postal, en función del Estado miembro de que se trate). Por este motivo, se considera que tales elementos cotidianos y triviales no tienen carácter distintivo.
Signo anterior Signo impugnado Asunto
ARCO R 1929/2010-2
Productos y servicios: clase 9 Territorio: UE
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Apreciación de los elementos figurativos: Los elementos verbales de los dos signos coinciden. Aun cuando no es desdeñable en cuanto a su tamaño, los consumidores pueden percibir el elemento figurativo de la marca comunitaria impugnada como un mero elemento decorativo, en esencia, y no como un elemento indicativo de la procedencia empresarial de los productos (apartado 43).
2.2.2.3 Renuncias a reivindicar derechos exclusivos
A tenor del artículo 37, del RMC, la Oficina puede imponer una renuncia a reivindicar derechos exclusivos si la marca incluye un elemento carente de carácter distintivo y la inclusión de dicho elemento pudiera plantear dudas con respecto al ámbito de protección. La Oficina también acepta renuncias voluntarias a revindicar derechos exclusivos, y algunos sistemas de marca nacionales prevén, asimismo, renuncias a reivindicar derechos exclusivos.
Las renuncias a reivindicar derechos exclusivos son vinculantes para la Oficina y su efecto es obligatorio, incluso en el caso de que, como resultado de un análisis independiente, se concluyera que el elemento podría considerarse distintivo.
Por lo tanto, las renuncias a reivindicar derechos exclusivos producen los efectos siguientes:
Si la marca anterior incluye una renuncia a reivindicar derechos exclusivos, debe considerarse que el elemento en cuestión carece de carácter distintivo. Por regla general, no habrá riesgo de confusión con una solicitud de marca comunitaria posterior que coincida solo con el elemento objeto de la renuncia (véase la resolución de 06/10/2008, R 0021/2008-4, «AUTENTICO JABUGO», apartado 17, donde se renuncia a reivindicar derechos exclusivos sobre JABUGO).
Si la marca figurativa anterior contiene dos palabras y ambas son objeto de renuncia a reivindicar derechos exclusivos sobre las mismas, el ámbito de protección quedará limitado a la forma y la secuencia exactas en las que se combinen las dos palabras.
En lo que respecta a las renuncias incluidas en la solicitud de marca comunitaria impugnada, no son vinculantes para el titular de la marca anterior. El solicitante no podrá reducir de forma unilateral el ámbito de protección de la marca anterior (véase la resolución de 11/02/2010, R 0229/2009-2, «DOUGHNUT THEATER», apartado 58 o la resolución de 29/03/2012, R 2499/2010-1, «ACETAT Silicon 101E (fig.)», apartados 18 y 19).
2.2.2.4 Marcas comunitarias colectivas
Cuando la marca en que se basa la oposición es una marca colectiva, su carácter distintivo intrínseco se evaluará de la forma habitual. La marca puede tener un carácter distintivo bajo o muy bajo en lo respecta a la naturaleza o a otras características de los productos en cuestión. El hecho de que la marca sea colectiva no implica que su ámbito de protección sea más amplio (véase la sentencia de 13/06/2012, T-534/10, «HELLIM», apartados 49-52, y sentencia de 05/12/2012, T-143/11, «F.F.R.», apartado 61).
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2.3 Examen del carácter distintivo superior
Tras examinar con carácter obligatorio el carácter distintivo intrínseco (véase el apartado 2.1.3 anterior), el segundo paso consiste en comprobar, siempre que el oponente haya realizado la correspondiente afirmación9 si la marca anterior ha adquirido un carácter distintivo superior en el momento de presentación (o fecha de prioridad) de la solicitud de marca comunitaria como consecuencia del uso que el oponente ha hecho de la misma.
Siempre se ha de tener en consideración el carácter distintivo de la marca anterior al decidir sobre el riesgo de confusión. El riesgo de confusión es tanto más elevado cuanto mayor resulta ser el carácter distintivo de la marca anterior (véase la sentencia de 11/11/1997, C-251/95, «SABEL», apartado 24). Por tanto, las marcas que tienen un carácter distintivo elevado, bien intrínseco o bien gracias a lo conocidas que son en el mercado, disfrutan de una mayor protección que las marcas cuyo carácter distintivo es menor (sentencia de 29/09/1998, C-39/97, «Canon», apartado 18).
En la práctica, esto significa que el hecho de que una marca anterior disfrute de un mayor carácter distintivo o renombre es una razón a favor de determinar el riesgo de confusión.
Un carácter distintivo superior exige el reconocimiento de la marca por parte del público destinatario. Este reconocimiento puede conferir un carácter distintivo superior a marcas con poco o ningún carácter distintivo intrínseco o a aquellas que son intrínsecamente distintivas.
Marca anterior Signo impugnado Asunto
CRISTAL R 0037/2000-2
Productos y servicios: clase 33 Territorio: Francia Apreciación de la marca «CRISTAL»: «En cuanto a la consideración de que “Cristal” es una indicación descriptiva de los productos en cuestión (vinos espumosos con carácter cristalino), la Sala no puede aceptarla. Por otro lado, se trata de una indicación evocativa que sugiere el carácter cristalino de los vinos, pero de ningún modo describe el producto. Asimismo, [la Sala] considera que ha quedado probado el elevado carácter distintivo de la marca CRISTAL en el mercado francés» (apartado 31).
El Tribunal ha formulado algunas orientaciones en lo concerniente a la apreciación del carácter distintivo adquirido por el uso de la marca anterior, ofreciendo una lista no exhaustiva de factores:
Al realizar la apreciación mencionada, procede tomar en consideración, en particular, las cualidades intrínsecas de la marca, incluido el hecho de que ésta carezca, o no, de cualquier elemento descriptivo de los productos o servicios para los que ha sido registrada, la cuota de mercado poseída por la marca, la intensidad, la extensión geográfica y la duración del uso de
9 Véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales.
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esta marca, la importancia de las inversiones hechas por la empresa para promocionarla, la proporción de los sectores interesados que identifica los productos o servicios atribuyéndoles una procedencia empresarial determinada gracias a la marca, así como las declaraciones de Cámaras de Comercio e Industria o de otras asociaciones profesionales.
(Véase la sentencia de 22/06/1999, C-342/97, «Lloyd Schuhfabrik Meyer», apartado 23).
La prueba del carácter distintivo superior adquirido a través del uso debe hacer referencia tanto a (i) la zona geográfica pertinente como a (ii) los productos y servicios pertinentes. El oponente puede reivindicar el carácter distintivo superior de la marca anterior solo respecto a una parte de los productos y servicios registrados. De conformidad con la prueba presentada, la Oficina deberá establecer con precisión para qué productos y servicios se ha adquirido el carácter distintivo.
La naturaleza, factores, prueba10 y apreciación del carácter distintivo superior son los mismos que para el renombre. No obstante, una declaración de renombre exige que se alcance un determinado umbral, mientras, que como se ha indicado anteriormente, para una declaración de carácter distintivo superior el umbral puede ser inferior. El carácter distintivo superior corresponde a cualquier nivel por encima del carácter distintivo intrínseco.
Marca anterior Signo impugnado Asunto
EL COTO T-332/04
Productos y servicios: clases 33, 35 y 39 Territorio: UE Apreciación del mayor carácter distintivo de la marca «EL COTO»: «La Sala de Recurso tuvo en cuenta el conocimiento en el mercado de la marca anterior EL COTO e hizo una aplicación correcta de la jurisprudencia […] al dejar constancia del elevado carácter distintivo de la marca anterior EL COTO debido a su conocimiento en el mercado español, habida cuenta de los siguientes elementos: el certificado expedido por el Secretario General del Consejo Regulador de la Denominación de Origen Calificada “Rioja”, que certifica que la interviniente comercializa sus vinos, entre otras, bajo las marcas EL COTO y COTO DE IMAZ desde 1977 y que las marcas mencionadas “gozan de una significativa notoriedad” en España; diversas resoluciones de la OEPM en las que se reconoce que la marca EL COTO de la interviniente goza de notoriedad en España; el documento relativo a la evolución de las ventas de la interviniente, que indica que se habían vendido con la marca EL COTO 339.852, 379.847, 435.857 y 464.080 cajas de doce botellas de vino en 1995, 1996, 1997 y 1998, respectivamente» (apartado 50).
Es importante señalar que el Tribunal sostiene también que la adquisición del carácter distintivo de una marca puede ser asimismo resultado del uso de un fragmento de una marca registrada como parte de ésta (sentencia de 07/07/2005, C-353/03, «Have a break», apartados 30 y 32 y sentencia de 07/07/2006, T-168/04, «Aire Limpio», apartado 74). Basta que, como consecuencia de dicho uso, los sectores interesados perciban efectivamente que el producto o servicio, designado exclusivamente por la marca cuyo registro se solicita, proviene de una empresa determinada.
10 Para más detalles sobre la prueba exigida y su apreciación, véanse las Directrices , Parte C, Oposición, Sección 5, Artículo 8, apartado 5.
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El resultado del examen del carácter distintivo superior puede ser uno de los siguientes:
Cuando no haya prueba del carácter distintivo superior con respecto a los productos y servicios pertinentes o al territorio, o la prueba sea insuficiente, el nivel de carácter distintivo de la marca anterior será su carácter distintivo intrínseco (inferior al normal o normal).
Cuando haya prueba del carácter distintivo superior con respecto a todos o algunos de los productos y servicios pertinentes y al territorio y la prueba sea suficiente:
○ si la marca anterior tiene un carácter distintivo inferior al carácter distintivo intrínseco normal, la marca o el elemento podrá haber adquirido un carácter distintivo normal o incluso elevado, en función de la prueba presentada11; o
○ si la marca anterior tiene un carácter distintivo intrínseco normal, podrá haber adquirido un carácter distintivo elevado.
Hay que recordar que, si bien una marca en su conjunto puede haber adquirido mayor carácter distintivo, puede haber elementos descriptivos que tendrán un carácter distintivo inferior al normal o carecer de él. Por ejemplo, el carácter distintivo superior de la marca «Coca Cola» en su conjunto no cambia el hecho de que el elemento «Cola» sigue siendo totalmente descriptivo para determinados productos.
11 Para más detalles sobre la prueba exigida y su apreciación, véanse las Directrices, Parte C, Oposición, Sección 5, artículo 8, apartado 5.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 2
DOBLE IDENTIDAD Y RIESGO DE CONFUSIÓN
CAPÍTULO 5
CARÁCTER DOMINANTE
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Índice
1 Carácter dominante................................................................................... 3 1.1 Observaciones generales ..........................................................................3 1.2 Apreciación del carácter dominante ......................................................... 3
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1 Carácter dominante
1.1 Observaciones generales
Existe riesgo de confusión (incluido el riesgo de asociación) cuando el público puede creer que los productos o servicios de que se trate, suponiendo que lleven las marcas correspondientes, proceden de la misma empresa o, en su caso, de empresas económicamente vinculadas.
La existencia o no de riesgo de confusión depende de una apreciación global de varios factores interdependientes: (i) la similitud de los productos y servicios, (ii) la similitud de los signos, (iii) los elementos distintivos y dominantes de los signos en conflicto, (iv) el carácter distintivo de la marca anterior y (v) el público destinatario.
El primer paso para apreciar la existencia de riesgo de confusión es analizar estos cinco factores. El segundo paso es determinar su relevancia.
El objeto de este capítulo es explicar cómo apreciar si los signos en conflicto tienen elementos dominantes.
1.2 Apreciación del carácter dominante
La práctica de la Oficina es restringir el concepto de elemento dominante al impacto visual de los elementos del signo, es decir, utilizarlo exclusivamente en el sentido de «visualmente destacado».
Para considerar que hay un elemento dominante en un signo, éste ha de tener al menos dos componentes identificables1. El primer paso es, por tanto, identificar los componentes del signo.
El Tribunal de Justicia de la Unión Europea (el «Tribunal») no ha definido qué debe considerarse como «componente» de los signos, pero ha ofrecido algunas indicaciones. Pueden considerarse como «componentes» las indicaciones visuales, como un guión o el uso de distintos tamaños de fuente, tipos de letra o colores2. Lo decisivo no es si un signo puede dividirse visualmente en distintas partes, sino la percepción que de él tiene el público destinatario.
El segundo paso es identificar cuál de los componentes del signo es el dominante tal y como establece el Tribunal:
Por lo que respecta a la apreciación del carácter dominante de uno o varios componentes determinados de una marca compuesta, procede tener en cuenta, concretamente, las características intrínsecas de cada uno de estos componentes, comparándolas con las del resto. Por otra parte, y de forma accesoria, puede tenerse en cuenta la posición relativa de los diferentes componentes en la configuración de la marca compuesta.
(Véase la sentencia de 23 de octubre de 2002, T-6/01 «MATRATZEN», apartado 35, confirmada mediante resolución de 28 de abril de 2004, C-3/03 P.)
1 En este texto se utilizan los términos «elemento» y «componente» indistintamente. 2 Véanse algunos ejemplos en las Directrices relativas a la oposición. Sección 2: Doble identidad y riesgo de confusión, Capítulo 3, Comparación de los signos.
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Aunque, de acuerdo con la jurisprudencia consolidada del Tribunal, para definir el concepto de elemento dominante de un signo pueden tenerse en cuenta aspectos no visuales (como el posible sentido semántico de parte de un signo formado por una única palabra), la práctica de la Oficina es restringir este concepto al impacto visual de los elementos del signo, es decir, utilizarlo exclusivamente en el sentido de «visualmente destacado» y dejar todas las consideraciones restantes para la apreciación global. Por ello, la práctica de la Oficina es que el carácter dominante de un componente de un signo está principalmente determinado por su posición, tamaño y dimensiones y uso de colores, en la medida en que afecten a su impacto visual
El Tribunal ha establecido también que:
el débil carácter distintivo de un elemento de una marca compuesta no implica necesariamente que éste no pueda constituir un elemento dominante en la medida en que, debido en particular a su posición en el signo o a su dimensión, pueda imponerse en la percepción del consumidor y permanecer en la memoria de éste.
(Véase la sentencia de 13 de junio de 2006, T-153/03 «Representación de una piel de vaca en blanco y negro», apartado 32.)
Por tanto, el hecho de que un componente de una marca se considere o no como no distintivo (o tenga un bajo grado de carácter distintivo) no afecta a la apreciación del carácter dominante.
Como regla general, debe considerarse lo siguiente:
La apreciación del carácter dominante se aplica a los dos signos que se comparan. Para considerar que hay un componente dominante, el signo ha de tener al menos
dos componentes identificables. Las marcas formadas por palabras no tienen elementos dominantes porque, por
definición, están escritas con tipos de letra normales. La longitud de las palabras o el número de letras no están ligados al carácter dominante, sino a la apreciación global3.
Los elementos figurativos pueden ser dominantes en signos que incluyan también palabras.
El carácter visualmente destacado de un elemento puede apreciarse mediante la comparación visual de los signos; en tal caso, debe ser coherente con la evaluación posterior del carácter dominante.
Por último, si resulta difícil decidir cuál de los (al menos) dos componentes es dominante, ello puede ser un indicador de la inexistencia de un elemento dominante. La apreciación del carácter dominante implica que un componente es visualmente destacado en comparación con los demás componentes de la marca; si resulta difícil apreciar esto, es porque no hay un elemento dominante.
3 Véanse las Directrices relativas a la oposición, Doble identidad y riesgo de confusión, Sección 8, Evaluación global, Signos cortos.
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Ejemplos de asuntos:
Signo Elemento dominante y justificación Asunto
RPT: «el elemento dominante de las marcas anteriores es el acrónimo RPT, en el que predomina la letra “p”». (apartado 33)
T-168/07
Free: «la palabra “free” domina la impresión visual creada por la marca de la que forma parte, porque es considerablemente mayor que los demás componentes y, además, es mucho más fácil de recordar y pronunciar que el eslogan en cuestión». (apartado 39)
T-365/09
Xtreme: «En el plano visual, debe llegarse a la conclusión de que el término “XTREME” ocupa una posición central en la marca solicitada. De hecho, el tamaño de la letra es mayor que el de los otros elementos verbales, y la palabra está resaltada con un contorno blanco [...]. Los otros componentes verbales “RIGHT GUARD” y “SPORT” están escritos en letra mucho más pequeña y desplazados a la derecha y hacia el borde del signo». (apartado 55)
T-286/03
(by missako)
GREEN by missako: «Debe señalarse, en primer lugar, que la representación del sol ocupa un lugar importante en la marca solicitada, pues está situada en el centro y ocupa casi dos terceras partes de la superficie. En segundo lugar, la posición de la palabra “green” es también importante en la marca, pues está representada en letras mayúsculas estilizadas de tamaño grande en negro y ocupa en torno a una tercera parte de la superficie. Como señala la Sala de Recurso en el apartado 28 de la resolución recurrida, estos dos elementos ocupan la mayor parte de la marca solicitada y resaltan, por tanto, en la impresión general de la marca... Por último, con respecto a las palabras “by missako”, la Sala de Recurso consideró acertadamente en el apartado 28 de la resolución recurrida que resultan casi ilegibles debido a su tamaño y que, al estar escritas a mano, resultan difíciles de descifrar. De ello se desprende, en primer lugar, que el carácter dominante de la palabra “green” y de la representación del sol se refuerzan aún más y, en segundo lugar, que el elemento “by missako” es de carácter insignificante». (apartados 37 y 39)
T-162/08
BÜRGER: «El elemento dominante de la marca solicitada es indudablemente la palabra que aparece en mayúsculas y que destaca entre los demás elementos que forman la etiqueta simplemente por su posición y su gran tamaño de letra». (apartado 38)
T-460/11
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 2
DOBLE IDENTIDAD Y RIESGO DE CONFUSIÓN
CAPÍTULO 6
PÚBLICO DESTINATARIO Y GRADO DE ATENCIÓN
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Índice
1 Introducción............................................................................................... 3
2 Definición del público destinatario .......................................................... 4
3 Definición del grado de atención ............................................................. 8 3.1 Mayor grado de atención ...........................................................................9
3.1.1 Compras onerosas........................................................................................... 10 3.1.2 Compras potencialmente peligrosas ............................................................... 11 3.1.3 Fidelidad de marca .......................................................................................... 11 3.1.4 Productos farmacéuticos .............................................................................. 11
3.2 Menor grado de atención ......................................................................... 11
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1 Introducción
La existencia de un riesgo de confusión depende de la apreciación global de varios factores independientes, entre los que se incluyen: (i) la similitud de los productos y servicios, (ii) la similitud de los signos, (iii) los elementos distintivos y dominantes de los signos en conflicto, (iv) el carácter distintivo de la marca anterior, y (v) el público destinatario y, concretamente, su grado de atención y sofisticación.
El primer paso es apreciar si existe riesgo de confusión para determinar estos cinco factores. El segundo paso es determinar su relevancia y cómo interaccionan entre sí.
A propósito del público destinatario, el Tribunal de Justicia ha dictaminado que hay riesgo de confusión (que incluye un riesgo de asociación) si existe riesgo de que el público crea que los productos o servicios de que se trate proceden de la misma empresa o, en su caso, de empresas vinculadas económicamente (sentencia de 20 de septiembre de 1998, asunto C-39/97, «Canon», apartado 29). El Tribunal ha dictaminado asimismo que la percepción que el público destinatario tiene de los signos y de los productos o servicios de que se trate tiene una importancia determinante en la apreciación global del riesgo de confusión (sentencia de 11 de noviembre de 1997, asunto C-251/95, «Sabèl», apartado 23, y sentencia de 22 de junio de 1999, asunto C-342/97, «Lloyd Schuhfabrik Meyer», apartado 25).
Por tanto, la primera tarea consiste en definir los círculos de consumidores que son relevantes a los efectos del asunto en cuestión. El método de identificación del público destinatario se debate en el apartado 2. Posteriormente, ha de determinarse el grado de atención y sofisticación del público. La repercusión de la atención y la sofisticación del público en la apreciación del riesgo de confusión se debate en el apartado 3.
Además, el público destinatario desempeña un papel importante a la hora de determinar otros factores que son relevantes para la apreciación del riesgo de confusión.
Comparación de los productos y servicios
Los clientes reales y potenciales de los productos y servicios en litigio constituyen uno de los factores que deben tenerse en cuenta en el análisis de la similitud de los productos y servicios. Mientras que una coincidencia de público destinatario no es necesariamente una indicación de similitud de los productos y servicios, unos públicos muy diversos sí constituyen un argumento de peso en contra de dicha similitud (1).
Ejemplo
Cuero y pieles de animales son materias primas destinadas a la industria para su posterior transformación mientras que los productos de cuero finales están destinados al público general. El público destinatario es distinto, lo que es un factor fundamental al determinar que tales productos no son similares. Se aplica el mismo razonamiento a metales preciosos y joyería.
(1) Véanse las Directrices relativas a la oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 2, Comparación de productos y servicios.
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Comparación de los signos
La cuestión del público destinatario también desempeña un papel en la comparación de los signos. El mismo término puede tener una pronunciación distinta en función del público destinatario. El público de una parte de la Unión Europea puede entender el significado conceptual del signo, mientras que los consumidores en otras partes pueden no entenderlo (2)
Ejemplo
El Tribunal ya ha confirmado que el público general de los países escandinavos, los Países Bajos y Finlandia posee un entendimiento básico del inglés (sentencia de 26 de noviembre de 2008, asunto T-435/07, «New Look», apartado 23).
Elementos distintivos de los signos/carácter distintivo de la marca anterior
El carácter distintivo inherente de un signo o de uno de sus elementos también depende del público destinatario de los productos y servicios. Por ejemplo, en función de los conocimientos, nivel y lengua del público destinatario, un elemento incluido en la marca puede no ser distintivo o tener un carácter distintivo bajo, o puede ser, entre otros, distintivo porque es percibido como un término de fantasía sin significado (3).
Ejemplo
El término francés «Cuisine» no se entenderá como una indicación descriptiva para los productos de las clases 29 y 30 en algunos Estados miembros (resolución de 23 de junio de 2010, R 1201/2009-1, «GREEN CUISINE», apartados 29 a 33).
Ejemplo
Los profesionales del ámbito de las tecnologías de la información y científico están más familiarizados, en general, con el uso de palabras técnicas y básicas en inglés que el público general. En el asunto «Gateway contra ACTIVY Media Gateway», el Tribunal resolvió que la palabra común en lengua inglesa «gateway» evoca directamente, en la mente del público pertinente, el concepto de «puerta de enlace», que se emplea comúnmente en el sector informático (sentencia de 27 de noviembre de 2007, asunto T-434/05, «ACTIVY Media Gateway», apartados 38 y 48, confirmada por el recurso C-57/08P).
2 Definición del público destinatario
De acuerdo con el artículo 8, apartado 1, letra b), del RMC, debe determinarse si existe confusión «por parte del público en el territorio en que esté protegida la marca anterior».
De acuerdo con el Tribunal, este texto pone de manifiesto que la percepción de las marcas por el consumidor medio de la categoría de productos o servicios en cuestión desempeña un papel decisivo en la apreciación global del riesgo de confusión
(2) Véanse las Directrices relativas a la oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 3, Comparación de los signos. (3) Véanse las Directrices relativas a la oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 4, Carácter distintivo.
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(sentencia de 11 de noviembre de 1997, asunto C-251/95, «SABEL», apartado 23 y sentencia de 22 de junio de 1999, asunto C-342/97, «Lloyd Schuhfabrik Meyer», apartado 25).
El término «consumidor medio» es un concepto jurídico que se emplea en el sentido de «consumidor destinatario» o «público destinatario». No debe confundirse con el «público general» o el «público en general», aunque, en ocasiones, los tribunales lo utilicen en dicho sentido. Sin embargo, en el contexto de los motivos de denegación relativos, el término «consumidor medio» no se empleará como sinónimo del «público general», ya que puede referirse tanto a un público profesional como al público general. Al respecto, en asuntos que atañen al riesgo de confusión, el Tribunal suele distinguir entre público general (o público en general) y público profesional o especializado (o clientes comerciales), sobre la base de los productos y servicios de que se trate.
Con el fin de definir adecuadamente el público destinatario en el contexto de los motivos de denegación relativos, han de tenerse en cuenta dos factores:
el territorio definido por la marca anterior: el público destinatario es siempre el del territorio o los territorios en los que se protege(n) el/los derecho(s) anterior(es). Consiguientemente, en el caso de un derecho nacional anterior, el púbico destinatario en cuestión es el del Estado miembro concreto (o el de los Estados miembros, en el caso de las marcas del Benelux). Para una marca comunitaria anterior, debe tenerse en cuenta el público de toda la Comunidad. En lo que atañe a un registro internacional, se tratará del público de todos los Estados miembros en los que esté protegida la marca.
los productos y servicios que se han considerado idénticos o similares: el riesgo de confusión siempre se evalúa sobre la base de la percepción de los consumidores de los productos y servicios que se hayan considerado idénticos o similares. Dependiendo de los productos o servicios de que se trate, el público destinatario será el público general o un público profesional.
El público destinatario siempre comprende tanto a los consumidores reales como a los potenciales, es decir, los consumidores que actualmente compran los productos/servicios o que pueden hacerlo en el futuro.
Si una parte significativa del público destinatario para los productos o servicios de que se trate puede confundirse en relación con el origen de los productos, esto es suficiente para establecer un riesgo de confusión, sin que sea necesario determinar si
PÚBLICO DESTINATARIO Consumidor medio
PÚBLICO GENERAL Público en general
PÚBLICO PROFESIONAL Clientes comerciales Público especializado
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existe riesgo de confusión de todos los consumidores reales o potenciales de los productos o servicios pertinentes. Tal como ha establecido el Tribunal, el público destinatario para evaluar el riesgo de confusión está compuesto por usuarios que pueden utilizar tanto los productos y servicios designados por la marca anterior como el producto que se reivindica bajo la marca comunitaria cuyo registro se solicita y que se hayan considerado idénticos o similares (sentencia de 1 de julio de 2008, asunto T-328/05, «QUARTZ», apartado 23, C-416/08 P, recurso desestimado).
Al determinar la parte del público con respecto a la que se evalúa un riesgo de confusión, se aplicará lo siguiente:
Si los productos o servicios de ambas marcas están destinados al público general, el público destinatario con respecto al que se evalúa el riesgo de confusión es el público general.
Ejemplo
En un caso en que la marca anterior y la marca impugnada se referían a prendas de vestir, el Tribunal dictaminó que: «Las prendas de vestir de hombres y mujeres son artículos de consumo corriente y la marca en que se basa la oposición está registrada como marca comunitaria. En consecuencia, el público con respecto al cual debe examinarse el riesgo de confusión está constituido por el público general de la Unión Europea» (sentencia de 6 de octubre de 2004, asuntos T-117/03 a T-119/03 y T-171/03, «New Look», apartado 25).
Si los productos y servicios de ambas marcas están destinados al mismo público profesional o a un público similar, el riesgo de confusión se evaluará desde la perspectiva de dichos especialistas.
Ejemplo
Los productos de referencia de la marca anterior y de la marca impugnada son materias primas plásticas, productos químicos, resinas y similares, que son productos para uso industrial. Los consumidores a los que se dirigen son, por tanto, ingenieros, químicos, es decir, profesionales altamente cualificados que procesarán dichos productos y que los utilizarán en actividades manufactureras. Se consideró que el público destinatario eran profesionales (resolución de 15 de febrero de 2012, R 2077/2010-1, «PEBAFLEX», apartado 18). Véase asimismo la resolución de 16 de septiembre de 2010, R 1370/2009-1, «CALCIMATT», apartado 20, confirmada por la sentencia T-547/10.
Si los productos o servicios de ambas marcas están destinados tanto al público general como a los especialistas, el riesgo de confusión se apreciará con arreglo a la percepción de la parte del público que muestra un menor grado de atención, ya que aquel será más propenso a la confusión. Si no es probable que esta parte del público se confunda, será aún más improbable que lo haga la que muestra un mayor grado de atención.
Ejemplo
En un caso en que la marca anterior y la impugnada se referían a productos de las clases 3 y 5 dirigidos tanto al público general como a los profesionales (a saber, médicos, en relación con productos farmacéuticos de la clase 5), el
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Tribunal evaluó el riesgo de confusión en relación únicamente con el público general, ya que es el que muestra un menor grado de atención (véase, al respecto, la sentencia de 15 de julio de 2011, asunto T-220/09, «ERGO», apartado 21).
Si los productos y servicios de la marca anterior están destinados al público general y profesional y los productos y servicios impugnados se destinan exclusivamente a un público profesional (o viceversa), el público destinatario para apreciar el riesgo de confusión será exclusivamente el público profesional.
Ejemplo
Los productos de la marca anterior son productos para pulir metales, mientras que los productos de la solicitud son preparados para la limpieza de desagües para la industria de transformación de metales. Tal como declaró el TG en la correspondiente sentencia: «aunque los "productos para pulir metales" pueden ser tanto productos de consumo corriente como productos destinados a una clientela profesional o especializada, no hay discusión en cuanto a que los productos contemplados en la solicitud de registro deben considerarse dirigidos únicamente a profesionales de la industria de transformación de metales. De ello se desprende que el único público que puede incurrir en una confusión entre las marcas en conflicto es el constituido por dichos profesionales» (sentencia de 14 de julio de 2005, asunto T-126/03, «ALADIN», apartado 81).
Ejemplo
Las pinturas en general se venden tanto a los pintores profesionales (es decir, para usos profesionales) como al público en general con fines de bricolaje. Por el contrario, las pinturas destinadas a la industria no se venden al público general. En consecuencia, cuando las especificaciones de productos y servicios de ambas marcas designan las pinturas y las pinturas destinadas a la industria respectivamente, el público destinatario está constituido exclusivamente por los profesionales, ya que solo ellos pueden entrar en contacto con ambas marcas.
Ejemplo
Los servicios de la marca anterior son telecomunicaciones. Los servicios impugnados son servicios de telecomunicación, en concreto, los servicios de colocación, de facilitación de viviendas a distancia y de interconexión destinados únicamente a los profesionales. La definición de público destinatario debe ajustarse a una lista más específica, y el riesgo de confusión deberá ser apreciado únicamente por profesionales (sentencia de 24 de mayo de 2011, asunto T-408/09, «ANCOTEL», apartados 38 a 50).
En el caso de los productos farmacéuticos, se aplica lo siguiente:
El consumidor medio de productos farmacéuticos sin receta médica (de venta libre) es el público general, por lo que el riesgo de confusión se apreciará en relación con aquel.
Según la jurisprudencia, el público general no puede dejar de considerarse público destinatario en el caso de productos farmacéuticos que exigen receta antes de su venta a los usuarios finales en las farmacias. Así, el público destinatario está constituido tanto por el público general como por los
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profesionales de la salud, como médicos o farmacéuticos. Por consiguiente, aunque la elección de estos productos esté influenciada o determinada por los intermediarios, tal riesgo de confusión existe igualmente para el público general, dado que este puede verse ante dichos productos, aunque sea al realizar compras que, para cada uno de los citados productos individualmente considerados, tienen lugar en momentos diferentes (sentencia de 9 de febrero de 2011, asunto T-222/09, «ALPHAREN», apartados 42 a 45 y sentencia de 26 de abril de 2007, asunto C-412/05 P, «TRAVATAN», apartados 56 a 63). En la práctica, esto significa que el riesgo de confusión se evaluará sobre la base de la percepción del público general, que es más propenso a la confusión.
En el caso de los productos farmacéuticos destinados únicamente a especialistas para uso profesional (por ejemplo, soluciones estériles para cirugía oftálmica), el riesgo de confusión debe evaluarse desde el punto de vista exclusivo de dicho público especializado (véase la sentencia de 26 de abril de 2007, asunto C-412/05 P, «TRAVATAN», apartado 66).
En caso de que los productos farmacéuticos designados en la solicitud de marca comunitaria sean de libre prescripción mientras que los productos farmacéuticos amparados por el registro anterior solo puedan dispensarse con receta, o viceversa, la Oficina presumirá que el público de referencia está constituido tanto por los profesionales cualificados como por el público general, que carecen de conocimientos médicos o farmacéuticos específicos. El riesgo de confusión se evaluará en relación con el público general, que es más propenso a confusión.
Ejemplo
Sentencia de 23 de septiembre de 2009, en los asuntos acumulados T-493/07, T-26/08 y T-27/08, «FAMOXIN», apartados 50 a 54 (C-461/09 P, recurso desestimado).
En el asunto anterior, los productos amparados por la marca anterior eran preparados farmacéuticos que contienen digoxina destinados al uso en humanos para el tratamiento de enfermedades cardiovasculares, mientras que los productos impugnados eran preparados farmacéuticos para el tratamiento de desórdenes metabólicos adaptados para una administración exclusiva a través de inyección intravenosa, intramuscular o subcutánea.
Aunque los productos de la marca anterior y los de la marca impugnada se prescriben y administran bajo la supervisión de profesionales sanitarios, el TG dictaminó que el público destinatario se compone tanto de los profesionales sanitarios como del público general.
3 Definición del grado de atención
El Tribunal indicó que a los efectos de la apreciación global, se supone que el consumidor medio de los productos considerados es un consumidor normalmente informado y razonablemente atento y perspicaz y que el grado de atención del público destinatario puede variar en función de la categoría de productos o servicios contemplada (Asunto C-342/97, «Lloyd Schuhfabrik Meyer», apartado 26).
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El que el grado de atención sea mayor o menor dependerá, entre otras circunstancias, de la naturaleza de los productos y servicios de que se trate y del conocimiento, la experiencia y la implicación en la compra del público destinatario.
El hecho de que el público destinatario se componga del público general no significa necesariamente que el grado de atención no pueda ser alto (por ejemplo, cuando se adquieren productos potencialmente peligrosos o técnicamente sofisticados). Asimismo, el que los productos de que se trate estén destinados a especialistas no significa necesariamente que el grado de atención sea alto. En algunos casos, el público profesional puede poseer un elevado grado de atención al comprar un producto específico. Así sucede cuando se considera que los consumidores profesionales poseen unos conocimientos especiales o una experiencia práctica respecto de los productos y servicios específicos. Sin embargo, las compras realizadas por los consumidores profesionales con frecuencia son más sistemáticas que las compras que realiza el público general. Pero no siempre esto es así. Por ejemplo, si los productos o servicios de que se trate son utilizados a diario por un determinado profesional, el nivel de atención que se presta puede ser medio o incluso bajo (véase, por analogía, la sentencia de 15 de septiembre de 2005, asunto T-320/03, «LIVE RICHLY», apartado 74: «dicho grado de atención puede ser relativamente escaso con respecto a las indicaciones de naturaleza promocional que no son determinantes para un público perspicaz»).
Es importante contar con una definición adecuada del grado de atención del público destinatario, ya que se trata de un factor que puede influir a favor o en contra de la identificación de un riesgo de confusión. Mientras que el público destinatario rara vez tiene ocasión de comparar de manera directa los distintos signos y debe basarse en un recuerdo imperfecto de aquellos, un alto grado de atención del público destinatario puede dar lugar a la conclusión de que no confundirá las marcas, pese a la ausencia de una comparación directa entre ellas (véase la sentencia de 22 de marzo de 2011, asunto T-486/07, «CA», apartado 95).
Sin embargo, un elevado grado de atención no conlleva automáticamente que no se identifique un riesgo de confusión. Deben tenerse en cuenta todos los demás factores (principio de interdependencia)(4). Por ejemplo, habida cuenta del carácter especializado de los productos y servicios de que se trate y del elevado grado de atención del público destinatario, puede descartarse el riesgo de confusión (sentencia de 26 de junio de 2008, asunto T-79/07, «POLAR», apartados 50 y 51). No obstante, puede existir riesgo de confusión pese al elevado grado de atención. Por ejemplo, en caso de que exista un elevado riesgo de confusión creado por otros factores, como la identidad o la gran similitud general de las marcas y la identidad de los productos, no es posible basarse exclusivamente en la atención del público destinatario para evitar la confusión (sentencia de 21 de noviembre de 2013, asunto T-443/12, «ANCOTEL» (fig.), apartados 53 a 56, resolución de 6 de noviembre de 2010, R 1419/2009-4, «Hasi»).
3.1 Mayor grado de atención
Suele darse un mayor grado de atención en los siguientes tipos de compras: las compras onerosas, las de productos potencialmente peligrosos o técnicamente
4 Véanse las Directrices relativas a la oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 8, Evaluación global.
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sofisticados. El consumidor medio suele pedir asistencia o asesoramiento profesional a la hora de elegir o comprar ciertos tipos de productos y servicios (por ejemplo, coches y productos farmacéuticos).
Asimismo, puede existir un mayor grado de atención en las compras en las que la fidelidad a la marca es importante para el consumidor.
3.1.1 Compras onerosas
Al comprar productos onerosos, el consumidor normalmente ejercerá un elevado grado de cuidado y solo comprará los productos tras una atenta consideración. Los consumidores no especializados o no profesionales suelen pedir asistencia o asesoramiento profesional a la hora de elegir o comprar ciertos tipos de productos y servicios. La atención puede ser incluso mayor en aquellos casos en los que el producto específico es considerado un reflejo del estatus social de su propietario.
Ejemplos:
Automóviles: Teniendo en cuenta su precio, los consumidores pueden prestar un mayor grado de atención que para las compras menos onerosas. Cabe esperar que estos consumidores no comprarán un coche, sea nuevo o de segunda mano, de la misma forma en que compraría artículos de uso cotidiano. El consumidor estará informado y tomará en consideración todos los factores relevantes, por ejemplo, el precio, el consumo, los gastos de seguro, las necesidades personales o incluso el prestigio. Véase en este sentido la sentencia del TG de 22 de marzo de 2011, asunto T-486/07, «CA», apartados 27 a 38 y la sentencia del TG de 21 de marzo de 2012, asunto T-63/09, «SWIFT GTi», apartados 39 a 42.
Diamantes, piedras preciosas y semipreciosas: En su resolución de 9 de diciembre de 2010, R 900/2010-1, «Leo Marco», apartado 22, la Sala resolvió que, normalmente, la selección de dichos productos es objeto de cierta reflexión previa por parte del consumidor. En muchos casos, los productos serán artículos de lujo o se destinarán a regalos. Se puede presumir un grado de atención relativamente elevado por parte del consumidor.
Servicios financieros: Estos servicios están dirigidos al público general, el cual está normalmente informado y es razonablemente atento y perspicaz. Sin embargo, dado que dichos servicios son servicios especializados que pueden tener importantes consecuencias financieras para sus usuarios, el consumidor deberá tener un nivel de atención bastante elevado a la hora de su elección (resolución de 3 de febrero de 2011, R 719/2010-1, «f@ir Credit», apartado 15) (Recurso ante el TG, asunto T-220/11, desestimado. Recurso, C-524/12 P, desestimado).
En la impresión de conjunto producida por dichos signos, las diferencias visuales y conceptuales existentes entre ellos son suficientes para neutralizar su limitada similitud fonética, en particular habida cuenta de que el público relevante es un público muy atento y bien informado (sentencia de 22 de junio de 2010, asunto T-563/08, «CARBON CAPITAL MARKETS», apartados 33 y 61).
Servicios inmobiliarios: Las compraventas de propiedades son transacciones comerciales que implican tanto un riesgo como la transferencia de grandes sumas de dinero. Por lo cual, se considera que el consumidor pertinente posee
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un grado de atención mayor al promedio de los consumidores, ya que las consecuencias de una mala decisión, debido a una falta de atención, podría provocar muchos daños (resolución de 17 de febrero de 2011, R 817/2010-2, «FIRST THE REAL ESTATE», apartado 21).
3.1.2 Compras potencialmente peligrosas
El impacto en la seguridad de los productos cubiertos por una marca (por ejemplo, lumbre para chimeneas, sierras, acumuladores eléctricos, interruptores eléctricos, relés eléctricos, etc.) puede implicar un aumento del grado de atención del consumidor relevante (véase la sentencia de 22 de marzo de 2011, asunto T-486/07, «CA», apartado 41).
3.1.3 Fidelidad de marca
Además, un mayor grado de atención puede ser consecuencia de la fidelidad de marca.
Ejemplo
Si bien los productos a base de tabaco son productos de consumo masivo relativamente económicos, los fumadores son considerados especialmente cuidadosos y selectivos en lo que se refiere a la marca de cigarrillos que fuman, por lo tanto se presume un mayor grado de fidelidad de marca y de atención cuando se trata de productos relacionados con el tabaco. En consecuencia, en lo tocante a los productos relacionados con el tabaco puede requerirse un grado de similitud más elevado entre los signos para que se produzca un riesgo de confusión. Esto ha sido confirmado por varias resoluciones de las Salas: resolución de 26 de febrero de 2010, R 1562/2008-2, «victory Slims», en la que se estableció que los consumidores de los productos de la clase 34 normalmente ponen mucha atención y son muy fieles a la marca, y la resolución de 25 de abril de 2006, R 61/2005-2, «Granducato».
3.1.4 Productos farmacéuticos
De la jurisprudencia se desprende, por lo que a los preparados farmacéuticos se refiere, el grado de atención del público destinatario es relativamente elevado, independientemente de si se venden con o sin receta (sentencia de 15 de diciembre de 2010, asunto T-331/09, «Tolposan», apartado 26 y sentencia de 15 de marzo de 2012, asunto T-288/08, «ZYDUS», apartado 36 y la citada jurisprudencia).
En concreto, los profesionales de la medicina demuestran un elevado grado de atención cuando recetan medicamentos. Con respecto a los no profesionales, estos también muestran un mayor grado de atención, independientemente de si el producto farmacéutico se vende con o sin receta, ya que tales productos afectan a su salud.
3.2 Menor grado de atención
Un menor grado de atención puede asociarse, en concreto, a una conducta de compra habitual. Las decisiones de compra en este ámbito se relacionan, por ejemplo, con productos de bajo precio adquiridos a diario (véase, por analogía, la sentencia de 15
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de junio de 2010, asunto T-547/08, «Coloración naranja de la puntera de un calcetín», apartado 43).
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 2
DOBLE IDENTIDAD Y RIESGO DE CONFUSIÓN
CAPÍTULO 7
OTROS FACTORES
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Índice 1 Introducción.........................................................................................................3 2 Familia / serie de marcas .................................................................................... 3 3 Coexistencia de las marcas en conflicto en el mercado del mismo
territorio ............................................................................................................... 6 3.1 Coexistencia entre las marcas objeto del procedimiento de oposición...................... 6
4 Supuestos de confusión real.............................................................................. 8 5 Resoluciones anteriores dictadas por autoridades comunitarias o
nacionales en litigios entre marcas idénticas (o similares) ............................. 9 5.1 Resoluciones anteriores de la Oficina ........................................................................ 9
5.2 Resoluciones y sentencias nacionales anteriores .................................................... 10
6 Alegaciones irrelevantes para determinar el riesgo de confusión ................ 11 6.1 Estrategias de marketing específicas ....................................................................... 11
6.2 Renombre de la marca comunitaria solicitada.......................................................... 12
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1 Introducción
La Oficina examina normalmente los factores más destacados y que suelen ser relevantes en relación con el riesgo de confusión bajo epígrafes distintos1, antes del apartado que recoge la apreciación global. Estos factores se abordan en los capítulos anteriores de estas Directrices.
Sin embargo, la apreciación global también tiene en cuenta otros factores, basados en alegaciones y pruebas presentadas por las partes, que son relevantes para la decisión sobre el riesgo de confusión. El presente capítulo se ocupa de estos argumentos o alegaciones frecuentes de las partes.
2 Familia / serie de marcas
Cuando una oposición a una solicitud de marca comunitaria se basa en varias marcas anteriores y dichas marcas poseen características que permitan considerarlas parte de una misma «serie» o «familia» de marcas, la posibilidad de asociar la marca impugnada con las marcas anteriores que forman parte de la serie puede dar lugar a un riesgo de confusión. Los Tribunales han indicado claramente las dos condiciones acumulativas que deben cumplirse (sentencia de 23/02/2006, T-194/03, «Bainbridge», apartados 123 a 127, confirmada por la sentencia de 13/09/2007, C-234/06 P, «Bainbridge», apartado 63).
En primer lugar, el titular de una serie de marcas anteriores debe aportar la prueba de uso de todas las marcas pertenecientes a la serie o, por lo menos, de varias marcas que puedan constituir una «serie» (es decir, al menos tres).
En segundo lugar, la marca solicitada no solo debe ser similar a las marcas pertenecientes a la serie, sino también poseer características que permitan asociarla a ésta. Esta asociación debe inducir al público a creer que la marca impugnada también forma parte de la serie, es decir, que los productos y servicios podrían proceder de las mismas empresas o de empresas relacionadas entre sí. Esto ocurriría, por ejemplo, cuando el elemento común de la serie de marcas anteriores se utiliza en la marca impugnada, bien en una posición diferente de la que aparece habitualmente en las marcas pertenecientes a la serie, bien con un contenido semántico diferente.
El argumento según el cual existe una “familia de marcas” deberá reivindicarse antes de que expire el plazo fijado para motivar la oposición. El oponente debe aportar la prueba en el mismo plazo en que ha utilizado las marcas que forman la presunta familia en el mercado, hasta el punto de que el público destinatario se ha familiarizado con esta serie de marcas que designan los productos y servicios de una empresa particular. Una conclusión positiva según la cual el oponente posee una familia de marcas implica el uso de al menos tres marcas, el umbral mínimo para que tal argumento sea tomado debidamente en consideración. La prueba de uso de únicamente dos marcas no puede justificar la existencia de una serie de marcas.
1 i) Similitud de los productos y servicios, ii) similitud de los signos, iii) elementos distintivos y dominantes de los signos en conflicto, iv) carácter distintivo de la marca anterior, v) público destinatario y grado de atención.
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Normalmente, las marcas que constituyen una «familia» y se utilizan en este sentido son todas marcas registradas. No obstante, no debe excluirse que la doctrina relativa a la «familia de marcas» incluya igualmente las marcas no registradas.
Si el oponente ha demostrado la existencia de una familia de marcas, no sería correcto comparar la marca solicitada impugnada con cada una de las marcas anteriores que forman la familia, sino que habría que comparar la marca impugnada con la familia en su conjunto, a fin de determinar si el signo impugnado presenta las características que pueden provocar en la mente de los consumidores una asociación con la familia de marcas del oponente. De hecho, una comparación individual entre los signos en conflicto podría incluso determinar que los signos no son lo suficientemente similares para dar lugar a un riesgo de confusión, mientras que la asociación del signo impugnado con la familia de marcas anteriores podría ser el factor decisivo que incline la balanza a favor de la existencia de un riesgo de confusión.
Para que el público pueda suponer la existencia de una familia de marcas es necesario que el denominador común de la solicitud impugnada y la familia de marcas anteriores tenga carácter distintivo, o bien per se, o bien adquirido a través del uso, de modo que permita una asociación directa entre todos estos signos. De forma similar, no cabe suponer la existencia de una familia de marcas cuando los demás componentes de los signos anteriores tengan un mayor impacto sobre la impresión global de tales signos.
Signos anteriores Signo impugnado Asunto Ophtal, Crom-Ophtal, Visc-
Ophtal, Pan-Ophtal ALERGOFTAL R 0838/2001-1
Productos y servicios: Clase 5 Territorio: Alemania Apreciación: La Sala estimó que las diferencias entre los signos excluían la posibilidad de que la marca impugnada se considerara parte de la familia de marcas del oponente (suponiendo que se hubiera determinado su existencia). En particular, la Sala consideró que, mientras la presunta «serie» dependía de la presencia en todos los casos del sufijo «-ophtal» (y no «oftal») precedido de un guión, el signo impugnado no incluía exactamente el mismo sufijo ni reflejaba exactamente los mismos principios de construcción. Cuando se combina «ophtal» con «Pan-», «Crom-» y «Visc-», estos prefijos parcialmente inconexos adquieren un mayor valor distintivo que determina de forma muy significativa la impresión global de cada una de las marcas en su conjunto, y que en cada caso presentan elementos iniciales claramente diferenciados de la primera parte - «Alerg» - de la marca solicitada. Al ver la marca «Alergoftal», el consumidor alemán no pensaría en dividirla en dos elementos, por oposición a cuando se le invita a hacerlo ante marcas formadas por dos elementos separados por un guion (apartados 14 y 18).
Signos anteriores Signo impugnado Asunto
TIM OPHTAL, SIC OPHTAL, LAC OPHTAL, etc. OFTAL CUSI T-160/09
Productos y servicios: Clase 5 Territorio: UE Apreciación: El elemento «Ophtal», que indica preparaciones oftalmológicas, es un elemento débil en la familia de marcas. Los elementos TIM, SIC y LAC son los elementos distintivos (apartados 92 y 93).
.
La conclusión de que una marca determinada forma parte de una familia de marcas debe basarse en que el componente común de los signos es idéntico o muy similar. Los signos objeto de comparación deben tener en común el mismo elemento distintivo y este elemento debe jugar un papel independiente. Las diferencias gráficas de menor importancia en el componente común no pueden excluir la posibilidad de
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que exista una serie de marcas, cuando el público pueda interpretar dichas diferencias como una presentación moderna de la misma línea de productos. En cambio, las letras que son diferentes de las del componente común o añadidas a éste no permiten por lo general suponer que existe una familia de marcas.
Normalmente, el elemento común característico de la familia aparece en el mismo lugar dentro de las marcas. Por consiguiente, la presencia del mismo elemento (o de uno muy similar) en el mismo lugar en el signo impugnado será un firme indicio de que la marca posterior puede asociarse a la familia de marcas del oponente. Por otra parte, el hecho de que el elemento común aparezca en un lugar distinto en el signo impugnado se opone firmemente a que en la mente de los consumidores se produzca dicha asociación. Por ejemplo, es poco probable que se asocie el signo impugnado ISENBECK con la familia de marcas BECK en la que el elemento BECK se encuentra al principio de los signos que constituyen esta familia.
Signos anteriores Signo impugnado Asunto
UNIZINS, UNIFONDS y UNIRAK UNIWEB C-317-10 P
Productos y servicios: Clase 36 (servicios financieros) Territorio: Alemania Apreciación: En virtud de esta sentencia, el Tribunal anuló una resolución del TG, dado que no se había evaluado adecuadamente la estructura de las marcas objeto de comparación, ni la influencia de la posición de su elemento común sobre la percepción del publico relevante (apdo. 57).
A continuación se presentan algunos ejemplos en los que las Salas han considerado que se ha demostrado la existencia de una familia de marcas:
Signos anteriores Signo impugnado Asunto
UniSECTOR uni-gateway R 31/2007-1
Productos y servicios: Clase 36 (servicios financieros) Territorio: Alemania Apreciación: La Sala estimó que el oponente había facilitado pruebas suficientes, al presentar, en particular, referencias procedentes de la prensa especializada correspondiente, como FINANZtest, y al mencionar su considerable cuota de mercado del 17,6 % en los fondos de inversión «Uni» entre las sociedades alemanas gestoras de fondos, para demostrar que utiliza el prefijo «UNI» para varios fondos de inversión bien conocidos. Existe riesgo de confusión desde el punto de vista de la familia de marcas, ya que el sector económico interesado incluiría la marca solicitada en la serie de marcas, pues esta última está diseñada de acuerdo con un principio similar (apartados 43 y 44).
Signos anteriores Signo impugnado Asunto
UNIFIX, BRICOFIX, MULTIFIX, CONSTRUFIX, TRABAFIX, etc. ZENTRIFIX R 1514/2007-1
Productos y servicios: Clases 1, 17 y 19 (pegamentos) Territorio: España Apreciación: La Sala consideró que el oponente había demostrado la existencia de una familia de marcas. En primer lugar, la Sala desestimó el hecho de que el elemento común «FIX» fuera no- distintivo, dado que no es una palabra española y que hasta su mismo significado en español «fijar»' no evoca espontáneamente en la mente del consumidor medio español un vínculo con el contexto de las colas y adhesivos, ya que verbos como «pegar», «encolar» o «adherir» son los que se utilizan más asiduamente en este contexto. En segundo lugar, el oponente demostró el uso de todas las marcas que constituyen la familia. Una serie de facturas y textos promocionales demuestran debidamente que los productos que llevan estas marcas están a disposición de los consumidores en
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el mercado. Por consiguiente, los consumidores saben que existe una familia de marcas. En tercer lugar, ZENTRIFIX presenta características que replican las de las marcas de la familia. El elemento FIX se encuentra al final; el elemento que lo precede hace alusión a algo que tiene cierta relevancia para los pegamentos; los dos elementos se yuxtaponen sin signos de puntuación, barras o separación física; el tipo de letra utilizado para ambos elementos es el mismo (apartados 43 y 44).
Signos anteriores Signo impugnado Asunto
CITIBANK, CITIGOLD, CITICORP, CITIBOND,
CITICARD, CITIEQUITY, etc. CITIGATE
R 821/2005--1 (confirmado por el TG T-
-301/09)
Productos y servicios: Clases 9, 16 (productos que pueden estar relacionados con las finanzas) Territorio: UE Apreciación: La Sala estimó que las pruebas —que consistían en particular en extractos de los sitios web, memorias anuales, anuncios de prensa, etc. del oponente— están llenas de referencias a sus marcas CITICORP, CITIGROUP, CITICARD, CITIGOLD, CITIEQUITY. Las pruebas muestran que CITIBANK tiene el carácter de «marca de la casa» o marca básica, y que los oponentes han desarrollado toda una serie de sub-marcas basadas en el concepto CITI. La marca impugnada CITIGATE es el tipo de marca que los oponentes podrían añadir a su cartera de marcas CITI, en particular si desearan ofrecer un nuevo servicio a los clientes y hacer hincapié en la idea de acceso (apartados 23 y 24).
3 Coexistencia de las marcas en conflicto en el mercado del mismo territorio
El solicitante de la marca comunitaria puede alegar que las marcas en conflicto coexisten en el territorio correspondiente. Por lo general, la alegación de coexistencia se presenta cuando el solicitante es titular de una marca nacional que corresponde a la marca comunitaria solicitada en el territorio en el que la marca oponente se encuentra protegida. El solicitante también puede alegar la coexistencia con una marca de la que es titular un tercero.
Por consiguiente, cabe distinguir entre dos situaciones distintas, ambas calificadas de «coexistencia» por las partes:
la coexistencia entre las dos marcas objeto del procedimiento de oposición puede demostrar la inexistencia de un riesgo de confusión en la percepción del público destinatario (véase más abajo);
cuando los competidores utilizan muchas marcas similares (distintas de las marcas objeto del procedimiento de oposición), la coexistencia puede influir en el ámbito de protección del derecho anterior. Véanse las Directrices relativas a la oposición, Parte 2, Capítulo 4, Carácter distintivo.
3.1 Coexistencia entre las marcas objeto del procedimiento de oposición
En los procedimientos de oposición, el solicitante de la marca comunitaria alega a menudo que las marcas en conflicto coexisten a escala nacional y que el oponente tolera dicha coexistencia. En ocasiones se alega que las partes aceptan la coexistencia en el marco de un acuerdo de coexistencia.
No cabe descartar la posibilidad de que la coexistencia de las dos marcas en un mercado determinado podría contribuir, junto con otros elementos, a disminuir el riesgo de confusión entre esas marcas entre el público interesado (sentencia de 03/09/2009, C-498/07P, «La Española», apartado 82). En algunos casos, la
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coexistencia de marcas anteriores en el mercado podría reducir el riesgo de confusión que la Oficina observa entre dos marcas en conflicto (sentencia de 11/05/2005, T-31/03, «Grupo Sada», apartado 86).
Sin embargo, el valor indicativo de la coexistencia debe tratarse con cautela. Podrían existir diferentes motivos para que los dos signos coexistan a escala nacional, como por ejemplo una situación de hecho o de derecho diferente en el pasado o acuerdos sobre derechos anteriores entre las partes implicadas.
Por ello, aunque el efecto de la coexistencia para declarar la existencia de riesgo de confusión se acepta en teoría, las condiciones para que esta coexistencia demuestre la inexistencia de un riesgo de confusión resultan muy difíciles de determinar en la práctica y pocas veces se imponen.
Para que el solicitante de la marca comunitaria demuestre que la coexistencia se basaba en la ausencia de riesgo de confusión por parte del público destinatario deben cumplirse determinadas condiciones:
Situación similar. Las marcas anteriores («coexistentes») y las marcas en conflicto son idénticas a las marcas objeto del procedimiento de oposición ante la Oficina (sentencia de 11/05/2005, T-31/03, «Grupo Sada», apartado 86; sentencia de 18/09/2012, T-460/11, «Bürger», apartados 60 y 61) y abarcan los mismos productos y servicios que las marcas en conflicto (resolución de 30/03/2010, R 1021/2009-1, «Eclipse», apartado 14).
La coexistencia se refiere a los países que vienen al caso (por ejemplo, la coexistencia en Dinamarca es irrelevante si la oposición se basa en una marca española, sentencia de 13/07/2005, T-40/03, «Julián Murúa Entrena», apartado 85). Si la marca anterior es una marca comunitaria, el solicitante de ésta debe demostrar la coexistencia en toda la UE.
Únicamente se puede tener en cuenta la coexistencia en el mercado. El simple hecho de que ambas marcas existan en el registro nacional (coexistencia formal) no es suficiente. El solicitante de la marca comunitaria tiene que demostrar que las marcas se utilizaron realmente (resolución de 13/04/2010, R 1094/2009-2, «Business Royals», apartado 34). La coexistencia debe interpretarse como «uso conjunto» de marcas concurrentes y supuestamente en conflicto (resolución de 08/01/2002, R 0360/2000-4, «No Limits», apartado 13; resolución de 05/09/2002, R 0001/2002-3, «Chee.Tos», apartado 22).
Debe tenerse en cuenta el período de coexistencia: en la sentencia de 01/03/2005, T-185/03, «Enzo Fusco», la presunta coexistencia de tan solo cuatro meses se consideró, obviamente, demasiado corta. Asimismo, la coexistencia de las marcas tiene que hacer referencia a un período próximo a la fecha de depósito de la solicitud de marca comunitaria (resolución de 12/05/2010, R 607/2009-1, «Elsa Zanella», apartado 39).
La ausencia de riesgo de confusión solo puede inferirse del carácter «pacífico» de la coexistencia de las marcas en conflicto en el mercado de que se trate (sentencia de 03/09/2009, C-498/07 P, «La Española», apartado 82; sentencia de 01/12/2005, T-29/04, «Cristal Castellblanch», apartado 74; sentencia de 24/11/2005, T-346/04, «ARTHUR ET FELICIE», apartado 64). Este carácter no existe cuando el conflicto se ha presentado ante los tribunales u órganos
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administrativos nacionales (casos de vulneración, oposiciones o solicitudes de declaración de nulidad de una marca).
Por otra parte, la coexistencia pacífica de las marcas en el mercado nacional de que se trate no impide la existencia de riesgo de confusión si se basa en acuerdos sobre derechos anteriores entre las partes, incluidos los acuerdos para resolver litigios incoados ante tribunales nacionales, ya que estos acuerdos pueden tener razones exclusivamente económicas o estratégicas, incluso si se basan en la evaluación de la situación legal por las partes.
No obstante, pueden presentarse situaciones excepcionales. En su resolución prejudicial de 22/09/2011, C-482/09, «BUD», el Tribunal de Justicia dictaminó que dos marcas idénticas que designan productos idénticos pueden coexistir en el mercado en la medida en que haya existido un largo período de uso simultáneo y de buena fe de dichas marcas, y que ese uso no haya tenido efectos negativos en la función esencial de la marca, que consiste en garantizar a los consumidores el origen de los bienes y servicios.
En cuanto a los acuerdos de coexistencia entre las partes, la política de la Oficina al examinar el riesgo de confusión es que dichos acuerdos pueden tenerse en cuenta como cualquier otro factor relevante, pero que no son vinculantes en absoluto para la Oficina, en particular cuando al aplicar las disposiciones del RMC y la jurisprudencia establecida se llegue a una conclusión que no concuerde con el contenido del acuerdo.
Si un acuerdo es objeto de litigio ante instancias nacionales o de un procedimiento judicial, y la Oficina estima que el resultado podría ser relevante para el caso, puede decidir la suspensión del procedimiento.
Además, por regla general, nada impide que el oponente presente una oposición contra una solicitud de marca comunitaria, independientemente de que se haya opuesto o no anteriormente a otras marcas (nacionales) del solicitante. Este no puede considerarse un «comportamiento contradictorio» e interpretarse en contra del oponente, sobre todo porque en el procedimiento de oposición, a diferencia de los procedimientos de nulidad, no existe la defensa basada en el «consentimiento» (las normas del procedimiento de oposición no recogen un equivalente del artículo 54 del RMC, con arreglo al cual el titular de una marca comunitaria puede invocar en su defensa el hecho de que el solicitante de la declaración de anulación haya consentido el uso de la marca comunitaria durante más de cinco años).
4 Supuestos de confusión real
El riesgo de confusión implica una probabilidad de confusión por parte de los consumidores pertinentes y no requiere una confusión real. Como ha confirmado expresamente el Tribunal: «... no es necesario constatar la existencia de una efectiva confusión, sino que es suficiente que exista riesgo de confusión» (sentencia de 24/11/2005, T-346/04, «Arthur et Felicie», apartado 69).
En la apreciación global del riesgo de confusión deben tenerse en cuenta todos los factores pertinentes. La prueba de confusión real es un factor que puede pesar a favor del riesgo de confusión; sin embargo, su valor indicativo no debe sobrestimarse por las siguientes razones:
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Hay que suponer que en la vida cotidiana real siempre habrá algunas personas que confundan y malinterpreten todo y otras que sean sumamente observadoras y conozcan perfectamente todas las marcas. Por lo tanto, no tiene ningún valor legal señalar la existencia de ambos tipos de persona , ya que conduciría a resultados subjetivos.
La apreciación es normativa en la medida en que se refiere a la percepción de los consumidores pertinentes. Se supone que el consumidor medio está «normalmente informado y es razonablemente atento y perspicaz», a pesar de que en realidad algunos consumidores son sumamente observadores y están muy bien informados, mientras que otros son descuidados y crédulos (resolución de 10/07/2007, R 0040/2006-4, «SDZ Direct World», apartado 32).
Por ello, los supuestos de confusión real solo pueden influir en la declaración de riesgo de confusión si se demuestra que esos supuestos generalmente van acompañados de la existencia de marcas en conflicto en el mercado en la situación típica del comercio de los productos o servicios de que se trate.
Para ponderar correctamente las pruebas relativas al número de ocasiones en que ha surgido una confusión real, la apreciación debe realizarse teniendo en cuenta el número de oportunidades de confusión. Si las transacciones comerciales son voluminosas, pero los casos de confusión son escasos, estas pruebas tendrán muy poco peso a la hora de apreciar el riesgo de confusión.
La falta de confusión real ya se ha abordado en el contexto de la coexistencia en el apartado 4 anterior.
5 Resoluciones anteriores dictadas por autoridades comunitarias o nacionales en litigios entre marcas idénticas (o similares)
5.1 Resoluciones anteriores de la Oficina
En lo que se refiere a las resoluciones anteriores de la Oficina en conflictos entre marcas idénticas o similares, el Tribunal General dictaminó que:
«... según reiterada jurisprudencia [...] la legalidad de las resoluciones [de la Oficina] se aprecia únicamente a la luz [del RMC] y no sobre la base de una práctica decisoria anterior de la OAMI. »
(Véase la sentencia de 30/06/2004, T-281/02, «Mehr für Ihr Geld», apartado 35.)
Por consiguiente, las resoluciones anteriores de la Oficina no son vinculantes para ésta, ya que cada asunto debe tratarse por separado y teniendo en cuenta sus aspectos particulares.
A pesar de que las resoluciones anteriores de la Oficina no son vinculantes, su razonamiento y resultado deben tenerse debidamente en cuenta a la hora de resolver el caso de que se trate. Este aspecto se reitera en la sentencia de 10/03/2011, C-51/10 P, «1000», apartado 73 a 75:
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«[La] OAMI está obligada a ejercer sus competencias de conformidad con los principios generales del Derecho de la Unión, como los principios de igualdad de trato y de buena administración.
Habida cuenta de estos dos […] principios, la OAMI debe, cuando instruye una solicitud de registro de una marca comunitaria, tomar en consideración las resoluciones ya adoptadas en solicitudes similares y preguntarse con especial atención si procede resolver en el mismo sentido [...].
Por consiguiente, los principios de igualdad de trato y buena administración deben ser conciliarse con el respeto de la legalidad.»
En principio, el valor indicativo de las resoluciones anteriores se limitará a los asuntos que presenten un parecido suficiente con el asunto de que se trate. Sin embargo, con arreglo al artículo 76, apartado 1, del RMC, en los procedimientos de oposición, a la hora de examinar el asunto, la Oficina debe limitarse a los hechos, pruebas y alegaciones presentadas por las partes. Por ello, incluso en los asuntos basados en hechos análogos y problemas jurídicos similares, el resultado puede variar debido a las diferencias en las alegaciones y pruebas presentadas por las partes.
5.2 Resoluciones y sentencias nacionales anteriores
Las resoluciones de los tribunales y oficinas nacionales en los asuntos relativos a conflictos entre marcas idénticas o similares a escala nacional no tienen efectos vinculantes para la Oficina. Según la jurisprudencia, el régimen de la marca comunitaria es un sistema autónomo que tiene su propio conjunto de objetivos y normas peculiares, y se aplica de forma independiente de cualquier sistema nacional. Por consiguiente, el carácter registrable de un signo como marca comunitaria solo puede apreciarse sobre la base de la normativa pertinente (sentencia de 13/09/2010, T-292/08, «Often», apartado 84; sentencia de 25/10/2006, T-13/05, «Oda», apartado 59).
Por tanto, las resoluciones dictadas en un Estado miembro o en un Estado que no sea miembro de la Unión Europea no son vinculantes para la Oficina (véase la sentencia de 24/03/2010, T-363/08, «Nollie», apartado 52).
No obstante, su razonamiento y resultado deben tenerse debidamente en cuenta, en particular cuando la resolución ha sido dictada en el Estado miembro pertinente para el procedimiento. Los tribunales nacionales tienen un amplio conocimiento de las características específicas de su Estado miembro, en particular en lo que se refiere a la realidad del mercado en que se comercializan los productos y servicios, y a la percepción de los signos que tienen los consumidores. En algunos casos, dichos conocimientos pueden ser relevantes para la apreciación de la Oficina.
Signo anterior Signo impugnado Asunto
MURUA T-40/03
Productos y servicios: Clase 33
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Territorio: España Apreciación: El Tribunal tomó en consideración el razonamiento de una sentencia de los tribunales nacionales en la medida en que explicaba la percepción de los apellidos por parte del público español: por lo que atañe a la cuestión de si en España el público destinatario prestará en general más atención al apellido «Murúa» que al apellido «Entrena» en la marca solicitada, el Tribunal de Primera Instancia considera que la jurisprudencia de dicho país, aunque no sea vinculante para las autoridades comunitarias, puede proporcionar indicaciones útiles (apartado 69).
Signo anterior Signo impugnado Asunto
OFTEN T-292/08
Productos y servicios: Clase 14 Territorio: España Apreciación: El Tribunal no consideró relevante para la apreciación del asunto la jurisprudencia española que reconoce en el público español medio un cierto conocimiento del inglés:
en el presente caso, la demandante no invoca ningún elemento fáctico o jurídico, basado en dicha jurisprudencia nacional, que pueda ser de utilidad para la resolución del litigio. […] La mera afirmación de que el consumidor español conoce ciertas palabras inglesas, en concreto «master», «easy» y «food», aun suponiendo que se deduzca de la jurisprudencia nacional de que se trata, no permite sacar la misma conclusión en lo que atañe a la palabra «often» (apartado 85).
Aunque en principio es admisible tener en cuenta las resoluciones de los tribunales y autoridades nacionales, dichas decisiones deben examinarse minuciosa y diligentemente (sentencia de 15/07/2011, T-108/08, «Good Life», apartado 23). Por lo general, para interpretar dicha resolución será necesario presentar información suficiente, en particular sobre los hechos en que se basa la resolución. Por ello, su valor indicativo se limitará a los contados casos en que todos los antecedentes de hecho y de derecho del asunto se hayan presentado en el procedimiento de oposición, sean concluyentes e inequívocos, y no los impugnen las partes. Las guías arriba referidas se aplican sin perjuicio de los efectos de las resoluciones de los tribunales de Marca Comunitaria en materia de demandas reconvencionales por revocación, o por declaración de invalidez de Marcas Comunitarias.
6 Alegaciones irrelevantes para determinar el riesgo de confusión
6.1 Estrategias de marketing específicas
El examen del riesgo de confusión que realiza la Oficina es un examen prospectivo. A diferencia de lo que sucede en los casos de vulneración de la marca, en los que los tribunales examinan las circunstancias concretas en las que los hechos y el carácter específico de la marca resultan cruciales, las deliberaciones de la Oficina acerca del riesgo de confusión se realizan de una forma más abstracta.
Por ello, las estrategias de marketing específicas no son relevantes. La Oficina debe tomar como referencia comparativa las circunstancias habituales en que se comercializan los productos incluidos en las marcas, es decir, aquellas circunstancias que resultan usuales para la categoría de productos incluidos en las marcas. Las circunstancias particulares en las que se comercializan los productos incluidos en las marcas no inciden, en principio, en la apreciación del riesgo de confusión porque pueden variar en el tiempo en función de los deseos de los titulares de las marcas
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(sentencia de 15/03/2007, C-171/06 P, «Quantum», apartado 59; sentencia de 22/03/2012, C-354/11 P, «G», apartado 73; sentencia de 21/06/2012, T-276/09, «Yakut», apartado 58).
Por ejemplo, el hecho de que una parte ofrezca sus bienes de consumo diario (vinos) a la venta a un precio superior al de sus competidores es un factor de marketing exclusivamente subjetivo que, como tal, resulta irrelevante para determinar el riesgo de confusión (sentencia de 14/11/2007, T-101/06, «Castell del Remei Oda», apartado 52).
6.2 Renombre de la marca comunitaria solicitada
En ocasiones, los solicitantes alegan que no habrá riesgo de confusión con la marca anterior debido a que la marca comunitaria solicitada tiene renombre. Dicha alegación no puede prosperar debido a que el derecho a registrar una marca comunitaria comienza en el momento del depósito de la solicitud de marca y no antes, y es a partir de esa fecha que debe examinarse la marca comunitaria respecto al procedimiento de oposición. Por consiguiente, al examinar si la marca comunitaria cumple o no alguno de los motivos de denegación relativos, los acontecimientos o hechos ocurridos antes de la fecha de depósito de la solicitud son irrelevantes, ya que los derechos del oponente preceden a los del solicitante de la marca comunitaria al ser anteriores a la solicitud.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 2
DOBLE IDENTIDAD Y RIESGO DE CONFUSIÓN
CAPÍTULO 8
APRECIACIÓN GLOBAL
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Índice 1 Introducción .....................................................................................................3
1.1 Naturaleza de la apreciación global .......................................................................... 3
2 Principio de interdependencia ........................................................................3 3 Imagen imperfecta............................................................................................ 4 4 Impacto del método de adquisición de productos y servicios ..................... 4
4.1 Similitud visual ........................................................................................................... 5 4.2 Similitud fonética ....................................................................................................... 7 4.3 Conclusión................................................................................................................. 9
5 Impacto de la similitud conceptual de los signos en el riesgo de confusión 9
6 Casos particulares ......................................................................................... 10 6.1 Signos cortos........................................................................................................... 10 6.1.1 Signos de una letra/un número ............................................................................... 11 6.1.2 Signos de dos letras/números................................................................................. 14 6.1.3 Signos de tres letras/números................................................................................. 16 6.2 Nombres y apellidos ................................................................................................ 17
6.2.1 Nombres.......................................................................................................................17
6.2.2 Nombres de empresas en combinación con otros elementos ......................................17
6.2.3 Nombres de pila y apellidos .........................................................................................18
6.3 Parte inicial de las marcas ...................................................................................... 23 6.4 Signos compuestos ................................................................................................. 25
6.4.1 Signos que contienen elementos figurativos y denominativos .....................................25
6.4.2 Signos denominativos con varias partes ......................................................................31
6.5 Marcas de color per se .................................................................................................. 36
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1 Introducción
1.1 Naturaleza de la apreciación global
Constituye un riesgo de confusión (incluido un riesgo de asociación) el riesgo de que el público pueda creer que los correspondientes productos o servicios, asumiendo que las marcas consideradas los designan, proceden de la misma empresa o, en su caso, de empresas vinculadas económicamente. Basta con que una parte significativa del público destinatario de los productos o servicios controvertidos pudiera confundirse respecto a la procedencia de los mismos. Por lo tanto, no es necesario establecer que todos los consumidores reales o potenciales de los productos o servicios pertinentes puedan confundirse.
El Tribunal ha declarado que el riesgo de confusión debe apreciarse globalmente, teniendo en cuenta todos los factores del supuesto concreto que sean pertinentes, cuya apreciación depende de numerosos factores y, en particular, del conocimiento de la marca en el mercado, de la asociación que pueda hacerse de ella con el signo utilizado o registrado, del grado de similitud entre la marca y el signo y entre los productos o servicios designados (véase la sentencia de 11/11/1997, C-251/95, «SABEL», apartado 22).
El Tribunal también sostuvo que por lo que se refiere a la similitud gráfica, fonética o conceptual de las marcas en conflicto, esta apreciación global debe basarse en la impresión de conjunto producida por las marcas, teniendo en cuenta, en particular, sus elementos distintivos y dominantes (sentencia de 11/11/1997, C-251/95, «SABEL», apartado 23).
La Oficina suele examinar los factores más destacados y habitualmente pertinentes en relación con el riesgo de confusión bajo títulos separados1 antes de la sección que contiene la apreciación global. No obstante, la apreciación global puede incluir y sopesar muchos otros factores que son pertinentes para decidir sobre el riesgo de confusión.
2 Principio de interdependencia
El Tribunal ha establecido el principio esencial de que el riesgo de confusión implica cierta interdependencia entre los factores tomados en consideración, y, en particular, la similitud entre las marcas y la existente entre los productos o los servicios designados. Así, un bajo grado de similitud entre los productos o servicios designados puede ser compensado por un elevado grado de similitud entre las marcas, y a la inversa (apartado 17). Este principio de interdependencia es esencial para el análisis del riesgo de confusión.
La interdependencia de esos factores se menciona expresamente en el considerando 8 del preámbulo del RMC, conforme al cual procede interpretar la noción de similitud en relación con el riesgo de confusión, cuya apreciación depende de numerosos factores y, en particular, del conocimiento de la marca en el mercado, de la
1 (i) Similitud de productos y servicios; (ii) similitud de los signos; (iii) elementos distintivos y dominantes de los signos en conflicto; (iv) el carácter distintivo de la marca anterior; (v) el público destinatario y el nivel de atención.
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asociación que pueda hacerse entre ella y el signo utilizado o registrado, del grado de similitud entre la marca y el signo y entre los productos o servicios designados (véase la sentencia de 10/09/2008, T-325/06, «CAPIO», apartado 72 y la jurisprudencia citada).
El requisito de una apreciación global y el principio de interdependencia significan que cuando haya al menos cierta similitud entre los signos y los productos o servicios pertinentes, se realizará una apreciación del riesgo de confusión, que implica un proceso iterativo que sopesa todos los factores pertinentes. Este proceso se lleva a cabo en la sección de apreciación global.
En la práctica esto significa que la Oficina sopesará, entre otras cuestiones, la similitud entre los productos y servicios y el nivel de atención que el público destinatario presta a tales productos y servicios, la similitud entre los signos y si la impresión que produce cada uno de estos niveles de comparación (visual, fonético y conceptual) es más importante. La Oficina también considerará si la similitud entre los signos reside en un elemento idéntico o similar y si dicho elemento es dominante y/o distintivo, si existen elementos adicionales dominantes y/o distintivos que puedan contrarrestar las similitudes y si la marca anterior tiene un carácter distintivo muy elevado.
Asimismo, los factores evaluados en la apreciación global variarán en función de las circunstancias particulares. Por ejemplo, en algunos casos en los que los productos o servicios y los signos son muy similares o idénticos, la Oficina podrá detectar un riesgo de confusión sin apreciar todos los factores, tales como el mayor carácter distintivo, familia de marcas, etc.
Más importante aún, no es posible establecer de manera abstracta si un factor tiene más peso que otro porque estos factores tendrán distinta importancia relativa en función de las circunstancias. Por ejemplo, la similitud gráfica puede pesar más respecto a productos que se suelen examinar visualmente, mientras que la similitud fonética puede ser más importante en productos que se suelen pedir verbalmente.
3 Imagen imperfecta
Aunque se considere que el consumidor medio de la categoría de productos pertinente está normalmente informado y es razonablemente atento y perspicaz, se tiene en cuenta el hecho de que el consumidor medio rara vez tiene la oportunidad de comparar directamente las marcas y debe confiar en la imagen imperfecta que conserva en la memoria. Procede, igualmente, tomar en consideración el hecho de que el nivel de atención del consumidor medio puede variar en función de la categoría de productos o servicios en cuestión (sentencia de 22/05/1999, C-342/97, «Lloyd Schuhfabrik Meyer», apartado 26).
4 Impacto del método de adquisición de productos y servicios
El Tribunal declaró que al evaluar la importancia que debe atribuirse al grado de similitud gráfica, fonética y conceptual entre signos, es conveniente tener en cuenta la
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categoría de productos o servicios contemplada y las condiciones en las que éstos se comercializan (sentencia de 22/09/1999, C-342/97, «Lloyd Schuhfabrik Meyer», apartado 27).
La categoría de productos y servicios en cuestión puede aumentar la importancia de uno de los distintos aspectos de similitud entre los signos (visual, fonético y conceptual) en función de la forma de solicitar y/o adquirir los productos y servicios. Una similitud fonética o conceptual entre signos puede ser menos importante en el caso de productos y servicios que suelen examinarse visualmente o que se pueden probar antes de adquirirlos. En tales casos, la impresión visual de los signos es más relevante en la apreciación de riesgo de confusión.
No obstante, es importante destacar que, al igual que con todos los factores pertinentes para el riesgo de confusión, los factores están interconectados y es necesario examinar el conjunto de circunstancias caso por caso. Esto significa que no se debería aplicar una regla general a amplias categorías de productos o servicios.
4.1 Similitud visual
Un buen ejemplo en el que la similitud visual puede desempeñar un mayor, aunque no exclusivo, papel en la apreciación global del riesgo de confusión es la ropa. Generalmente, en las tiendas de ropa, los clientes pueden elegir por sí mismos las prendas que desean comprar o por qué vendedores desean ser atendidos. Aunque no se excluye una comunicación oral sobre el producto y sobre la marca, la elección de la prenda de vestir se efectúa, en general, de forma visual. En consecuencia, normalmente la percepción visual de las marcas en conflicto se producirá antes del acto de la compra. En consecuencia, el aspecto visual desempeña un papel más importante en la apreciación global del riesgo de confusión (sentencia de 14/10/2003, T-292/01, «Bass», apartado 55; sentencia de 06/10/2004, asuntos acumulados T-117/03, T-119/03 y T-171/03, «NLSPORT», apartado 50; sentencia de 18/05/2011, T-502/07, «McKENZIE, apartado 50 y sentencia de 24/01/2012, T-593/10, «B», apartado 47). Estas consideraciones influyeron para concluir que no existía riesgo de confusión entre las marcas siguientes para, entre otros, determinados productos de la clase 25:
Signo anterior Signo impugnado Asunto
McKENZIE T-502/07
T-593/10
Las mismas consideraciones resultaron esenciales para concluir la existencia de riesgo de confusión en los asuntos siguientes:
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Signo anterior Signo impugnado Asunto
ICEBERG ICEBREAKER T-112/09
R 1050/2008-4
PETER STORM PEERSTORM T-30/09
T-376/09
No obstante, conceder una consideración preferente a la percepción visual no significa que los elementos denominativos idénticos se pasen por alto debido a la presencia de elementos figurativos especiales, como se puede observar en el siguiente asunto, en el que se apreció la existencia de riesgo de confusión:
Signo anterior Signo impugnado Asunto
FISHBONE T-415/09(recurso desestimado C-621/11P)
Del mismo modo, la impresión visual de las marcas que designan a videojuegos se ha considerado también especialmente importante, porque dichos productos suelen adquirirse tras un examen minucioso de sus correspondientes especificaciones y características técnicas, primero sobre la base de la información que aparece en catálogos especializados o en Internet, y posteriormente en el punto de venta. Por estos motivos las diferencias visuales fueron esenciales para concluir que no existía riesgo de confusión en los asuntos siguientes (sentencia de 08/09/2011, T-525/09, «Metronia», apartados 38-47):
Signo anterior Signo impugnado Asunto
T-525/09
La similitud visual entre signos también puede adquirir mayor importancia cuando los productos son productos de consumo normales, que se suelen comprar en grandes superficies o establecimientos comerciales en los que los productos se exponen en las estanterías y que el consumidor obedece más al impacto visual de la marca que busca. Por consiguiente, para tales productos las diferencias visuales fueron
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esenciales a fin de concluir que no existía riesgo de confusión en el Reino Unido entre las marcas siguientes.
Signo anterior Signo impugnado Asunto
EGLÉFRUIT T-488/07
Sin embargo, el principio general anterior no significa que para los productos que se suelen comprar visualmente, la impresión fonética se pueda pasar por alto. Se señaló este último aspecto en un asunto relacionado con las marcas siguientes, en el que el Tribunal General, confirmando la conclusión de que existía riesgo de confusión, sostuvo que a pesar de que los ordenadores y accesorios informáticos se venden a los consumidores tal y como se ven expuestos en las estanterías de zonas de autoservicio, la identidad fonética de las marcas consideradas era, en este caso, al menos tan importante como su similitud visual, dado que también es probable que se mantenga una conversación oral sobre las características de los productos y sus marcas al comprarlos. Asimismo, tales productos podrían publicitarse oralmente por la radio u otros consumidores:
Signo anterior Signo impugnado Asunto
CMORE T-501/08
4.2 Similitud fonética
A diferencia de los asuntos anteriores en los que la similitud visual desempeñaba un papel preponderante, la similitud fonética puede tener mayor peso que la visual cuando los productos controvertidos tradicionalmente se piden verbalmente. Esta consideración entró en juego al concluir que existía riesgo de confusión en el asunto siguiente, que está relacionado con el alquiler de automóviles y servicios asociados, que se recomiendan y eligen verbalmente en numerosas ocasiones.
Signo anterior Signo impugnado Asunto
CICAR ZIPCAR T-36/07
Cuando se piden los productos verbalmente, la percepción fonética del signo también puede verse afectada por factores tales como la posible presencia de otros sonidos percibidos por el destinatario del pedido al mismo tiempo. Tales consideraciones son importantes cuando los productos en cuestión se suelen pedir en puntos de venta con
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un elevado nivel de ruido, tales como bares o clubes nocturnos. En tales casos, atribuir una importancia especial a la similitud fonética entre los signos controvertidos puede resultar conveniente. Estas consideraciones influyeron a la hora de concluir que existía riesgo de confusión entre las marcas siguientes para determinados productos de la clase 33 (sentencia de 15/01/2003, T-99/01, «Mystery», apartado 48).
Signo anterior Signo impugnado Asunto
MIXERY T-99/01
De forma parecida, un modo especial o manera habitual de pedir productos puede atribuir mayor importancia a la similitud fonética entre signos. Por ejemplo, el Tribunal General sostuvo que en el sector del vino los consumidores de dichos productos están habituados a designarlos y a reconocerlos en función del elemento denominativo que sirve para identificarlos, especialmente en los bares y restaurantes, en los que se pide el vino verbalmente tras haber visto su nombre en el menú (sentencia de 23/11/2010, T-35/08, «Artesa Napa Valley», apartado 62; sentencia de 13/07/2005, T-40/03, «Julián Murúa Entrena», apartado 56 y sentencia de 12/03/2008, T-332/04, «Coto d’Arcis», apartado 38). Por consiguiente, en tales casos ha de concederse especial importancia a la similitud fonética entre los signos controvertidos. Estas consideraciones se tuvieron en cuenta para concluir que existía riesgo de confusión entre las marcas siguientes a pesar de sus importantes diferencias visuales.
Signo anterior Signo impugnado Asunto
MURÚA T-40/03
T-35/08
Sin embargo, el principio general anterior no significa que se pueda pasar por alto la impresión visual en cuanto a los productos que se suelen comprar verbalmente. De hecho, el Tribunal General sostuvo que aunque en ocasiones se haya atribuido importancia preponderante a la percepción fonética de las marcas relativas a bebidas, las diferencias fonéticas de éstas no merecen una importancia especial cuando las
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bebidas concretas son normalmente objeto de distribución generalizada y que de igual modo se venden no solo en establecimientos especializados, donde se pedirían verbalmente, sino también en grandes superficies comerciales, donde se adquirirían visualmente (sentencia de 03/09/2010, T-472/08, «61 A NOSSA ALEGRIA», apartado 106).
4.3 Conclusión
Las circunstancias establecidas anteriormente demuestran que en determinadas situaciones la Oficina otorgaría consideración preferente a la percepción visual o fonética de marcas en función de la manera en que se piden o adquieren los productos y servicios. No obstante, incluso en estas situaciones los elementos visuales o fonéticos idénticos o muy parecidos no se pueden pasar por alto, dado que todos los factores pertinentes están interconectados y son interdependientes, siendo necesario examinar el conjunto de circunstancias caso por caso.
5 Impacto de la similitud conceptual de los signos en el riesgo de confusión
La existencia de una similitud conceptual entre signos con contenido semántico análogo puede crear un riesgo de confusión si una marca anterior posee un carácter distintivo particular, bien per se o bien gracias a la notoriedad de que goza entre el público (véase, sin embargo, la sentencia de 11/11/1997, C-251/95, «SABEL», apartado 24), en la que los signos compartían el concepto general de un «felino saltando», pero no evocaban el mismo animal: un puma en la marca anterior y un guepardo en la impugnada).
Sin embargo, excepcionalmente, en los casos en que los signos comparten el mismo concepto distintivo acompañado de similitudes visuales entre ellos, podría existir un riesgo de confusión incluso en ausencia de un carácter especialmente distintivo de la marca anterior (bien per se o debido a la notoriedad en el mercado), tal como ilustra el ejemplo siguiente:
Signo anterior Signo impugnado Asunto
Asuntos acumulados T-81/03, T-82/03 y T-103/03
Productos y servicios: clases 32, 33 Territorio: España Apreciación: El Tribunal determinó que los signos comparten el mismo concepto y que existe una importante similitud visual entre ellos. A falta de un vínculo semántico claro entre un venado o la cabeza de un venado y una bebida, alcohólica o no, el Tribunal consideró que no puede negarse que el concepto de una cabeza de venado, vista de frente y enmarcada en un círculo, tenga carácter distintivo para designar bebidas (apartado 110). No se consideró el aspecto del carácter distintivo elevado.
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Existencia de riesgo de confusión (para el público español).
Una similitud conceptual entre los signos puede no bastar para contrarrestar las diferencias visuales y fonéticas, en caso de que el concepto en común no sea distintivo.
Signo anterior Signo impugnado Asunto
K2 SPORTS T-54/12
Productos y servicios: clases 18, 25, 28 Territorio: Alemania y el Reino Unido Apreciación: contrariamente a la resolución de la Sala que afirmó que no existía similitud conceptual, el término «sport», con independencia de su carácter descriptivo, hace referencia al mismo concepto y da lugar a la conclusión de que existe similitud conceptual. El Tribunal concluyó que esta similitud era débil en el contexto de la impresión de conjunto de los signos y, en particular, del carácter muy poco distintivo de este término. No obstante, la débil similitud conceptual no compensó las significativas diferencias gráficas y fonéticas entre los signos (apartado 49). Inexistencia de riesgo de confusión.
La diferencia conceptual entre los signos puede no bastar para neutralizar las similitudes visuales y fonéticas:
Signo anterior Signo impugnado Asunto
MUNDICOLOR MUNDICOR Asuntos acumuladosT-183/02 y T-184/02
Productos y servicios: clase 2 Territorio: España Apreciación: Mientras que «MUNDICOLOR» evoca, hasta cierto punto, ideas como «mundo de color» o «colores del mundo», no cabe considerar que tenga un significado claro y específico. En la marca solicitada, el mismo prefijo se acompaña del sufijo «cor», que no tiene significado en español. Por lo tanto, pese al carácter evocativo del prefijo «mundi» (mundo), el sufijo no evoca concepto alguno para el público español. Ya que ninguno de los signos tiene un significado claro y específico que el público pueda captar de inmediato, cualquier diferencia conceptual entre ellos no basta para contrarrestar sus similitudes visuales y sonoras (apartados 90-99). – Existencia de riesgo de confusión..
Por tanto, para determinar que existe similitud conceptual se debe llevar a cabo una apreciación minuciosa del carácter distintivo intrínseco y adquirido de la marca anterior.
6 Casos particulares
6.1 Signos cortos
Tal como se ha indicado en otro lado de la presente sección, el Tribunal ha declarado que el riesgo de confusión debe apreciarse globalmente, teniendo en cuenta todos los factores del supuesto concreto pertinentes, incluido el grado de similitud entre los signos. El Tribunal ha declarado también que la apreciación global de la similitud
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gráfica, fonética o conceptual de las marcas en conflicto debe basarse en la impresión de conjunto producida por las marcas.
La longitud de los signos puede influir en la impresión de conjunto y, por tanto, en el efecto que produzcan las diferencias entre los signos. En principio, cuanto más breve sea un signo, más fácil será para el público percibir todos sus componentes individuales. Por el contrario, el público normalmente percibe con menos facilidad las diferencias entre los signos largos. No obstante, cada caso ha de enjuiciarse de forma separada, teniendo en cuenta todos los factores pertinentes.
Los Tribunales no han definido exactamente qué es un signo breve. Sin embargo, la Oficina considera los signos con tres o menos de tres letras/números signos breves. Los siguientes apartados analizan, por tanto, el riesgo de confusión de los signos de uno, dos o tres letras/números.
6.1.1 Signos de una letra/un número
Cabe señalar que el Tribunal General declaró que la apreciación global del riesgo de confusión entre los signos compuestos por una letra aislada (o una combinación de letras no reconocibles como una palabra) sigue las mismas normas que los signos denominativos que incluyen una palabra, un nombre o un término de fantasía (véase la sentencia de 06/10/2004, asuntos acumulados T-117/03, T-118/03 T-119/03 y T-171/03, «NL SPORT», «NL JEANS», «NL ACTIVE», «NL COLLECTION», apartados 47 y 48, y sentencia de 10/05/2011, T-187/10, «G», apartado 49).
En la apreciación del riesgo de confusión resulta importante establecer el grado de carácter distintivo intrínseco de la marca anterior y, por lo tanto, su ámbito de protección. Véase en este sentido, las Directrices, Parte C, Oposición, Sección 2, Doble identidad y riesgo de confusión, Capítulo 4, Carácter distintivo y la sección específica sobre los signos breves. En cuanto a la apreciación global del riesgo de confusión, el Tribunal aclaró que el hecho de que dos marcas compuestas de la misma letra (o de la misma secuencia de letras) se consideren idénticas desde el punto de vista fonético y conceptual es pertinente para evaluar la existencia de un riesgo de confusión. Véase la sentencia T-187/10, «G», apartado 60).
Por consiguiente, el riesgo de confusión puede excluirse con total seguridad cuando dos signos en conflicto, aunque contengan o estén compuestos de la misma letra aislada, son lo suficientemente estilizados o contienen un elemento figurativo lo suficientemente distinto, de forma que su distinta representación gráfica global eclipsa el elemento denominativo común.
En caso de que la parte oponente haya demostrado satisfactoriamente que su marca de una letra ha adquirido un carácter distintivo elevado a través de un uso intensivo o de la notoriedad, su repercusión en el resultado final tendrá que evaluarse atentamente. En primer lugar, el carácter distintivo elevado por parte de la marca de una letra anterior no puede justificar la conclusión de la existencia de un riesgo de confusión si la impresión visual general de los signos es tan diversa que las distingue con certeza. En segundo lugar, si se demuestra el uso de una marca de una letra estilizada o acompañada por elementos figurativos adicionales, el beneficio de la
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ampliación del ámbito de protección resultante se aplicará a la forma en que se ha estado utilizando, no a la letra como tal o a cualquier variante estilizada de aquélla.
En los siguientes ejemplos, se identificó un riesgo de confusión debido a la similitud entre las representaciones gráficas generales de los signos:
Signo anterior Signo impugnado Nº de asunto
T-115/02
Productos y servicios: clases 9, 16, 25, 35, 41 Territorio: UE Apreciación: Teniendo en cuenta, por una parte, la acusada similitud entre los signos en conflicto y, por otra, la semejanza entre los productos de que se trata, aunque apenas exista cuando se trata del calzado en relación con los vestidos, la Sala de Recurso pudo decidir que existía un riesgo de confusión por parte del público pertinente (apartado 27) – Existencia de riesgo de confusión.
Signo anterior Signo impugnado Nº de asunto
A R 1508/2010-2
Productos y servicios: clases 9, 18, 24, 25, 28 Territorio: Alemania Apreciación:Debe presumirse que la marca alemana anterior poseía el carácter distintivo necesario de protección como marca. Los signos son similares y los productos idénticos (apartado 18 y ss.)– Existencia de riesgo de confusión.
Signo anterior Signo impugnado Nº de asunto
(i)
(ii) T-187/10
(recurso desestimado C-354/11 P)
Productos y servicios: clases 9, 18, 25 Territorio: UE, Italia Apreciación:La impresión de conjunto de los signos en litigio se consideró similar. Teniendo en cuenta la similitud de los signos, el renombre del signo anterior como abreviatura de la marca Gucci, y la identidad de los productos, se consideró que existía riesgo de confusión.
Por otro lado, en los ejemplos siguientes se consideró que no existía riesgo de confusión debido a los distintos estilos o elementos gráficos de los signos compuestos por una letra única:
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Signo anterior Signo impugnado Nº de asunto
R 1655/2006-4
Productos y servicios: clase 25 Territorio: España Apreciación: Se consideró que los consumidores españoles considerarán la letra «M» como una referencia a la talla de la prenda de vestir. Su carácter distintivo era bajo (apartado 21) – Inexistencia de riesgo de confusión..
Signo anterior Signo impugnado Nº de asunto
A T-174/10
(recurso desestimado C-611/11 P)
Productos y servicios: clases 18, 25 Territorio: Alemania Apreciación:El Tribunal concluyó que NO EXISTÍA RIESGO DE CONFUSIÓN basándose en el diseño gráfico específico de la marca impugnada y el hecho de que el público no pronunciaría la marca impugnada dado el diseño gráfico específico – Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Nº de asunto
F R 1418/2006-2
Productos y servicios: clase 25 Territorio: UE Apreciación: La Sala de Recurso considera que las diferencias visuales entre los signos contrarrestará la naturaleza idéntica de los productos (apartado 26) – Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Nº de asunto
R 576/2010-2 (confirmada por T-593/10)
Productos y servicios: clases 25, 41, 43 Territorio: Alemania Apreciación: La Sala de Recurso considera que la impresión de conjunto visual distinta de los signos contrarrestará la naturaleza idéntica de los productos (apartados 19 a 21) – Inexistencia de riesgo de confusión.
Por último, cabe destacar que la representación verbal de un «signo de una letra/de un dígito» no se considera equivalente al signo (p. ej., «UNO» no es igual a «1» ni «EME» a «M»). Por lo tanto, los argumentos anteriores no son aplicables directamente a estos asuntos2.
2 Véanse las Directrices relativas a los procedimientos ante la Oficina, Parte C, Oposición, Sección 2, Doble identidad y riesgo de confusión, Capítulo 3, Comparación de los signos.
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6.1.2 Signos de dos letras/números
Salvo si la combinación de letras como tal es intrínsecamente débil para los productos y servicios (p. ej., «XL» para los productos de la clase 25), los signos de dos letras/números no tienen necesariamente un escaso carácter distintivo. Sin embargo, debe tenerse en cuenta que los consumidores con frecuencia encuentran abreviaturas y combinaciones de letras de todo tipo en la vida cotidiana y empresarial.
Las normas citadas para las marcas de una letra/número se aplican a los signos de dos letras/números: en general, no se planteará riesgo de confusión entre los signos de dos letras/números que están estilizados de un modo distinto o que están compuestos por representaciones gráficas diferentes de las mismas letras/números, por lo que producen una impresión visual lo suficientemente distinta.
Por consiguiente, el riesgo de confusión puede excluirse con total seguridad cuando dos signos en conflicto, aunque contengan o estén compuestos por la misma combinación de dos letras, estén estilizadas de un modo suficientemente distinto o contengan un elemento figurativo suficientemente distinto, de manera que su representación gráfica global sea distinta y eclipse el elemento denominativo común.
En los siguientes ejemplos, se apreció riesgo de confusión debido a la impresión visual global similar de las combinaciones de las mismas dos letras:
Signo anterior Signo impugnado Nº de asunto
(i)
(ii) B 61 046
Productos y servicios: clase 36 Territorio: España Apreciación: La impresión de conjunto visual de las marcas en conflicto es que están compuestos por dos letras en un diseño figurativo arbitrario que expresa la misma impresión. Las marcas se consideran similares y los servicios idénticos – Existencia de riesgo de confusión.
Signo anterior Signo impugnado Nº de asunto
GE T-520/11)
Productos y servicios: clases 6, 7, 9, 11, 17 Territorio: Reino Unido Apreciación: No cabe descartar que parte del público destinatario interprete la marca impugnada como la combinación de letras «GE» (apartados 33-35). Dado que los productos son idénticos y las marcas son idénticas desde el punto de vista fonético y que presentan un grado medio de similitud visual existe riesgo de confusión incluso para un público informado cuyo nivel de atención es mayor (apartado 60) – Existencia de riesgo de confusión.
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En el siguiente ejemplo, no se apreció riesgo de confusión debido a que las mismas letras tenían una representación gráfica distinta:
Signo anterior Signo impugnado Nº de asunto
(i)
(ii) R 0082/2011-4
Productos y servicios: clase 33 Territorio: UE Apreciación: El diseño gráfico en que aparecen las combinaciones de letras tiene una fuerte influencia en la percepción que tiene el consumidor. El carácter distintivo de las marcas en conflicto se basa, en gran medida, en sus elementos gráficos específicos (apartado 16) – Inexistencia de riesgo de confusión.
Las diferencias de una de las letras normalmente llevarán a la conclusión de determinar que no existe riesgo de confusión:
Signo anterior Signo impugnado Nº de asunto
(i) CX
(ii) KX R 0864/2010-2
Productos y servicios: clase 7 Territorio: UE Apreciación: En términos de la impresión de conjunto y en aplicación del principio de interdependencia, la Sala de Recurso confirmó que la diferencia en la primera letra es suficiente para excluir el riesgo de confusión en la parte del público afectado, teniendo en cuenta que el público de referencia es especialmente atento (apartado 28) – Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Nº de asunto
KA T-486/07
Productos y servicios: clases 9, 11, 12 Territorio: UE Apreciación: Mientras que el consumidor pertinente rara vez tiene la oportunidad de realizar una comparación directa entre las distintas marcas y debe confiar en la imagen imperfecta que tiene en la mente, como el solicitante ha indicado en este asunto, dadas las importantes diferencias visuales entre las marcas en cuestión, el hecho de que los productos de que se trate por lo general se compren después de ser vistos y el nivel de atención elevado del consumidor pertinente, debe considerarse que dicho consumidor no confundirá las marcas en cuestión a pesar de la falta de comparación directa entre las distintas marcas (apartado 95) – Inexistencia de riesgo de confusión.
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6.1.3 Signos de tres letras/números
Cuando los signos en conflicto son signos de tres letras/números, parece que existe la tendencia de apreciar riesgo de confusión cuando la única diferencia está basada en una letra similar desde el punto de vista fonético de forma que la impresión de conjunto de los signos todavía es similar.
En los siguientes casos, el resultado fue que existía riesgo de confusión:
Signo anterior Signo impugnado Nº de asunto
ELS T-388/00
Productos y servicios: clases 16, 35, 41 Territorio: Alemania Apreciación: Esta coincidencia total de dos de las tres letras colocadas en la misma disposición hace que la divergencia de una sola letra no constituya una diferencia visual y fonética significativa. Las letras «E» y «I» en alemán se pronuncian de manera similar (apartado 66 a 71) – Existencia de riesgo de confusión.
Signo anterior Signo impugnado Nº de asunto
Ran R.U.N. T-490/07
Productos y servicios: clases 35, 38, 42 Territorio: UE, Alemania Apreciación: El Tribunal consideró que los signos en la mente del consumidor pertinente, que tienen un buen dominio de la lengua inglesa, son similares (apartado 55) y que, debido a la similitud entre los signos y entre determinados productos y servicios, existe riesgo de confusión en la mente del público destinatario (apartado 71) – Existencia de riesgo de confusión.
Por el contrario, en los siguientes casos, el resultado fue que no existía riesgo de confusión:
Signo anterior Signo impugnado Nº de asunto
(i)
(ii)
(iii)
R 0393/1999-2
Productos y servicios: clase 25 Territorio: Benelux, Alemania, España, Francia, Italia, Portugal, Austria Apreciación: Cuando las marcas están compuestas de sólo tres letras, sin significado, la diferencia de una letra puede resultar suficiente para hacerlos no similares, en especial cuando la primera letra es distinta y las marcas en litigio incluyen elementos figurativos que presentan diferencias visuales. En este
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caso, la pronunciación de las primeras letras de las marcas en litigio, es decir, J y T, es diferente en todas las lenguas pertinentes. Además, los elementos figurativos de las marcas comparadas no se parecen entre sí (apartados 17 y 18) – Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Nº de asunto
COR T-342/05
Productos y servicios: clase 3 Territorio: Alemania Apreciación: El TG consideró que los signos sólo tenían una escasa similitud fonética (apartados 47, 50). El público destinatario de Alemania con toda seguridad apreciará las diferencias en el inicio de los signos – Inexistencia de riesgo de confusión.
6.2 Nombres y apellidos
6.2.1 Nombres
En principio, no existen criterios específicos que se deban tener en consideración para apreciar el riesgo de confusión entre nombres. No obstante, por la propia naturaleza de los nombres y los apellidos, existen determinados aspectos que influyen (como veremos a continuación), tales como si un nombre y/o apellido concreto es común o no en el territorio pertinente, que se deba estudiar cuidadosamente y ponderar.
6.2.2 Nombres de empresas en combinación con otros elementos
Al evaluar el riesgo de confusión respecto a signos compuestos que contengan varios elementos denominativos, uno de los cuales podría ser considerado un nombre de empresa, esto es, haciendo referencia a la sociedad que subyace a la marca, se debe realizar una evaluación global a fin de identificar qué elemento funciona como la marca de los productos y servicios considerados. Entre los factores que se han de tener en cuenta se encuentra el carácter distintivo de cada elemento, así como el tamaño y/o espacio que ocupan en una marca figurativa, los cuales determinan el elemento dominante de los signos controvertidos.
Cuando el nombre de empresa no es elemento dominante, aunque cada uno de los elementos que conforman el signo puedan tener su propio papel distintivo independiente, los consumidores suelen centrarse más en el elemento que se podría considerar que identifica la línea de producto concreta, en lugar de fijarse en el elemento que se percibiría (porque va precedido de «de» u otro término equivalente) como identificador de la sociedad que tiene el control de los productos considerados o el diseñador que creó la línea de productos.
Por lo tanto, siempre que exista un grado suficiente de similitud entre el elemento que podría percibirse como la marca y un signo controvertido, en principio, existirá riesgo de confusión (cuando también se cumplan los demás factores pertinentes).
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Signo anterior Signo impugnado Asunto
T-43/05
Productos y servicios: clase 25 Territorio: Dinamarca, Finlandia, Suecia Apreciación: El elemento «by CAMPER» se percibe como secundario, debido a que el público destinatario lo percibirá como una mera indicación de la empresa que fabrica los productos en cuestión. Por lo tanto, el consumidor de referencia centrará su atención en la palabra «BROTHERS» y puede atribuir una procedencia común a los productos en cuestión (apartados 65 y 86). Existencia de riesgo de confusión.
6.2.3 Nombres de pila y apellidos
La percepción de los signos formados por nombres de personas puede variar de un país a otro dentro de la Unión Europea. Los apellidos tienen, en principio, un valor intrínseco superior como indicadores de la procedencia de los productos o servicios al de los nombres de pila. Ello se debe a que la experiencia demuestra que los mismos nombres de pila pueden pertenecer a muchas personas que no tienen nada en común, mientras que la presencia del mismo apellido (siempre que no sea común en el territorio pertinente) podría implicar la existencia de algún vínculo entre ellos (identidad de las personas o un vínculo familiar). Para saber si en un país determinado el público destinatario atribuye generalmente más carácter distintivo al apellido que al nombre, la jurisprudencia de ese país, aunque no sea vinculante para los órganos jurisdiccionales comunitarios, puede ofrecer algunas indicaciones útiles (sentencia de 01/03/2005, T-185/03, «Enzo Fusco», apartado 52).
Existen casos en los que los solicitantes alegan, como defensa, su derecho a utilizar su nombre. No obstante, tales alegaciones no son válidas en los procedimientos de oposición, puesto que no influyen en la cuestión de si existe riesgo de confusión en el público. Asimismo, el registro de marcas no impide el uso de nombres de personas como consecuencia de la protección especial que confieren el artículo 12, letra a), del RMC y las leyes nacionales sobre marcas con arreglo al artículo 6, apartado 1, letra a), de la Directiva sobre marcas.
Nombre de pila frente al mismo nombre de pila o ligeras variaciones del mismo
La regla general es que cuando dos signos en conflicto consistan exclusivamente en el mismo nombre de pila, los consumidores pueden percibir los productos o servicios similares o idénticos comercializados bajo esas marcas como provenientes de la misma fuente. Es obvio que a falta de cualquier elemento diferenciador, la existencia de riesgo de confusión será la conclusión a la que se llegue.
Signo anterior Signo impugnado Asunto
GIORDANO GIORDANO T-483/08
Productos y servicios: clases 18, 25 Territorio: Portugal Apreciación: Las dos marcas denominativas controvertidas son idénticas, lo que aumenta el riesgo de que los consumidores perciban los productos comercializados bajo tales marcas como provenientes de la misma fuente. Por otro lado, el solicitante no ha demostrado que el nombre de pila italiano
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«Giordano» que conforma ambas marcas sea común en Portugal (apartado 32). Existencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
ELISE T-130/09
Productos y servicios: clases 9, 42 Territorio: Portugal Apreciación: El Tribunal considera que aun cuando no es seguro que el público pertinente de toda la Unión Europea perciba necesariamente los signos controvertidos como diminutivos concretos del nombre «Elizabeth», el público destinatario sin duda los considerará como nombres femeninos muy similares derivados de la misma raíz. En algunos Estados miembros, en particular, el Reino Unido, Irlanda, Alemania y Austria, sin duda serán percibidos por el público pertinente como diminutivos del nombre completo «Elizabeth», (apartado 36). Existencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
GISELA GISELE R 1515/2010-4
Productos y servicios: clase 25 Territorio: UE Apreciación: Las marcas comparadas son variaciones del nombre de pila femenino «Giselle», de origen alemán y francés antiguo y son, en general, muy similares, por lo que existe un riesgo de confusión (apartados 14, 15 y 20). Existencia de riesgo de confusión.
Nombre de pila frente a nombre de pila idéntico más apellido
Cuando dos signos comparten el nombre de pila y uno de los dos además contiene un apellido y cuando el nombre de pila puede ser percibido como un nombre común (por sí solo, muy común) en el territorio pertinente, la regla general es que no existirá riesgo de confusión, debido a que los consumidores serán conscientes de que muchas personas tienen ese nombre.
Signo anterior Signo impugnado Asunto
LAURA LAURA MERCIER R 0095/2000-2
Productos y servicios: clase 3 Territorio: España Apreciación: En opinión de la Sala, el consumidor español medio que está familiarizado con la marca «LAURA» para perfumes no se confundirá. Conceptualmente, se considerará que «LAURA» es un nombre de pila común en España. No es probable que el consumidor español medio considere vincular el nombre más específico «LAURA MERCIER» con «LAURA» (apartado 16). Inexistencia de riesgo de confusión.
Una excepción sería aplicable cuando un nombre de pila concreto pueda percibirse como inusual en el territorio pertinente. En tales casos, la presencia de este elemento no común puede centrar la atención del consumidor y podría confundirle de manera que atribuyese una procedencia común a los productos o servicios en cuestión.
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Signo anterior Signo impugnado Asunto
AMANDA AMANDA SMITH R 1892/2007-2
Productos y servicios: clases 29, 30 Territorio: España Apreciación: El término adicional «SMITH» en la solicitud de marca como un apellido anglosajón común y tendría menos peso que el nombre de pila «AMANDA» (que es menos común en España) (apartado 31). Existencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
ROSALIA ROSALIA DE CASTRO T-421/10(recurso desestimado C-649/11P)
Productos y servicios: clases 32, 33, 35 Territorio: España Apreciación: Los signos son visual y conceptualmente similares y muy similares fonéticamente. Los productos son idénticos. Los servicios son similares. Ni el nombre de pila «ROSALIA» ni el apellido «DE CASTRO» son frecuentes en España. Ninguno de estos elementos tiene un mayor carácter distintivo que el otro (apartados 50 y 51). Existencia de riesgo de confusión.
Existe otra excepción que se aplica a los casos en los que el público tomaría o usaría el nombre de pila de una persona famosa como el nombre completo y en los que los productos o servicios están relacionados con el ámbito de actividad de esa persona, o cuando la marca anterior, que consiste únicamente en un nombre de pila, ha adquirido un elevado grado de carácter distintivo.
Signo anterior Signo impugnado Asunto
KENZO KENZO TAKADA R 643/2003-1
Productos y servicios: clases 3, 25, 42 Territorio: UE Apreciación: El consumidor medio, que recordará la palabra «KENZO», que es especialmente distintiva por su reputación, tenderá, al encontrarse con productos o servicios designados por la marca «KENZO TAKADA», a atribuirlos a la misma procedencia comercial que los productos o servicios vendidos bajo la marca «KENZO». Este riesgo es más real dado que es frecuente que en el sector de la moda, los cosméticos y los perfumes, la misma marca se configure de distintos modos en función del tipo de producto que designe (apartado 22). Existencia de riesgo de confusión.
Nombre de pila más apellido frente a nombre de pila idéntico más distinto apellido
Cuando dos signos controvertidos contienen el mismo nombre de pila, pero van seguidos de apellidos claramente distintos, la regla general es que no existe riesgo de confusión. Los consumidores se darán cuenta de que distinguen a productos o servicios de empresas distintas no vinculadas.
Ejemplo inventado: «Michael Schumacher» / «Michael Ballack» (inexistencia de riesgo de confusión).
No obstante, cuando la impresión de conjunto creada por los signos es de clara similitud, esto es, las diferencias entre los signos se pierden en la percepción de conjunto que los signos ofrecen, al aplicar el criterio general, el resultado sería que existe riesgo de confusión.
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Signo anterior Signo impugnado Asunto
(Emidio Tucci fig.)
T-8/03 y asuntos acumulados R 700/2000-4 y
R 746/2000-4 Confirmado por asunto
C-104/05 P
Productos y servicios: clases 3, 18, 24, 25 Territorio: España Apreciación: Ambas marcas consisten en la combinación de un nombre de pila y un apellido y dan una impresión de conjunto similar. Existencia de riesgo de confusión.
Nombre de pila más apellido frente a nombre de pila distinto más apellido idéntico
Cuando los signos controvertidos contienen el mismo apellido precedido de distintos nombres de pila, el resultado dependerá en gran medida de la percepción que se tenga del apellido en el territorio pertinente. Cuanto menos frecuente sea el apellido, más probable será que el consumidor centre su atención en él (con independencia de si los nombres de pila son comunes o no).
Signo anterior Signo impugnado Asunto
ANTONIO FUSCO ENZO FUSCO T-185/03
Productos y servicios: clases 18, 25 Territorio: Italia Apreciación: Como las partes no discutían que el apellido «Fusco» no figurase entre los más corrientes en Italia, el Tribunal consideró que dado que el consumidor italiano suele atribuir mayor carácter distintivo al apellido que al nombre de pila, tendría en consideración (ni inusual, ni común) el apellido «Fusco» en lugar de los nombres de pila (frecuentes) «Antonio» o «Enzo». Por lo tanto, un consumidor que se encuentre ante un producto dotado con la marca solicitada «ENZO FUSCO» podría confundirla con la marca anterior «ANTONIO FUSCO», por lo que existe un riesgo de confusión (apartados 53 y 67). Existencia de riesgo de confusión.
Por el contrario, cuando dos marcas tienen el mismo apellido y es probable que se perciba como común (por sí solo, muy común) en el territorio pertinente, los consumidores normalmente no se confundirán y no atribuirán una procedencia común a los productos o servicios considerados (sentencia de 01/03/2005, T-169/03, «Sissi Rossi», apartados 82 y 83; sentencia de 24/06/2010, C-51/09 P, «Barbara Becker», apartado 36). Los consumidores están acostumbrados a marcas que contienen apellidos comunes y no creen ciegamente que todos los productos o servicios en cuestión provienen de la misma fuente cada vez que aparece un apellido común en dos signos controvertidos.
Signo anterior Signo impugnado Asunto
VITTORIO ROSSI R 0547/2010-2
Productos y servicios: clases 18, 25 Territorio: UE Apreciación: No solo son conscientes los consumidores de la Comunidad del hecho de que hay personas que comparten el mismo apellido sin estar necesariamente relacionadas, sino que también serán capaces de distinguir el apellido italiano «ROSSI» con dos nombres diferentes en el campo de la moda (apartados 33 -35). Inexistencia de riesgo de confusión.
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Nombre de pila más apellido frente a nombre de pila distinto más apellido idéntico unidos en una sola palabra
En los casos en los que uno de los signos controvertidos está formado por un nombre y un apellido y el otro por una única palabra que al menos parte del público destinatario separará en dos elementos por la presencia reconocible de un nombre y un apellido combinado para formar la palabra única en qué consiste ese signo, el resultado será de riesgo de confusión siempre que la impresión de conjunto creada por las marcas sea de similitud.
Signo anterior Signo impugnado Asunto
PETER STORM Peerstorm T-30/09
Productos y servicios: clase 25 Territorio: UE Apreciación: Las dos marcas controvertidas están formadas por un nombre de pila y un apellido. En efecto, en cuanto al elemento «storm» incluido en las dos marcas en conflicto, consta que éste puede constituir un apellido. Los elementos «peer» y «peter» que figuran en la marca solicitada y en la marca anterior, respectivamente, constituyen nombres de pila. Sin embargo, en especial en los países nórdicos y en Alemania, «Peer» es un nombre de pila. El hecho de que la marca solicitada se escriba en una sola palabra no puede desvirtuar la apreciación según la cual las dos marcas controvertidas están formadas por un nombre de pila y un apellido (apartado 66). Existencia de riesgo de confusión.
Apellido frente a nombre de pila más apellido idéntico
Cuando dos signos contienen el mismo apellido, pero uno de ellos también contiene un nombre de pila, la regla general es que normalmente existirá riesgo de confusión. Los consumidores pueden confundirse y atribuir a los productos o servicios considerados una procedencia común. La presencia de un nombre de pila en uno de los signos controvertidos no basta para que los consumidores distingan los signos con seguridad. El apellido por sí solo se percibirá como la versión reducida del nombre completo, identificando de este modo la misma procedencia.
Signo anterior Signo impugnado Asunto
MURÚA T-40/03
Productos y servicios: clase 33 Territorio: España Apreciación: Consta que el público español percibirá el elemento denominativo que compone la marca solicitada como un nombre propio (nombre y apellidos) y la marca anterior como un apellido. Es muy probable que el público destinatario únicamente vea en el añadido del nombre «Julián» y del apellido «Entrena» en la marca solicitada una forma de distinguir una gama de vinos procedentes de la empresa titular de la marca anterior o, cuando menos, de una empresa vinculada económicamente a la parte interviniente (apartados 42 y 78). Existencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
BRADLEY VERA BRADLEY R 1918/2010-1
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Productos y servicios: clase 11 Territorio: UE Apreciación: El signo para el que la marca comunitaria solicita protección consiste en el término «Vera Bradley», que muy probablemente se considerará el nombre (nombre de pila y apellido) de una persona, ficticio o real. Está formado por el nombre de pila «VERA», que es un nombre común de mujer en muchos países de la UE, tales como la República Checa, Alemania, Irlanda, los Países Bajos, Austria, Eslovenia y el Reino Unido, y el apellido «BRADLEY», que es un apellido inglés. El apellido no es común ni en los países de habla inglesa, ni en ningún otro país de la Unión Europea. Aunque los consumidores pudieran distinguir entre los signos por el elemento «Vera», que no tiene homólogo en la marca anterior, considerarían que se trata de una línea de productos específica o una forma ampliada de la marca. Por consiguiente, los consumidores podrían creer que las marcas pertenecen a la misma empresa o a empresas vinculadas económicamente (apartados 36-37 y 52). Existencia de riesgo de confusión.
6.3 Parte inicial de las marcas
En los signos denominativos, suele ser la primera parte la que capta la atención del consumidor y, por tanto, será recordada con mayor claridad que el resto del signo. Esto significa que la parte inicial de un signo tiene una influencia significativa sobre la impresión general provocada por la marca (sentencia de 15/12/2009, T-412/08, «Trubion», apartado 40; sentencia de 25/03/2009, T-109/07, «Spa Therapy», apartado 30).
Sin embargo, el concepto «parte inicial del signo» es indeterminado, porque no existe una indicación determinada de lo que forma la parte inicial, lo que es la parte final o incluso si existe o no una parte intermedia del signo. De nuevo, esta percepción depende fundamentalmente de las circunstancias del caso (longitud del signo, distribución silábica, uso de fuente, etc.) y no de una regla establecida. Podría incluso ocurrir que se perciba que un signo tiene una parte inicial y una parte final cortas y una parte intermedia o central mucho mayor proporcionalmente. Por consiguiente, en función de las circunstancias, la norma de la relevancia de la parte inicial del signo podría tener menos peso en beneficio de una parte central más significativa.
Como normalmente es la parte inicial de un signo la que atrae la atención del consumidor, cuando los signos únicamente difieran en la parte final, esta diferencia, con frecuencia, no bastará para descartar la similitud. No obstante, no se trata de una norma fija y el resultado depende de las circunstancias del caso. Por otro lado, esta norma únicamente es aplicable cuando el signo contiene un elemento denominativo (que explicaría la lectura de izquierda a derecha) y cuando este elemento denominativo no es muy corto (de otro modo el signo se percibiría inmediatamente en su totalidad). Los signos muy cortos están formados por tres o menos letras o números (véase el punto 6.1 anterior).
En los ejemplos siguientes, se constató la existencia de riesgo de confusión:
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Signo anterior Signo impugnado Asunto
ALENTIS ALENSYS R 1243/2010-1
Productos y servicios: clase 42 Territorio: España Apreciación: Las marcas son visual y fonéticamente muy similares, en particular, porque coinciden en las primeras cuatro letras «ALEN». Es general la convicción de que las personas prestan más atención a la primera parte de una marca, al menos cuando la perciben visualmente (apartado 33). Existencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
AZURIL AZULIB R 1543/2010-1
Productos y servicios: clase 5 Territorio: Grecia Apreciación: Los signos comparten cinco de sus seis letras y las dos primeras sílabas son idénticas. Existe un determinado grado de similitud visual. Los signos son muy similares fonéticamente porque su parte inicial, que suele ser la más importante, es idéntica. Ninguno de los signos tiene un significado en griego. La similitud de los signos, combinada con la identidad o similitud de los «productos farmacéuticos» da lugar a confusión (apartados 35-36). Existencia de riesgo de confusión.
En los ejemplos siguientes, el resultado fue de inexistencia de riesgo de confusión, a pesar de tener partes iniciales idénticas: En algunos de estos casos, las partes iniciales idénticas eran, de hecho, un elemento débil en los signos. En otros, a pesar de tener partes iniciales idénticas, las diferencias conceptuales pesaban más que las similitudes para concluir que no existía riesgo de confusión.
Signo anterior Signo impugnado Asunto
CALSURA CALSORIN R 0484/2010-2
Productos y servicios: clase 5 Territorio: UE Apreciación: La parte inicial «CALS» (que recuerda a «calcio») no es especialmente distintiva, sino que debe considerarse como un elemento débil de la marca respecto a los productos en cuestión (apartado 24). Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
NOBLESSE NOBLISSIMA R 1257/2010-4
Productos y servicios: clase 30 Territorio: Dinamarca, Finlandia, Suecia Apreciación: Los signos difieren en la quinta letra y en su parte final. Son visualmente similares en un grado medio. A la vista de la longitud de la solicitud de marca comunitaria, los signos difieren en el ritmo y entonación y son, por tanto, escasamente similares desde una perspectiva fonética. Los signos anteriores «NOBLESSE» tienen una clara connotación tanto en Finlandia como en Suecia. En estos territorios la palabra «NOBLISSIMA» carece de significado. Son, por tanto, distintas desde un punto de vista conceptual. Las marcas anteriores son elogiosas por naturaleza y en cierta medida descriptivas de las características de los productos «chocolate», especialmente describiendo su carácter superior. El carácter distintivo es inferior al medio. Teniendo en consideración la escasa similitud entre los productos «chocolate» y «helados comestibles» (clase 30), la escasa similitud fonética y la diferencia conceptual, no existe riesgo de confusión (apartado 36). Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
ALBUMAN ALBUNORM R 0489/2010-2
Productos y servicios: clase 5 Territorio: UE Apreciación: Los signos son similares visual, fonética y conceptualmente en la medida en que ambos tienen el prefijo «ALBU» (abreviatura de «albúmina» o «albumen») en común. Pero esta similitud tiene poca relevancia porque el prefijo es genérico y, por tanto, carente de carácter distintivo. El segundo
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elemento de la marca anterior «MAN» es, desde las perspectivas visual, fonética y conceptual, completamente distinto al del segundo elemento de la marca impugnada, «NORM». Teniendo en cuenta lo muy atentos y bien informados que se supone que están los consumidores aconsejados por profesionales en el ámbito médico, aunque se aplicase a productos idénticos de la clase 5, no existiría riesgo de confusión (apartado 41). Inexistencia de riesgo de confusión.
6.4 Signos compuestos
La regla general para los signos «compuestos» (signos formados por más de un elemento, p. ej. elementos denominativos y figurativos, signos denominativos formados por varias partes) debería ser compararlos íntegramente, considerando fundamentalmente la impresión de conjunto que transmiten. El consumidor medio normalmente percibe una marca como un todo, cuyos diferentes detalles no se detiene a examinar (sentencia de 12/06/2007, C-334/05 P, «LIMONCHELO», apartado 35).
Esta regla es aplicable cuando un elemento o todo el signo está total o parcialmente incluido en el otro signo:
la apreciación de la similitud entre dos marcas no implica tomar en consideración únicamente un componente de una marca compuesta y compararlo con otra marca. Al contrario, tal comparación debe llevarse a cabo examinando las marcas en cuestión, consideradas cada una en su conjunto (asunto C-334/05 P, «LIMONCHELO», apartado 41).
Ello no excluye que la impresión de conjunto producida en la memoria del público destinatario por una marca compuesta pueda, en determinadas circunstancias, estar dominada por uno o varios de sus componentes.
Por otro lado, el carácter distintivo de los elementos superpuestos o comunes tiene un impacto decisivo sobre la similitud de los signos como parte de la apreciación general del riesgo de confusión.
6.4.1 Signos que contienen elementos figurativos y denominativos
Cuando los signos están formados tanto por elementos denominativos como figurativos, en principio, el elemento denominativo del signo suele tener un impacto mayor sobre el consumidor que el elemento figurativo. Esto es así porque el público no suele analizar los signos y se referirá más fácilmente al producto de que se trata citando su nombre que describiendo los elementos figurativos de la marca (sentencia de 14/07/2005, T-312/03, «Selenium-Ace», apartado 37; resolución de 19/12/2011, R 0233/2011-4, «Best Tone», apartado 24; resolución de 13/12/2011, R 0053/2011-5, «Jumbo», apartado 59).
Sin embargo, el elemento denominativo de un signo no tiene de manera automática un impacto mayor (véase la sentencia de 31/01/2013, T-54/12, «K2 SPORTS», apartado 40). La impresión visual de un signo puede desempeñar un papel importante en su percepción por parte del público destinatario, por ejemplo, cuando se consideran los productos de la clase 25.
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Además, el hecho de que el elemento denominativo pueda tener un impacto mayor es una cuestión distinta de la posición dominante. El elemento denominativo de un signo complejo no es dominante por sistema. Es dominante si es visualmente llamativo.3
Por otro lado, al apreciar el impacto del elemento denominativo de una marca compleja, se debe tener en cuenta el carácter distintivo de este elemento4.
Signos con un elemento denominativo idéntico o muy similar y elementos figurativos distintos
Se suele concluir que existe riesgo de confusión cuando los elementos denominativos son idénticos o similares y el elemento figurativo carece de significado semántico y de diseño llamativo. En tal situación, se considerará que el elemento figurativo no ejerce una influencia significativa en la percepción del signo del público destinatario.
En los ejemplos siguientes se constató la existencia de riesgo de confusión porque los elementos denominativos eran idénticos o similares y los elementos figurativos eran débiles o no particularmente complicados.
Signo anterior Signo impugnado Asunto
COTO DE IMAZ EL COTO
T-276/10 (procedimiento de nulidad)
Productos y servicios: clase 33 Territorio: UE Apreciación: El Tribunal General consideró que el elemento figurativo de la marca controvertida era débil para los productos pertinentes y, por tanto, no tenía un gran impacto en la percepción global del signo (apartado 45). Existencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
( i )
( i i )
PUKKA T-483/10
3 Véase el Manual relativo a la oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 5, Elementos dominantes. 4 Véase el Manual relativo a la oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 4, Carácter distintivo.
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Productos y servicios: clase 18 Territorio: España, UE Apreciación: Los elementos figurativos de la marca comunitaria anterior, especialmente el óvalo y la forma geométrica que recuerdan vagamente a una estrella de cinco puntas superpuestas sobre el mismo, no transmiten ningún contenido conceptual identificable. Por consiguiente, es muy improbable que estos elementos figurativos llamen la atención del consumidor pertinente. Por el contrario, aunque el elemento denominativo tampoco transmite ningún contenido conceptual, el hecho es que se puede leer y pronunciar y es probable, por tanto, que los consumidores lo recuerden. Por ello, se debe considerar que el elemento denominativo de la marca comunitaria anterior domina la impresión visual que deja la marca (apartado 47). Existencia de riesgo de confusión.
Por el contrario, cuando los elementos denominativos comunes son igualmente débiles o incluso menos distintivos que los elementos figurativos, las diferencias en los elementos figurativos podrán inclinar la balanza hacia la inexistencia de riesgo de confusión:
Signo anterior Signo impugnado Asunto
T-60/11
Productos y servicios: clases 30, 31, 42 Territorio: UE Apreciación: El elemento denominativo «premium» en este caso no da lugar a una conclusión de existencia de riesgo de confusión, aun cuando los productos eran idénticos. La similitud de las marcas se basa únicamente en una palabra que carece de carácter distintivo y no sería recordada por los consumidores como el elemento fundamental de las marcas controvertidas. (apartado 53). Inexistencia de riesgo de confusión.
(i)
(ii) THE NATURAL CONFECTIONERY
CO.
R 1285/2009-1 (nulidad)
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Productos y servicios: clase 29 (dulces y artículos de confitería preparados con azúcar) Territorio: UE Apreciación: Aunque la palabra «NATURAL» ocupa una parte sustancial de las marcas, los consumidores no lo verán como un elemento distintivo (apartado 25). A pesar de que los productos controvertidos son idénticos, la impresión de conjunto que las marcas controvertidas ofrecen no daría lugar a la existencia de riesgo de confusión en el público pertinente. Al público destinatario le sería absolutamente imposible establecer un vínculo entre los dos signos controvertidos, dando lugar a un riesgo de confusión por la presencia en ambos de la palabra descriptiva «NATURAL», haciendo que el público creyese que los productos en cuestión procedían de la misma empresa o de empresas vinculadas económicamente (apartado 33). Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
(i)
(ii) R 0745/2009-2
Productos y servicios: clases 3, 9, 35 Territorio: España Apreciación: Las diferencias conceptuales superan las similitudes visuales y fonéticas. Por otro lado, la Sala de Recurso consideró que el término «AROMA» era genérico para los productos pertinentes (apartado 31). Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
R 1321/2009-1
Productos y servicios: clases 19, 35 Territorio: UE Apreciación: La debilidad del elemento denominativo «PreTech» de la marca anterior y las significativas diferencias visuales entre los dos signos controvertidos atenúan el efecto de la similitud fonética. Asimismo, la similitud fonética entre los dos signos tiene menor importancia cuando el público destinatario ve el nombre de una marca en los productos y servicios que adquiere, como cabe esperar en el presente caso (apartado 27). Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
R 1357/2009-2
Productos y servicios: clases 5, 29, 30, 32 Territorio: UE Apreciación: La Sala de Recurso tuvo en consideración el carácter no distintivo y descriptivo de la palabra «Lactofree» para los productos pertinentes. La Sala concluyó que las considerables diferencias visuales y conceptuales entre los signos contrarrestaban la naturaleza parcialmente idéntica y similar de los productos (apartado 98). Inexistencia de riesgo de confusión.
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Signos con un elemento figurativo idéntico o muy similar y elementos denominativos distintos
En general, la identidad o similitud de los elementos figurativos de los signos no basta para establecer la similitud en casos en los que al menos uno de los signos contiene un elemento denominativo adicional que no contiene el otro signo. El resultado, no obstante, dependerá de las circunstancias particulares de cada caso individual.
En los ejemplos siguientes, debido a las diferencias fonéticas y conceptuales no se constató riesgo de confusión a pesar de las similitudes visuales de los signos.
Signo anterior Signo impugnado Asunto
(IBIZA REPUBLIC)
T-311/08
Productos y servicios: clases 25, 41, 43 Territorio: Francia Apreciación: Teniendo en cuenta las diferencias fonéticas y conceptuales y la escasa similitud gráfica entre los signos, la falta de mayor carácter distintivo de la marca anterior y el carácter dominante del elemento denominativo de la marca solicitada, la Sala estuvo acertada al considerar que no existía riesgo de confusión, aun en presencia de productos idénticos (apartado 58). Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
R 0280/2009-4
Productos y servicios: clases 16, 36, 41 Territorio: Alemania Apreciación: Lo único que tienen en común los dos signos es que representan una cruz con ocho puntos característicos, conocida como la «Cruz de Malta», en referencia a la Orden de Malta. Incluso en el área considerada, «recaudación de fondos para la beneficencia, educación, publicaciones periódicas, servicios médicos» (clases 16, 36, 41, 45), el solicitante no utiliza la forma específica de la Cruz de Malta exclusivamente. La solicitud de marca comunitaria contiene la secuencia de palabras distintiva sin reservas «Pro concordatia populorum» y no se puede reducir a su elemento figurativo. Los signos también son distintos fonéticamente, al carecer el signo oponente de elementos denominativos. No existe similitud conceptual, dado que la solicitud de marca comunitaria significa «por el entendimiento de los pueblos», una frase que no tiene nada en común con el signo anterior. Por tanto, no puede existir riesgo de confusión, aun en el caso de productos idénticos que solo se encuentran en la clase 16. Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
R 1373/2009-2
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Productos y servicios: clases 9, 12, 14, 18, 22, 25, 28 Territorio: UE Apreciación: En opinión de la Sala de Recurso, teniendo en consideración el escaso poder distintivo de los elementos figurativos similares de las marcas, así como el principal papel distintivo desempeñado por el elemento denominativo del signo del solicitante, no existe riesgo de confusión a pesar de la identidad o similitud de los productos controvertidos de las clases 9, 12, 14, 18, 22, 25 y 28. Inexistencia de riesgo de confusión.
Es posible concluir la existencia de riesgo de confusión , sin embargo, en los casos de claro carácter dominante del elemento figurativo común y nimia importancia del elemento denominativo distinto, o como consecuencia del limitado carácter distintivo del elemento denominativo:
Signo anterior Signo impugnado Asunto
Asuntos acumulados R 0068/2001-4 y R 0285/2001-4
Productos y servicios: clases 18, 24, 25, 28 Territorio: Benelux, Alemania, España, Francia, Italia, Austria Apreciación: Las respectivas marcas coinciden en que una consiste en una huella de animal y la otra incluye una huella de animal. Existen diferencias entre los dispositivos, p. ej. los registros del oponente incluyen garras. Sin embargo, la impresión de conjunto es la de una huella animal de color negro. El elemento denominativo de la solicitud impugnada no está presente en la marca del oponente. En el contexto lingüístico francés, el elemento verbal de la solicitud impugnada se percibiría como mínimo, según afirmó el solicitante, «la casa de piel sintética». Como tal es un elemento con carácter distintivo intrínseco muy limitado. Existencia de riesgo de confusión.
En otros casos, el elemento figurativo puede «colaborar» con la parte denominativa para definir un concepto particular y puede incluso contribuir al entendimiento de las palabras que, en principio, pueden no estar muy difundidas entre los consumidores. Por lo tanto, en los ejemplos siguientes, se constató la existencia de riesgo de confusión a pesar de que el elemento denominativo únicamente estuviera presente en uno de los signos:
Signo anterior Signo impugnado Asunto
B 210 379
Productos y servicios: clase 3 Territorio: Alemania, España Apreciación: Se consideró que los signos eran lo suficientemente similares como para dar lugar a riesgo de confusión basado en la identidad de los productos porque la figura de una luna, presente en ambos signos, hacía más clara la equivalencia entre las palabras española e inglesa «LUNA» y «MOON» para los consumidores españoles. Existencia de riesgo de confusión.
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Signo anterior Signo impugnado Asunto
R 1409/2008-2
Productos y servicios: clases 18, 25, 35 Territorio: UE Apreciación: Las marcas son muy similares visualmente. No es posible realizar una comparación fonética. La palabra «horse» significa conceptualmente «cheval» en la lengua del asunto (francés). Los consumidores de habla inglesa pueden entender este elemento como una referencia directa al elemento figurativo de la marca comunitaria impugnada. Por tanto, las marcas son conceptualmente idénticas. Teniendo en consideración el hecho de que el consumidor medio, por regla general, no tiene la posibilidad de realizar una comparación directa entre las marcas y dado el principio de interdependencia de los factores, existe un riesgo de confusión entre los signos al solicitar productos idénticos de las clases 18 y 25. Existencia de riesgo de confusión.
6.4.2 Signos denominativos con varias partes
En estos casos todo el signo o solo uno de sus elementos está totalmente incorporado en el otro signo, esto es, el signo anterior (o un elemento del mismo) está totalmente incluido en el signo impugnado o a la inversa.
El tipo de casos más frecuente y problemático afecta a una palabra frente a dos palabras. Esto puede dar lugar a una similitud de las marcas y, junto con otros factores, a un riesgo de confusión, según establecieron los Tribunales en los asuntos siguientes:
la circunstancia de que [una marca] esté formada exclusivamente por la marca anterior [...], a la que se ha añadido otra palabra[ ...] constituye una indicación de la similitud entre ambas marcas.
(Véase la sentencia de 04/05/2005, T-22/04, «Westlife», apartado 40.)
cuando uno de los dos únicos términos que forman una marca denominativa es idéntico, en sus aspectos gráfico y fonético, al único término de una marca denominativa anterior, y cuando estos términos, considerados globalmente o aislados, no poseen, a nivel conceptual, ningún significado para el público considerado, las marcas controvertidas, consideradas cada una globalmente, deben considerarse similares.
(Véase la sentencia de 25/11/2003, T-286/02, «KIAP MOU», apartado 39.)
En la siguiente sentencia se mencionaba un criterio adicional (un papel distintivo independientemente del elemento común):
puede existir un riesgo de confusión para el público, en caso de identidad de los productos o de los servicios, cuando el signo controvertido está formado mediante la yuxtaposición, por una parte, de la denominación de la empresa del tercero y, por otra, de la marca registrada, dotada de un
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carácter distintivo normal, y esta última, aunque no determina por sí sola la impresión de conjunto del signo compuesto, ocupa en dicho signo una posición distintiva y autónoma.
(Véase la sentencia de 06/10/2005, C-120/04, «Thomson Life», apartado 37.)
Al apreciar si la coincidencia de un elemento denominativo puede dar lugar a una similitud de los signos y (junto con factores pertinentes adicionales) a un riesgo de confusión, hay que considerar dos factores importantes: si el elemento común es (a) reconocible y (b) si tiene un papel distintivo autónomo.
Elemento reconocible
Es especialmente importante si la palabra común se puede identificar de manera aislada dentro de la marca compuesta, bien porque está separada por un espacio o guión, o se puede identificar de otro modo (por su claro significado) como un elemento individual.
Un consumidor medio que perciba un signo denominativo lo descompondrá en elementos que sugieran un significado determinado o se parezcan a palabras conocidas (sentencia de 06/10/2004, T-356/02, «VITAKRAFT», apartado 51, confirmada por el asunto C-512/04 P).
Por otro lado, una mera coincidencia en una secuencia de letras no es suficiente para que exista similitud. Las resoluciones no se deben basar en el simple hecho de que un signo contenga al otro.
En los ejemplos siguientes la coincidencia se percibe claramente porque la parte común es una palabra separada:
Signo anterior Signo impugnado Motivo Asunto
CENTER CENTER SHOCK
La marca anterior se corresponde con la primera palabra de la solicitud de la marca comunitaria. Existencia de riesgo de confusión.
C-353/09
SCHUHPARK JELLOSCHUHPARK
La marca anterior es idéntica a la segunda palabra de la solicitud de la marca comunitaria. Existencia de riesgo de confusión.
T-32/03
FLEX FLEXI AIR
La solicitud de la marca comunitaria consiste en esencia en la palabra «flex» (apartado 64). Existencia de riesgo de confusión.
T-112/03 (confirmado por el asunto C-235/05P)
En los ejemplos siguientes el elemento común es una parte de una palabra, pero podría identificarse, porque el público dividirá la palabra lógicamente en función del significado de sus elementos:
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Signo anterior Signo impugnado Motivo Asunto
CADENACOR COR
El público hispanohablante identificará los elementos «cadena» y «cor» en la marca anterior (apartado 47). Existencia de riesgo de confusión.
T-214/09
BLUE ECOBLUE
El público destinatario dividirá la solicitud de marca comunitaria en el prefijo comúnmente utilizado «eco» y la palabra «blue» (apartado 30). Existencia de riesgo de confusión.
T-281/07 confirmada por el asunto C-23/09 P)
En los ejemplos siguientes la coincidencia no era reconocible:
Signo anterior Signo impugnado Motivo Asunto
ARAVA PARAVAC
Mera coincidencia en una secuencia de letras, cuando la primera y la última letra de la solicitud de marca comunitaria cambian su impresión de conjunto. Inexistencia de riesgo de confusión.
R 1398/2006-4
LUX LUXINIA Mera coincidencia en una secuencia de letras. Inexistencia de riesgo de
confusión. R 347/2009-2
CS CScreen
El signo anterior probablemente se descompondrá en los elementos «C» y «Screen», lo que es muy importante para ordenadores y sus periféricos. No se percibirá que contiene la entidad distintiva separada «CS». Inexistencia de riesgo de confusión.
R 545/2009-4
VALDO VAL DO INFERNO Los elementos «VAL» y «DO» están separados. Inexistencia de riesgo de confusión.
R 1515/2008-4
Aunque se suele prestar más atención a la parte inicial de una palabra, normalmente no importa mucho si el elemento común es el primero o el segundo elemento de la marca compuesta. En particular, cuando la marca impugnada es la marca compuesta, no debería importar demasiado si ésta incorpora a la marca anterior como su primer o segundo elemento. La protección contra el riesgo de confusión se aplica en ambas direcciones: el titular de la marca anterior está protegido no solo frente a la marca impugnada, entendiéndose que ésta se refiere a sus productos o servicios, sino también frente a que su marca se use para hacer referencia a los productos o servicios del solicitante.
Papel distintivo autónomo
La verificación de la existencia de un riesgo de confusión no puede estar supeditada al requisito de que la impresión de conjunto producida por el signo compuesto esté dominada por la parte de éste constituida por la marca anterior (sentencia de 11/12/2008, C-57/08 P, «ACTIVY Media Gateway», apartado 53; sentencia de 06/10/2005, C-120/04, «Thomson Life», apartado 32).
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Por otro lado, una coincidencia en un elemento débil o visualmente insignificante normalmente no dará lugar a la existencia de un riesgo de confusión. El hecho de que un signo que constituye la marca anterior se reproduzca en la marca solicitada no da lugar a un riesgo de confusión si ese elemento común no es distintivo o si los elementos adicionales contrarrestan este elemento común.
Es especialmente importante el nivel de carácter distintivo de los elementos comunes o diferentes para analizar los signos compuestos frente a los signos formados por una única palabra. La coincidencia en un elemento débil no dará lugar, por lo general, a un riesgo de confusión:
Signo anterior Signo impugnado Asunto
GATEWAY, et al. ACTIVY Media Gateway T-434/05
(confirmada por el asunto C-57/08 P)
Productos y servicios: clases 9, 35, 38, 42 Territorio: UE Apreciación: «[...] tanto el elemento «media gateway» como el elemento «gateway» en la marca solicitada evocan directamente, en el consumidor pertinente, los conceptos de una pasarela de medios y una pasarela, que se utilizan comúnmente en el sector informático. Tales elementos de la marca solicitada son, por tanto, muy descriptivos de los productos y servicios designados por esa marca» (apartado 48). Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
P&G PRESTIGE BEAUTE T-366/07
Productos y servicios: clase 3 Territorio: Italia Apreciación: El Tribunal consideró que el elemento «prestige» de la marca solicitada era elogioso por naturaleza y en cierta medida descriptivo de las características atribuidas y el uso previsto de los productos controvertidos (apartado 65). Inexistencia de riesgo de confusión.
No obstante, el Tribunal habla a favor de la existencia de riesgo de confusión si el elemento en que las marcas difieren tiene menor carácter distintivo intrínseco que el elemento común:
Signo anterior Signo impugnado Asunto
(NEGRA MODELO)
T-169/02
Productos y servicios: clases 25, 32, 42 Territorio: Portugal Apreciación: En efecto, «negra» es un elemento descriptivo, puesto que se utiliza también en portugués para designar la cerveza negra, que es el tipo de cerveza que se comercializa bajo la marca «NEGRA
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MODELO«. Por consiguiente, la atención del consumidor medio portugués se centrará en el término «modelo» (apartados 36-37). Existencia de riesgo de confusión.
También puede suceder que el elemento común haya adquirido un mayor grado de carácter distintivo con el uso:
Signo anterior Signo impugnado Asunto
CRISTAL R 0037/2000-2
T-29/04 (C-131/06 P)
Productos y servicios: clase 33 Territorio: Francia Apreciación de la marca anterior «CRISTAL»: En cuanto a la afirmación de que «Cristal» es una palabra descriptiva de los productos en cuestión (vinos espumosos con carácter cristalino), la Sala no puede aceptarlo. Por otro lado, se trata de una indicación evocadora que sugiere el carácter cristalino de los vinos, pero de ningún modo describe el producto. Asimismo, [la Sala] considera que debería haberse demostrado un carácter muy distintivo de la marca «CRISTAL» en el mercado francés» (apartado 31). Existencia de riesgo de confusión. El Tribunal confirmó la existencia de riesgo de confusión, pero concluyó que la marca «CRISTAL» únicamente demostraba notoriedad para parte del público destinatario (profesionales) (apartado 67).
Importancia de los elementos adicionales (no comunes
El siguiente factor a tener en cuenta en el análisis es la importancia y peso de los elementos adicionales (no comunes) en la impresión de conjunto de ambos signos. Elementos como la longitud, estructura y configuración de los signos influyen en los ejemplos siguientes:
Signo anterior Signo impugnado Asunto
LOFT ANN TAYLOR LOFT T-385/09
Productos y servicios: clases 18, 25, 35 Territorio: Francia Apreciación: La palabra «loft» no es el elemento distintivo de la marca solicitada. Por otro lado, de estas mismas apreciaciones se desprende igualmente que el elemento «ann taylor», debido a su carencia de significado para el público destinatario, debe considerarse más distintivo que la palabra «loft» en la marca solicitada, en la medida en que dicha palabra tiene un significado preciso para el referido público (apartados 43-49). Inexistencia de riesgo de confusión.
Signo anterior Signo impugnado Asunto
P&G PRESTIGE BEAUTE T-366/07
Productos y servicios: clase 3 Territorio: Italia Apreciación: Ambas marcas contienen la palabra «prestige» (que está representada en la marca anterior en una fuente especial sin ningún otro elemento figurativo). No obstante, esta coincidencia se compensa, en particular, por la distinta longitud y configuración de los signos en su conjunto. La solicitud de marca comunitaria es más larga que la marca anterior, y el elemento «p&g» al inicio atraerá la atención del público. «Prestige» también es elogioso por naturaleza (apartados 62-68). Inexistencia de riesgo de confusión.
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Sugerencias prácticas
Como regla general, cuando una de las marcas controvertidas o parte de las mismas se reproduzca en la otra marca, existirá similitud de signos, lo que junto con otros factores puede dar lugar a riesgo de confusión, salvo si:
el elemento común ya no es reconocible como tal en la otra marca (PARAVAC / ARAVA);
los elementos añadidos en la otra marca son claramente preponderantes (P&G PRESTIGE BEAUTE / Prestige);
al añadir otros elementos, la otra marca es conceptualmente distinta (ejemplo inventado: Line / Skyline)5;
el elemento común tiene un escaso carácter distintivo intrínseco o es casi un término descriptivo (ACTIVY Media Gateway / GATEWAY).
En todos los demás casos, la regla general de oro es que si un signo en su conjunto está totalmente incorporado en el otro signo, los signos son similares. Asimismo, cuando los productos son idénticos o muy similares, a falta de otros factores específicos, existirá riesgo de confusión.
Como se ha visto, ambas reglas son aplicables cuando ambos signos contienen elementos adicionales a los elementos comunes. La coincidencia de una palabra, sin embargo, no suele bastar por sí misma para establecer el riesgo de confusión: el impacto del elemento común en la impresión de conjunto de ambos signos tiene que compararse con el impacto de las partes diferentes. En este contexto es más probable que la existencia de un elemento adicional en cada uno de los signos comparados contrarreste la coincidencia en un elemento común que cuando una marca de una única palabra forma parte de la otra marca denominativa.
6.5 Marcas de color per se
Cuando se aprecia el riesgo de confusión de dos marcas de color per se, no se puede realizar una comparación fonética o conceptual de los signos y las similitudes gráficas dependerán del color de los signos.
En la apreciación global, la Oficina tiene en consideración el hecho de que existe un «interés general en que no se restrinja indebidamente la disponibilidad de los colores para los demás operadores que ofrecen productos o servicios del mismo tipo que aquellos para los que se solicita el registro» (sentencia de 24/06/2004, C-49/02, «Heidelberger Bauchemie», apartado 41; sentencia de 06/05/2003, C-104/01, «Libertel», apartados 52-56). El carácter distintivo intrínseco de las marcas de color per se es limitado. El ámbito de protección debería limitarse a las combinaciones de colores idénticas o casi idénticas.
5 Véanse las Directrices relativas a la oposición, Parte 2, Doble identidad y riesgo de confusión, Capítulo 3, Comparación de los signos, Comparación conceptual.
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Signo anterior Signo impugnado Asunto
R 0755/2009-4
Productos y servicios: clase 8 Territorio: UE Apreciación: En el presente caso, las combinaciones de colores, identificadas por distintos códigos de color, no están lo suficientemente próximas para dar lugar a un riesgo de confusión, teniendo en consideración que el carácter distintivo intrínseco es limitado (apartado 18). La Sala de Recurso hace referencia a las sentencias del TJCE y al interés general para garantizar que los colores estén disponibles para los competidores (apartado 19). El oponente no demostró un mayor carácter distintivo (apartado 25). Inexistencia de riesgo de confusión.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE C
OPOSICIÓN
SECCIÓN 6
PRUEBA DE USO
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Índice
1 Consideraciones generales ...................................................................... 5 1.1 Función de la prueba de uso .....................................................................5 1.2. Marco legal..................................................................................................5
1.2.1 RMC y REMC ................................................................................................. 5 1.2.1.1 Artículo 15 del RMC – obligación de utilizar las marcas registradas ...........5 1.2.1.2. Artículo 42, del RMC – consecuencias de la falta de uso ...........................6 1.2.1.3. Regla 22 del REMC – normas procesales, pruebas y lengua .....................7
1.2.2. Directiva sobre marcas y Derecho nacional de aplicación de la Directiva..... 8
2. Derecho sustantivo ................................................................................... 8 2.1. Uso efectivo: los principios del Tribunal de Justicia............................... 8 2.2. Uso efectivo: criterios aplicables a la prueba por parte la Oficina .........9 2.3. Naturaleza del uso: uso como marca en el tráfico económico ............. 11
2.3.1. El término «naturaleza del uso» ................................................................... 11 2.3.2. Uso como marca .......................................................................................... 11 2.3.3. Uso público en el tráfico económico............................................................. 13
2.3.3.1. Uso público frente a uso interno................................................................13 2.3.3.2. Actividad comercial frente a actividad de promoción.................................14
2.3.4. Uso en relación con los productos o servicios ............................................. 15 2.3.4.1. Uso en relación con los productos ............................................................15 2.3.4.2. Uso en relación con los servicios ..............................................................16 2.3.4.3. Uso en la publicidad ..................................................................................16 2.3.4.4 Uso en Internet..........................................................................................18
2.4. Lugar del uso............................................................................................ 20 2.4.1. Uso en el mercado «nacional» ..................................................................... 20 2.4.2. Marcas comunitarias: uso en la Unión Europea........................................... 20 2.4.3. Marcas nacionales: uso en el Estado miembro de referencia ..................... 21 2.4.4. Uso con fines de importación y exportación................................................. 21
2.5. Periodo del uso ........................................................................................ 22 2.5.1. Marca anterior registrada desde al menos cinco años antes....................... 22
2.5.1.1. Marcas comunitarias .................................................................................22 2.5.1.2. Marcas nacionales ....................................................................................22 2.5.1.3. Registros internacionales que designan a un Estado miembro.................23 2.5.1.4. Registros internacionales que designan a la Unión Europea ....................25
2.5.2. Periodo de referencia ................................................................................... 25 2.5.3. Resumen ...................................................................................................... 26
2.6. Magnitud del uso...................................................................................... 27 2.6.1. Criterios 27 2.6.2. Ejemplos de uso insuficiente ........................................................................ 29 2.6.3. Ejemplos de uso suficiente........................................................................... 30
2.7. Uso de la marca en formas distintas de la registrada PAUSE .............. 32 2.7.1. Introducción .................................................................................................. 32 2.7.2. Criterios del Tribunal .................................................................................... 32 2.7.3. Práctica de la Oficina.................................................................................... 33
2.7.3.1. Adiciones...................................................................................................34 2.7.3.2 Omisiones .................................................................................................40 2.7.3.3 Otras alteraciones .....................................................................................45
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2.8 Uso de los productos y servicios para los cuales está registrada la marca......................................................................................................... 50 2.8.1 Comparación del uso de productos y servicios con la lista de productos y
servicios........................................................................................................ 51 2.8.2 Importancia de la clasificación...................................................................... 52 2.8.3 Uso y registro relacionados con las indicaciones generales de los «títulos
de clase» ...................................................................................................... 53 2.8.4 Uso para las subcategorías de productos y servicios y productos y
servicios similares ........................................................................................ 53 2.8.4.1 Marca registrada anterior para una categoría amplia de productos y
servicios ....................................................................................................54 2.8.4.2 Marca registrada anterior para productos y servicios especificados de
forma precisa.............................................................................................55 2.8.4.3 Ejemplos....................................................................................................56
2.8.5 Uso de la marca en relación con las piezas de recambio y las operaciones de postventa de los productos registrados .............................. 58
2.9 Uso por el titular o en su nombre............................................................ 59 2.9.1 Uso por el titular ........................................................................................... 59 2.9.2 Uso por terceros autorizados ....................................................................... 59 2.9.3 Uso de las marcas colectivas ....................................................................... 60
2.10 Uso legal ................................................................................................... 60 2.11 Justificación de la falta de uso................................................................ 61
2.11.1 Riesgos empresariales ................................................................................. 61 2.11.2 Intervención estatal o judicial ....................................................................... 61 2.11.3 Registros defensivos .................................................................................... 63 2.11.4 Fuerza mayor................................................................................................ 63 2.11.5 Consecuencias de la justificación de la falta de uso .................................... 63
3 Procedimiento.......................................................................................... 64 3.1 Petición del solicitante............................................................................. 64
3.1.1 Periodo de solicitud ...................................................................................... 64 3.1.2 La petición debe ser expresa, inequívoca e incondicional ........................... 64 3.1.3 Interés del solicitante en pedir la prueba de uso en primer lugar ................ 66 3.1.4 Reacción si la petición no es válida ............................................................. 66
3.2 Requerimiento expreso de la Oficina...................................................... 66 3.3 Reacción de la parte oponente: presentación de la prueba de uso...... 67
3.3.1 Plazo para presentar la prueba de uso ........................................................ 67 3.3.2 Medios de prueba......................................................................................... 68
3.3.2.1 Principios...................................................................................................68 3.3.2.2 Remisiones................................................................................................70 3.3.2.3 Declaraciones............................................................................................70
3.4 Reacción del solicitante........................................................................... 73 3.4.1 Envío de las pruebas.................................................................................... 73 3.4.2 Insuficiencia de la prueba de uso................................................................. 73 3.4.3 Ausencia de reacción del solicitante ............................................................ 73 3.4.4 Retirada formal de la petición....................................................................... 73
3.5 Nueva reacción del oponente.................................................................. 74 3.6 Lenguas en el procedimiento de la prueba de uso ................................ 74
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3.7 Resolución................................................................................................ 75 3.7.1 Competencia de la Oficina ........................................................................... 75 3.7.2 Necesidad de tomar una decisión ................................................................ 75 3.7.3 Apreciación global de las pruebas presentadas........................................... 76 3.7.4 Ejemplos ....................................................................................................... 76
3.7.4.1 Uso efectivo aceptado...............................................................................76 3.7.4.2 Uso efectivo no aceptado..........................................................................78
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1 Consideraciones generales
1.1 Función de la prueba de uso
La legislación comunitaria en materia de marcas impone al titular de una marca registrada la «obligación» de usar la marca de manera efectiva. La obligación de uso no es aplicable inmediatamente después del registro de la marca anterior. Antes bien, el titular de una marca registrada disfruta del llamado «periodo de gracia» de cinco años durante el cual no es necesario demostrar el uso de la marca para basarse en el mismo, incluso en el procedimiento de oposición ante la Oficina. Tras este periodo de gracia, podrá exigírsele al titular que demuestre el uso de la marca anterior respecto de los productos y servicios de que se trate. Antes de que transcurra este periodo, el mero registro formal confiere a la marca toda su protección.
El motivo de exigir que la marca anterior pueda demostrar que ha sido objeto de un uso efectivo es limitar los conflictos entre dos marcas registradas y protegidas y, en consecuencia, el número de conflictos entre ellas. El octavo considerando del preámbulo de la Directiva 89/104, que hace referencia explícita a este objetivo, apoya tal interpretación (sentencia de 12 de marzo de 2003, T-174/01, «Silk Cocoon», apartado 38).
Por lo que a la exigencia de demostrar el uso en el procedimiento de oposición ante la Oficina se refiere, cabe considerar que el artículo 42, apartados 2 y 3, del RMC no pretende evaluar el éxito comercial ni controlar la estrategia económica de una empresa, ni menos aún reservar la protección de las marcas únicamente a las explotaciones comerciales cuantitativamente importantes (sentencia de 8 de julio de 2004, T-334/01, «Hipoviton», apartado 32 y sentencia de 8 de julio de 2004, en el asunto T-203/02, «VITAFRUIT», apartado 38).
La Oficina no investiga de oficio si la marca anterior ha sido objeto de uso. Dicho examen solo tiene lugar si el solicitante de la marca comunitaria pide de forma expresa que se presente la prueba de uso. La petición del solicitante, siempre que se cumplan los requisitos legales, desencadena las consecuencias procesales y sustantivas establecidas por el RMC y el REMC.
1.2. Marco legal
El marco legal está constituido por disposiciones contenidas en el RMC, en el REMC y en la Directiva de marcas de acuerdo con la transposición llevada a cabo en la legislación nacional de los Estados miembros.
1.2.1 RMC y REMC
1.2.1.1 Artículo 15 del RMC – obligación de utilizar las marcas registradas
El artículo 15 del RMC establece el requisito sustantivo básico de la obligación de utilizar las marcas registradas, cuyo primer apartado tiene la siguiente redacción:
Si, en un plazo de cinco años a partir del registro, la marca comunitaria no hubiere sido objeto de un uso efectivo en la Comunidad por el titular para los productos o los servicios para los cuales esté registrada, o si tal uso
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hubiera sido suspendido durante un plazo ininterrumpido de cinco años, la marca comunitaria quedará sometida a las sanciones señaladas en el presente Reglamento, salvo que existan causas justificativas para su falta de uso.
Según lo dispuesto en el artículo 15, apartado 1, letras a) y b), del RMC, el uso de la marca comunitaria en una forma que difiera en elementos que no alteren el carácter distintivo de la marca en la forma en que ésta se halle registrada y la fijación de la marca comunitaria sobre los productos o sobre su presentación en la Comunidad solo con fines de exportación, constituyen también un uso a efectos del artículo 15, apartado 1, del RMC.
A tenor del artículo 15, apartado 2, del RMC el uso de la marca comunitaria con el consentimiento del titular se considerará hecho por el titular.
1.2.1.2. Artículo 42, del RMC – consecuencias de la falta de uso
Las consecuencias de la falta de uso en el procedimiento de oposición están previstas en el artículo 42, apartados 2 y 3, del RMC. Según lo dispuesto en el artículo 42, apartado 2, del RMC:
A instancia del solicitante, el titular de una marca comunitaria anterior que hubiere presentado oposición, presentará la prueba de que, en el curso de los cinco años anteriores a la publicación de la solicitud de marca comunitaria, la marca comunitaria anterior ha sido objeto de un uso efectivo en la Comunidad para los productos o los servicios para los cuales esté registrada y en los que se base la oposición, o de que existan causas justificativas para la falta de uso, con tal de que en esa fecha la marca anterior esté registrada desde hace al menos cinco años antes. A falta de dicha prueba, se desestimará la oposición. Si la marca comunitaria anterior solo se hubiere utilizado para una parte de los productos o de los servicios para los cuales esté registrada, solo se considerará registrada, a los fines del examen de la oposición, para esa parte de los productos o servicios.
Según lo dispuesto en el artículo 42, apartado 3, del RMC:
El apartado 2 se aplicará a las marcas nacionales anteriores contempladas en el artículo 8, apartado 2, letra a), entendiéndose que el uso en la Comunidad queda sustituido por el uso en el Estado miembro en el que esté protegida la marca nacional anterior.
No existe en el RMC una disposición expresa según la cual las formas de uso mencionadas en el artículo 15, apartados 1 y 2, del RMC pueden considerarse también como uso de marcas nacionales anteriores. No obstante, el concepto de obligación de uso de la marca registrada ha sido armonizado como consecuencia del artículo 10, apartados 2 y 3, de la Directiva 2008/95/CE del Parlamento Europeo y del Consejo, de 22 de octubre de 2008, relativa a la aproximación de las legislaciones de los Estados miembros en materia de marcas (en lo sucesivo, la «Directiva»). En consecuencia, resulta procedente aplicar la misma disposición sustantiva que el artículo 15, apartados 1 y 2, del RMC al uso de las marcas nacionales anteriores, con la única diferencia de que dicho uso debe hacerse en el Estado miembro en el que esté registrada la marca nacional.
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Asimismo, del texto del artículo 42, apartados 2 y 3, del RMC se deriva que la prueba de uso solo puede exigirse si el derecho anterior es una MC u otra marca que surte efectos en la UE o en un Estado miembro de la UE, tal como se define en el artículo 8, apartado 2, letra a), del RMC. Dado que las oposiciones presentadas con arreglo al artículo 8, apartado 4, del RMC no pueden estar basadas ni en marcas comunitarias ni en otras marcas mencionadas en el artículo 8, apartado 2, letra a), del RMC, el solicitante de la marca comunitaria no tiene derecho a solicitar la prueba de uso de los derechos anteriores en que se basan las oposiciones presentadas en virtud de dicha disposición. Sin embargo, el artículo 8, apartado 4, del RMC exige que el oponente demuestre la utilización en el tráfico económico de alcance no únicamente local para los derechos anteriores de que se trate.
En cuanto al artículo 8, apartado 3, del RMC, la práctica de la Oficina es que no pueden realizarse peticiones de prueba de uso de un derecho anterior. El motivo es que dichos derechos anteriores incluyen tanto a las marcas que surten efectos en la UE/los Estados miembros de la UE (marcas comunitarias, marcas nacionales, registros internacionales) como a las marcas nacionales de países no miembros de la Unión. Sería discriminatorio solicitar prueba de uso para las marcas de unos países y de otros no. En consecuencia, y a la vista del objeto específico de protección con arreglo al artículo 8, apartado 3, del RMC, mientras que el uso o la falta de uso que se haga de los derechos anteriores puede guardar relación con las alegaciones relativas a la justificación para presentar una solicitud de marca comunitaria, el oponente no podrá verse obligado a aportar prueba de uso con arreglo a lo dispuesto en el artículo 42, apartado 3, del RMC, para cualquier derecho anterior en que esté basada la solicitud.
1.2.1.3. Regla 22 del REMC – normas procesales, pruebas y lengua
Según la regla 22, apartado 2, del REMC, en el caso de que, con arreglo a lo dispuesto en los apartados 2 ó 3 del artículo 42, del RMC, la parte que presente oposición tuviere que aportar la prueba de uso o demostrar que existen causas justificativas para la falta de uso, la Oficina le invitará a que presente la prueba requerida en el plazo que ella determine. Si la parte que presente oposición no facilitase dicha prueba antes de que expire el plazo, la Oficina desestimará la oposición.
Según la regla 22, apartado 3, del REMC, las indicaciones y la prueba de uso consistirán en indicaciones sobre el lugar, tiempo, alcance y naturaleza del uso de la marca opositora respecto a los productos y servicios para los que esté registrada y en los que se base la oposición, y en la prueba de estas indicaciones, con arreglo a lo dispuesto en el apartado 4.
Según la regla 22, apartado 4, del REMC, la prueba se deberá limitar preferentemente a la presentación de documentos y objetos acreditativos, como por ejemplo, envases, etiquetas, listas de precios, catálogos, facturas, fotografías, anuncios en periódicos y las declaraciones escritas a que hace referencia la letra f) del apartado 1 del artículo 78, del RMC.
Según la regla 22, apartado 5, del REMC, la petición de la prueba de uso podrá ir acompañada o no de las alegaciones sobre los motivos en los que se basa la oposición. Dichas alegaciones podrán presentarse junto con las alegaciones que se formulen en respuesta a la prueba de uso.
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Según la regla 22, apartado 6, del REMC, en el caso de que las pruebas facilitadas de conformidad con los apartados 1, 2 y 3 no estén en la lengua del procedimiento de oposición, la Oficina podrá exigir a la parte que presente la oposición que facilite una traducción de tales pruebas a dicha lengua dentro del plazo que ella misma determine.
1.2.2. Directiva sobre marcas y Derecho nacional de aplicación de la Directiva
El artículo 10 de la Directiva contiene disposiciones idénticas a las del artículo 15, del RMC, sustituyéndose «uso en la Comunidad» por «uso en el Estado miembro».
2. Derecho sustantivo
2.1. Uso efectivo: los principios del Tribunal de Justicia
El RMC y el REMC no definen lo que ha de considerarse un «uso efectivo». No obstante, el Tribunal de Justifica (en adelante, el «Tribunal») ha establecido diversos principios importantes en relación con la interpretación de este término. «Ansul» de 2003 (sentencia de 11 de marzo de 2003, en el asunto C-40/01, «Minimax»): el Tribunal estableció los siguientes principios:
El uso que se requiere es un uso efectivo de la marca (apartado 35).
El «uso efectivo» es un uso que no debe efectuarse con carácter simbólico, con el único fin de mantener los derechos conferidos por la marca (apartado 36).
Debe tratarse de un uso acorde con la función esencial de la marca, que consiste en garantizar al consumidor o al usuario final la identidad del origen de un producto o de un servicio, permitiéndole distinguir sin confusión posible ese producto o ese servicio de los que tienen otra procedencia (apartado 36).
Un «uso efectivo» de la marca supone la utilización de ésta en el mercado de los productos o servicios protegidos por la marca y no solo en la empresa de que se trate (apartado 37).
El uso de la marca debe referirse a productos y servicios que ya se comercialicen o cuya comercialización, preparada por la empresa para captar clientela, en particular, mediante campañas publicitarias, sea inminente (apartado 37).
En la apreciación del carácter efectivo del uso de la marca, deben tomarse en consideración todos los hechos y circunstancias apropiados para determinar la realidad de su explotación comercial, en particular, los usos que se consideran justificados en el sector económico de que se trate para mantener o crear cuotas de mercado en beneficio de los productos o de los servicios protegidos por la marca (apartado 38).
La apreciación de las circunstancias del caso de autos puede, por lo tanto, justificar que se tenga en cuenta, en particular, la naturaleza del producto o del servicio pertinente, las características del mercado de que se trate, la magnitud y la frecuencia del uso de la marca (apartado 39).
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Por lo tanto, no es necesario que el uso de la marca sea siempre importante, desde el punto de vista cuantitativo, para calificarse de efectivo, ya que tal calificación depende de las características del producto o del servicio afectado en el mercado correspondiente (apartado 39).
«La Mer» de 2004 (auto de 27 de enero de2004, en el asunto C-259/02, «Laboratoire de la mer»): el Tribunal desarrolló los criterios recogidos en la sentencia «Minimax» como se indica a continuación:
La cuestión de si un uso es suficiente desde el punto de vista cuantitativo para mantener o crear cuotas de mercado para dichos productos o servicios depende de diversos factores y de una apreciación que debe realizarse caso por caso. Las características de dichos productos o servicios, la frecuencia o regularidad del uso de la marca, el hecho de que se utilice la marca para comercializar todos los productos o servicios idénticos de la empresa titular o meramente algunos de ellos, o incluso las pruebas relativas al uso de la marca que el titular puede proporcionar, se encuentran entre los factores que cabe tomar en consideración (apartado 22).
Igualmente, el uso de la marca por un único cliente, importador de los productos en relación con los cuales se registró la marca, puede bastar para probar que tal uso es efectivo, si la operación de importación tiene una verdadera justificación comercial para el titular de la marca (apartado 24).
Por consiguiente, no cabe establecer una norma de minimis (apartado 25).
2.2. Uso efectivo: criterios aplicables a la prueba por parte la Oficina
El artículo 42 del RMC exige la prueba de uso efectivo de la marca anterior. La prueba consistirá en elementos concretos y objetivos que acrediten una utilización efectiva y eficaz (sentencia de 18 de enero de 2011, en el asunto T-382/08, «Vogue», apartado 22). Un argumento prima facie no es suficiente.
Asimismo, la Oficina no puede determinar de oficio el uso efectivo de marcas anteriores. Incluso los titulares de marcas que supuestamente son notoriamente conocidas deben presentar pruebas que demuestren el uso efectivo de la marca anterior.
Sin embargo, la Oficina no exige necesariamente un umbral elevado para la prueba de uso efectivo. El Tribunal ha indicado que no es posible indicar de forma abstracta, qué umbral cuantitativo ha de considerarse para determinar si el uso tiene o no un carácter efectivo y, en consecuencia, no puede existir el objetivo de la norma de minimis para establecer a priori el nivel de uso necesario para que sea «efectivo». Por lo tanto, aunque debe demostrarse un alcance del uso mínimo, en qué consiste exactamente este alcance mínimo dependerá de las circunstancias de cada caso. La norma general es que, cuando responde a una verdadera justificación comercial, un uso, incluso mínimo, de la marca puede bastar para determinar la existencia del carácter efectivo, dependiendo de los productos y servicios, y el mercado de referencia (sentencia de 23 de septiembre de 2009, en el asunto T-409/07, «Acopat»,
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apartado 35 y la citada jurisprudencia; sentencia de 2 de febrero de 2012, en el asunto T-387/10, «Arantax», apartado 42).
Dicho de otro modo, bastará con que la prueba de uso demuestre que el titular de la marca ha intentado seriamente adquirir o mantener una posición comercial en el mercado de que se trate y que no haya usado la marca únicamente con la intención de conservar los derechos inherentes a la misma (uso simbólico). Como por ejemplo, en algunos casos, unas ventas relativamente escasas serán suficientes para concluir que el uso no tiene carácter simbólico, en especial en relación con productos caros (resolución de 4 de septiembre de2007, R 0035/20072, «DINKY», apartado 22). En cambio, incluso si una cantidad de uso verdaderamente modesta puede bastar en determinadas circunstancias, los titulares deben alegar una prueba de uso exhaustiva.
Según lo dispuesto en la regla 22, apartado 3, del REMC, las indicaciones y las pruebas consistirán en indicaciones sobre el lugar, tiempo, alcance y naturaleza del uso de la marca del oponente respecto a los productos y servicios para los que esté registrada.
Estos requisitos de la prueba de uso son acumulativos (sentencia de 5 de octubre de 2010, en el asunto T-92/09, «STRATEGI», apartado 43), lo cual significa que el oponente está obligado no solo a indicar, sino a probar cada uno de ellos. No obstante, la suficiencia de las indicaciones y de la prueba sobre el lugar, tiempo, alcance y naturaleza del uso ha de apreciarse a la luz de la totalidad de las pruebas presentadas. No es adecuado realizar una evaluación por separado de los diversos factores pertinentes, cada uno considerados de manera aislada (sentencia de 17 de febrero de 2011, en el asunto T-324/09, «Friboi» apartado 31).
Por consiguiente, la Oficina valora las pruebas presentadas en el marco de una apreciación global. Deben tenerse en cuenta todas las circunstancias del asunto específico y todas las pruebas presentadas han de apreciarse conjuntamente con las otras. Por lo tanto, aunque determinados elementos de prueba pueden ser insuficientes por sí solos para acreditar el uso de la marca anterior, pueden contribuir a acreditar el uso conjuntamente con otra documentación e información.
Las pruebas de uso pueden ser de naturaleza indirecta o circunstancial, como la prueba relativa a la cuota poseída por la marca en el mercado de referencia, la importación de los productos en cuestión, el suministro de las materias primas necesarias o de los envases al titular de la marca, o la fecha de caducidad de los productos. Estas pruebas indirectas pueden desempeñar un papel decisivo en la apreciación global de las pruebas presentadas. Su valor probatorio ha de ser examinado detenidamente. Por ejemplo, la sentencia de 8 de julio de 2010, en el asunto T-30/09, «peerstorm», apartados 42 y ss. consideró que los catálogos en sí mismos podrían, en determinadas circunstancias, ser pruebas concluyentes del suficiente alcance del uso.
Es necesario tomar en consideración la clase específica de productos y servicios al apreciar el valor probatorio de las pruebas presentadas. Por ejemplo, puede ser habitual en el sector del mercado de que se trata que las muestras de los productos y servicios no vayan provistas de indicaciones sobre el lugar, tiempo, alcance y naturaleza del uso. En ese caso, no es oportuno ignorar tales pruebas del uso si las indicaciones a ese respecto pueden hallarse en las otras pruebas presentadas.
Se debe apreciar detenidamente cada una de las pruebas presentadas para comprobar si realmente reflejan el uso durante el plazo de cinco años anterior a la
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publicación de la solicitud de marca comunitaria (véase al respecto el punto 2.5. infra) o el uso en el territorio de referencia (véase infra el punto 2.4.). En particular, se deben examinar con cuidado las fechas y el lugar de uso que figuran en hojas de pedido, facturas y catálogos.
Las pruebas presentadas sin indicación de la fecha de uso podrán, en el contexto de una apreciación global, ser pertinentes y tenerse en cuenta conjuntamente con otras pruebas que tienen una fecha indicada (sentencia de 17 de febrero de 2011, en el asunto T-324/09, «Friboi», apartado 33). Éste es el caso, en particular, si resulta habitual en un determinado sector del mercado de que se trata que las muestras de los productos y servicios no lleven indicaciones relativas al tiempo (resolución de 5 de septiembre de 2001, en el asunto R 0608/2000-4, «Palazzo», apartado 16, observando que las cartas de helados no suelen llevar fecha).
Respecto de la aplicación práctica de los principios generales mencionados, véanse los ejemplos del punto 3.7.4. infra.
2.3. Naturaleza del uso: uso como marca en el tráfico económico
2.3.1. El término «naturaleza del uso»
La «naturaleza del uso» del signo que se exige es su uso como marca en el tráfico económico.
No obstante, es importante señalar que la expresión «naturaleza del uso» en el contexto de la regla 22, apartado 3, del REMC también incluye la necesidad de disponer de:
un uso de la marca como marca registrada o de una variación de la misma de conformidad con el artículo 15, apartado 1, letra a), del RMC (véase infra el punto 2.7), y
un uso de los productos y servicios para los cuales está registrada la marca (véase infra el punto 2.8.).
2.3.2. Uso como marca
Los artículos 15 y 42, apartado 2, del RMC exigen la prueba de uso efectivo para los productos y servicios en relación con los cuales esté registrada la marca y en los que se base la oposición. Así pues, el oponente debe demostrar que la marca ha sido utilizada como marca en el mercado.
Habida cuenta de que entre las funciones de una marca se encuentra la de servir de enlace entre los productos y servicios y la persona responsable de su comercialización, la prueba de uso debe acreditar un vínculo claro entre el uso de la marca y los productos y servicios pertinentes. Tal como se indica claramente en la regla 22, apartado 4, del REMC, no es necesario fijar la marca sobre los propios productos. Una representación de la marca en el embalaje, los catálogos, el material publicitario o las facturas relacionados con los productos y servicios en cuestión constituye una prueba directa de que la marca ha sido objeto de un uso efectivo (véase asimismo infra el punto 2.3.3.2.).
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El uso de un signo como nombre de empresa o nombre comercial no puede considerarse un uso como marca, a no ser que los propios productos y servicios sean identificados y ofrecidos en el mercado con este signo (sentencia de 13 de abril de 2011, en el asunto T-209/09, «Adler Capital», apartados 55 y 56). Éste no suele ser el caso cuando el nombre de empresa se utiliza simplemente como rótulo de establecimiento (excepto cuando se demuestre el uso para los servicios al por menor), o aparece en la última página de un catálogo o como mención adicional en la etiqueta posterior (sentencia de 18 de enero de 2011, en el asunto T-382/08, «Vogue», apartado 47).
El uso efectivo exige que el uso sea como marca:
que no sea a efectos puramente ilustrativos o meramente promocional de los productos o servicios.
en consonancia con su función esencial, que consiste en garantizar la identidad del origen de los productos o servicios para los que haya sido registrada (sentencia de 11 de marzo de2003, en el asunto C-40/01, «Minimax», apartado 43).
Por lo tanto, los siguientes elementos no serán adecuados para apoyar el uso efectivo de la marca:
El uso como marca de certificación. En algunas jurisdicciones se pueden obtener marcas de certificación por cumplir determinadas normas. El titular de una marca de certificación es el certificador, que ejerce el control legítimo sobre el uso de la marca de certificación, y no el usuario, productor o proveedor autorizado de los productos o servicios certificados. Las marcas de certificación pueden usarse conjuntamente con la marca del fabricante de los productos certificados o del proveedor de los servicios certificados. La función fundamental de una marca de certificación es distinta de la función fundamental de una marca individual: mientras que esta última sirve ante todo para identificar el origen de los productos y servicios, la primera se utiliza para certificar que los productos o servicios cumplen determinadas normas establecidas y poseen características particulares. Por ello, el uso como marca de certificación no constituye un uso como marca individual, que es el uso que exige el artículo 42, apartados 2 y 3, del RMC (resolución de 16 de agosto de 2011, en el asunto R 87/2010-2, «DVC- DVB», apartado 32).
El uso como indicación geográfica protegida (IGP) o denominación de origen protegida (DOP). La función esencial de las IGP y DOP es indicar que los productos proceden de una región o localidad determinadas, a diferencia de la función principal de las marcas, que es indicar el origen comercial. Cuando una IGP o DOP ha sido registrada como una marca individual (y no, por ejemplo, como una marca colectiva), el oponente tiene que presentar prueba de uso como marca individual. La prueba de uso como IGP o DOP (por ejemplo, declaraciones generales de Consejos Reguladores) no pueden servir para demostrar el uso como marca individual. Si la IGP o DOP está registrada como marca colectiva, debe presentarse prueba de uso para demostrar que se usa de acuerdo con la función fundamental de las marcas colectivas, a saber, para distinguir los productos o servicios de los miembros de la asociación titular de la marca de los de otras empresas (véase la resolución de 23 de noviembre de 2011, en el asunto R 1497/2010-2, «YECLA», apartados 34 y 45).
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El uso de un signo como nombre de empresa o nombre comercial porque la finalidad de la denominación social, nombre comercial o rótulo de establecimiento no distingue, por sí mismo, los productos o servicios. Por tanto, el uso de una denominación social es identificar una sociedad, mientras que el uso de un nombre comercial o de un rótulo de establecimiento es identificar una sociedad o designar un establecimiento. Por tanto, cuando el uso de una denominación social, de un nombre comercial o de un rótulo de establecimiento identifica una sociedad o designa un establecimiento mercantil no puede considerarse que existe «para productos o servicios» (sentencia de 11 de septiembre de 2007, en el asunto C-17/06, «Céline», apartado 21; sentencia de 13 de mayo de 2009, en el asunto T-183/08, «Jello Schuhpark II», apartados 31 y 32).
El uso de una denominación social o de un nombre comercial puede considerarse como uso «para productos» cuando:
una parte coloca el signo constitutivo de su denominación social, su nombre comercial o su rótulo de establecimiento en los productos o,
incluso a falta de colocación del signo, dicha parte utiliza el citado signo de manera que se establezca un vínculo entre la denominación social, el nombre comercial y los productos o servicios (sentencia de 11 de septiembre de 2007, en el asunto C-17/06, «Céline», apartados 21 a 23).
Siempre que se cumpla cualquiera de estas dos condiciones, el hecho de que la denominación social de una empresa utilice un elemento denominativo no excluye su uso como marca para designar productos o servicios (sentencia de 30 de noviembre de 2009, en el asunto T-353/07, «Coloris»", apartado 38).
Según las circunstancias, podrá admitirse para justificar el uso efectivo de la marca registrada lo siguiente:
La aparición del nombre de empresa en el membrete de las hojas de pedido o de las facturas dependiendo de la forma en que el signo figure en ellas. Sin embargo, no basta el mero uso del nombre de la empresa en el membrete de las facturas sin una referencia clara a productos o servicios específicos.
El uso de un signo como nombre de dominio o como parte de un nombre de dominio en primer lugar identifica al titular del sitio (p. ej., www.trademark.com). No obstante, dependiendo de las circunstancias, dicho uso puede constituir también un uso como marca registrada (lo que presupone que conecta con un sitio en el que aparecen los productos y servicios protegidos por tal marca).
2.3.3. Uso público en el tráfico económico
2.3.3.1. Uso público frente a uso interno
El uso ha de ser público, es decir, debe ser externo y manifiesto para los consumidores reales o potenciales de los productos y servicios. El uso en el ámbito privado o limitado al interior de una empresa o grupo de empresas no constituye un uso efectivo (sentencia de 9 de diciembre de 2008, en el asunto C-442/07, «Verein
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Radetzky-Orden», apartado 22; sentencia de 11 de marzo de 2003, en el asunto C-40/01, «Minimax», apartado 37).
La marca debe ser utilizada públicamente y con relevancia exterior en el contexto de una actividad comercial para abrir en el mercado un hueco a los productos o los servicios que representa (sentencia de 12 de marzo de 2003, en el asunto T-174/01, «Silk Cocoon», apartado 39, sentencia de 30 de abril de 2008, en el asunto T-131/06, «SONIA SONIA RYKIEL», apartado 38). El término relevancia exterior no implica necesariamente un uso destinado a los consumidores finales, ya que la prueba correspondiente puede proceder de un intermediario, cuya actividad consista en identificar compradores profesionales, como empresas de distribución, a las que el intermediario vende productos fabricados por los productores originales (sentencia del 21 de noviembre de 2013, en el asunto T-524/12, «RECARO», apartados 25 y 26).
Las pruebas pertinentes también pueden proceder válidamente de una empresa de distribución que forme parte de un grupo. La distribución es un método de organización empresarial habitual en el tráfico económico y que implica el uso de una marca que no puede considerarse un uso puramente interno por un grupo de empresas, ya que la marca también se utiliza de manera pública y hacia el exterior (sentencia de 17 de febrero de 2011, en el asunto T-324/09, «Friboi», apartado 32).
El uso de la marca debe referirse a productos y servicios que ya se comercialicen o cuya comercialización, preparada por la empresa para captar clientela sea inminente. La mera preparación para el uso de la marca – como la impresión de etiquetas, la elaboración de recipientes, etc. – constituye un uso interior y, por lo tanto, no es un uso en el tráfico económico a estos efectos (sentencia de 11 de marzo de 2003, en el asunto C-40/01, «Minimax», apartado 37).
2.3.3.2. Actividad comercial frente a actividad de promoción
Cuando la marca esté protegida para los productos y servicios de una empresa sin ánimo de lucro y haya sido objeto de uso, el hecho de que el beneficio no constituya el motivo del uso carece de importancia: «El hecho de que una asociación caritativa carezca de ánimo de lucro no excluye que puede tener el objetivo de crear y, en consecuencia, conservar un mercado para sus productos o sus servicios» (sentencia de 9 de diciembre de , en el asunto C-442/07, «Verein Radetzky-Orden», apartado 17).
Los productos y servicios ofrecidos de forma gratuita pueden constituir un uso efectivo cuando se ofrecen de forma comercial, es decir, con el objetivo de crear o mantener un mercado para dichos productos o servicios en la UE, en contraposición a los productos o servicios de otras empresas, y por lo tanto, que compiten con ellos (sentencia de 9 de septiembre de 2011, en el asunto T-289/09, «Omnicare Clinical Research», apartados 67 y 68).
El mero uso de la marca en material destinado a la promoción de otros productos no puede considerarse una prueba (indirecta) suficiente del uso, de conformidad con la legislación sobre marcas, para el tipo de artículos promocionales en los que se usa o se ha usado la marca. Por ejemplo, regalar prendas de vestir tales como camisetas o gorras de béisbol en eventos promocionales con el fin de estimular las ventas de un determinado producto, como, por ejemplo, una bebida, no puede considerarse un uso efectivo de la marca de ropa en cuestión.
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El Tribunal ha confirmado la práctica de la Oficina sobre el «uso efectivo» en relación con los artículos promocionales:
Signo anterior Asunto
WELLNESS C-495/07(carácter prejudicial)
El oponente era titular de la marca «WELLNESS» de las clases 25 y 32. Con ocasión de la comercialización de prendas de vestir, también utilizó la marca para designar una bebida no alcohólica que regalaba a quienes adquirían las prendas de vestir. No se utilizó la marca «WELLNESS» para bebidas vendidas de forma separada.
El Tribunal consideró que, cuando los objetos publicitarios se distribuyen para recompensar la compra de otros productos y para promover la venta de éstos, la marca pierde su razón de ser comercial para los productos promocionales y no pueden considerarse efectivamente utilizados en el mercado de los productos de esa clase (apartado 22).
2.3.4. Uso en relación con los productos o servicios
2.3.4.1. Uso en relación con los productos
Las marcas se han utilizado tradicionalmente sobre los productos (impresos sobre los productos, en las etiquetas, etc.) o sus embalajes. No obstante, demostrar el uso sobre los productos o sus envases no es el único modo de demostrar el uso relativo a los productos. Es suficiente, si existe una conexión adecuada entre las marcas y los productos, que la marca se utilice «en relación con» los productos y servicios, como, por ejemplo, en folletos, prospectos, pegatinas, signos en el interior de establecimientos de venta, etc.
Signo anterior Asunto
Schuhpark T-183/08
El TG consideró que el uso del signo «Schuhpark» para calzado en anuncios, bolsos y facturas no identificaba el origen de los zapatos (que llevaban su propia marca o no llevaban ninguna marca) sino la denominación social o el nombre comercial del comerciante al menor de zapatos. Esto fue considerado insuficiente para establecer un vínculo entre el signo «Schuhpark» y los zapatos. Dicho de otro modo, «Schuhpark» bien puede ser una marca para la venta al por menor de zapatos, pero no se utilizó como marca para productos (apartados 31 y 32).
En caso de que el oponente venda los productos exclusivamente por catálogo (venta por correo) o a través de Internet, puede darse el caso de que la marca no siempre figure también sobre el embalaje o sobre los propios productos. En general, en tales casos el uso en las páginas (de Internet) en las que se presentan los productos se considerará suficiente, siempre que sea de otro modo efectivo en términos de tiempo, lugar, alcance y naturaleza (véase el punto 2.3.4.4.). El titular de la marca no tendrá que presentar la prueba de que la marca aparecía realmente sobre los propios productos.
Únicamente en circunstancias extraordinarias, los catálogos pueden constituir por sí mismos una prueba concluyente de un alcance del uso nada despreciable:
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Signo anterior Asunto
PETER STORM T-30/09
El TG aceptó que los catálogos pudiesen justificar el alcance del uso de una marca en circunstancias en que «se ha propuesto en los catálogos un gran número de artículos designados por la marca PETER STORM y que esos artículos estaban disponibles en más de 240 tiendas del Reino Unido durante buena parte del período pertinente. Esos elementos permiten […] inferir que ese uso fue de cierta importancia». (apartado 43; véanse asimismo los apartados 38 a 45)
Signo anterior Asunto
CATAMARAN R 0566/2010-2
La Sala de Recurso concluyó que, a pesar del hecho de que las pruebas no incluían facturas, los catálogos de ventas (primavera/verano 2001 a otoño/invierno 2006), junto con las distintas muestras de prendas de vestir y la declaración jurada (de las cifras de ventas) representaron prueba suficiente del alcance del uso de las marcas anteriores (apartados 31 y 32).
2.3.4.2. Uso en relación con los servicios
Las marcas no pueden utilizarse directamente «sobre» los servicios. En consecuencia, el uso de las marcas registradas de servicios se llevará a cabo en documentos mercantiles, en la publicidad, o en cualquier otro modo directa o indirectamente relacionado con los servicios. Cuando el uso en los citados elementos demuestre un uso efectivo, tal uso se considerará suficiente.
Signo anterior Asunto
STRATEGIES T-92/09
Cuando una marca anterior se registra respecto de servicios «de gestión de empresas» y se utiliza como título de revistas de negocios, el TG no excluye que dicho uso pueda ser considerado efectivo respecto de los servicios de que se trate. Este puede ser el caso si se demuestra que la revista presta apoyo a la prestación de servicios de «gestión de empresas», es decir, si dichos servicios se prestan por medio de una revista. El hecho de que no exista un «vínculo bilateral directo» entre el editor y el beneficiario de los servicios no impide que se aprecie un uso efectivo, porque la revista no se distribuye de forma gratuita, lo que puede hacer creíble la reivindicación de que el pago del precio de la revista constituye la remuneración del servicio prestado.
2.3.4.3. Uso en la publicidad
Las marcas cumplen su función de indicador del origen comercial de los productos y servicios y de símbolos de la buena fe de su titular no solo cuando se usan efectivamente sobre los productos y servicios o en relación con ellos, sino también cuando se utilizan en la publicidad. De hecho, la función publicitaria o de comunicación al mercado de las marcas es una de las más importantes.
En consecuencia, en general, el uso en la publicidad será considerado un uso efectivo siempre que:
el volumen de la publicidad sea suficiente para constituir un uso público efectivo de la marca y
pueda establecerse una relación entre la marca y los productos y servicios para los cuales ha sido registrada.
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El Tribunal confirmó este planteamiento en su sentencia «Minimax», en la que estimó que el uso de la marca debe referirse a productos y servicios que ya se comercialicen o cuya comercialización, preparada por la empresa para captar clientela, en particular, mediante campañas publicitarias, sea inminente (sentencia de 11 de marzo de 2003, en el asunto C-40/01, «Minimax», apartado 37).
No obstante, el resultado en un asunto en particular dependerá en gran medida de las circunstancias concretas. En este sentido, es especialmente importante que las pruebas presentadas también aporten una indicación clara de la magnitud del uso de la marca (volumen y periodo de distribución del material publicitario):
Signo anterior Asunto
BLUME R 0681/2001-1
Servicios: servicios de una empresa de publicidad de la clase 41.
La Sala de Recurso confirmó que las pruebas (que incluían catálogos, notas de prensa y anuncios) leídas en su conjunto eran suficientes para demostrar un uso efectivo de la marca.
«Aunque el registro de pedidos y el extracto de la cuenta bancaria no ofrecían información sobre cómo y en qué medida la marca se utilizó en España, el resto de documentos, a saber, los catálogos, notas de prensa y anuncios, leídos conjuntamente, demuestran que durante el periodo pertinente, el oponente ha publicado en España libros y revistas con la marca BLUME. Incluso si el oponente no aporta facturas, pedidos o datos de ventas, hay motivos para presumir que publicó, promocionó y vendió sus libros y revistas al amparo de la marca BLUME. Aunque el oponente identificó y fechó documentos de publicidad y notas de prensa, siempre se menciona la nota en cuestión en las notas de prensa y en la portada de los citados libros. Además, el texto está en español y el precio se menciona en pesetas. Cuando se leen junto con los catálogos, estas notas de prensa demuestran que se refieren a algunos de los libros que se mencionan en los catálogos.» (apartado 23)
Signo anterior Asunto
BIODANZA R 1149/2009-2(confirmada por la sentencia T-298/10)
Productos y servicios: clases 16 y 41.
La Sala de Recurso desestimó la conclusión de la División de Oposición de que las pruebas (solo los anuncios) demostraban un uso efectivo.
Del fallo de la decisión impugnada resulta claramente que las pruebas de uso presentadas por el oponente consisten únicamente en anuncios, lo que solo demuestra que el oponente anunció un festival anual «BIODANZA» durante todo el periodo pertinente y talleres organizados de forma periódica o no periódica desde 2002.
Sin embargo, en contra de lo que concluye la decisión impugnada, dichos anuncios no pueden proporcionar pruebas de su distribución entre sus posibles clientes en Alemania, ni demuestran el alcance de la distribución o el número de ventas o contratos realizados para los servicios protegidos por la marca. La mera existencia de los anuncios, por sí sola, podría, a lo sumo, convertir en probable o creíble el hecho de que se hubieran comercializado o, al menos, ofrecido en el territorio relevante servicios protegidos por la marca anterior, pero no constituye una prueba de ello, tal como supuso indebidamente la decisión impugnada.
En los casos en que la publicidad se realiza de forma simultánea a la comercialización de los productos y servicios y existen pruebas tanto de ambas actividades, la primera abogará en favor del carácter efectivo del uso.
La publicidad previa a la comercialización real de los productos y servicios, siempre que tenga por objeto crear un mercado para los productos y servicios, se considerará generalmente un uso efectivo.
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La cuestión de saber si la publicidad desprovista de todo plan presente o futuro de comercializar realmente los productos y servicios constituye un uso efectivo parece dudosa. Como en muchas otras situaciones, el resultado dependerá de las circunstancias del caso. Por ejemplo, si los productos o servicios están disponibles en el extranjero, como alojamiento para vacaciones o productos especiales, la publicidad por sí sola puede bastar para constituir un uso efectivo.
2.3.4.4 Uso en Internet
La norma que se aplica a la hora de evaluar las pruebas en forma de impresiones de Internet no es más estricta que cuando se evalúan otros medios de prueba. Por consiguiente, la presencia de la marca en sitios web puede mostrar, en particular, la naturaleza de su uso o el hecho de que los productos o servicios que llevan la marca se han ofrecido al público. Sin embargo, la mera presencia de una marca en una página web no es, por sí misma, suficiente para demostrar el uso efectivo salvo si dicha página muestra también el lugar, tiempo, alcance del uso o excepto si esta información se ofrece de otro modo.
Signo anterior Asunto
SHARP R 1809/2010-4
El oponente presentó «extractos de las páginas web del oponente en diferentes países». La Sala de Recurso consideró que «las simples impresiones de la propia página de Internet de una empresa no demuestran el uso de una marca para determinados productos sin información complementaria relativa al uso real del sitio de Internet por parte de los consumidores potenciales y pertinentes o de la publicidad complementaria y cifras de ventas relativas a los distintos productos, fotografías de los productos con la correspondiente marca, etc.». (apartado 33)
Signo anterior Asunto
WALZERTRAUM T-355/09 (recurso pendiente C-141/13 P)
El oponente, una panadería, que es titular de la marca alemana «WALZERTRAUM» para los productos de la clase 30, a fin de demostrar el alcance de uso de su marca, presentó pruebas relativas a un folleto publicitario publicado en Internet que proporciona información general sobre sus métodos de trabajo, los ingredientes utilizados en sus productos y la gama de productos, incluido su chocolate «WALZERTRAUM». No obstante, la página web no permitía realizar pedidos en línea de los productos. Por este motivo, el TG consideró que no podía establecerse un vínculo entre el sitio web y el número de productos vendidos (apartado 47).
En concreto, el valor como pruebas de los extractos de Internet puede reforzarse presentando pruebas de que un determinado número de clientes han visitado la página web específica y, en particular, de que se han cursado pedidos para los productos y servicios durante el periodo de referencia. Por ejemplo, una prueba útil en este sentido pueden ser los registros que normalmente se conservan cuando se explota una página web, por ejemplo, registros relacionados con las respuestas obtenidas en distintos momentos o, en algunos casos, los países desde los que se accede a la página web.
Por lo que al periodo de referencia se refiere, la información de Internet o de las bases de datos en línea se considera publicada en la fecha en que se publicó la información. Las páginas web suelen incluir información muy relevante. Determinada información incluso únicamente puede estar disponible en Internet en dichas páginas web. Esto incluye, por ejemplo, los catálogos en línea que no están disponibles en formato impreso.
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La naturaleza de Internet puede dificultar la determinación de la fecha real en que la información fue, en realidad, puesta a disposición del público. Por ejemplo, no todas las páginas web incluyen una mención sobre el momento en que fueron publicadas. Además, las páginas web se actualizan fácilmente, aunque la mayoría no ofrecen ningún archivo del material que mostraban anteriormente, ni de los registros de datos que permitan a los miembros del público establecer de forma precisa en qué momento se publicó cada dato.
En este contexto, la fecha del uso en Internet se considerará fiable en particular cuando:
la página web impone marcas de tiempo para cada entrada, proporcionando de este modo información relativa al historial de modificaciones que se realizan sobre un archivo o una página web (por ejemplo, tal como está disponible en Wikipedia o se adjunta de forma automática al contenido, p.ej. en los mensajes en foros y en blogs); o
los motores de búsqueda indican fechas de indexación en la página web (p.ej., de la memoria caché de Google®); o
las capturas de pantallas de la página web llevan una fecha determinada.
Las pruebas presentadas han de acreditar que las transacciones en línea estaban relacionadas con los productos y servicios designados por la marca.
Signo anterior Asunto
ANTAX T-387/10
El oponente ha presentado, entre otros, los extractos de Internet de las páginas de inicio de varias asesorías fiscales utilizando la marca del oponente. El TG consideró que las indicaciones en las páginas de Internet permitían al lector establecer un vínculo entre la marca y los servicios prestados (apartados 39 y 40).
Mientras que la naturaleza de la marca y, hasta cierto punto, el tiempo (tal como se ha visto antes) y el lugar son los elementos menos complejos de acreditar, el alcance del uso presenta más dificultades si solo se cuenta con las pruebas de Internet. Se debe tener en cuenta que las transacciones en Internet tienden a eliminar la mayor parte de las pruebas de venta «tradicionales» como las facturas, el volumen de negocio, los documentos fiscales, etc. Nuevas pruebas «electrónicas» tienden a reemplazarlas, o lo han hecho ya, como medios de pago certificados, pedidos y sus confirmaciones, registros de transacciones seguras, etc.
Signo anterior Asunto
Skunk funk (fig.) R 1464/2010-2
«Los extractos de las páginas web de terceros, aunque se imprimieron el 10 de junio de 2008, incluyen comentarios de los consumidores sobre la ropa y las tiendas “SKUNKFUNK” con fecha del periodo de referencia. En concreto, por lo que al territorio de referencia se refiere, los documentos muestran varios comentarios realizados por los consumidores de España y con fecha de diciembre de 2004 y los meses de febrero, marzo, abril, mayo y julio de 2007. Asimismo, como la División de Oposición ha señalado, un comentario en un blog (del 4 de marzo de 2007) en la página de Internet www.cybereuskadi.com menciona que el oponente ("diseñador de Skunkfunk") “exporta ropa para surf en todo el mundo y tiene un volumen de negocios de casi 7 millones de euros al año"». (apartado 21).
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2.4. Lugar del uso
2.4.1. Uso en el mercado «nacional»
Las marcas han de utilizarse en el territorio en el que gozan de protección (la Unión Europea para las marcas comunitarias, el territorio del Estado miembro en el caso de las marcas nacionales o el Benelux para las marcas del Benelux y los territorios de los países pertinentes para los registros internacionales).
Como el Tribunal estimó en el asunto «Leno Merken», «la extensión territorial del uso es sólo uno de los factores, entre otros, que deben ser tenidos en cuenta para determinar si tal uso es efectivo o no» (sentencia de 19 de diciembre de 2012, en el asunto C-149/11, «Leno Merken», apartado 30). El Tribunal indicó asimismo que el uso de la marca en los territorios de fuera de la UE no puede tenerse en cuenta (apartado 38).
En vista de la globalización del comercio, una indicación del domicilio social del titular de la marca puede considerarse una indicación insuficiente de que el uso ha tenido lugar en ese país en particular. Si bien el artículo 15, apartado 1, letra b), del RMC establece que la fijación de la marca sobre los productos o sobre su presentación en la Unión Europea solo con fines de exportación tiene la consideración de uso de la marca, la mera indicación de la sede del oponente por sí sola no constituye una prueba de tales actos. Por otro lado, el hecho de que los clientes que tienen su sede fuera del territorio de referencia estén incluidos en las listas de los documentos que demuestran el uso de la marca anterior no es, en sí mismo, suficiente para concluir que dichos servicios (p. ej., los servicios de promoción) puedan prestarse, de hecho, en el territorio de referencia en beneficio de las empresas ubicadas en dichos territorios (resolución de 9 de junio de 2010, R 0952/2009-1, «Global Tabacos», apartado 16).
2.4.2. Marcas comunitarias: uso en la Unión Europea
En caso de que la marca anterior sea una marca comunitaria, ésta ha de utilizarse en la «Comunidad» (artículo 15, apartado 1, y artículo 42, apartado 2, del RMC). Desde la sentencia «Leno Merken», el artículo 15, apartado 1, del RMC debe interpretarse en el sentido que las fronteras territoriales de los Estados miembros no deben ser tenidas en cuenta al evaluar si una marca comunitaria ha tenido un «uso efectivo» en la Comunidad (apartado 44).
En términos territoriales, y en vista del carácter unitario de la marca comunitaria, el enfoque adecuado no es el que toma en consideración las fronteras políticas, sino las de los mercados. Además, uno de los fines perseguidos por el sistema de la marca comunitaria es el estar abierto a todo tipo de empresas. Por tanto, el tamaño de la empresa no es un factor relevante para establecer un uso específico.
Como el Tribunal indicó en la sentencia «Leno Merken», es imposible determinar a priori de un modo abstracto qué ámbito territorial debe aplicarse para dilucidar si el uso de dicha marca tiene o no carácter efectivo (apartado 55). Debe tenerse en cuenta el conjunto de hechos y circunstancias pertinentes, tales como, entre otros, las características del mercado de referencia, la naturaleza de los productos o de los
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servicios amparados por la marca, el ámbito territorial del uso y su extensión cuantitativa, así como su frecuencia y regularidad (apartado 58).
La Oficina debe determinar caso a caso si pueden combinarse las diversas indicaciones y pruebas a efectos de evaluar el carácter efectivo del uso, cuya dimensión geográfica es solo uno de los aspectos que deben considerarse.
En cualquier caso, es necesario subrayar que se deben aplicar los criterios o normas europeos relativos al uso efectivo (es decir, los requisitos del artículo 15, del RMC) y no normas o prácticas nacionales aplicadas a las marcas comunitarias.
2.4.3. Marcas nacionales: uso en el Estado miembro de referencia
En caso de que la marca anterior sea una marca nacional con efecto en uno de los Estados miembros de la Unión Europea, la marca debe haber sido objeto de un uso efectivo en el Estado miembro en el que esté protegida (artículo 42, apartado 3, del RMC). El uso en una parte del Estado miembro se considerará suficiente, siempre que sea efectivo.
Asunto Marca anterior Observación
C-416/04 P VITAFRUT
El uso se consideró suficiente, aun cuando la marca española anterior no estaba presente en una parte sustancial del territorio español, dado que las pruebas hacían referencia a la venta de productos de consumo corrientes (zumos concentrados de frutas) a un solo cliente en España (apartados 60, 66 y 76).
2.4.4. Uso con fines de importación y exportación
A tenor del artículo 15, apartado 1, letra b), del RMC, la fijación de la marca comunitaria sobre los productos o sobre su presentación en la Comunidad solo con fines de exportación también tiene la consideración de uso a efectos del artículo 15, apartado 1, del RMC.
Asunto Marca anterior Observación
T-34/12 Herba Shine El Tribunal dictaminó que la Sala de Recurso debería haber explicado la razón por la que había desestimado las pruebas de venta fuera del territorio pertinente (facturas de clientes establecidos fuera de la UE). De hecho, estas ventas fuera de la UE no pueden desestimarse simplemente tan solo por ese motivo (apartados 48, 49 y 54).
R 0602/2009-2 RED BARON
La Sala de Recurso indicó que las ventas en Austria y Gran Bretaña procedentes de los Países Bajos también constituían un uso efectivo en el sentido del artículo 15, apartado 1, letra b), del RMC (apartado 42).
La marca debe utilizarse (y figurar en los productos o en su embalaje) en el mercado de referencia, es decir, la zona geográfica en la que está registrada. Las pruebas que solo hacen referencia a la importación de las mercancías en la zona de referencia podrán ser suficiente, en función de las circunstancias del caso, como prueba en este ámbito (véase por analogía la sentencia de 9 de julio de 2010, en el asunto T-430/08,
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«Grain Millers», apartados 33, 40 y ss. en relación con la prueba de uso en el tráfico económico de un signo basada en las importaciones de Rumanía a Alemania).
El Tribunal ha considerado que un tránsito, consistente en transportar mercancías legalmente fabricadas en un Estado miembro a un tercer Estado atravesando el territorio de uno o de varios Estados miembros, no implica en modo alguno la comercialización de las mercancías de que se trata y, por consiguiente, no hay posibilidad de que atente contra el objeto específico del derecho de marca (en relación con el tránsito a través de Francia de mercancías que proceden de España y cuyo destino es Polonia, véase la sentencia de 23 de octubre de2003, en el asunto C-115/02, «Rioglass and Transremar», apartado 27 y la sentencia de 9 de noviembre de 2006, en el asunto C-281/05, «Diesel», apartado 19). Por lo tanto, el mero tránsito a través de un Estado miembro no constituye un uso efectivo de la marca anterior en dicho territorio.
2.5. Periodo del uso
2.5.1. Marca anterior registrada desde al menos cinco años antes
Según lo dispuesto en el artículo 42, apartado 2, del RMC la obligación de probar el uso exige que, en la fecha de publicación de la solicitud de marca comunitaria, la marca registrada anterior haya estado registrada por un periodo no inferior a cinco años.
Para las oposiciones presentadas contra registros internacionales que designan a la UE, la marca del oponente debe cumplir la obligación del uso si, al inicio del periodo de oposición, a saber, seis meses antes de la fecha de la primera nueva publicación del registro internacional, ha estado registrada durante al menos cinco años antes.
2.5.1.1. Marcas comunitarias
Según lo dispuesto en el artículo 15 y en el artículo 42, apartado 2, del RMC, la fecha decisiva para establecer si una marca registrada ha estado registrada por un periodo no inferior a cinco años en la fecha de publicación de la solicitud impugnada, es la fecha de registro de la marca comunitaria anterior. Si han transcurrido más de cinco años entre la fecha de registro de la marca comunitaria anterior y la fecha de publicación de la solicitud de la marca comunitaria (o en el caso de que se impugne un registro internacional, seis meses tras la fecha de la primera nueva publicación de dicho registro), el solicitante (o en el caso de un registro internacional impugnado, el titular) tiene derecho a exigir la prueba de uso.
2.5.1.2. Marcas nacionales
Por lo que respecta a las marcas nacionales, es preciso determinar la fecha equivalente a la fecha de registro de las marcas comunitarias. Al interpretar este término, procede tener en cuenta que existen sistemas de marca nacionales que cuentan con un procedimiento de oposición con posterioridad al registro.
En vista de la existencia de procedimientos nacionales diferentes, el artículo 10, apartado 1, de la Directiva (disposición equivalente al artículo 42, del RMC,) se refiere, en lo que respecta al uso de las marcas nacionales, a un periodo de «cinco años contados a partir de la fecha en que haya concluido el procedimiento de registro».
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La fecha en que se haya concluido el procedimiento de registro (artículo 10, apartado 1, de la Directiva 2008/95/CE) que sirve para calcular el punto de partida de la obligación de uso para el registro nacional e internacional (artículo 42, apartados 2 y 3, del RMC), la determina cada Estado miembro en función de sus propias normas procesales (sentencia de 14 de junio de 2007, en el asunto C-246/05, «Le Chef de Cuisine», apartados 26 a 28).
No cabe esperar que el titular de la marca realice el uso efectivo de la marca pese a la existencia de un procedimiento de examen o de oposición en curso, antes del periodo de gracia de cinco años mencionado. Esta interpretación es acorde con el enfoque expuesto en relación con las marcas comunitarias anteriores, habida cuenta de que la fecha de registro de una marca comunitaria, mencionada en el artículo 42, apartado 2, del RMC como fecha decisiva para el comienzo del periodo de gracia, es siempre la fecha en que concluye el procedimiento de registro. Por lo demás, esta interpretación concilia el requisito del uso establecido por el RMC con las legislaciones nacionales aplicables (resolución de 6 de mayo de 2004, R 0463/2003-1, «Wrap House», apartado 19; resolución de 18 de junio de 2010, R 0236/2008-4, «RENO»).
La conclusión del procedimiento de registro se produce tras un procedimiento de oposición previo al registro o, en algunos Estados miembros, incluso después de la conclusión de un procedimiento de oposición posterior al registro. El capítulo 12, página 169, de la publicación «Derecho nacional y marca comunitaria» de la OAMI recoge las fechas exactas pertinentes: http://oami.europa.eu/en/office/diff/pdf/National_law.pdf.
La Oficina no investiga de oficio la fecha real de la conclusión del procedimiento de registro. A falta de pruebas que demuestren lo contrario, la Oficina presupone que el procedimiento de registro concluye en la fecha que se indica como fecha de registro en las pruebas presentadas. El oponente debe rebatir esta suposición aportando pruebas sobre la fecha exacta de conclusión del procedimiento de registro.
2.5.1.3. Registros internacionales que designan a un Estado miembro
A tenor del artículo 5, apartado 2, letras a) y b) del Protocolo de Madrid, las oficinas designadas disponen de un plazo de doce meses a partir de la fecha de la notificación de la designación para notificar denegaciones provisionales.
En el supuesto de que no se haya designado a un Estado miembro en la solicitud internacional, sino en una designación posterior, este plazo de 12 o de 18 meses comenzará a partir de la fecha en la que la designación fue notificada a la oficina designada.
Los Estados miembros que utilizan un plazo de 12 meses para notificar una denegación provisional con arreglo al Protocolo cuando actúan como parte designada son: Benelux, República Checa, Alemania, España, Francia, Letonia, Hungría, Austria, Portugal, Rumanía y Eslovenia.
Los Estados miembros que han optado por un plazo de 18 meses para notificar una denegación provisional con arreglo al Protocolo cuando actúan como parte designada son: Dinamarca, Estonia, Irlanda, Grecia, Lituania, Finlandia, Suecia y el Reino Unido.
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El plazo aplicable (12 ó 18 meses) para Bulgaria, Italia, Chipre, Polonia y Eslovaquia, cuando actúan como una parte designada depende de si (i) dicho país ha sido designado o posteriormente designado antes o después del 1.9.2008 y si (ii) la Oficina de origen está vinculada tanto por el Arreglo como por el Protocolo (plazo: 12 meses) o solo por el Protocolo (plazo: 18 meses).
Véase la siguiente tabla de resumen:
País designado1 País de origen Plazo para notificar una denegación
Benelux, República Checa, Alemania, España, Francia, Letonia, Hungría, Austria, Portugal, Rumanía y Eslovenia
(partes contratantes de la UE vinculadas tanto por el Arreglo como por el Protocolo)
Todas las partes contratantes
[Situación al 15.1.2013: 89 Estados miembros]2 (con independencia de si están vinculados tanto por el Arreglo como por el Protocolo o solo por este último)
12 meses
Dinamarca, Estonia, Irlanda, Grecia, Lituania, Finlandia, Suecia y el Reino Unido (partes contratantes de la UE vinculadas solo por el Protocolo)
Todas las partes contratantes [Situación al 15.1.2013: 89 Estados miembros] (con independencia de si están vinculados tanto por el Arreglo como por el Protocolo o solo por este último)
18 meses
Bulgaria, Italia, Chipre, Polonia, Eslovaquia; si han sido designadas o posteriormente designadas antes del
1.9.20083
(partes contratantes de la UE vinculadas tanto por el Arreglo como por el Protocolo que han optado por un plazo ampliado)
Todas las partes contratantes
[Situación al 15.1.2013: 89 Estados miembros] (con independencia de si están vinculados tanto por el Arreglo como por el Protocolo o solo por este último)
18 meses
Bulgaria, Italia, Chipre, Polonia, Eslovaquia; si han sido designadas o posteriormente designadas el 1.9.2008 o después (partes contratantes de la UE vinculadas tanto por el Arreglo como por el Protocolo que han optado por un plazo ampliado)
Partes contratantes de la UE vinculadas tanto por el Arreglo como por el Protocolo
[Situación al 15.1.2013: 55 Estados miembros]
12 meses
Partes contratantes vinculadas solo por el Protocolo [Situación al 15.1.2013: 33 Estados miembros]
18 meses
La Oficina aplicará de oficio el plazo de 12 meses o de 18 meses en función de las normas citadas. Los plazos se calculan añadiendo los plazos pertinentes a la fecha de notificación desde que comienza el plazo para notificar la denegación, indicado por el código INID 580 del extracto de la base ROMARIN (p. ej., no la fecha del registro internacional o una designación posterior) (regla 18, apartado 1, letra a), inciso iii) y la regla 18, apartado 2, letra a), del Reglamento común).
Solo cuando sea decisivo para determinar si la marca anterior está sujeta a la obligación de prueba de uso concernirá al oponente reivindicar una fecha que sea
1 Malta no forma parte del Sistema de Madrid. 2 Para obtener la lista completa de todos los Estados miembros del Arreglo de Madrid y del Protocolo de Madrid, véase el documento: https://www.wipo.int/export/sites/www/treaties/es/documents/pdf/madrid_marks.pdf 3 La fecha de entrada en vigor del artículo 9 sexies, apartado 1, letra b) del Protocolo, que deja sin efectos cualquier declaración con arreglo al artículo 5, apartado 2, letras b) y c) del Protocolo (ampliación del plazo de notificación de una denegación provisional) entre las partes contratantes vinculadas tanto por el Arreglo como por el Protocolo.
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posterior (p. ej. cuando se haya levantado una denegación provisional después de estas fechas o si el país designado optó por un periodo incluso superior a 18 meses para notificar una denegación basada en una oposición, con arreglo al artículo 5, apartado 2, letra c), del Protocolo), y al solicitante o titular reivindicar una fecha que sea anterior a dichas fechas (p. ej., cuando se haya emitido una declaración de concesión de protección con anterioridad a estas fechas) y facilitar a la Oficina una documentación concluyente.
En particular, el Tribunal ha confirmado, respecto de un registro internacional anterior que designa a Alemania, que la fecha en que se considerará «registrado» un registro internacional anterior deberá establecerse con arreglo a la legislación alemana, haciendo así que el anterior derecho surta efectos, en lugar de hacer referencia a la fecha de inscripción en el registro de la Oficina Internacional de la OMPI. Según la legislación alemana sobre marcas, si se deniega provisionalmente la protección a una marca comunitaria registrada internacionalmente, pero luego se concede dicha protección, se considerará que la inscripción tiene lugar en la fecha en que la Oficina Internacional de la OMPI recibe la notificación final de concesión de dicha protección. La adecuada aplicación del artículo 42, apartados 2 y 3, del RMC y del artículo 4, apartado 1, del Arreglo de Madrid no puede dar lugar a un incumplimiento del principio de no discriminación (auto de 16 de septiembre de 2010, en el asunto C-559/08 P, «Atoz», apartados 44, 53 a 56).
2.5.1.4. Registros internacionales que designan a la Unión Europea
Para los registros internacionales que designan a la Unión Europea, el artículo 160, del RMC establece lo siguiente:
A efectos de la aplicación del artículo 15, apartado 1, del Artículo 42, apartado 2, del artículo 51, apartado 1, letra a), y del Artículo 57, apartado 2, la fecha de publicación a que se refiere el Artículo 152, apartado 2, sustituirá a la fecha de registro con miras al establecimiento de la fecha a partir de la cual la marca objeto de un registro internacional que designe a la Comunidad Europea deba ser puesta genuinamente en uso en la Comunidad.
A partir de dicha publicación, el registro internacional tendrá los mismos efectos que una marca comunitaria registrada, con arreglo al artículo 151, apartado 2, del RMC.
2.5.2. Periodo de referencia
Si la marca anterior se encuentra sujeta al requisito del uso (está registrada desde al menos cinco años), el periodo real en el que se debe demostrar el uso se calcula simplemente de forma retroactiva a partir de la fecha de publicación de la solicitud.
Por ejemplo, si la solicitud de la marca comunitaria impugnada se hubiera publicado el 15 de junio de 2012 y la marca anterior se hubiera registrado el 1 de abril de 2000, el oponente tendría que acreditar el uso efectivo de su marca en el periodo comprendido entre el 15 de junio de 2007 y el 14 de junio de 2012.
Para las oposiciones presentadas contra registros internacionales que designan a la UE, la marca del oponente debe cumplir la obligación del uso si, al inicio del periodo de oposición, a saber seis meses antes de la fecha de la primera nueva publicación
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del registro internacional, ha estado registrada durante al menos cinco años antes. Por ejemplo, si la solicitud del registro internacional impugnado se hubiera publicado el 15 de junio de 2009 y la marca anterior se hubiera registrado el 1 de abril de 1996, el oponente tendría que acreditar el uso efectivo de su marca en el periodo comprendido entre el 15 de diciembre de 2004 y el 14 de diciembre de 2009.
En el supuesto de que no se haya designado a la Unión Europea en la solicitud internacional sino en una designación posterior, el plazo de 18 meses comenzará a partir de la fecha en la que la designación posterior fue notificada a la OAMI. Véase la resolución de 20 de diciembre de 2010, R 0215/2010-4, «Purgator»:
Desde el día de la designación posterior de la Comunidad Europea, los registros internacionales surten los mismos efectos que la solicitud de una marca comunitaria contra la que se puede plantear una oposición. La publicación de la fecha de la posterior designación servirá como publicación de la solicitud de la marca comunitaria (artículo 152, del RMC). En el presente caso, la publicación de la fecha de la posterior designación de la Comunidad Europea se produjo el 8 de octubre de 2007. En dicho momento, las marcas anteriores con fecha de registro de 14 de junio de 2005 todavía no habían sido registradas por un periodo de cinco años y no estaban sujetas a un requisito del uso.
Cualquier uso o falta de uso antes o después de los últimos cinco años carece de relevancia. Las pruebas que se refieren al uso realizado fuera de ese periodo no son relevantes, salvo que demuestren indirectamente de forma concluyente el uso efectivo de la marca también durante el periodo de referencia. El Tribunal afirmó en este contexto que las circunstancias posteriores a la fecha relevante pueden permitir confirmar o apreciar mejor el alcance del uso de la marca durante el periodo relevante y las intenciones reales del titular durante el mismo (auto de 27 de enero de 2004, en el asunto C-259/02, «Laboratoire la mer», apartado 31).
En caso de que una marca no haya sido objeto de un uso efectivo durante más de cinco años antes de la fecha de publicación, el hecho de que pueda mantenerse la buena fe o el conocimiento de la marca en el mercado o entre los clientes no «salva» a ésta.
El uso no se debe haber producido necesariamente durante todo el periodo de cinco años, sino más bien dentro de él. Las disposiciones relativas al requisito del uso no obligan a hacer un uso continuado (sentencia de 16 de diciembre de 2008, en el asunto T-86/07, "«Deitech»", apartado 52).
2.5.3. Resumen
Marca anterior Cálculo del inicio del periodo de cinco años (periodo de gracia)
MC Fecha de registro
Marca nacional Por defecto, la fecha de registro o de conclusión del procedimiento de registro, silo prueba el oponente.
RI que designan a Estados miembros
Por defecto, 12 ó 18 meses después de la fecha de notificación desde que el inicio del plazo de notificación de la denegación (código INID 580). Puede ser anterior o posterior, si lo demuestran las partes.
RI que designa a la UE
Fecha de la segunda nueva publicación de la designación de la UE en la parte M.3. del Boletín.
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Marca impugnada Cálculo del plazo de 5 años para demostrar el uso efectivo de la marca deloponente (plazo de referencia)
Solicitud de MC 5 años a contar desde la fecha de publicación de la solicitud de marcacomunitaria en la parte A del Boletín de marcas comunitarias.
RI que designa a la UE
5 años a contar desde la fecha de nueva publicación del RI (o de la designación posterior de la UE) en la parte M.1. del Boletín de marcas + 6 meses (que se corresponden con el inicio del plazo de oposición. La segunda fecha se publica con arreglo al código INID 441).
2.6. Magnitud del uso
2.6.1. Criterios
Se ha de valorar si, a la vista de la situación del mercado en el sector industrial o comercial considerado, cabe deducir de las pruebas presentadas que el titular ha intentado seriamente alcanzar una posición comercial en el mercado de referencia. La marca debe utilizarse para productos y servicios que ya se comercialicen o cuya comercialización, preparada por la empresa para captar clientela, en particular, mediante campañas publicitarias, sea inminente (sentencia de 11 de marzo de 2003, en el asunto C-40/01, «Minimax, apartado 37). Ello no significa que el oponente haya de revelar el volumen de ventas o las cifras de facturación.
Por lo que respecta a la importancia del uso de la marca anterior, es preciso tener en cuenta, en particular, el volumen comercial del conjunto de los actos de uso, por una parte, y la duración del período durante el cual tienen lugar esos actos, así como su frecuencia, por otra (sentencia de 8 de julio de 2004, en el asunto T-334/01, «Hipoviton», apartado 35).
La apreciación implica una cierta interdependencia entre los factores que se toman en consideración. Así, un reducido volumen de productos protegidos por la marca puede verse compensado por una fuerte intensidad o una gran constancia en el tiempo del uso de tal marca y viceversa (sentencia de 8 de julio de 2004, en el asunto T-203/02, «VITAFRUIT», apartado 42).
En determinadas circunstancias, incluso las pruebas circunstanciales como los catálogos que llevan la marca aunque no ofrecen información directa sobre la cantidad de productos efectivamente vendidos, pueden ser suficientes para demostrar la magnitud del uso en una apreciación global (sentencia de 8 de julio de 2010, en el asunto T-30/09, «peerstorm», apdos. 42 y ss.).
No es necesario que el uso se produzca durante un periodo mínimo para que sea calificado de «efectivo». En concreto, el uso no tiene que ser continuado durante el periodo de cinco años de referencia. Siempre que sea efectivo, puede haber comenzado al principio o al final del periodo (sentencia de 16 de diciembre de 2008, en el asunto T-86/07, «Deitech»).
El umbral exacto que resulta decisivo para acreditar el uso efectivo no puede definirse fuera de contexto. El volumen de negocios y de ventas del producto deben valorarse en relación con otros factores pertinentes, como el volumen de operaciones, la capacidad de producción o de comercialización o el grado de diversificación de la empresa que explota la marca, así como las características de los productos o servicios en el mercado de que se trata. No es necesario que el uso de la marca sea
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siempre importante, desde el punto de vista cuantitativo, para calificarse de efectivo, ya que tal calificación depende de las características del producto o del servicio afectado en el mercado correspondiente (sentencia de 11 de marzo de 2003, en el asunto C-40/01, «Minimax», apartado 39; sentencia de 8 de julio de 2004, en el asunto T-203/02, «Vitafruit», apartado 42).
Un reducido volumen de negocios y de ventas, expresado en términos absolutos, de un producto de precio medio o poco elevado permite determinar la existencia de un uso no efectivo de la marca de que se trata. No obstante, por lo que a los productos caros o un mercado exclusivo se refiere, pueden resultar suficientes unas reducidas cifras de facturación (resolución de 4 de septiembre de 2007, R 0035/2007-2, «Dinky», apartado 22). Por lo tanto, siempre es necesario tomar en consideración las características del mercado de referencia (sentencia de 8 de julio de 2004, en el asunto T-334/01, «Hipoviton», apartado 51).
No cabe establecer una norma de minimis. Igualmente, el uso de la marca por un único cliente, importador de los productos en relación con los cuales se registró aquélla, puede bastar para probar que tal uso es efectivo, si la operación de importación tiene una verdadera justificación comercial para el titular de la marca (auto de 27 de enero de 2004, en el asunto C-259/02, «Laboratoire de la mer», apartados 24 y ss.).
El hecho de que el uso de la marca se haya limitado a un solo cliente carece de relevancia, siempre que tal uso sea público y se haya producido hacia el exterior y no únicamente dentro de la empresa titular de la marca anterior o dentro de la red de distribución poseída o controlada por ésta (sentencia de 8 de julio de 2004, en el asunto T-203/02, «VITAFRUIT», apartado 50).
No obstante, cuanto más limitado es el volumen comercial de la explotación de la marca, más necesario resulta que el oponente aporte nuevas indicaciones que permitan descartar las posibles dudas sobre el carácter efectivo del uso de la marca (sentencia de 8 de julio de 2004, en el asunto T-334/01, «Hipoviton», apartado 37).
En cuanto a la relación entre el volumen de negocio obtenido por las ventas de productos protegidos por la marca anterior y el volumen de negocio anual de la demandante, debe señalarse que el grado de diversificación de las actividades de las empresas que actúan en un mismo mercado varía. Además, la obligación de aportar la prueba de un uso efectivo de una marca anterior no pretende controlar la estrategia comercial de una empresa. No se excluye que esté justificado económica y objetivamente que una empresa comercialice un producto o una gama de productos aun cuando la parte que éstos representan en su volumen de negocio anual sea mínima (sentencia de 8 de julio de .2004, en el asunto T-334/01, «Hipoviton», apartado 49).
Algunas circunstancias especiales, como, por ejemplo, un volumen de negocio menos elevado durante la fase inicial de comercialización de un producto, pueden ser relevantes para la apreciación del carácter efectivo del uso (sentencia de 8 de julio de 2004, en el asunto T-334/01, «Hipoviton», apartado 53).
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2.6.2. Ejemplos de uso insuficiente
Nº de asunto Observación
"«WALZERTRAUM»", apartados 32 y ss. (recurso pendiente C-141/13 P)
El oponente, una panadería alemana ubicada en una ciudad de 18 000 habitantes, demostró unas ventas mensuales constantes de aproximadamente de 3,6 kg de exclusivos bombones artesanales, durante un periodo de 22 meses. Aunque se anunciaban en una página web accesible en todo el mundo, solo se podía realizar un pedido y comprar los bombones en la panadería del oponente. A la vista de los límites territoriales y cuantitativos, el TG consideró que el uso no quedaba suficientemente probado.
Sentencia de 30 de abril de 2008, en el asunto T-131/06, "«SONIA SONIA RYKIEL»".
En un periodo de 13 meses se vendieron 54 unidades de combinaciones y 31 unidades de enaguas por un importe total de 432 euros. El TG consideró que estas modestas cantidades no eran suficientes en relación con el mercado de referencia (productos de consumo corriente, vendidos a un precio muy razonable).
Resolución de 27 de febrero de 2009, R 0249/2008-4 – "«AMAZING ELASTIC PLASTIC II»"
El regalo de 500 conjuntos de globos de plástico como «muestras» gratuitas no puede constituir un uso efectivo.
Resolución de 20 de abril de 2001, R 0378/2000-1 – "«Renacimiento»"
La Sala de Recurso confirmó la resolución de la División de Oposición según la cual la presentación de un conocimiento de embarque que revelaba la entrega de 40 cajas de vino de Jerez era insuficiente para acreditar el uso efectivo.
Resolución de 9 de febrero de 2012, R 0239/2011-1 – "«GOLF WORLD»" (B 1 456 443, Golf World)
Como única prueba de uso como artículo de imprenta, el oponente presentó pruebas que demostraban la existencia de 14 suscriptores de una revista en Suecia. La DO declaró que esto no era suficiente para demostrar el uso efectivo en Suecia, si se tiene en cuenta, en concreto, el hecho de que las revistas no son artículos que tengan un precio elevado.
R 2132/2010-2, – "«SUSURRO»" (fig.)
No se consideraron prueba suficiente del uso efectivo de una marca registrada española de «bebidas alcohólicas (excepto cervezas)» de la clase 33 nueve facturas relativas a la venta de vino en 2005, 2006, 2007 y 2008 que demostraban que durante un periodo de 36 meses se comercializaron productos al amparo de la marca anterior por un valor de 4 286,36 euros, así como una muestra de la etiqueta de producto sin fecha. Las pruebas demostraron que las ventas de vino se habían producido en una parte pequeña, muy provincial, de España. Para un país con más de 40 millones de habitantes, se consideró que el importe vendido de un vino relativamente barato era demasiado pequeño para crear o conservar un mercado para los productos (vino) que el consumidor medio español consume en grandes cantidades.
Resolución de 7 de julio de 2011, R 0908/2010-2 – "«ALFA-REN»":
El cuadro con cifras de ventas de productos ALFACALCIDOL en Lituania, en el periodo entre 2005 y 2008, que indica los productos vendidos por Teva Corp. al amparo de la marca «ALPHA D3» (fuente: base de datos de salud IMS, Lituania); una copia sin fecha del envase de un producto «ALPHA D3» (sin fecha); y una copia de un anuncio de los productos «ALPHA D3» vendidos en Lituania (sin traducir) fueron considerados no suficientes para demostrar el uso efectivo de la marca en Lituania. De las pruebas presentadas no pudo extraerse si los productos de la marca se distribuyeron efectivamente ni, en su caso, las cantidades que fueron distribuidas.
Resolución de 16 de marzo de 2011, R 0820/2010-1 – "«BE YOU»"
No se consideró prueba suficiente del uso efectivo de la marca del oponente respecto de los productos de la clase 14 las ventas de productos con beneficios por debajo de los 200 euros durante un periodo de 9 meses de uso.
Resolución de 6 de abril de 2011, R 0999/2010-1 – "«TAUTROPFEN CHARISMA (fig.) »"
Se consideraron como prueba insuficiente del uso efectivo del signo once facturas que demostraban que se vendieron 13 unidades de productos de «perfumería» en España entre 2003 y 2005, por un total de 84,63 euros. Se ha tenido en cuenta el hecho de que los productos se destinan a un
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uso corriente y que están disponibles a un precio asequible.
Resolución de 27 de octubre de 2008, B 1 118 605, "«Viña la Rosa»"
No se consideraron suficientes para demostrar el uso de los vinos, las fotocopias de tres guías independientes de vino que mencionaban a la marca del oponente (sin mayor explicación respecto del volumen, edición, editorial, etc.).
Resolución de 21 de junio de 1999, B 70 716, "«Oregon»"
La División de Oposición estimó que una factura de 180 pares de zapatos Era insuficiente para acreditar el uso efectivo.
Resolución de 30 de enero de 2001, B 193 716, «Lynx»
Como prueba de uso el oponente aportó dos facturas por una cantidad total de 122 prendas de vestir y cuatro etiquetas desprovistas de fecha y de cualquier indicación concerniente a los productos sobre los cuales debían fijarse. La División de Oposición las consideró insuficientes.
2.6.3. Ejemplos de uso suficiente
Asunto Observación
Sentencia de 16 de noviembre de 2011, en el asunto T-308/06, «BUFFALO MILE Automotive Polishing Products»", apartado 68
Se consideró que nueve facturas con fechas comprendidas entre abril de 2001 y marzo de 2002, que representaban unas ventas de aproximadamente 1 600 euros (con un volumen de negocio ligeramente superior a 1 000 000 euros al año) y que demostraban que los artículos se entregaron a distintos clientes en pequeñas cantidades (12, 24, 36, 48, 60, 72 o 144 piezas), en cuanto a productos ampliamente utilizados como el betún, en Alemania, el mayor mercado europeo con aproximadamente 80 millones de consumidores potenciales no acreditaban el uso que, desde un punto de vista objetivo, se requiere para crear o conservar un mercado para las cremas abrillantadoras y las cremas para el cuero. Además, el volumen comercial, en relación con la duración y la frecuencia del uso, se consideró lo suficiente importante para llevar a la conclusión de que se trata de un uso meramente simbólico, mínimo o ficticio, con el único objetivo de mantener la protección del derecho a la marca. Confirmada por el TG.
Sentencia de 10 de septiembre de 2008, en el asunto T-325/06, "«CAPIO»", apartados 48, 60
Las pruebas (facturas, listados de ventas) demuestran que la parte coadyuvante vendió 4 oxigenadores de fibra hueca con depósitos de carcasa dura desmontables en Finlandia en 1998, 105 en 1999 y 12 en 2001, por un importe total de 19 901,76 euros, se consideraron pruebas suficientes del uso efectivo de la marca registrada para «oxigenadores con bomba integrada; controladores con bomba integrada; dispositivos reguladores de presión de aire para bomba integrada; bombas de succión; contadores de flujo sanguíneo», de la clase 10.
Sentencia de 27 de septiembre de 2007, en el asunto T-418/03, "«LA MER»", apartados 87 a 90.
Se consideró que las diez facturas relativas a un periodo de 33 meses, relativas a varias gamas de productos, cuyo envase lleva la marca de que se trata, con cifras muy dispares (22 214 para la factura de 3 de enero de 1995, 24 085 para la de 4 de mayo de 1995, 24 135 para la de 10 de mayo de 1995 y 31 348 para la de 26 de marzo de 1997), que mostraban que las ventas se realizaron a distintas personas, permitían inferir que se habían presentado a título meramente ilustrativo de las ventas totales pero que no mostraban que la marca se utilizó públicamente y con relevancia exterior y no únicamente dentro de la empresa titular de la marca anterior o dentro de una red de distribución poseída o controlada por ésta. No obstante, no se consideró que las ventas efectuadas, aunque considerables, constituyeran un uso que, desde el punto de vista objetivo, creara o conservara un mercado para dichos productos ni implicaran un volumen comercial, en relación con la duración y la frecuencia del uso, tan reducido que permitiera llegar a la conclusión de que el uso fuera meramente simbólico, mínimo o ficticio, con el único objetivo de mantener la protección del derecho a la marca.
Sentencia de 25 de marzo de 2009, en el asunto T-191/07, "«BUDWEISER»"
La Sala de Recurso (resolución de 20.3.2007, R 0299/2006-2 – "BUDWEISER/marca denominativa internacional anterior BUDWEISER", apartado 26) consideró, en esencia, que los documentos aportados durante el procedimiento administrativo – las facturas que prueban la venta de
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cerveza en Francia por una cantidad superior a 40 000 litros entre octubre de 1997 y abril de 1999, se emitieron 23 facturas en Austria entre 1993 y 2000 a un único comprador en Austria, y 14 facturas emitidas en Alemania en 1993 y 1997 – fueron suficientes para acreditar la magnitud del uso de la marca denominativa internacional anterior BUDWEISER (RI nº 238 203) en estos países. Las conclusiones de la Sala de Recurso fueron confirmadas por el TG.
Sentencia de 11 de mayo de 2006, en el asunto C-416/04 P, "«Vitafruit»", apartados 68 a 77
Las pruebas de las ventas de zumos concentrados de fruta con destino a un único cliente en España durante un periodo de once meses y medio, que ascendió a un volumen total de ventas de 4 800 euros, correspondiente a la venta de 293 cajas de doce unidades cada una, fueron consideradas uso suficiente de la marca española anterior.
Sentencia de 8 de julio de 2010, en el asunto T-30/09, "«peerstorm»", apartados 42 y 43
Como prueba de uso, el oponente (simplemente) aportó varios catálogos para los consumidores finales, con prendas de vestir que llevaban la marca de referencia. El Tribunal consideró que «…es cierto que esos catálogos no ofrecen ninguna información sobre la cantidad de productos efectivamente vendidos por la coadyuvante con la marca PETER STORM. Sin embargo, procede tener en cuenta... el hecho de que se ha propuesto en los catálogos un gran número de artículos designados por la marca PETER STORM y que esos artículos estaban disponibles en más de 240 tiendas del Reino Unido durante buena parte del período pertinente. Estos elementos permiten concluir, en relación con la apreciación global del carácter efectivo … que ese uso fue de cierta importancia.».
Resolución de 4 de septiembre de 2007, R 0035/2007-2 – "«DINKY»"
La venta de aproximadamente 1 000 vehículos de juguete en miniatura se consideró una magnitud del uso suficiente en vista de que los productos se vendían principalmente a coleccionistas a un precio elevado en un mercado concreto.
Resolución de 11 de octubre de 2010, R 0571/2009-1 – "«VitAmour»"
La venta de 500 kg de proteínas lácteas por un valor total de 11 000 euros se consideró suficiente para demostrar el uso efectivo de proteínas lácteas para consumo humano. A la vista de la naturaleza de los productos, que no son productos de consumo sino ingredientes de uso de la industria de transformación alimentaria, la cantidad y los valores mostrados demostraron una presencia en el mercado por encima del umbral necesario.
Resolución de 27 de julio de 2011, R 1123/2010-4 – "«Duracryl»"
Las once facturas emitidas a distintas empresas en diversas regiones de España, que mostraban que el titular de la marca vendió, en el periodo de referencia y al amparo de la marca, 311 envases del producto, de distintos tamaños por un importe neto de 2 684 euros, se consideraron suficientes para acreditar el uso efectivo de una marca registrada para «productos para la conservación de la madera» de la clase 2.
Resolución de 1 de febrero de 2011, B 1 563 066
Se invocaba un volumen de negocios de más de 10 millones de euros durante varios años para productos médicos. Las facturas pertinentes (una por cada año) solo demostraron unas ventas efectivas de 20 euros al año. En una apreciación global, y en el contexto de otras pruebas presentadas como listados de precios, una declaración jurada, material de envase y publicidad, la Oficina consideró que todo esto era suficiente para acreditar el uso efectivo.
Resolución de 26 de enero de 2001, B 150 039
La División de Oposición consideró las pruebas relativas a unas ventas de unos 2 000 animales de peluche en el sector del mercado de alta gama como prueba suficiente del uso efectivo.
Resolución de 18 de junio de 2001, B 167 488
El oponente aportó una factura referida a la venta de una máquina cortadora de láser de gran precisión por importe de 565 000 FRF, un catálogo que describía su rendimiento y algunas fotografías en que aparecía el producto. La División de Oposición estimó que estas pruebas eran suficientes teniendo en cuenta la naturaleza del producto, el mercado específico y su precio considerablemente elevado.
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2.7. Uso de la marca en formas distintas de la registrada PAUSE
2.7.1. Introducción
El artículo 15, del RMC establece que el uso de la marca comunitaria en una forma que difiera de la forma bajo la cual se halle registrada tendrá la consideración de uso de la marca siempre que los elementos que difieran no alteren el carácter distintivo de la marca.
El objeto de esta disposición es permitir al titular aportar al signo, a la hora de su explotación comercial, las variaciones que, sin modificar su carácter distintivo, permitan adaptarlo mejor a las exigencias de comercialización y promoción de los productos o servicios de que se trate (sentencia de 23.2.2006, T-194/03, "Bainbridge", apartado 50).
El Tribunal General (en adelante, el «TG») mencionó asimismo que no es necesaria una conformidad estricta entre la forma del signo tal como se utiliza y la forma tal como fue registrado. No obstante, la diferencia debe darse en elementos insignificantes y los signos tal como se utilizan y tal como fueron registrados deben ser globalmente equivalentes (sentencia de 23.2.2006, T-194/03, "Bainbridge", apartado 50).
Para decidir si el signo tal como se utiliza y el signo tal como fue registrado son globalmente equivalentes, primero debe establecerse cuáles son los elementos insignificantes. El TG ha desarrollado los criterios necesarios para realizar esta diferenciación en varias sentencias.
El apartado 2.7.2 abordará estos criterios. En el apartado 2.7.3 se describirá la práctica de la Oficina respecto de la «variación» de las marcas, los «adiciones» de elementos a las marcas y las «omisiones» de los elementos de las marcas.
Por último, cabe señalar que, para establecer el uso de la marca a efectos del artículo 15, apartado 1, letra a), del RMC, el titular de la marca registrada puede ampararse en el uso en una forma que difiere de aquella bajo la que ha sido registrada dicha marca, sin que las diferencias entre ambas formas alteren el carácter distintivo de esa marca, y ello aunque esa forma diferente esté registrada a su vez como marca (sentencia de 25.10.2012, C-553/11, "Rintisch", apartado 30).
2.7.2. Criterios del Tribunal
En resumen, la prueba desarrollada por el Tribunal consiste en determinar primero cuáles son los elementos distintivos y dominantes del signo registrado y luego verificar si también están presentes en el signo tal como se utiliza.
El TG resolvió que:
la apreciación del carácter distintivo y dominante de uno o varios componentes de una marca compuesta debe basarse en las características intrínsecas de cada uno de estos componentes y en la posición relativa de los diferentes componentes en la configuración de dicha marca (sentencia de 24.11.2005, T-135/04, "Online Bus", apartado 36).
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Por lo que respecta a las adiciones:
Pueden utilizarse simultáneamente varios signos sin alterar el carácter distintivo del signo registrado (sentencia de 8.12.2005, T-29/04, "Cristal Castellblanch", apartado 34).
Si el elemento añadido no es distintivo, es débil y/o no dominante, no altera el carácter distintivo de la marca registrada (sentencia de 30.11.2009, T-353/07, "Coloris", apdos. 29 a 33 y ss., sentencia de 10.6.2010, T-482/08, "Atlas Transport", apdos. 36 y ss.).
Por lo que respecta a las omisiones:
Si este elemento omitido ocupa una posición secundaria y no distintiva, su omisión no altera el carácter distintivo de la marca (sentencia de 24.11.2005, T-135/04, "Online Bus", apartado 37).
2.7.3. Práctica de la Oficina
En general, debe apreciarse si el uso de la marca constituye una «variación» admisible o inadmisible de su forma registrada.
Por lo tanto, procede responder a dos cuestiones. En primer lugar, se debe aclarar lo que ha de considerarse el carácter distintivo de la marca en la forma en que ésta se halle registrada4. En segundo lugar, se debe examinar si la marca tal como se utiliza altera este carácter distintivo. Estas cuestiones deben responderse de forma individualizada.
Existe interdependencia entre la fuerza del carácter distintivo de una marca y el efecto de las alteraciones. Los cambios afectan en menor medida a las marcas dotadas de un carácter distintivo fuerte que a las que poseen un carácter distintivo débil. Es más probable que la adición u supresión de elementos de la marca afecten al carácter distintivo de las marcas que poseen un carácter distintivo débil.
Cuando una marca esté compuesta por diversos elementos de los que solo uno o algunos son distintivos y han tornado apta para el registro a la marca en su conjunto, una modificación de dicho elemento o su omisión o sustitución por otro elemento implicará por regla general una alteración del carácter distintivo.
Para determinar si debería admitirse el uso de una variación de la marca o si se altera el carácter distintivo procede tener en cuenta las prácticas al uso en el ramo empresarial o comercial de que se trate, así como el público de referencia.
Las siguientes secciones incluyen una serie de orientaciones prácticas para evaluar si las adiciones (apartado 2.7.3.1), las omisiones (apartado 2.7.3.2) y las alteraciones (apartado 2.7.3.3) en la forma del signo tal como se utiliza alteran el carácter distintivo de la marca registrada.
4 Véanse las Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo.
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2.7.3.1. Adiciones
Tal como se ha indicado anteriormente, por lo que respecta a las adiciones, (i) pueden utilizarse simultáneamente varios signos sin alterar el carácter distintivo del signo registrado y (ii) si el elemento añadido no es distintivo, es débil y/o no dominante, no altera el carácter distintivo de la marca registrada.
Las siguientes secciones ofrecen ejemplos de estos dos tipos de supuestos:
uso simultáneo de varios signos;
adiciones de otros elementos denominativos;
adiciones de elementos figurativos.
Uso simultáneo de varios signos o marcas
Es bastante habitual en algunos sectores del mercado que los productos y servicios lleven no solo su marca individual, sino también la marca de la empresa o del grupo de productos («marca de la casa»). En tales supuestos, la marca registrada no es utilizada en una forma distinta, sino que las dos marcas independientes son utilizadas válidamente de forma simultánea.
No existe ningún precepto legal en el sistema comunitario de marca que obligue al oponente a aportar pruebas solo de la marca anterior cuando se exige el uso efectivo en el sentido del artículo 42, del RMC. Pueden utilizarse dos o más marcas juntas de forma autónoma, con o sin la denominación social, sin alterar el carácter distintivo de la marca registrada anterior.
El Tribunal ha confirmado que el requisito de uso efectivo de una marca puede cumplirse cuando una marca registrada como consecuencia del uso de otra marca compuesta de la que forma parte se utiliza mediante esa otra marca compuesta, o cuando se utiliza conjuntamente con otra marca y la propia combinación de ambas marcas está además registrada como marca (sentencia de 18.4.2013, C-12/12, «SM JEANS/LEVI‘S», apartado 36.) De forma similar, el Tribunal ha aclarado que el uso puede ser efectivo cuando una marca figurativa se utiliza conjuntamente con una marca comunitaria denominativa superpuesta en ella y la propia combinación de las dos marcas está además registrada como marca comunitaria, siempre que las diferencias entre la forma en que la marca se utiliza y aquella con la cual ha sido registrada no alteren el carácter distintivo de la marca tal como fue registrada (sentencia de 18 de julio de 2013, en el asunto C-252/12, «Specsavers», apartado 31).
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Forma registrada Uso real Nº de asunto
CRISTAL T-29/04
«En el caso de autos, la marca CRISTAL aparece claramente cuatro veces en el gollete de la botella comercializada por la parte interviniente y dos veces en la etiqueta principal, acompañada del símbolo ®. En el gollete, se encuentra separada de los demás elementos. Además, en los estuches en que se comercializan las botellas de la marca CRISTAL, ésta aparece sola. Asimismo, en las facturas presentadas por la parte interviniente se hace referencia al término "cristal" con la mención "estuche 1990". Así pues, procede señalar que la marca CRISTAL identifica el producto comercializado por la parte interviniente» (apartado 35). «Por lo que se refiere a la mención "Louis Roederer" que figura en la etiqueta principal, indica simplemente la razón social del fabricante, lo que puede crear un vínculo directo entre una o varias gamas de productos y una empresa determinada. El mismo razonamiento vale para el grupo de letras "lr" que representa las iniciales del nombre de la parte interviniente. Como señaló la OAMI, la utilización conjunta de dichos elementos en una misma botella no afecta a la función de identificación que desempeña la marca CRISTAL con respecto a los productos de que se trata» (apartado 36). «Además, debe admitirse la apreciación de la OAMI, según la cual la utilización de una marca denominativa combinada con la indicación geográfica "Champagne" no puede considerarse un añadido capaz de alterar el carácter distintivo de la marca cuando ésta se utiliza para champán. En efecto, en el sector del vino, el consumidor tiene a menudo un interés particular por el origen geográfico concreto del producto y la identidad del producto del vino, puesto que el renombre de dichos productos va frecuentemente unido al hecho de que se producen en una zona geográfica determinada por un establecimiento vinícola determinado» (apartado 37). «En tales circunstancias, procede declarar que el empleo de la marca denominativa CRISTAL en combinación con otras indicaciones es irrelevante y que la Sala de Recurso no infringió ni el artículo 15, apartado 2, letra a), del Reglamento nº 40/94, ni su artículo 43, apartados 2 y 3, ni la regla 22, apartado 2, del Reglamento de ejecución» (apartado 38).
Forma registrada Uso real Nº de asunto
L.114 Lehning L114 T-77/10 y T-78/10
L.114 es una marca registrada francesa de «productos farmacéuticos» de la clase 5.
El Tribunal consideró que: 1) la falta de punto entre la mayúscula «L» y el número 114 supuso una diferencia menor que no
priva a la marca anterior L.114 de su carácter distintivo (apartado 53). 2) el hecho de que la marca anterior «L.114» se utilizara junto con la marca de la casa «Lehning»
carece de importancia y no altera su carácter distintivo en el sentido del artículo 15, apartado 1, letra a), del RMC (apartado 53).
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Forma registrada Uso real Nº de asunto
YGAY YGAY junto con una serie de
otros elementos denominativos y figurativos
R 1695/2007-1 (confirmada por la sentencia
T-546/08)
En la resolución de la Sala de Recurso (confirmada por el Tribunal en la sentencia T-546/08, apdos. 19 y 20) se señaló que la marca YGAY aparecía en muchas fotografías tanto en la etiqueta como en la caja en que se vende la botella. En las etiquetas, la marca de que se trate se encuentra separada de los demás elementos. En algunas etiquetas, aparece de forma aislada, debajo de la frase MARQUÉS DE MURRIETA, escrita en grandes letras en negrita. En otras, la frase BODEGAS MARQUÉS DE MURRIETA está escrita en minúsculas en la parte superior, mientras que los elementos CASTILLO YGAY están escritos en grandes letras estilizadas en diagonal en la etiqueta. La marca YGAY también aparece por sí sola o junta con la frase CASTILLO YGAY en las cajas en que se venden las botellas. También se hace referencia, en las facturas presentadas por el oponente, a la marca YGAY, junto con la información general como el año de producción y el origen, etc., de lo que deriva, por lo tanto, que el signo YGAY funciona como marca que identifica a los productos, «vino», que vende el oponente (apartado 15).
La mención MARQUÉS DE MURRIETA en este contexto simplemente sería una indicación de la denominación de la empresa del fabricante o del viñedo que produce y vende el vino, lo cual podría proporcionar un vínculo directo entre una o más líneas de producto y una empresa determinada (véase la sentencia del Tribunal de Primera Instancia (TPI) de 8.12.2005, T-29/04, "Cristal Castellblanch", apartado 36) (apartado 16).
Forma registrada Uso real Nº de asunto
Marca nº 1 Marca nº 2
C-12/12
Levi Strauss es titular de las dos marcas comunitarias que aparecen más arriba. La marca nº 1 siempre se usa conjuntamente con la marca denominativa LEVI’S, es decir, como en el caso de la marca nº 2. El Tribunal de Justicia dictaminó que la condición de «uso efectivo» puede cumplirse cuando una marca comunitaria figurativa se utiliza conjuntamente con una marca comunitaria denominativa superpuesta en ella y la propia combinación de las dos marcas está además registrada como marca comunitaria, siempre que las diferencias entre la forma en que la marca se utiliza y aquella con la cual ha sido registrada no alteren el carácter distintivo de la marca tal como fue registrada.
Forma registrada Uso real Nº de asunto
C-252/12
Specsavers inició un procedimiento por violación y usurpación de la marca comunitaria anterior
SPECSAVERS (marca denominativa), así como de los signos figurativos , y
, contra ASDA, una cadena de supermercados que reanudó su negocio de óptica mediante una campaña de marketing dirigida a Specsavers. Specsavers usaba en colores sus marcas registradas en blanco y negro, adquirió renombre en el Reino Unido con el color verde, usando su signo del siguiente
modo: . ASDA también adquirió renombre en el Reino Unido con otra tonalidad de verde en su
negocio de supermercados y lo aplicó a su negocio de óptica: .
El Tribunal de Justica dictaminó que el uso de con el signo denominativo superpuesto puede
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considerarse un uso efectivo de la marca figurativa en la medida en que esta, tal como fue registrada, siempre se refiere en dicha forma a los productos del grupo Specsavers (que debe determinar el órgano jurisdiccional remitente).
Sin embargo, el oponente debe aportar pruebas de que el signo adicional es, en realidad, una marca o signo independiente, que hace referencia, por ejemplo, a la marca de la empresa, al fabricante, etc.
Forma registrada Uso real Nº de asunto
MINUTO DUBOIS MINUTO R 0206/2000-3
La Sala de Recurso consideró la presentación de dos palabras como el uso de dos marcas independientes, ya que las pruebas presentadas por el oponente revelaban que una de ellas era una antigua marca del oponente con identidad propia, y que esta marca está presente en el mercado acompañada de una serie de signos, como es habitual en el etiquetado del producto en cuestión (vino).
«DUBOIS» y «MINUTO» son marcas autónomas en un producto concreto, como es práctica común en el etiquetado de productos vinícolas (nombre del establecimiento vinícola y nombre del producto). Por lo que respecta a las marcas españolas, véase por ejemplo «TORRES» – «Sangre de Toro», «TORRES» – «Acqua d’Or». Cuando el consumidor de referencia pide el vino «MINUTO», ya conoce que dicho vino está incluido en la línea de productos «DUBOIS», aunque se percibirá que «MINUTO» es una marca propia, incluso si aparece junto al signo «DUBOIS» en las facturas, folletos y/o las etiquetas de los productos (apartado 18).
Por otro lado, el carácter efectivo del uso podría quedar en entredicho en aquellos casos en que la marca registrada podría ser percibida como un mero elemento decorativo debido al uso adicional y muy dominante de otras marcas.
Adición de otros elementos denominativos
En principio, una diferencia en letras o incluso en palabras constituye una alteración del carácter distintivo de la marca. Sin embargo, en los siguientes tres apartados se describen una serie de situaciones en las que son admisibles las adiciones. El cuarto apartado proporciona ejemplos de adiciones inadmisibles.
Adiciones de elementos no dominantes
Forma registrada Uso real Nº de asunto
COLORIS T-353/07
El TG confirmó que el uso de la marca Coloris con elementos denominativos adicionales como «global coloring concept» o «gcc» no alteraban su carácter distintivo porque los elementos adicionales se utilizaron simplemente junto con la marca Coloris y estaban situados debajo de la misma y tenían un tamaño que no era dominante en dicha marca.
La misma conclusión se aplica con mayor fuerza a los términos adicionales (global coloring concept) ya que son palabras con un sentido general y la palabra «coloring» (coloración) hace referencia a los
INTERNATIONAL TRADEMARK ASSOCIATION
Use as registered - case law
COLORIS
T-353/07
INTERNATIONAL TRADEMARK ASSOCIATION
Use as registered - case law
COLORIS
T-353/07
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productos de que se trate y, en consecuencia, tienen un cierto carácter descriptivo.
Adiciones con un significado genérico o descriptivo
El uso de una marca denominativa registrada (o de cualquier otra marca) realizado junto con una indicación genérica del producto o con un término descriptivo se considerará como uso de la marca registrada. Las adiciones que solo son indicaciones o características de los productos y servicios, como la especie, la calidad, la cantidad, el destino, el valor, el origen geográfico o la época de producción de los productos o de la prestación de los servicios, por regla general no constituyen el uso de una variante sino un uso de la propia marca.
Por ejemplo:
Forma registrada Uso real Nº de asunto
FANTASIA FANTASIA 2000 R 1335/2006-2
«A tenor de las pruebas queda claro (en particular, del artículo de Film Journal International) que "Fantasia 2000" es una nueva versión de la película original de Walt Disney "Fantasia" producida en 1940, que se ha creado inspirándose en el original: una secuencia de escenas animadas musicalizada con música clásica. Por consiguiente, el número "2000" es una mera referencia a la nueva edición de la película y, como tal, no constituye una alteración que impediría, por sí misma, que el título se tenga en cuenta como prueba de uso de la palabra "Fantasia" protegida por el registro anterior, con arreglo al artículo 15, apartado 2, letra a), del RMC» (apartado 22).
Otras adiciones admisibles
La adición de elementos insignificantes, como signos de puntuación, no altera el carácter distintivo de la marca:
Forma registrada Uso real Nº de asunto
PELASPAN-PAC PELASPAN PAC R 1986/2011-4
El uso de la marca anterior «PELASPAN-PAC» sin el guión que une los elementos «PELASPAN» y «PAC» no altera el carácter distintivo de la marca anterior tal como fue registrada y, por consiguiente, cuenta para efectuar la apreciación del uso efectivo.
Del mismo modo, el uso de las formas en singular o en plural o viceversa de palabras significativas (por ejemplo, la adición u omisión de una letra «s» en inglés u otras lenguas) no altera el carácter distintivo:
Forma registrada Uso real Nº de asunto
Tentation Tentations R 1939/2007-1
«En el asunto de autos, y tras examinar las pruebas presentadas, que se centran fundamentalmente en el mercado español, la Sala de Recurso considera que el uso de la marca registrada "TENTATION" mediante el uso del signo "TENTATIONS" no altera el carácter distintivo de la marca registrada original. En concreto, la simple adición de la letra "S" al final de la marca ni altera de manera sustancial la apariencia visual o la pronunciación de la marca registrada ni crea una impresión conceptual distinta en el mercado español. La marca en cuestión se percibirá simplemente en plural en lugar de en singular, por lo que este cambio no altera el carácter distintivo del signo» (apartado 17).
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La adición del «tipo de empresa» también es admisible:
Forma registrada Uso real Nº de asunto
La forma utilizada incluía el logotipo más las palabras
«SOCIEDAD LIMITADA» (en minúsculas) debajo del término «SISTEMAS» y/o el dispositivo
«E» con las palabras «epco SISTEMAS, S.L.» en negrita
R 1088/2008-2 Confirmada por la sentencia
T-132/09
«…estos signos no son, como el solicitante parece sugerir, alteraciones importantes del carácter distintivo de la marca anterior tal como ha sido registrada» (apartado 24).
Adiciones inadmisibles
Forma registrada Uso real Nº de asunto
Captain Captain Birds Eye R 0089/2000-1
«No puede considerarse … que el uso de CAPTAIN BIRDS EYE constituya un uso de la marca CAPTAIN de una forma que no altere el carácter distintivo de la marca tal como ha sido registrada, ya que los dos signos parecen esencialmente distintos» (apartado 20).
Forma registrada Uso real Nº de asunto
ECO ECOORD-ECO, ECOCOM-ECO,ECOSEM-ECO R 0634/2009-4
«El oponente se basa asimismo en una serie de 75 facturas, en las que la marca del oponente como tal se indica con los términos ECOORD-ECO, ECOSEM-ECO y ECOCOM-ECO. Ninguno de ellos es la forma tal como ha sido registrada. … No puede aceptarse el argumento del oponente de que los términos ECOORD, ECOSEM y ECOCOM son términos insignificantes y descriptivos. Es irrelevante si el oponente tenía la intención de colocar elementos descriptivos delante de su marca. Lo decisivo es si los consumidores perciben estos elementos adicionales como meros prefijos descriptivos o, en su lugar, como elementos efectivos, distintivos… Términos como estos no tienen ningún significado en italiano y no puede considerarse que las explicaciones del oponente para resolver unos acrónimos bastante complejos expliquen por sí mismas el significado a los consumidores italianos. Parecen tener un carácter de fantasía y distintivo, que forma parte de las marcas» (apdos. 17 a 20).
«Por último, los términos utilizados en las facturas tienen distintos prefijos y son tres veces más largos que la marca original. Además, las combinaciones utilizadas, ECOORD, ECOSEM y ECOCOM, poseen su propio carácter distintivo y están situadas al inicio de las marcas, a lo que el consumidor presta, por lo general, una mayor atención. Atendiendo a estas razones, el uso de los términos ECOORD-ECO, ECOSEM-ECO y ECOCOM-ECO no puede considerarse un uso ligeramente diferente de la marca anterior» (apartado 21).
Adición de elementos figurativos
En los casos en que el elemento figurativo tiene solo un papel menor, no resulta afectado el carácter distintivo del signo tal como fue registrado.
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Forma registrada Uso real Nº de asunto
BIONSEN R 1236/2007-2
«Además, esta prueba demuestra que los productos del recurrido también incluyen otros elementos, en concreto un carácter japonés dentro de un pequeño círculo, que se muestra tanto arriba como abajo de la palabra "BIONSEN" (apartado 19)».
«Sin embargo, en el asunto de autos, la combinación de la forma estilizada de la palabra "BIONSEN" y el carácter japonés, con independencia de si está por encima o por debajo de dicha palabra constituye como máximo un uso que difiere de la forma en que la marca fue registrada solo en los elementos insignificantes. El término "BIONSEN" tal como se utiliza es solo una estilización pequeña y banal del término "BIONSEN". Dado que la adición del elemento figurativo en forma de elemento circular con un carácter japonés casi no será apreciada por el consumidor medio debido a su tamaño y posición relativamente pequeñas, ya sea debajo o en el lado derecho por encima del término "BIONSEN"» (apartado 23).
Forma registrada Uso real Nº de asunto
BLUME
Signo utilizado junto con el siguiente elemento figurativo:
R 0681/2001-1
«Por lo que a la marca BLUME nº 1 518 211 se refiere, la División de Oposición sostuvo que la adición del elemento figurativo... no altera el carácter distintivo de la marca BLUME ya que el término "BLUME" está separado del elemento figurativo, que es claramente legible y está escrito en letras de imprenta» (apartado 22).
Por otro lado, la adición de un elemento figurativo puede alterar el carácter distintivo de una marca si dicho elemento no se considera como un mero elemento decorativo sino como un elemento dominante y distintivo en la impresión general que produce la marca.
Forma registrada Uso real Nº de asunto
R 0275/2006-2
El Tribunal coincide con el titular de la marca comunitaria en que el signo (tal como se usa en la realidad) no puede considerarse meramente una ligera variación de la marca anterior tal como fue registrada. Independientemente de que los signos tengan en común el elemento denominativo «HYBRIS», el elemento figurativo adicional —una letra «y» invertida entre corchetes de una forma especial— no puede considerarse un «elemento insignificante». En este caso, el elemento figurativo es bastante inusual y llamativo. No constituye un simple elemento decorativo. Además ocupa un lugar destacado al inicio del signo tal como se usa y forma parte integrante de este. No pasará desapercibido en la impresión general que provoca el signo» (apartado 23).
2.7.3.2 Omisiones
Al considerar las «omisiones» de elementos de una marca en la forma en que se utiliza, debe tenerse cuidado para comprobar que el carácter distintivo de la marca no ha sido alterado.
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 41
FINAL VERSION 1.0 01/02/2015
Si este elemento omitido ocupa una posición secundaria y no distintiva, su omisión no altera el carácter distintivo de la marca (sentencia de 24.11.2005, T-135/04, "Online Bus").
Omisiones de elementos no dominantes
Forma registrada Uso real Nº de asunto
T-135/04
El TG consideró que tanto la forma registrada de la marca anterior como la forma utilizada incluían la palabra «BUS» y el elemento figurativo de «tres triángulos entrelazados». La presentación de los elementos no es especialmente original ni poco habitual. La variación de estos elementos no afecta al carácter distintivo de la marca. Por lo que a la omisión de «Betreuungsverbund für Unternehmer und Selbständige e.V.», éste es «un elemento denominativo largo, escrito en letras pequeñas, que ocupa una posición secundaria debajo del signo. Su significado (asociación de asistencia a empresarios y autónomos, asociación declarada) se refiere a los servicios de que se trata. Por consiguiente, habida cuenta del contenido descriptivo de este elemento y de su posición accesoria en la presentación del signo, procede considerar que no tiene carácter distintivo […] De las anteriores consideraciones se desprende que la forma utilizada de la marca anterior no reviste diferencias que puedan alterar el carácter distintivo de ésta» (apartados 34 y ss.).
Omisiones de elementos genéricos o descriptivos
Cuando una marca registrada incluye una indicación genérica del producto o un término descriptivo y dicho término se omita en la forma en que el signo se utiliza, dicho uso se considerará como uso de la marca registrada.
Las omisiones que solo son indicaciones o características de los productos y servicios, como la especie, la calidad, la cantidad, el destino, el valor, el origen geográfico o la época de producción de los productos o de la prestación de los servicios, por regla general constituyen el uso de una variante admisible.
Forma registrada Uso real Nº de asunto
T-415/09 (confirmado por C-621/11 P)
La Sala de Recurso consideró que aunque en algunos documentos de prueba la marca anterior no incluían la palabra «beachwear» (ropa de baño) «esto no afecta al carácter distintivo de la marca anterior porque es simplemente descriptivo de la naturaleza de los productos» («camisetas, ropa de baño»). El TG consideró: En el asunto de autos, la marca anterior es una marca compuesta, que representa el timón de un barco, es decir, un signo con una forma redonda. En el centro del signo hay un esqueleto de un pez, en la parte superior en la que está escrita la palabra «fishbone» y en la parte superior el término «beachwear» Aunque el uso de la marca anterior varía en determinados medios de prueba y se ha utilizado de una forma distinta que con la que ha sido registrada, en el sentido de que el signo no incluye el término «ropa
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 42
FINAL VERSION 1.0 01/02/2015
de baño», dicho hecho no afecta a su carácter distintivo. El término «beachwear», que significa «ropa de baño» en inglés, es descriptivo de la naturaleza de los productos amparados por la marca anterior [el destacado es nuestro]. Dicho carácter descriptivo es evidente en el caso de la «ropa de playa» amparada por la marca anterior aunque también en el caso de las «camisetas», para las que se percibirá inmediatamente que el término «ropa de baño» como referencia a una camiseta que se lleva en situaciones casuales, por ejemplo, en verano en la playa. Los consumidores entenderán de este modo que el término designa el tipo de productos y no lo percibirá como una indicación de su origen comercial. El hecho de que el término «beachwear» esté escrito en una fuente de mayor fantasía que el término «fishbone», que está escrito en letras mayúsculas ordinarias, no puede alterar dicha apreciación. Asimismo, la fuente del término «ropa de baño» no puede considerarse poco común, ya que incluye caracteres impresos en minúsculas. Respecto de la posición horizontal del término «beachwear» en la marca anterior, que va en sentido perpendicular de la parte inferior del timón del barco, no es más gráficamente incisivo que el otro término «fishbone» que, escrito también en horizontal, sigue la forma redonda del timón (apartados 62 y 63).
Forma registrada Uso real Nº de asunto
R 1190/2011-4
Los signos figurativos que se reproducen en la prueba de uso contienen los elementos distintivos de la marca anterior y dichos elementos se observan claramente en las etiquetas. La inversión de los elementos figurativos y denominativos del signo y la indicación adicional de la denominación de origen correspondiente (Soave, Soave Superior y Chianti) no alteran el carácter distintivo de la marca anterior, que se reproduce en el signo con todos sus elementos distintivos. Los consumidores de vinos tienen un interés especial en conocer el origen geográfico preciso de estos productos; no obstante, la adición de esta información sobre el origen geográfico de los productos no es capaz de alterar el carácter distintivo de una marca en su función fundamental, que es la de identificar un origen comercial determinado (sentencia de 8 de diciembre de 2005, en el asunto T-29-04, «Cristal Castellblanch», apartado 19).
Otras omisiones admisibles
La omisión de preposiciones insignificantes no altera el carácter distintivo de la marca:
Forma registrada Uso real Nº de asunto
CASTILLO DE PERELADA CASTILLO PERELADA B 103 046
No se considera que la falta del uso de la palabra «de» afecte al carácter distintivo de la marca.
Hay casos en que el signo anterior está compuesto por un (o varios) elemento denominativo distintivo y un (o varios) elemento figurativo, cuya percepción por parte del público pertinente es banal. Estos elementos banales se consideran no distintivos y su omisión no cambia el carácter distintivo del signo. Por lo tanto, es importante establecer qué elementos influyen en el carácter distintivo de la marca y cómo serán percibidos por los consumidores.
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 43
FINAL VERSION 1.0 01/02/2015
Forma registrada Uso real Nº de asunto
ROYAL
R 214/2012-1
Los signos que se reproducen más arriba se diferencian únicamente de la marca denominativa «ROYAL» en la medida en que las palabras son curvadas y, en el caso del signo usado para productos distintos de polvos para hornear, muestran una pancarta de fondo rojo. Desde el punto de vista del público pertinente, esta representación gráfica banal se percibirá como un elemento meramente decorativo, destinado a adaptar los signos a la presentación del embalaje del producto. Esta representación gráfica no transmite por sí misma un carácter distintivo a los signos tal como se usan y, por consiguiente, no altera el carácter distintivo de la marca denominativa anterior. Las mismas consideraciones se aplican a la marca figurativa anterior, que de acuerdo con los colores indicados en la solicitud es de color rojo y blanco, y cuyo elemento denominativo «Royal» se representa en posición diagonal. En este aspecto corresponde al signo utilizado en el comercio para productos distintos de los polvos para hornear (apartados 33 y 34).
La omisión de la transliteración de una palabra, por lo general, se considera una alteración admisible.
Forma registrada Uso real Nº de asunto
APALIA-ΑΠΑΛΙΑ APALIA R 2001/2010-1
La omisión de la transliteración del término en caracteres griegos no altera el carácter distintivo de la marca ya que la forma en que se utiliza incluye el término APALIA, que es distintivo y dominante.
Omisiones inadmisibles
En principio, una diferencia en palabras o incluso en letras constituye una alteración del carácter distintivo de la marca.
Forma registrada Uso real Nº de asunto
TONY HAWK
HAWK
B 1 034 208
«[L]a falta del elemento denominativo "TONY" en las dos primeras marcas altera de forma significativa el carácter distintivo de la marca registrada anterior "TONY HAWK". Por lo tanto, estas marcas deben percibirse como marcas autónomas y no pueden considerarse como uso de la marca denominativa "TONY HAWK".
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 44
FINAL VERSION 1.0 01/02/2015
Forma registrada Uso real Nº de asunto
(en España)
Figurativo (sin "Light Technology" o solo con el término "Light" y
otros elementos denominativos) o en forma denominativa
R 1625/2008-4 (el recurso T-143/10 no hizo
referencia a las marcas españolas)
«En el presente caso, la Sala de Recurso ha podido comprobar que ninguna de las pruebas del uso aportadas reproducía los signos españoles anteriores tal como se habían registrado, dado que la marca está representada de una forma puramente visual, esto es, sin la expresión "light technology" o el elemento visual está acompañado solo por el término "Light" y otros elementos denominativos o la expresión "LT Light-Technology", que también es denominativa sin un elemento visual lo que obviamente caracteriza a las marcas españolas anteriores en que se basa la oposición... En estas circunstancias, y a la vista del hecho de que las modificaciones realizadas a la representación de marcas anteriores modifican su carácter distintivo, se considera que, en cualquier caso, la prueba presentada no demuestra el uso de las marcas españolas en que se basa la oposición» (apdos. 15 y 16).
Forma registrada Uso real Nº de asunto
SP LA SPOSA LA SPOSALA SPOSA COLLECTION R 1566/2008-4
«La marca anterior tal como ha sido registrada es "SP LA SPOSA". Los documentos presentados como prueba de uso hacen referencia únicamente a vestidos de boda para mujer. El elemento "LA SPOSA" es un término común, que puede ser entendido por el público italiano y el español como «la novia» y posee un carácter distintivo débil para los productos de que se trate, en concreto, los vestidos de boda. El propio oponente en su lista de precios "tarifa de precios" que está redactada en varias lenguas oficiales de la CE, tradujo dicho término en dichas lenguas; debajo del término "LA SPOSA", figuran los términos "noiva" en la versión portuguesa de la lista, "bride" en la versión inglesa, "Braut" en la versión alemana, etc. Esto demuestra que incluso el propio recurrido entiende el término "LA SPOSA" como una referencia al consumidor a los que se dirige el producto, en concreto a las novias» (apartado 18).
«Por lo tanto, el elemento "SP" al inicio de la marca anterior es un elemento distintivo y debe ser considerado. No puede ignorarse este elemento, en primer lugar porque está colocado al inicio de la marca. Asimismo, carece de sentido y no es distintivo por sí mismo, en todas las lenguas de la Comunidad Europea» (apartado 19).
«[L]a omisión de las letras "SP" en la palabra "LA SPOSA" o "LA SPOSA COLLECTION" no constituye una variación admisible de la marca anterior sino una modificación significativa del carácter distintivo de la marca. Los documentos presentados por el recurrido son insuficientes para demostrar que la marca "SP LA SPOSA" ha tenido un uso efectivo» (apartado 26).
En los casos en que el elemento figurativo es el elemento dominante o distintivo y no simplemente decorativo o banal, la omisión del mismo puede alterar el carácter distintivo del signo.
Forma registrada Uso real Nº de asunto
ESCORPION R 1140/2006-2
«Las marcas anteriores están fuertemente caracterizadas por la presencia del elemento figurativo. Sin embargo, los documentos presentados durante el procedimiento de oposición y, incluso si debieran tenerse en cuenta en el procedimiento de apelación, no demuestran ningún uso del elemento figurativo incluido en las marcas anteriores» (apartado 19).
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 45
FINAL VERSION 1.0 01/02/2015
«Por lo tanto, la Oficina considera que la alteración de la marca del oponente que aparece del modo en que se utiliza actualmente no es una alteración admisible y, por consiguiente, no demuestra el uso de la marca registrada. El oponente no ha cumplido los requisitos de los apartados 2 y 3 del artículo 43, del RMC y, por lo tanto, la oposición debe desestimarse, en la medida en que se base en los registros de marca españolas» (apartado 20).
2.7.3.3 Otras alteraciones
Alteraciones admisibles
Marcas denominativas
Las marcas denominativas se consideran utilizadas tal como han sido registradas con independencia de los caracteres tipográficos, el uso de mayúsculas/minúsculas o el color. No sería correcto analizar este tipo de uso desde la perspectiva de si el carácter distintivo se ha visto alterado. Sin embargo, unos caracteres tipográficos muy especiales (muy estilizados) podrían dar lugar a una conclusión distinta.
Cambiar el tamaño de las letras o cambiar entre minúsculas y mayúsculas es habitual en el caso de las marcas denominativas. Así pues, tal uso se considera un uso de la marca registrada.
Forma registrada Uso real Nº de asunto
MILENARIO R 0289/2008-4
La Sala de Recurso confirmó la opinión de la DO de que el uso de la marca denominativa «MILENARIO» escrita en caracteres en negrita estilizados no afectaba al carácter distintivo de la marca, porque el término «MILENARIO» se consideró el elemento dominante de la marca registrada para «vinos espumosos y licores» de la clase 33 (apartado 13).
Forma registrada Uso real Nº de asunto
AMYCOR R 1344/2008-2
No se consideró que la representación de la marca denominativa, registrada para «productos farmacéuticos y sanitarios; emplastos, material para apósitos; fungicidas; desinfectantes» amparados por la marca anterior de la clase 5, con una forma estilizada junto con elementos figurativos cambiara de forma sustancial el carácter distintivo de la marca denominativa «AMYCOR» tal como fue registrada.
Forma registrada Uso real Nº de asunto
THE ECONOMIST R 0056/2011-4
«El argumento del solicitante de que la prueba de uso es insuficiente porque hace referencia a la marca figurativa … y no a la marca denominativa "THE ECONOMIST" no se sostiene. En primer lugar, las pruebas presentadas hacen referencia a ambas marcas anteriores (es decir, la marca denominativa y la marca figurativa). Asimismo, el uso de la marca figurativa anterior tiene la consideración de uso de la marca denominativa anterior. En este sentido, cabe señalar que las marcas denominativas se consideran utilizadas tal como fueron registradas, también si los caracteres tipográficos son distintos (esto puede ser diferente si el carácter tipográfico es uno muy especial), si existe un cambio habitual en el tamaño de la letra o entre letras mayúsculas y minúsculas, si se utiliza en un color específico o junto con adiciones
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 46
FINAL VERSION 1.0 01/02/2015
genéricas. El uso del término "THE ECONOMIST" en caracteres tipográficos estándar, con el uso habitual de mayúsculas al inicio de las palabras "The" y "Economist" en color blanco sobre un fondo en contraste se considera uso, no solo de la marca figurativa anterior sino también de la marca denominativa anterior» (apartado 14).
Las marcas denominativas se registran en blanco y negro pero es habitual usarlas en color. Tal uso no constituye una variación sino un uso de la marca registrada.
Forma registrada Uso real Nº de asunto
BIOTEX (varios) R 0812/2000-1
«La marca, tal como se muestra en dichos documentos, se presenta de forma variada con los siguientes estilos: – La palabra BIOTEX en mayúsculas blancas sobre un fondo oscuro en los anuncios. – Referencias en artículos de prensa a la palabra BIOTEX en tipografía normal. – La palabra BIOTEX en mayúsculas blancas con el punto de la letra "l" en una coloración más oscura. – La palabra BIOTEX en mayúsculas blancas normales en las etiquetas y los envases de los productos detergentes. – La palabra BIOTEX en caracteres tipográficos normales en las facturas de transporte. – La palabra BIOTEX en mayúsculas y minúsculas blancas sobre un fondo más oscuro con un elemento figurativo de "ola"» (apartado 14).
«Las pruebas del uso demuestran que la marca ha seguido siendo, a pesar de los diversos cambios de estilo, fundamentalmente BIOTEX. Las letras que forman la marca en general han sido simples mayúsculas, sin ningún tipo de fantasía. Algunas veces las mayúsculas son sencillas y en dos dimensiones y otras veces, están sombreadas para dar la impresión de que son tridimensionales. En ocasiones la letra "I" tiene la punta de distinto color. La Sala de Recurso considera que estas variaciones son mínimas y rutinarias y que demuestran una práctica que es común no solo en el tipo de actividad en especial sino también en otros ámbitos. La Sala no considera que estas variaciones anulen el uso de la marca BIOTEX y, por lo tanto, debe anularse en este punto la decisión impugnada» (apartado 17).
Forma registrada Uso real Nº de asunto
SILVER
La palabra «SILVER» escrita en letras mayúsculas blancas sobre una franja roja que se solapa con un círculo dorado que contiene otros elementos denominativos
B 61 368
«El uso real de la marca que puede verse en el paquete de cervezas, el extracto del periódico y en el calendario no es el uso de la marca denominativa registrada SILVER, sino de la marca figurativa en color, en concreto, la etiqueta de cerveza con la palabra SILVER escrita en mayúsculas en una franja roja que se solapa con un círculo dorado que incluye los elementos denominativos “Bière sans alcool”, “Bière de haute qualité”, “pur malt” y “Brassée par le Brasseries Kronenbourg”. Esto no significa automáticamente que la marca no se utilizara tal como fue registrada. Cada caso debe analizarse en función de sus circunstancias. En este caso, la Oficina considera que la marca SILVER es la marca real. La presencia de otros elementos denominativos, “Bière sans alcool”, “Bière de haute qualité”, “pur malt” y “Brassée par le Brasseries Kronenbourg” y el elemento figurativo es únicamente secundario de la marca SILVER. Del estudio de mercado, el extracto del periódico y las facturas queda claro que la marca real es SILVER. La Oficina considera que el uso de la palabra SILVER es tan dominante en la marca figurativa que cumple los requisitos de haber sido utilizada tal como fue registrada.».
Marcas figurativas
La utilización de una marca meramente figurativa (sin elementos denominativos) en una forma distinta de cómo fue registrada normalmente constituye una alteración inadmisible.
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 47
FINAL VERSION 1.0 01/02/2015
En lo que se refiere concretamente a los modificaciones de color, la cuestión primordial que debe abordarse es si la marca tal como se usa altera el carácter distintivo de la marca registrada, es decir, si el uso de colores en una marca registrada en blanco y negro o en escala de grises (y viceversa) constituye una modificación de la forma registrada. La Oficina y varias oficinas de marcas de la Unión Europea han acordado una práctica común en el marco de la Red Europea de Marcas, Dibujos y Modelos, según la cual un cambio únicamente de color no altera el carácter distintivo de la marca a condición de que: los elementos denominativos y figurativos coincidan y sean los principales
elementos distintivos; se respete el contraste de las tonalidades; el color o combinación de colores no tenga carácter distintivo en sí mismo; el color no sea uno de los principales factores que contribuye al carácter distintivo
del signo.
Forma registrada Uso real Observación
T-152/11
El Tribunal consideró que, en el supuesto de que no se reivindique un color en la solicitud, «debe permitirse el uso de distintas combinaciones de color, siempre que las letras resalten sobre el fondo». El Tribunal también señaló que las letras «M», «A», «D» estaban colocadas de un modo particular en la marca comunitaria. Por consiguiente, las representaciones del signo que no alteran la disposición de las letras, ni el contraste de colores, constituyen un uso efectivo (apdos. 41 y 45).
Forma registrada Uso real Asunto
R 1479/2010-2
Se consideró que el elemento denominativo era la característica dominante de la marca figurativa, ya que estaba en una posición central y en letras grandes. Se consideró que el carácter distintivo no había cambiado (apartado 15).
Forma registrada Uso real Nº de asunto
R 0877/2009-1
«El fondo naranja es el color del envase de los productos. La marca se utiliza en negro sobre un fondo blanco, con un contorno en color plateado similar al de la marca registrada anterior. Los caracteres tipográficos se han modernizado ligeramente y se ha suprimido el pequeño guión entre "Bi" y "Fi". Sin embargo, estos cambios pueden considerarse como cambios menores que no alteran el carácter distintivo de la marca en la forma en que ha sido registrada, con arreglo al artículo 15, apartado 1, letra a), del RMC. Los caracteres tipográficos se han modernizado pero las letras siguen teniendo forma redonda y la supresión del guión puede pasar inadvertida. El carácter distintivo de la marca anterior todavía está basada en las grandes letras negras "Bi Fi", con la "B" y la "F" en mayúsculas y dos letras "i" en minúsculas, sobre un fondo blanco y resaltado en color plateado» (apartado 45).
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 48
FINAL VERSION 1.0 01/02/2015
En el caso de las marcas compuestas (es decir, las marcas compuestas por elementos denominativos y figurativos), los cambios de determinados elementos figurativos normalmente no afecta al carácter distintivo de las marcas.
Forma registrada Uso real Nº de asunto
T-147/03 (C-171/06 P desestimado)
«[L]os únicos elementos que diferencian la marca nacional anterior, tal y como fue registrada, del signo utilizado por la demandante son, por una parte, la estilización de la letra "q", a imagen de la esfera de un reloj de pulsera y, por otra, el uso de mayúsculas para designar el elemento denominativo de la marca nacional anterior… En primer lugar, si bien es cierto que la estilización de la letra "q" es más marcada en la representación del signo utilizado que en la de la marca nacional anterior, el carácter distintivo de ésta continúa residiendo no obstante en el elemento denominativo de dicha marca globalmente considerado. Resumiendo, debe precisarse que la estilización de la letra "q", a imagen, como acaba de mencionarse, de la esfera de un reloj de pulsera, no presenta un carácter especialmente distintivo de los productos de la clase 14, únicos productos respecto de los que la demandante ha aportado pruebas del uso de la marca anterior. En segundo lugar, en lo que concierne al empleo de mayúsculas, basta destacar que éste carece de originalidad y tampoco altera el carácter distintivo de la marca nacional anterior… De ello se deriva que la Sala de Recurso pudo tener válidamente en cuenta las pruebas aportadas por la demandante en relación con el signo reproducido en el apartado 10 precedente para los productos de la clase 14 "relojes de pulsera y correas de relojes de pulsera" con el fin de determinar si la demandante había demostrado el uso efectivo de la marca nacional anterior» (apdos. 28 a 30).
Lo anterior es especialmente importante en aquellos casos en que el elemento figurativo es fundamentalmente descriptivo de los productos y servicios.
Forma registrada Uso real Nº de asunto
GRECO TAVERNA R 2604/2011-1
En el caso del producto «FETA» y en relación con las dos banderas griegas situadas junto a la palabra «TAVERNA», cabe señalar que la obligación de usar una marca tal como fue registrada no exige a su titular usarla de forma aislada en el comercio. El artículo 15, apartado 1, del RMC no excluye la posibilidad de que el titular de la marca añada otros elementos (decorativos o descriptivos) o incluso otras marcas, como la marca de su empresa en el embalaje del producto, siempre que la marca «tal como fue registrada» pueda reconocerse claramente de forma individual. Las dos banderas griegas no poseen carácter distintivo alguno en relación con los productos de que se trata, que son especialidades alimenticias bien conocidas originarias de Grecia. Esto es lo que indican igualmente la presentación general del producto, de color azul y blanco como los colores de la bandera griega, la descripción del paisaje que recuerda una escena mediterránea y el símbolo de una denominación de origen protegida debajo de la imagen (apartado 39).
Esto también ocurre cuando los elementos dominantes permanecen inalterados (véase la sentencia T-135/04, «Online bus» citada).
Prueba de uso
Directrices relativas al examen ante la Oficina, Parte C, Oposición Página 49
FINAL VERSION 1.0 01/02/2015
Marcas tridimensionales
El uso de una marca tridimensional en distintos tamaños suelen constituir un uso de la marca registrada. La adición de un elemento denominativo/figurativo a dicha marca por lo general no altera el carácter distintivo del signo.
Marcas de color
Las marcas de color son marcas que están constituidas por uno o más colores per se. Cuando la marca está formada por una combinación de colores, el registro debe indicar la proporción de cada color y especificar cómo aparecerán.
Las marcas de color han de utilizarse tal como fueron registradas. Las variaciones insignificantes en el tono y la intensidad del color no alteran el carácter distintivo.
En caso de que se haya registrado sin especificar las correspondientes proporciones, el uso en proporciones diversas no afectará al carácter distintivo. Lo anterior no se aplica cuando se reivindiquen unas proporciones especiales y éstas resulten sustancialmente alteradas en la variación utilizada.
En caso de que se haya registrado un color o una combinación de colores, el uso con una palabra distintiva o descriptiva no afectará al carácter distintivo. Véase, por analogía, la sentencia del Tribunal que se indica abajo en relación con la prueba del carácter distintivo adquirido de una marca (examen):
Forma registrada Uso real Nº de asunto
(con la marca denominativa John Deere)
T-137/08 (asunto AG)
«Los colores objeto de la solicitud de registro fueron designados según el sistema de Munsell: 9.47 GY3.57/7.45 (verde) y 5.06 Y7.63/10.66 (amarillo). La descripción precisa que "el cuerpo del vehículo es verde y las ruedas son amarillas", tal como ilustra una imagen adjunta a la solicitud y reproducida a
continuación » (apartado 3).
«De las consideraciones anteriores se desprende que, si bien la marca controvertida se ha utilizado y promovido en combinación con la marca denominativa John Deere [el subrayado es nuestro] y los gastos en publicidad de la coadyuvante en la Unión Europea se presentaron en bloque y no individualmente para cada país, la demandante sostiene erróneamente que no se demostró suficientemente que la coadyuvante utilizaba como marca para sus productos la combinación de los colores verde y amarillo y que la difusión de sus productos había sido intensa y duradera en todos los Estados que eran miembros de la Unión Europea a 1 de abril de 1996» (apartado 46).
Alteraciones inadmisibles
Cuando una marca esté compuesta por diversos elementos de los que solo uno o algunos son distintivos y han tornado apta para el registro a la marca en su conjunto, una modificación de dicho elemento o su omisión o sustitución por otro elemento implicará por regla general una alteración del carácter distintivo.
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Forma registrada Uso real Nº de asunto
MEXAVIT MEXA-VIT C R 0159/2005-4
En este caso, el uso de la marca deletreada con distinta ortografía y la adición de la letra "C" altera el carácter distintivo del signo registrado, porque las letras "VIT" se ven ahora como un elemento descriptivo, en concreto "VIT C" (que se refiere a "Vitamina C").
Forma registrada Uso real Nº de asunto
R 2066/2010-4
«[L]os catálogos de "NOVEDADES" del periodo 2004-2009 muestran constantemente la marca y solo esta versión, lo cual no constituye un uso de la marca [tal como fue registrada] (con o sin color) que sea admisible con arreglo al artículo 15, apartado 1, letra a), del RMC. El mero hecho de que ambas marcas incluyan el elemento denominativo LLOYD’S no resulta suficiente a estos efectos, ya que los elementos figurativos de la marca anterior deben aparecer en la forma en que se utiliza. La forma en que se utiliza tiene una fuente diferente, le falta la letra aislada "L" la letra y rodeada de una figura orbital así como la figura circular u orbital alrededor de la palabra "LLOYD’S". Dicho de otro modo, faltan todos sus elementos figurativos en la forma en que se utiliza. Además, la forma en que se utiliza contiene una figura evidente de un pájaro volando con un pico largo. La supresión de todos los elementos figurativos de la marca tal como fue registrada y el añadido de otro elemento figurativo alterna, en la forma en que se utiliza, el carácter distintivo de la marca y es mucho más que una mera variación o modernización» (apartado 35).
Alteración de un signo realizada en una posición dominante
Véase, por ejemplo, la resolución R 0275/20062, «HYBRIS», citada en el apartado 2.7.3.1.
2.8 Uso de los productos y servicios para los cuales está registrada la marca
Según el artículo 15, del RMC, la marca ha de ser objeto de uso en relación con los productos y servicios para los cuales está registrada como condición para hacer valer los derechos derivados de la misma. A tenor de la primera frase del artículo 42, apartado 2, del RMC, la marca anterior debe haber sido objeto de un uso efectivo para los productos y servicios para los cuales esté registrada y en los que se base la oposición. La tercera frase del artículo 42, apartado 2, del RMC establece que si la marca comunitaria anterior solo se hubiere utilizado para una parte de los productos o de los servicios para los cuales esté registrada, solo se considerará registrada, a los fines del examen de la oposición, para esa parte de los productos o servicios.
Como el TG estableció en el asunto «Aladin»:
[Las disposiciones del artículo 42, del RMC] que permiten reputar registrada la marca anterior únicamente para aquella parte de los productos y servicios con respecto a la cual se ha probado el uso efectivo de la marca i) constituyen una limitación de los derechos que el titular de la marca anterior obtiene de su registro... y ii) deben conciliarse con el interés legítimo de dicho titular en poder ampliar en el futuro su gama de productos o servicios, dentro del límite de los términos que hacen referencia a los productos o servicios para los que se ha registrado la
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marca, beneficiándose de la protección que el registro de dicha marca le confiere. Así ocurre sobre todo cuando, como en el caso de autos, los productos y servicios para los que se registró la marca constituyen una categoría suficientemente circunscrita...
(Véase la sentencia de 14.7.2005, T-126/03, "Aladin", apartado 51, la negrita es nuestra.)
El análisis del uso efectivo debe ampliarse, en principio, a todos los productos y/o servicios registrados sobre los que está basada una oposición y para los que el solicitante pide de forma expresa que se presente la prueba de uso. Sin embargo, en las situaciones en que está claro que puede establecerse riesgo de confusión sobre la base de algunos de los productos y/o servicios anteriores, no es necesario que el análisis de la Oficina del uso efectivo se amplíe a todos los productos y/o servicios anteriores sino que puede centrarse en aquellos productos y/o servicios que sean suficientes para establecer la identidad/similitud con los productos y/o servicios impugnados.
Dicho de otro modo, dado que el riesgo de confusión puede establecerse sobre la base de una apreciación sobre el uso efectivo para algunos de los productos y/o servicios anteriores, no es necesario examinar las pruebas del uso presentadas por el oponente en relación con el resto de productos y/o servicios anteriores.
Las siguientes secciones incluyen una serie de orientaciones para ayudar a establecer si la marca anterior ha sido utilizada eficazmente para los productos y servicios registrados. Para más información, véanse las Directrices sobre el procedimiento de la oposición, Parte 2.2, Comparación de los productos y servicios y, en particular, la práctica relativa al uso de todas las indicaciones generales del título de clase, y el Directrices relativas al examen, Parte B.3, Clasificación de los productos y servicios.
2.8.1 Comparación del uso de productos y servicios con la lista de productos y servicios
Procede examinar con atención si los productos y servicios en relación con los cuales se ha utilizado la marca entran realmente dentro de la categoría de productos y servicios registrados.
Ejemplos:
Nº de asunto Producto y servicioregistrado Producto y
servicio utilizado Observación
T-382/08 VOGUE Calzado
Venta al por menor de calzado No admisible (apdos. 47 y 48)
T-183/08 SCHUHPARK Calzado
Servicios de venta al por menor relacionados con el calzado
No admisible (apartado 32)
R 0807/2000-3 – Demara
Productos farmacéuticos, veterinarios y desinfectantes
Compresas y pañales de papel para la incontinencia
No admisible aunque los productos específicos pueden ser distribuidos en farmacias (apdos. 14 a 16)
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R 1533/2007-4 – GEO MADRID
Servicios de telecomunicaciones de la clase 38
Proporcionar una plataforma de compra por Internet
No admisible (apartado 16)
R 0068/2003-2 – Sweetie
Frutas y legumbres en conserva, secas y cocidas; zumos concentrados de frutas y cítricos, conservas; azúcares, galletas, tartas, pastelería y confitería
Salsas de fresa, caramelo o chocolate
No admisible (apartado 20)
R 1519/2008-1 – DODOT et al
Pañales de gasa para bebé de la clase 25
Pañales desechables de papel y celulosa (clase 16)
No admisible (apartado 29)
R 0594/2009-2 – BANIF
Administración, representación y asesoría general de la clase 35 Proyectos técnicos, económicos y administrativos de la clase 42
Administración de fondos y activos personales o agencias inmobiliarias (clase 36)
No admisible (apartado 39)
B 1 589 871 OXIL
Interruptores eléctricos y «partes de lámparas»
Aparatos de alumbrado No admisible
B 253 494 CAI/Kay Servicios educativos
Servicios de esparcimiento No admisible
B 1 259 136, LUPA
Servicios de transporte y distribución de la clase 39
Entrega a domicilio de productos comprados en tiendas de venta al por menor
No admisible porque los servicios registrados se prestan por empresas de transporte especializadas cuya actividad no es prestar otros servicios, mientras que la entrega a domicilio de productos comprados en un establecimiento de venta al por menor solo es un servicio adicional complementario integrado en los servicios de venta al por menor
R1330/2011-4 – AF (fig)
Publicidad, gestión de negocios comerciales, administración de empresas, trabajos de oficina de la clase 35
Servicios de venta al por menor.
No admisible. Si la marca está registrada para las indicaciones generales incluidas en la clase 35, pero el uso se demuestra solo para los «servicios de venta al por menor» para determinados productos, esto no constituirá una prueba válida del uso para algunas de las indicaciones específicas de la clase 35 ni del título de clase en su conjunto (apartado 25 por analogía).
2.8.2 Importancia de la clasificación
Es importante establecer si los productos o servicios específicos para los que se ha utilizado la marca están comprendidos en alguna indicación general incluida en el título de clase de una clase en particular de productos o servicios, y si es así, en cuál de ellas.
Por ejemplo, el título de clase de la clase 25 es «vestidos, calzado y sombrerería» y cada uno de estos tres artículos constituye una «indicación general». Aunque en general el objeto de la clasificación únicamente es de tipo administrativo, es importante,
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para apreciar la naturaleza del uso, establecer si los productos para los que se ha utilizado la marca entran dentro de la indicación general de «vestidos», «calzado» o «sombrerería».
Esto resulta evidente cuando las categorías de productos similares se clasifican de distinta forma por determinados motivos. Por ejemplo, el calzado está comprendido en diferentes clases, según el propósito correspondiente: «zapatos ortopédicos» en la clase 10 y zapatos «para uso normal» en la clase 25. Debe establecerse, atendiendo a las pruebas aportadas, a qué tipo de calzado se refiere el uso.
2.8.3 Uso y registro relacionados con las indicaciones generales de los «títulos de clase»
En caso de que una marca esté registrada en todas o parte de las indicaciones incluidas en el título de clase de una clase en particular, y haya sido utilizada en relación con productos o servicios que están correctamente clasificados en la misma clase en una de estas indicaciones generales, la marca se reputará utilizada para una indicación general específica.
Ejemplo: La marca anterior está registrada para vestidos, calzado y sombrerería de la clase 25. Las pruebas hacen referencia a «faldas», «pantalones» y «camisetas».
Conclusión: La marca ha sido utilizada para vestidos.
En cambio, si una marca está registrada únicamente para una parte de las indicaciones generales incluidas en el título de clase de una clase en particular pero ha sido utilizada en relación con productos y servicios que entran dentro de otra indicación general de esa misma clase, la marca no se reputará utilizada en relación con los productos y servicios registrados (véase también infra el apartado 2.8.4).
Ejemplo: La marca anterior está registrada para vestidos de la clase 25. Las pruebas solo hacen referencia a «botas».
Conclusión: La marca no se ha utilizado para los productos para los que está registrada.
2.8.4 Uso para las subcategorías de productos y servicios y productos y servicios similares
Esta parte aborda el grado de protección que se garantiza cuando existe un uso de subcategorías de productos y de productos (o servicios) «similares».
En principio, no es apropiado aceptar la prueba de uso relacionada con productos y servicios «diferentes» pero de algún modo «vinculados» como si abarcara automáticamente otros productos y servicios registrados. En particular, la referencia al concepto de similitud de los productos y servicios no constituye una consideración válida en este contexto. La tercera frase del artículo 42, apartado 2del RMC no establece ninguna excepción a este respecto.
Ejemplo: La marca anterior está registrada para vestidos de la clase 25. Las pruebas solo hacen referencia a «botas».
Conclusión: La marca no se ha utilizado para los productos para los que está registrada.
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2.8.4.1 Marca registrada anterior para una categoría amplia de productos y servicios
En el asunto Aladin, el TG consideró:
si una marca ha sido registrada para una categoría de productos o servicios suficientemente amplia para que puedan distinguirse dentro de ella varias subcategorías susceptibles de ser consideradas de forma autónoma, la prueba de uso efectivo de la marca para una parte de esos productos o servicios solo implica la protección, en un procedimiento de oposición, de la subcategoría o subcategorías a las que pertenecen los productos o servicios para los que la marca ha sido efectivamente utilizada.
(Véase la sentencia de 14.7.2005, T-126/03, "Aladin", apartado 45.)
Por lo tanto, el caso de que la marca anterior esté registrada para una categoría amplia de productos y servicios, pero el oponente solo presente la prueba de uso en relación con productos y servicios específicos comprendidos en esta categoría suscita la cuestión de saber si la prueba de uso presentada debe considerarse únicamente como prueba de uso para los productos y servicios específicos, que no se mencionan como tales en la lista de productos y servicios, o para la categoría amplia tal como se especifica en el Registro.
El TG señaló asimismo, por un lado, que procede interpretar que el artículo 42, apartado 2, última frase, del RMC tiene por objeto evitar que una marca utilizada de manera parcial goce de una protección amplia únicamente porque ha sido registrada para una amplia gama de productos o servicios. Por lo tanto, hay que tener en cuenta la amplitud de las categorías de productos o servicios para los que se haya registrado la marca anterior, y en particular la generalidad de los términos empleados a tal efecto para describir dichas categorías, a la vista de los productos o servicios cuyo uso efectivo haya sido establecido de facto (apartado 44).
Por otro lado, no es necesario que el oponente presente pruebas de todas las formas comerciales de productos o servicios análogos, sino únicamente a productos o servicios suficientemente diferenciados para poder constituir categorías o subcategorías coherentes (apartado 46). La razón subyacente es que resulta imposible, en la práctica, que el titular de una marca pueda probar el uso de ésta para todas las variantes imaginables de los productos a los que afecta el registro.
Por lo tanto, la protección está disponible solo para la subcategoría o subcategorías a la que pertenecen los productos o servicios utilizados si:
1. una marca ha sido registrada para una categoría de productos o servicios:
a) que es suficientemente amplia para abarcar una serie de subcategorías que no sea de manera arbitraria;
b) que es susceptible de ser considerada de forma autónoma;
y
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2. se demuestra la prueba de uso efectivo de la marca solo para una parte de esos productos o servicios.
Debe facilitarse un razonamiento adecuado para definir las subcategorías y, atendiendo a las pruebas presentadas por el oponente, hay que explicar si el uso se ha demostrado respecto de solo una parte de la lista/subcategoría(s) inicial(es) amplia(s). Véanse infra los ejemplos del apartado 2.8.4.3.
Esto es especialmente importante en el caso de las marcas registradas para «productos farmacéuticos», que solo se suelen utilizar para un tipo de medicamento que trata una determinada enfermedad (véanse los ejemplos de productos farmacéuticos del apartado 2.8.4.3 infra).
Por otro lado, debe aceptarse el uso para toda una categoría si existen ejemplos de distintos tipos de productos que pertenecen a esta categoría y no hay otras subcategorías que abarquen los diferentes productos.
Signo impugnado Nº de asunto
CARRERA R 0260/2009-4(revocación)
El uso acreditado de una marca para:
inscripción decorativa paquetes de rendimiento mejorado tapas para compartimentos de almacenamiento conjuntos de ruedas y conjuntos completos de ruedas para verano e invierno placas protectoras de umbrales de puertas
se consideró prueba de uso suficiente para todas las «piezas de vehículos terrestres y de motor» para las que la marca fue registrada. Los principales argumentos fueron que se utilizaba para muchas partes de vehículos de motor distintas y que los productos cuyo uso se había demostrado abarcaban, por tanto, un amplio espectro de partes de vehículos de motor: elementos del chasis, la carrocería, el motor, el diseño interior y los elementos decorativos.
2.8.4.2 Marca registrada anterior para productos y servicios especificados de forma precisa
En cambio, la prueba de uso efectivo de la marca para algunos de los productos o servicios especificados cubre necesariamente toda esa categoría si:
(1) una marca ha sido registrada para productos o servicios definidos de forma tan precisa y circunscrita que
(2) no resulta posible establecer divisiones significativas dentro de la categoría de que se trate (véase la sentencia de 14.7.2005, T-126/03, "Aladin", apartado 45).
La decisión deberá indicar debidamente en qué casos se considera imposible hacer subdivisiones y, en su caso, por qué.
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2.8.4.3 Ejemplos
Para definir subcategorías adecuadas de indicaciones generales, el criterio de la finalidad o el destino del producto o del servicio de que se trate tiene un carácter esencial ya que es aplicado por los consumidores con anterioridad a cualquier compra (sentencia de 13.2.2007, T-256/04, "Respicur", apdos. 29 y 30; sentencia de 23.9.2009, T-493/07, "Famoxin", apartado 37). Otro criterio aplicable para definir subcategorías adecuadas podrían ser otras características del producto o servicio, por ejemplo la naturaleza del producto o servicio o el consumidor del producto o servicio.
Signo anterior Nº de asunto
ALADIN T-126/03
Productos y servicios: Productos para pulir metales de la clase 3.
Apreciación de la prueba de uso: La marca anterior se registró para «productos para pulir metales» de la clase 3 pero en realidad solo fue objeto de un uso efectivo para el «algodón mágico» (un producto para pulir metales consistente en algodón impregnado de un pulimento). El Tribunal consideró que «productos para pulir metales» que en sí misma es ya una subcategoría del término del título de clase «preparaciones para pulir» es lo suficiente precisa y circunscrita con respecto de la función y la finalidad de los productos reivindicados. No puede establecer otra subcategoría sin que ésta resultara artificial y, por lo tanto, se supuso el uso para toda la categoría de «productos para pulir metales».
Signo impugnado Nº de asunto
Turbo R 0378/2006-2Revocación
Productos y servicios: Vestidos de la clase 25.
Apreciación de la prueba de uso: la Sala de Recurso consideró que, además de a la ropa de baño, se hacía referencia a otros tipos de prendas de vestir en las facturas y que también se podían encontrar en los catálogos. Por lo tanto, la Sala de Recurso consideró que había quedado demostrado el uso de la marca impugnada para «vestidos» (apartado 22). La Sala de Recurso consideró asimismo que era prácticamente imposible y excesivamente costoso imponer al titular de una marca registrada para «vestidos» la obligación de demostrar el uso en todas las subcategorías posibles que el solicitante podría subdividir de manera infinita (apartado 25).
Signo anterior Nº de asunto
R 1088/2008-2 (confirmada por la sentencia T-132/09)
Productos y servicios: Aparatos y dispositivos de medición de la clase 9.
Apreciación de la prueba de uso: La marca se utilizó para aparatos y partes de los mismos de medición de la temperatura, presión y nivel. La decisión impugnada consideró que la lista original de la marca anterior para «aparatos y dispositivos de medición» era «muy amplia» y determinó, aplicando los criterios establecidos en la sentencia Aladin, que solo se había demostrado el uso para una subcategoría de productos, en concreto: «aparatos de medición, destinados a la medición de la temperatura, de la presión y del nivel; partes de dichos aparatos». La Sala de Recurso consideró que este enfoque era razonable a la vista de las circunstancias del asunto y suscribió esta argumentación y conclusiones en la decisión que se impugna en este sentido (apartado 29).
Signo impugnado Nº de asunto
ICEBERG R 1166/2008-1Revocación
Productos y servicios: Aparatos de calefacción, producción de vapor, de refrigeración, de secado, de
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ventilación y de distribución del agua de la clase 11.
Apreciación de la prueba de uso: La Sala de Recurso concluyó que el uso de la marca solo quedó demostrado para frigoríficos, congeladores y módulos de aire acondicionado para yates y barcos (apartado 26). Estos productos estaban incluidos en las subcategorías «aparatos de calefacción (en la medida en que los aparatos de aire acondicionado puedan utilizarse como calentadores), «aparatos de refrigeración» (en la medida en que los aparatos de aire acondicionado, frigoríficos y congeladores puedan mantener el aire y alimentos fríos) y «aparatos de ventilación» (en la medida en que las máquinas de aire acondicionado, frigoríficos y congeladores incluyan circuitos de ventilación) para los que fue registrada la marca. Por lo tanto, la Sala de Recurso consideró que debería seguir registrada para esas subcategorías (apartado 27). Sin embargo, la Sala de Recurso no consideró adecuado limitar el alcance de la protección de la marca a «yates y barcos», ya que esto dividiría aún más las «subcategorías» y resultaría en una limitación injustificada (apartado 28). Conclusión: se consideró probado el uso para «aparatos de calefacción, refrigeración y ventilación».
Signo impugnado Nº de asunto
LOTUS R 1295/2007-4Revocación
Productos y servicios: Ropa exterior e interior, calcetería, corsés, corbatas, tirantes, guantes, ropa interior de la clase 25.
Apreciación de la prueba de uso: No se presentaron pruebas relativas a los productos «corsés, corbatas, tirantes». Ninguno de los elementos de prueba presentados menciona estos productos o hace referencia a los mismos. El uso de una marca debe demostrarse para todos los productos y servicios para los que esté registrada. La marca está registrada para «ropa exterior e interior» pero también para productos específicos dentro de esta categoría, entre otros, «corsés, corbatas, tirantes». El uso para otros productos no es suficiente para mantener la protección de la legislación en materia de marcas para dichos productos, aunque estos otros productos también estén comprendidos en la categoría «ropa exterior e interior». La División de Nulidad consideró, en cambio, que el uso era suficiente, porque según los principios de la sentencia Aladin (véase la sentencia de 14.7.2005, T-126/03) los «corsés, corbatas, tirantes» están comprendidos en el término genérico de «ropa exterior e interior». Aunque esto es verdad, esta cuestión se subordina al examen de si los productos utilizados pueden incluirse en el término impugnado. No es el caso, sin embargo, de los «corsés, corbatas, tirantes». Si junto con el término genérico amplio la marca también reivindica expresamente los productos específicos cubiertos por el término genérico, deberá utilizarse también para dichos productos específicos para que siga estando registrada para ellos (apartado 25).
Signo anterior Nº de asunto
GRAF-SYTECO R 1113/2009-4
Productos y servicios: Instrumento eléctricos (incluidos en la clase 9); aparatos ópticos, instrumentos de pesar, de medida, de señalización y de control (supervisión); equipos de procesamiento de datos y ordenadores, en particular máquinas operadoras, de supervisión y control, instalaciones, vehículos y construcciones; programas de ordenador grabados; contadores electrónicos de la clase 9, servicios de reparación de la clase 37 y programación de computadoras de la clase 42.
Apreciación de la prueba de uso: Los aparatos que el oponente ha demostrado que ha introducido en el mercado están comprendidos en el texto de hardware tal como se especifica en la clase 9. Se trata, sin embargo, de una categoría amplia, especialmente considerando el desarrollo masivo y la gran especialización que está teniendo lugar en este ámbito, que puede dividirse en subcategorías, con arreglo a los productos realmente fabricados. En el presente caso, los productos deben limitarse a la industria automovilística. Dado que el oponente está obligado a aportar una garantía legal a sus clientes, puede considerarse que también ha acreditado el uso del servicio relativo a la reparación del hardware en cuestión (clase 37). La Sala de Recurso consideró asimismo que los programas de ordenador grabados de la clase 9 era una categoría muy amplia y debía limitarse al ámbito de actividad real del oponente (apdos. 30 y 31). No se aportaron pruebas para la clase 42.
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Signo anterior Nº de asunto
HEMICELL R 0155/2010-2
Productos y servicios: Comida para animales de la clase 31, y alimentos y piensos para animales, piensos para animales y aditivos no medicados para piensos para animales de la clase 31.
Apreciación de la prueba de uso: La decisión impugnada se equivocó al considerar que la marca anterior había sido objeto de un uso efectivo para «comida para animales» de la clase 31, y «alimentos y piensos para animales, piensos para animales y aditivos no medicados para piensos de animales, todos incluidos en la clase 31», ya que esta conclusión es contraria a las conclusiones del Tribunal en la sentencia ALADIN. El motivo argüido por la decisión impugnada no es admisible ya que debería haberse probado si la categoría de productos amparados por la marca anterior fue o no susceptible de ser dividida en subcategorías autónomas y si los productos para los que se ha acreditado el uso de la marca anterior pueden clasificarse en una de ellas. Por lo tanto, la Sala de Recurso considera que la marca anterior está, a efectos del examen de la oposición, registrada en relación solo con los «aditivos para piensos para animales» de la clase 31.
Productos farmacéuticos
En muchos casos, el Tribunal tuvo que definir las subcategorías apropiadas para productos farmacéuticos de la clase 5 y consideró que la finalidad y destino de un producto terapéutico viene expresada en su indicación terapéutica. Por lo tanto, la indicación terapéutica es fundamental para definir la correspondiente subcategoría de productos farmacéuticos. En este sentido, son irrelevantes otros criterios (como la forma de dosificación, los ingredientes activos, si se vende con receta o si es de libre prescripción).
El Tribunal consideró adecuadas las siguientes subcategorías de productos farmacéuticos:
Nº de asunto Adecuada No adecuada
T-256/04 "RESPICUR"
Productos farmacéuticos para enfermedades respiratorias
Aerosoles dosificadores que contienen corticoides, que se dispensan únicamente con receta médica
T-493/07 "FAMOXIN"
Productos farmacéuticos para enfermedades cardiovasculares
Preparados farmacéuticos que contienen digoxina destinados al uso en humanos para el tratamiento de enfermedades cardiovasculares
T-487/08 "KREMIZIN"
Productos farmacéuticos para el tratamiento para el corazón
Solución estéril de adenosina para el uso en el tratamiento de afecciones cardíacas específicas, para administración intravenosa en hospitales
T-483/04 "GALZIN"
Preparaciones elaboradas básicamente con calcio
Productos farmacéuticos
2.8.5 Uso de la marca en relación con las piezas de recambio y las operaciones de postventa de los productos registrados
En la sentencia «Minimax», el Tribunal afirmó que, en determinadas circunstancias, el uso de la marca para una categoría diferente también se puede considerar efectivo para los productos «registrados» ya comercializados y que ya no sean objeto de nuevas ofertas de venta (sentencia de 11.3.2003, C-40/01, "Minimax", apdos. 40 y ss.).
Así ocurre, en particular, cuando el titular de la marca con la que tales productos se hayan comercializado venda piezas de recambio que formen parte de la composición o la estructura de esos productos ya comercializados.
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Lo mismo puede afirmarse cuando el titular de la marca la utiliza efectivamente en el caso de operaciones de postventa, como la venta de accesorios o productos afines, o la prestación de servicios de mantenimiento y de reparación.
Signo Nº de asunto
Minimax C-40/01
Productos y servicios: extintores y productos afines frente a componentes y servicios postventa.
Apreciación de la prueba de uso: En los años 80 expiró la autorización relativa a los extintores comercializados por Ansul con la marca Minimax. Desde entonces, Ansul ya no comercializa extintores con dicha marca. No obstante, Ansul vendió piezas de recambio y preparaciones para extintores de dicha marca a empresas encargadas del mantenimiento de estos aparatos. Durante el mismo período, se ocupó del mantenimiento de los aparatos de la marca Minimax, los revisó y los reparó directamente, hizo que figurara dicha marca en las facturas relativas a tales servicios y colocó sobre dichos aparatos etiquetas autoadhesivas en las que reproducía esta marca, así como precintos en los que figuraba el texto «Gebruiksklaar Minimax» (Minimax listo para usar). Además, Ansul vendió las referidas etiquetas autoadhesivas y los precintos descritos a las empresas de mantenimiento de extintores.
No obstante, estas consideraciones del Tribunal se deberían interpretar de forma estricta y aplicar únicamente en casos muy excepcionales. En la sentencia «Minimax», el Tribunal aceptó el uso de productos diferentes de los registrados, lo que no es conforme a la norma general recogida en el artículo 42, apartado 2, del RMC.
2.9 Uso por el titular o en su nombre
2.9.1 Uso por el titular
Según lo dispuesto en el artículo 42, apartado 2, y en el artículo 15, apartado 1, del RMC, incumbe generalmente al titular hacer un uso efectivo de la marca registrada anterior. Estas disposiciones amparan también el uso de la marca por el titular anterior durante el tiempo de su titularidad (decisión de 10.12.1999, asunto B 74 494).
2.9.2 Uso por terceros autorizados
A tenor del artículo 15, apartado 2, el uso de la marca comunitaria con el consentimiento del titular se considerará como hecho por el titular. Esto significa que el titular tiene que haber dado su consentimiento antes de que el tercero utilice la marca. Se considerará insuficiente una aceptación a posteriori.
Un caso típico de uso por terceros es el uso llevado a cabo por los titulares de licencias. Del mismo modo, el uso efectuado por empresas vinculadas económicamente con el titular de la marca, como miembros del mismo grupo de empresas (filiales, sucursales, etc.) ha de reputarse uso autorizado. En caso de que los productos sean fabricados por el titular de la marca (o con su consentimiento), pero posteriormente sean puestos en el mercado por distribuidores mayoristas o minoristas, habrá de considerarse que se trata de un uso de la marca (sentencia de 17.2.2011, T-324/09, "Friboi", apartado 32 y sentencia de 16.11.2011, T-308/06, "Buffalo Milke", apartado 73).
En la fase de prueba bastará prima facie que el oponente se limite a presentar la prueba de uso de la marca por un tercero. La Oficina infiere de dicho uso, combinado
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con la capacidad del oponente para presentar la prueba al respecto, que el oponente ha dado su consentimiento previo.
Esta posición de la Oficina fue confirmada por la sentencia de 8.7.2004, T-203/02, "VITAFRUIT", apartado 25 (y confirmada por el Tribunal en el asunto C-416/04 P). El Tribunal señaló que parece poco probable que el titular de una marca pueda presentar la prueba de un uso de ésta efectuado contra su voluntad. Con mayor razón podía la Oficina basarse en esta presunción si se tiene en cuenta que el demandante no negaba que se hubiese usado la marca anterior con el consentimiento del oponente.
Con todo, si la Oficina albergara dudas o, en general, en los casos en los que el solicitante contesta expresamente el consentimiento del oponente, incumbe a este último presentar nuevas pruebas que demuestren que otorgó su consentimiento antes de que la marca fuera utilizada. En tales casos, la Oficina concede al oponente un nuevo plazo de dos meses para presentar dichas pruebas.
2.9.3 Uso de las marcas colectivas
Por regla general, las marcas colectivas no son utilizadas por su titular sino por los miembros de la asociación.
A tenor del artículo 70 del RMC, el uso realizado por (al menos) una persona facultada para utilizar la marca satisface el requisito del uso, siempre que sea efectivo.
El rasgo específico de las marcas colectivas es que tienen por objetivo principal no indicar el origen de los productos y servicios sino indicar que los productos y servicios proceden de una determinada región y/o poseen determinadas características o cualidades («indicaciones geográficas y complementarias de origen o calidad»). La diferencia de función ha de tenerse en cuenta a la hora de valorar la prueba de uso exigida a efectos del artículo 68, apartado 3, del RMC.
Las simples de personas autorizadas para utilizar la marca colectiva y las listas de productos que están certificados con una marca colectiva por lo general no son de por sí suficientes para acreditar un uso efectivo (decisión de 25.5.2009, B 1 155 904, véase asimismo la resolución de 24.2.2009, R 0970/2008-2 – "NFB").
2.10 Uso legal
La cuestión de saber si la marca ha sido utilizada de forma que satisfaga los requisitos del uso previsto en los artículos 15 y 42, del RMC requiere una apreciación de hecho sobre el uso efectivo. El uso será «efectivo» en este contexto si el usuario vulnera disposiciones legales.
Un uso que pueda inducir al público a error a efectos de lo dispuesto en el artículo 7, apartado 1, letra g), o del artículo 51, apartado 1, letra c), del RMC o en disposiciones de Derecho nacional sigue siendo «efectivo» a efectos de la declaración de las marcas anteriores invocadas en un procedimiento de oposición. Las sanciones previstas para el uso engañoso son la declaración de nulidad o de caducidad, según proceda, o una prohibición de uso (contemplada en el artículo 110, apartado 2, del RMC).
Se aplica el mismo principio en aquellos casos en que el uso se realiza en virtud de un contrato de licencia ilegal (por ejemplo, contratos que infringen las normas de
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competencia del Tratado o normas nacionales). Del mismo modo, el hecho de que el uso pueda vulnerar derechos de terceros también es irrelevante.
2.11 Justificación de la falta de uso
De conformidad con el artículo 42, apartado 2 del RMC, el oponente puede alternativamente acreditar que existen causas justificativas para la falta de uso de la marca registrada anterior. Estas causas abarcan, tal como menciona el artículo 19, apartado 1, segunda frase, del Acuerdo sobre los ADPIC, las circunstancias que surjan independientemente de la voluntad del titular de la marca y que constituyan un obstáculo al uso de la misma.
Como excepción de la obligación de uso, debe interpretarse de forma limitada el concepto de motivos adecuados para la falta de uso.
Los «impedimentos burocráticos», que pueden plantearse con independencia de la voluntad del titular de la marca, pueden ser insuficientes, salvo si guardan una relación directa con la marca, hasta el extremo de que su empleo dependa de la finalización de los trámites administrativos de que se trate. Sin embargo, el criterio de una relación directa no implica necesariamente que el uso de la marca sea imposible, sino que bastará que el uso no sea razonable. Es preciso apreciar caso por caso si un cambio de la estrategia empresarial para sortear el impedimento de que se trate haría que no fuese razonable el uso de dicha marca. Así, por ejemplo, no sería razonable exigir al titular de una marca que comercializase sus productos en los establecimientos de sus competidores (sentencia de 14.6.2007, C-246/05, "Le Chef de Cuisine", apartado 52).
2.11.1 Riesgos empresariales
Procede considerar que el concepto de causa justificativa que se plantean ajenas a la voluntad del titular que hacen que el uso de la marca sea imposible o poco razonable, y no a circunstancias relacionadas con sus dificultades comerciales (resolución de 14.5.2008, R 0855/2007-4 – "PAN AM", apartado 27; sentencia de 9.7.2003, T-162/01, "GIORGI", apartado 41).
Por consiguiente, las dificultades financieras de una empresa derivadas de una recesión económica o de sus propios problemas financieros no se consideran causas justificativas de la falta de uso a efectos del artículo 42, apartado 2, del RMC, ya que este tipo de dificultades constituyen una parte natural del funcionamiento de una empresa.
2.11.2 Intervención estatal o judicial
Las restricciones a la importación u otros requisitos oficiales son dos ejemplos de causas válidas para la falta de uso expresamente mencionadas en el artículo 19, apartado 1, segunda frase, del Acuerdo sobre los ADPIC.
Las restricciones a la importación consisten en un embargo comercial que afecta a los productos protegidos por la marca.
Otros requisitos oficiales pueden estar constituidos por un monopolio del Estado, que impide cualquier tipo de uso, o una prohibición estatal de vender los productos por
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motivos de salud o de defensa nacional. Casos típicos a este respecto son los procedimientos reglamentarios como:
ensayos clínicos y autorización de nuevos medicamentos (resolución de 18.4.2007, R 0155/2006-1 – "LEVENIA"); o
la autorización de la autoridad de seguridad alimentaria, por la que ha de pasar el titular antes de ofrecer en el mercado sus productos y servicios.
Signo anterior Nº de asunto
HEMICELL R 0155/2010-2
Las pruebas presentadas por el oponente acreditan debidamente que el uso de las marcas anteriores para un aditivo alimentario, en concreto, «potenciador de la digestibilidad zootécnica (enzimas para piensos)» estaban condicionadas a una autorización previa que debe emitir la Autoridad Europea de Seguridad Alimentaria tras presentar una solicitud ante dicho órgano. Dicho requisito debe considerarse un requisito oficial en el sentido del artículo 19, apartado 1, del Acuerdo sobre los ADPIC.
Respecto del procedimiento o medidas cautelares de un tribunal debe hacerse la siguiente diferenciación:
Por un lado, la simple amenaza de un litigio o de una acción de anulación pendiente contra la marca anterior, por lo general, no libera al oponente de la obligación de utilizar su marca en el tráfico económico. Depende del oponente, que es la parte atacante en el procedimiento de oposición, llevar a cabo una evaluación del riesgo adecuada de sus posibilidades de prevalecer en el procedimiento contencioso y extraer las conclusiones adecuadas de dicha evaluación sobre si continuar o no con el uso de su marca (véase la resolución de 18.2.2013, R 1101/2011-2 – "SMART WATER", apartado 40).
Signo anterior Nº de asunto
HUGO BOSS R 0764/2009-4
El procedimiento nacional [de anulación francés] planteado contra la marca opositora no puede considerarse una causa que justifica la falta del uso (apartado 19).
Lo que sigue ocurriendo es que las causas que justifican la falta del uso son únicamente aquellas que están fuera de la zona y la influencia del titular de la marca, por ejemplo, los requisitos nacionales de autorización o las limitaciones a la importación. Estas causas son neutrales en relación con la marca que se debe utilizar, afectan no a la marca sino a los productos y servicios que el titular desea utilizar. Dichos requisitos nacionales de autorización o limitaciones a la importación se aplican al tipo o a las propiedades del producto en el que figura la marca, y no puede eludirse eligiendo una marca distinta. En este caso, por el contrario, el titular de la marca podría sencillamente fabricar cigarrillos en Francia o importarlos a Francia si hubiera elegido una marca distinta (apartado 25).
Signo anterior Nº de asunto
MANPOWER R 0997/2009-4
Según el artículo 9, del RMC y el artículo 5 de la Directiva de marcas, no deben vulnerarse las marcas de terceros. Este requisito es aplicable a cualquier persona que utilice una denominación en el tráfico comercial, con independencia de si ha solicitado por sí mismo protección de marca o la ha obtenido para dicha denominación. Las personas que evitan cometer dichas infracciones no actúan por «causas que justifiquen» sino por ministerio de la ley. Así que, argumentar que al evitar el uso se infringiría de otro modo un derecho no es una causa justificada (resolución de 9.3.2010, R 0764/2009-4 – "HUGO BOSS/BOSS", apartado 22) (apartado 27).
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Ni el uso en dichos casos «no será razonable». Las personas que, como titulares de marcas, se ven amenazadas por un procedimiento o una medida cautelar si comienzan a usarla, deberán tener en cuenta las perspectivas de éxito de la acción que se ha interpuesto contra ellos y podrán recapitular (no comenzar a utilizar la marca) o defenderse contra la reclamación. En cualquier caso, deben aceptar la resolución de los tribunales independientes, que pueden dictarse en procedimientos abreviados. Mientras esté pendiente una resolución definitiva, no podrán objetar que deben estar protegidos por el hecho de que, hasta que la decisión se convierte en definitiva, debe reconocerse la incertidumbre como causa que justifica la falta del uso. De hecho, la cuestión de qué debería ocurrir en el periodo entre que se presenta la acción o la solicitud de una medida cautelar y la resolución definitiva concluyente de nuevo se deja a los tribunales, ya que son ellos quienes adoptan decisiones que todavía no son definitivas sobre la aplicación provisional. El demandado no tiene derecho a ignorar esas decisiones y actuar como si no existieran tribunales (apartado 28).
Por otro lado, por ejemplo, una medida cautelar o una orden judicial de restricción en procedimientos de insolvencia, que imponga una prohibición general de transferir o disponer por parte del titular de la marca, puede ser una causa que justifique la falta del uso porque obliga al oponente a dejar de utilizar su marca en el tráfico comercial. Un uso de la marca contrario a lo dictado por dicha orden judicial haría que el titular de la marca pueda reclamar daños y perjuicios (resolución de 11.12.2007, R 0077/2006-1, – "Miss Intercontinental", apartado 51).
2.11.3 Registros defensivos
El TG ha aclarado que la existencia de una disposición nacional que reconozca los registros denominados «defensivos» (es decir, de signos que no van a ser utilizados en el comercio por su función puramente defensiva respecto a otro signo que es objeto de explotación comercial) no puede constituir una causa justificativa de la falta del uso de una marca anterior invocada como base de la oposición (sentencia de 23.2.2006, T-194/03, "Bainbridge", apartado 46).
2.11.4 Fuerza mayor
Otras causas justificativas de la falta de uso son los casos de fuerza mayor que impiden el normal funcionamiento de la empresa del titular.
2.11.5 Consecuencias de la justificación de la falta de uso
La existencia de causas justificativas no implica que la falta de uso durante el periodo mencionado se considere equivalente al uso real, lo que supondría el comienzo de un nuevo periodo de gracia una vez extinguidas las causas justificativas.
La falta de uso durante el citado período se limita a suspender el periodo de cinco años, con la consecuencia de que el periodo en el cual la falta de uso está justificada no se tiene en cuenta a la hora de calcular el periodo de gracia de cinco años.
Además, la duración del periodo durante el cual existieron causas justificativas puede ser importante. Las causas de la falta de uso que solo existen durante una parte del periodo de cinco años previo a la publicación de la solicitud de marca comunitaria, no siempre pueden considerarse un motivo justificado para dejar de aplicar el requisito de la prueba de uso. En este contexto, el periodo durante el cual concurrieron estas razones y el tiempo transcurrido desde que dejaron de existir revisten una particular importancia (decisión de 1.7.1999, B 2 255).
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3 Procedimiento
3.1 Petición del solicitante
Según lo dispuesto en el artículo 42, apartado 2 del RMC el uso de la marca anterior se debe demostrar únicamente en aquellos casos en que el solicitante pide la prueba de uso. Por consiguiente, la prueba de uso se ha constituido en el procedimiento de oposición como un motivo de defensa del solicitante.
La Oficina no puede informar al solicitante de que puede pedir la prueba de uso ni invitarle a que lo haga. En atención a la posición imparcial que la Oficina ocupa en el procedimiento de oposición, incumbe a las partes argumentar y defender sus posiciones respectivas como consideren oportuno (véase el artículo 76, apartado 1, segunda frase, del RMC).
El artículo 42, apartado 2 del RMC no es de aplicación cuando el oponente presenta, por propia iniciativa, algún tipo de prueba de uso de la marca anterior invocada (ver apartado 3.1.2 en cuanto a las excepciones a esta regla). Mientras el solicitante de la marca comunitaria no solicite la prueba de uso, la Oficina no investigará de oficio si la marca anterior ha sido objeto de un uso efectivo. En estos casos, carece de relevancia que la prueba presentada solo demuestre un tipo o forma particular de uso, o un uso limitado a algunos de los productos o servicios para los cuales está registrada la marca anterior.
La obligación de presentar la prueba de uso únicamente se aplica si la marca anterior se encuentra sometida al requisito del uso, es decir, si ha estado registrada no menos de cinco años (para más información, véase supra el apartado 2.5.1).
3.1.1 Periodo de solicitud
Según la regla 22, apartado 1, la petición de la prueba de uso, de acuerdo con el Artículo 42, apartado 2, del REMC, será únicamente admisible si el solicitante presenta dicha petición dentro del plazo fijado por la Oficina. La petición de la prueba de uso solo se admitirá cuando el solicitante la presente dentro del primer plazo fijado para enviar sus observaciones de conformidad con la regla 20, apartado 2, del REMC.
Si la petición relativa a la prueba de uso se recibe durante el periodo de reflexión o en el transcurso del plazo de dos meses concedido al oponente para presentar hechos, pruebas y alegaciones, o para presentar hechos pruebas y alegaciones adicionales, tal petición se remitirá al oponente sin demora.
3.1.2 La petición debe ser expresa, inequívoca e incondicional
La petición del solicitante constituye una declaración formal con importantes consecuencias procesales.
Por consiguiente, la petición ha de ser expresa e inequívoca. Por regla general, la petición de la prueba de uso ha de formularse de forma positiva. Como el uso o la falta de uso puede ser una cuestión llena de matices (por ejemplo, invocar o negar un
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mayor grado de carácter distintivo de la marca anterior), las meras observaciones o comentarios del solicitante sobre la falta de uso de la marca del oponente no son suficientemente expresos ni constituyen una petición válida de la presentación de la prueba de uso efectivo (sentencia de 16.3.2005, T-112/03, "Flexi Air").
Ejemplos:
Petición suficientemente expresa e inequívoca:
«Solicito al oponente que presente prueba de uso…»;
«Invito a la Oficina a señalar un plazo para que el oponente acredite el uso…»;
«Mediante el presente escrito se contesta el uso de la marca anterior…»;
«Se impugna el uso de la marca anterior en virtud del artículo 42, del RMC.»;
«El solicitante plantea una objeción de falta de uso.» (resolución de 5.8.2010, R 1347/2009-1 – "CONT@XT").
Petición no suficientemente expresa e inequívoca:
«El oponente ha utilizado su marca solo para…»;
«El oponente no ha utilizado su marca para…»;
«No hay pruebas de que el oponente haya utilizado alguna vez su marca…»;
«[L]os registros anteriores del oponente no pueden ser “reivindicados de forma válida contra la solicitud de marca comunitaria…”, ya que “…no se ha aportado... información ni pruebas de uso» (decisión de 22.9.2008, B 1 120 973).
Se acepta como excepción una solicitud implícita a la regla anterior cuando el oponente presenta motu proprio antes de la primera oportunidad del solicitante de presentar alegaciones y, en su primera respuesta, el solicitante pone en duda las pruebas del uso presentadas por el oponente (sentencia de 12.6.2009, T-450/07, "Pickwick COLOUR GROUP"). En tales casos, no habrá errores respecto de la naturaleza del intercambio, y la Oficina considerará que se ha realizado una solicitud de prueba de uso y concederá un plazo al oponente para completar dichas pruebas. En caso de que el procedimiento haya finalizado y se constate la existencia de una solicitud de la prueba de uso solo cuando se haya adoptado una decisión, el examinador reabrirá el procedimiento y concederá al oponente un plazo para concluir la obtención de pruebas.
En todo caso, la petición debe ser incondicional. Las frases como «si el oponente no limita sus productos/servicios de las clases “X” o “Y”, solicitamos la prueba de uso», «si la Oficina no desestima la oposición debido a la inexistencia del riesgo de confusión, solicitamos la prueba de uso» o «si la Oficina lo considera oportuno, se invita al oponente a aportar la prueba de uso de su marca» formulan pretensiones condicionales o subsidiarias, que no constituyen peticiones válidas de la prueba de uso (resolución de 26.5.2010, R 1333/2008-4 – "RFID SOLUTIONS").
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3.1.3 Interés del solicitante en pedir la prueba de uso en primer lugar
Según la regla 22, apartado 5, del REMC, el solicitante podrá limitar sus primeras observaciones a la petición de la prueba de uso. Así, en un segundo momento podrá presentar las alegaciones formuladas en respuesta a la oposición, es decir, junto con las alegaciones que se formulen en respuesta a la prueba de uso. Asimismo, podrá hacerlo si únicamente un derecho anterior se encuentra sometido al requisito del uso, ya que no se debería obligar al solicitante a presentar sus observaciones en momentos diferentes.
No obstante, si la petición no es válida, la Oficina dará por concluido el procedimiento sin conceder al solicitante una nueva oportunidad para presentar sus observaciones (véase el apartado 3.1.5 infra)
3.1.4 Reacción si la petición no es válida
Si la petición no es válida por alguna de las razones anteriormente expuestas o si no se cumplen los requisitos del artículo 42, apartados 2 y 3, del RMC, la Oficina remitirá al oponente las declaraciones del solicitante e informará a ambas partes acerca de la nulidad de la petición.
La Oficina dará por concluido el procedimiento de forma inmediata si la petición es completamente inválida y no se acompaña de las observaciones del solicitante. No obstante, la Oficina podrá ampliar el plazo establecido en la regla 20, apartado 2, del REMC si dicha petición inválida fue recibida antes de que finalice el plazo para el solicitante pero que la Oficina tramita una vez expirado el plazo. Habida cuenta de que la denegación de la solicitud de la prórroga tras el vencimiento del plazo lesionará de forma desproporcionada los intereses del solicitante, la Oficina concederá una prórroga del plazo correspondiente al número de días que dejó transcurrir cuando la parte presentó su solicitud. Esta práctica se basa en las reglas de buena administración.
Si la petición solo fuere inválida para una parte de los derechos anteriores en los que se basa la oposición, la Oficina limitará expresamente el requerimiento de la prueba de uso dirigido al oponente a aquellos derechos que están sujetos a la obligación de la prueba de uso.
3.2 Requerimiento expreso de la Oficina
Si la petición de la prueba de uso del solicitante es válida, la Oficina concederá al oponente un plazo de dos meses para presentar la prueba de uso o demostrar que existen causas justificativas para la falta del uso. Decidir acerca del uso a falta de requerimiento expreso de la Oficina de presentación de la prueba de uso constituye un vicio sustancial del procedimiento, incluso en caso de que el oponente entienda que la petición del solicitante es inequívoca y presente la prueba de uso requerida (resolución de 28.2.2011, R 0016/2010-4, "COLORPLUS", apartado 20; resolución de 19.9.2000, R 0733/1999-1, "Affinité/Affinage").
En aquellos casos en que la petición de la prueba de uso se reciba durante el periodo de reflexión y se envíe al oponente durante ese mismo periodo, el plazo para presentar la prueba de uso ha de coincidir con el plazo señalado para presentar hechos, pruebas y alegaciones iniciales, o para presentar hechos, pruebas y
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alegaciones adicionales. El plazo se prorrogará automáticamente si se prorrogase el periodo de reflexión.
En caso de que la petición se reciba en la Oficina antes de que venza el plazo señalado para presentar hechos, pruebas y alegaciones, o para presentar hechos pruebas y alegaciones adicionales, y se tramite dentro de ese mismo plazo, deberá prorrogarse el plazo para presentar dichos hechos, pruebas y alegaciones a fin de hacerlo coincidir con el plazo de dos meses concedido para presentar la prueba de uso.
3.3 Reacción de la parte oponente: presentación de la prueba de uso
3.3.1 Plazo para presentar la prueba de uso
La Oficina concede al oponente un plazo de dos meses para presentar la prueba de uso. El oponente puede solicitar una prórroga del plazo de conformidad con la regla 71 del REMC. La práctica común sobre prórrogas resulta aplicable a dichas solicitudes5.
La regla 22, apartado 2, del REMC establece expresamente que la Oficina desestimará la oposición si la parte oponente no facilita la prueba de uso antes de que expire el plazo.
Es necesario distinguir entre dos posibilidades:
El oponente no ha presentado pruebas o estas no son pertinentes en el plazo establecido: la presentación de evidencias de la prueba de uso por primera vez una vez expirado el plazo establecido tiene como resultado el rechazo de la oposición sin que la Oficina tenga facultades de apreciación. En este aspecto, el Tribunal ha dictaminado que la Regla 22, apartado 2, del REMC constituye una provisión esencialmente procesal y que el texto de dicha disposición establece claramente que si no se presenta la prueba de uso de la marca en el plazo fijado por la OAMI, la oposición debe rechazarse automáticamente (sentencia de 18 de julio de 2013 en el asunto C-621/11 P, «Fishbone» apartados 28 y 29).
El oponente ha presentado pruebas pertinentes dentro del plazo, así como pruebas adicionales tras la expiración del plazo: en cuyo caso, cuando las pruebas adicionales simplemente refuercen y clarifiquen las pruebas pertinentes presentadas anteriormente dentro del plazo establecido, y siempre que el oponente no abuse de los plazos al emplear deliberadamente tácticas dilatorias o al demostrar negligencia manifiesta, la Oficina podrá tener en cuenta las pruebas presentadas fuera de plazo, como resultado de un ejercicio objetivo y razonable de las facultades discrecionales que le concede el artículo 76, apartado 2, del RMC (sentencia de 29 de noviembre de 2011, en el asunto T-415/09, «Fishbone», apartado 31; confirmada por la sentencia de 18 de julio de 2013, en el asunto C- 621/11 P, «Fishbone», apartados 28 y 30). El Tribunal aclaró que las mismas consideraciones se aplican mutatis mutandis al procedimiento de declaración de nulidad (sentencia de 26 de septiembre de 2013, en el asunto C-610/11 P, «Centrotherm», apartado 87, aplicación de la regla 50, apartado 5, del REMC).
5 Véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales, apartado 6.2.1, Prórroga de los plazos del procedimiento de oposición.
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La Oficina debe exponer en la resolución los motivos por los que rechaza o toma en cuenta las «pruebas adicionales». No basta con declaraciones de carácter general, como «las pruebas no son pertinentes» o «el oponente no ha justificado por qué las pruebas adicionales se hayan presentado fuera del plazo establecido» (sentencia de 26 de septiembre de 2013, en el asunto C-610/11 P, «Centrotherm», apartado 111).
Esa toma en consideración por parte de la OAMI, cuando haya de pronunciarse en el marco de un procedimiento de oposición, puede justificarse, en particular, cuando esta considere, por un lado, que los elementos presentados extemporáneamente pueden en un primer momento ser realmente pertinentes por lo que respecta al resultado de la oposición formulada ante ella y, por otro lado, que la fase del procedimiento en la que se produce dicha presentación extemporánea y las circunstancias que la rodean no se oponen a esa toma en consideración (sentencia de 13 de marzo de 2007, en el asunto C-29/05 P, «ARCOL/CAPOL», apartado 44).
3.3.2 Medios de prueba
3.3.2.1 Principios
La prueba de uso debe proporcionarse de manera estructurada.
El artículo 76, apartado 1, del RMC establece que «…en un procedimiento sobre motivos de denegación relativos al registro, el examen se limitará a los medios alegados y a las solicitudes presentadas por las partes…». La presentación de las pruebas debe ser suficientemente clara y precisa para permitir que la otra parte ejerza su derecho de defensa y que la Oficina realice su examen, sin hacer referencia a la información superflua y adicional.
Fundamentalmente, se impide que la Oficina atienda el caso para una u otra parte y no puede asumir el lugar del oponente, o su representante, intentando hallar e identificar en los documentos presentados la información que podría considerarse como prueba justificativa del uso, lo cual significa que la Oficina no debe buscar mejorar la presentación de las pruebas de ninguna parte. La responsabilidad de ordenar las pruebas recae en la parte, por lo que si no lo hace deja abierta la posibilidad de que no se tengan en cuenta algunas pruebas.
Por lo que al formato y al contenido de las pruebas presentadas se refiere, la Oficina recomienda que se tengan en cuenta los siguientes aspectos clave para una presentación estructurada:
1. Debe indicarse el correspondiente número de expediente (MC, oposición, anulación y recurso) en la parte de arriba de toda la correspondencia.
2. Debe enviarse los documentos con la prueba de uso en una comunicación por separado. Sin embargo, si la correspondencia incluye cuestiones urgentes como la solicitud de limitación, suspensión, ampliación de plazo, renuncia, etc., debe indicarse también en la portada.
3. Debe mencionarse el número total de páginas de la correspondencia. La numeración de las páginas de los anexos es igualmente importante.
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4. La Oficina recomienda encarecidamente que la correspondencia del oponente no supere un máximo de 110 páginas.
5. Si se envía la documentación en diferentes paquetes, se recomienda indicar el número de paquetes.
6. Si se envía una gran cantidad de documentación por fax en diferentes lotes, se recomienda indicar el número total de páginas, el número de lotes e identificar las páginas que incluye cada lote.
7. Utilice preferentemente hojas normales tamaño DIN-A4, en lugar de otros formatos o dispositivos, para todos los documentos presentados incluyendo separadores entre los anexos y los documentos adjuntos, ya que también pueden estar escaneados.
8. No deben enviarse muestras físicas, envases, embalajes, etc. En su lugar, deberá hacerse una fotografía de los mismos, imprimirla (si el color es relevante, en colores, y si no, enviar en blanco y negro) y enviarla como un documento.
9. Los documentos originales o elementos enviados a la Oficina no deben graparse, doblarse ni colocarse en carpetas.
10. Debe identificarse de manera clara la segunda copia que deberá remitirse a la otra parte.
11. Si el original se envía únicamente por fax a la Oficina, no deberá utilizarse este medio para enviar una segunda copia.
12. Debe indicarse de manera clara en la portada si la correspondencia enviada incluye elementos en color que sean relevantes para el expediente.
13. Debe incluirse un segundo conjunto de elementos en color para enviar a la otra parte.
Estas recomendaciones también se envían al oponente junto con la comunicación de la Oficina de la petición de la prueba de uso del solicitante.
Según la regla 22, apartado 4, del REMC, la prueba se presentará de conformidad con las reglas 79 y 79 bis, y deberá limitarse preferentemente a la presentación de documentos y objetos acreditativos, como, por ejemplo, envases, etiquetas, listas de precios, catálogos, facturas, fotografías, anuncios en periódicos y las declaraciones escritas a que hace referencia el artículo 78, apartado 1, letra f), del RMC. La regla 22, apartado 4, del REMC también admite los estudios de mercado y las menciones de la marca en listas y publicaciones de asociaciones pertenecientes a la profesión de que se trate como medios de prueba apropiados (decisiones de 14.3.2011, B 1 582 579, y de 18.6.2010, B 1 316 134).
Las listas de precios y los catálogos son ejemplos de «pruebas procedentes directamente de la propia parte». Los «informes y cuentas anuales» de una empresa también pertenecerían a ese tipo de pruebas.
La regla 22, apartado 4, del REMC se debe leer conjuntamente con la regla 79 bis de tal Reglamento. Esto significa que los medios de prueba que no se puedan escanear o fotocopiar (como CD o soportes físicos similares) no se tomarán en consideración a no
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ser que se remitan dos ejemplares para que uno de ellos se pueda enviar a la otra parte. El requisito relativo a la prueba de uso siempre suscita la cuestión del valor probatorio de las pruebas presentadas. Estas pruebas deben poseer al menos cierto grado de fiabilidad. En general, la Oficina atribuye a las pruebas presentadas por terceros un valor probatorio superior al de las pruebas presentadas por el titular o su representante. La referencia del oponente a listados internos o a sondeos o pedidos hipotéticos son especialmente problemáticos. No obstante, cuando existen medios de prueba que se han elaborado periódicamente para el uso del público o las autoridades de conformidad con la normativa en vigor como, por ejemplo, las leyes de sociedades o la normativa bursátil, y se pueda dar por supuesto que tales medios se encuentran sujetos a algún tipo de comprobación oficial, el valor probatorio de dichos medios es ciertamente más elevado que el de los documentos u objetos acreditativos elaborados por el oponente para un uso «personal» (véase también el apartado 3.3.2.3 «Declaraciones»).
3.3.2.2 Remisiones
El oponente puede servirse de resoluciones dictadas por las oficinas y tribunales nacionales en procedimientos de tenor análogo. Si bien la Oficina no está vinculada por las resoluciones de las oficinas y tribunales nacionales, éstas han de tenerse en cuenta y pueden influir en la resolución de la Oficina. Es importante para la Oficina poder considerar el tipo de prueba que dio lugar a la resolución adoptada en el ámbito nacional. La Oficina toma en consideración los diferentes requisitos de carácter procesal y sustantivo que pueden existir ante el órgano nacional respectivo (decisiones de 25.8.2003, R 1132/2000-4 – "VANETTA", apartado 16, y de 18.10.2000, R 0550/1999-3 – "DUKE", apartado 23).
El oponente puede desear remitirse a las pruebas del uso presentadas en procedimientos incoados previamente ante la Oficina (confirmado por el TG en su sentencia «ELS», arriba citada). La Oficina admite como válidas tales remisiones a condición de que el oponente identifique claramente las pruebas a las que se remite y el procedimiento en el que fueron presentadas. Si en la remisión no se identifican con suficiente claridad las pruebas de que se trata, la Oficina exigirá al oponente que especifique claramente las pruebas a las que se refiere o bien que las presente (decisión de 30.11.2010, B 1 080 300). Véase más información sobre las condiciones de identificación de las pruebas pertinentes en las Directrices, Parte C, Oposición, Sección 1: Aspectos procesales.
La carga de la prueba de uso recae sobre el oponente y no sobre la Oficina o el solicitante. Por lo tanto, una mera indicación de la página web donde a Oficina puede encontrar más información no es suficiente ya que no proporciona a la Oficina las indicaciones suficientes sobre el lugar, naturaleza, tiempo, alcance del uso (decisión de 31.10.2001, B 260 192).
3.3.2.3 Declaraciones
Mientras que los medios de prueba enumerados, tales como envases, etiquetas, listas de precios, catálogos, facturas, fotografías o anuncios en periódicos, no presentan problemas especiales, es necesario analizar detalladamente las declaraciones escritas a que hace referencia artículo 78, apartado 1, letra f), del RMC.
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No se exige que el oponente presente una declaración escrita sobre el volumen de negocio realizado por la explotación de la marca anterior. Así, se deja al arbitrio del oponente elegir los medios de prueba que considere apropiados para demostrar que la marca anterior ha sido objeto de un uso efectivo durante el período pertinente (sentencia de 8.7.2004, T-203/02, "VITAFRUIT", apartado 37).
Distinción entre admisibilidad e importancia (valor probatorio)
La importancia de las declaraciones ha sido objeto de intensos debates. A este respecto, debe establecerse una clara distinción entre la admisibilidad y el valor probatorio de dicha prueba.
Por lo que respecta a la admisibilidad, la regla 22, apartado 4, del REMC menciona expresamente las declaraciones escritas a que hace referencia el artículo 78, apartado 1, letra f), del RMC como medio admisible de prueba de uso. El artículo 78, apartado 1, letra f), del RMC cita algunos medios de prueba y, entre ellos, las declaraciones escritas prestadas bajo juramento, o declaraciones solemnes u otras declaraciones que, con arreglo a la legislación del Estado en que se realicen, tengan efectos equivalentes. En consecuencia, procede evaluar si la declaración presentada constituye una declaración a efectos de lo dispuesto en artículo 78, apartado 1, letra f), del RMC. Solo es preciso averiguar cuáles son los efectos de una declaración escrita en la legislación nacional en los casos en que dichas declaraciones no se hayan hecho bajo juramento o solemnemente (sentencia de 7.6.2005, T-303/03, "SALVITA", apartado 40). En caso de duda sobre si una declaración se ha hecho bajo juramento o solemnemente, corresponde al oponente presentar la prueba a este respecto.
El artículo 78, apartado 1, letra f), del RMC no especifica las personas que deberían firmar estas declaraciones, de suerte que no hay razón para considerar que las declaraciones firmadas por las propias partes en el procedimiento no están amparadas por esta disposición (sentencia de 16.12.2008, T-86/07, "DEITECH-DEI-tex", apartado 46).
Respecto del valor probatorio, ni el RMC ni el REMC apoyan la conclusión de que el valor probatorio de los medios de pruebas del uso de la marca, incluidas las afirmaciones, debe valorarse a la luz de la legislación nacional de un Estado miembro. Con independencia de la posición que ocupe desde el punto de vista del Derecho nacional, la fuerza probatoria de una declaración escrita es relativa, es decir, que su contenido debe apreciarse libremente (sentencia de 28.3.2012, T-214/08, "OUTBURST", apartado 33). El valor probatorio de una declaración depende, ante todo, de la verosimilitud de la información que contiene. Por tanto, es necesario tener en cuenta, en especial, el origen del documento, las circunstancias de su elaboración, así como su destinatario, y preguntarse si, de acuerdo con su contenido, parece razonable y fidedigno (sentencia de 7.6.2005, T-303/03, "SALVITA", apartado 42).
Por lo que respecta al valor probatorio de este tipo de prueba, la Oficina establece una distinción entre las declaraciones redactadas por las propias partes interesadas o sus empleados y las declaraciones procedentes de una fuente independiente.
Declaraciones efectuadas por el titular o sus empleados
Las declaraciones realizadas por las propias partes interesadas o de sus empleados normalmente tienen una relevancia menor que las pruebas independientes. Esto
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obedece a que la percepción de la parte implicada en el litigio puede estar más o menos influenciada por sus intereses personales en el asunto (resolución de 11.1.2011, R 0490/2010-4 – "BOTODERM", apartado 34; decisiones de 27.10.2009, B 1 086 240 y de 31.8.2010, B 1 568 610).
Sin embargo, esto no significa que dichas declaraciones carecen completamente de cualquier valor probatorio (sentencia de 28.3.2012, T-214/08, "OUTBURST", apartado 30). Se deben evitar las generalizaciones, dado que el valor exacto de dichas declaraciones depende siempre de su contenido concreto. Las declaraciones que contienen información detallada y concreta poseen un valor probatorio más elevado que aquellas declaraciones formuladas de manera muy general y abstracta.
El resultado final dependerá de la apreciación global de las pruebas en cada caso concreto. Por regla general, es necesario aportar otras pruebas para acreditar el uso, ya que se debe tener en cuenta que las declaraciones poseen un valor probatorio menos elevado que las pruebas físicas (etiquetas, envases, etc.) o que las pruebas procedentes de fuentes independientes. Por consiguiente, es muy importante que el valor probatorio de las otras pruebas aportadas sea elevado. Se ha de valorar si el contenido de la declaración jurada está suficientemente avalado por otras pruebas (o viceversa). El hecho de que la oficina nacional respectiva pueda observar cierta práctica en la apreciación de este tipo de prueba de uso no significa que sea aplicable en los procedimientos relativos a marcas comunitarias (sentencia de 7.6.2005, T-303/03, "Salvita", apdos. 41 y ss.)
Un cambio de titularidad posterior a la fecha de publicación de la solicitud de marca comunitaria puede invalidar las declaraciones realizadas por los nuevos titulares, puesto que estos últimos no suelen tener el conocimiento directo necesario para realizar declaraciones relativas al uso de la marca por parte del titular anterior (resolución de 17.6.2004, R 0016/2004-1 – "Reporter").
No obstante, en caso de un traspaso de titularidad o cualquier otro tipo de sucesión, el nuevo titular podrá basarse en el uso realizado por sus predecesores en el periodo de gracia correspondiente. El uso realizado por el predecesor del titular podrá ser demostrado por el propio predecesor o por cualquier otro medio fiable como, por ejemplo, a través de la información recogida en los archivos de la empresa si el propio predecesor no está en disposición de probar tal uso.
Declaraciones de terceros
Las declaraciones (como, por ejemplo, las encuestas) procedentes de una fuente independiente, por ejemplo, expertos, organizaciones profesionales, Cámaras de Comercio, proveedores, clientes o socios comerciales del oponente, poseen un mayor valor probatorio (véase la resolución de 19.1.2011, R 1595/2008-2 – "FINCONSUMO", apartado 9 (ii); la resolución de 30.3.2010, R 0665/2009-1 – "EUROCERT", apartado 11 y la decisión de 12.8.2010, B 1 575 615).
Esta práctica es acorde con la jurisprudencia del Tribunal de Justicia en la sentencia «Chiemsee» (sentencia de 4.5.1999, asuntos acumulados C-108/1997 y C-109/1997), en la cual el Tribunal aportó algunas indicaciones acerca de las pruebas apropiadas para acreditar el carácter distintivo adquirido por la marca en el mercado. Si bien es cierto que la adquisición de carácter distintivo no es en sí misma equivalente a un uso efectivo, tal adquisición comprende elementos del uso de un signo en el mercado. Por consiguiente, la jurisprudencia correspondiente se puede utilizar por analogía.
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Las declaraciones efectuadas por las partes no están incluidas entre las «pruebas de terceros», mientras que todas las demás pruebas, como las encuestas, los informes de las Cámaras de Comercio, o las declaraciones de organizaciones profesionales o de expertos, proceden de terceros.
3.4 Reacción del solicitante
3.4.1 Envío de las pruebas
Una vez recibidas las pruebas del uso presentadas por el oponente, la Oficina enviará al solicitante la totalidad de las mismas.
Por norma, la Oficina concede dos meses al solicitante para presentar observaciones relativas a la prueba de uso (y a la oposición).
3.4.2 Insuficiencia de la prueba de uso
No obstante, la Oficina puede dar inmediatamente por concluido el procedimiento en caso de que se presente una prueba de uso insuficiente o no se presenten pruebas dentro del plazo concedido y esta circunstancia afecte a todos los derechos anteriores en los que se basa la oposición. La razón que subyace a esta práctica es evitar la continuación del procedimiento cuando ya se conoce el resultado, es decir, la desestimación de la oposición por falta de prueba de uso (principio de economía y de buena administración del procedimiento). La Oficina sigue esta práctica solamente en aquellos casos en los que las pruebas presentadas sean claramente insuficientes para acreditar una prueba de uso efectivo.
En los casos en que la prueba pueda considerarse suficiente, será enviada al solicitante concediéndole un plazo de dos meses para presentar observaciones. La Oficina no debe señalar al oponente que la suficiencia de la prueba es dudosa, ni tampoco invitar al oponente a presentar otras pruebas en estos casos. Tales actos serían contrarios a la posición imparcial de la Oficina en los procedimientos contradictorios (resolución de 1.8.2007, R 0201/2006-4 – "OCB/O.C.B.", apartado 19).
3.4.3 Ausencia de reacción del solicitante
Si el solicitante no responde dentro del plazo concedido, la Oficina dictará una resolución sobre la base de las pruebas obrantes en autos. El hecho de que el solicitante no conteste no implica que reconozca la suficiencia de la prueba de uso presentada (sentencia de 7.6.2005, T-303/03, "Salvita", apartado 79).
3.4.4 Retirada formal de la petición
Cuando el solicitante conteste a la prueba de uso retirando formalmente su petición de prueba de uso, la cuestión del uso quedará sin objeto. Dado que el solicitante es quien insta el procedimiento correspondiente, también se encuentra lógicamente en posición de poner término a esta parte del procedimiento mediante la retirada formal de su petición (resolución de 21.4.2004, R 0174/2003-2 – "Sonnengarten", apartado 23).
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3.5 Nueva reacción del oponente
El oponente tiene derecho a presentar observaciones en contestación a las observaciones del solicitante. Esto reviste una particular importancia en aquellos casos en los que la resolución que se debe adoptar pudiera basarse parcialmente en argumentos esgrimidos por el solicitante en el sentido de que la prueba presentada no acredita el uso de la marca.
La Sala de Recurso consideró el hecho de no brindar al oponente la posibilidad de pronunciarse en un caso semejante un vicio sustancial del procedimiento (resolución de 28.2.2011, R 16/2010-4 – "COLORPLUS", apartado 20).
Para más información sobre la presentación de pruebas adicionales, véase el apartado supra 3.3.1.
3.6 Lenguas en el procedimiento de la prueba de uso
Según la regla 22, apartado 6, del REMC, en el caso de que las pruebas facilitadas de conformidad con los apartados 1, 2 y 3 no estén en la lengua del procedimiento de oposición, la Oficina podrá exigir a la parte que presente la oposición que facilite una traducción de tales pruebas a dicha lengua dentro del plazo que ella misma determine.
La Oficina decidirá discrecionalmente si el oponente ha de presentar una traducción de la prueba de uso a la lengua de procedimiento. Al ejercer esta facultad discrecional, la Oficina sopesará los intereses de ambas partes.
No debe olvidarse que la traducción de la prueba de uso presentada a la lengua de procedimiento puede resultar extremadamente onerosa y una pesada carga para el oponente.
Por otro lado, el solicitante tiene derecho a ser informado sobre el contenido de las pruebas presentadas con el fin de poder ejercer la defensa de sus intereses. Es absolutamente necesario que el solicitante tenga la posibilidad de examinar el contenido de la prueba de uso presentada por el oponente. A este respecto, habrá que tener en cuenta la naturaleza de los documentos presentados. Por ejemplo, podría considerarse que las facturas «estándar» y las muestras de envases no requieren traducción para su comprensión por el solicitante (sentencia de 15.12.2010, T-132/09, "EPCOS", apdos. 51 y ss.; decisiones de 30.4.2008, R 1630/2006-2 – "DIACOR", apdos. 46 y ss. (pendiente de apelación T-258/08) y de 15.9.2008, R 1404/2007-2 – "FAY", apdos. 26 y ss.).
Si el solicitante pide expresamente una traducción de la prueba a la lengua de procedimiento, en principio, la Oficina exigirá una traducción al oponente. No obstante, es posible rechazar una petición de estas características cuando, a la vista del significado evidente de la prueba presentada, la petición del solicitante parezca exagerada o incluso abusiva.
En los casos en que la Oficina exige una traducción de la prueba presentada, otorga al oponente un plazo de dos meses para presentarla. Cuando la prueba de uso sea muy voluminosa, la Oficina puede invitar expresamente al oponente a traducir únicamente las partes de las pruebas presentadas que aquélla considere suficientes para acreditar el uso efectivo de la marca durante el periodo de referencia. Por regla general, corresponde al oponente valorar la necesidad de presentar o no una traducción
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completa de todas las pruebas presentadas. Los medios de prueba solo serán tomados en consideración en la medida en que se haya presentado una traducción o que su significado sea evidente con independencia de sus elementos textuales.
3.7 Resolución
3.7.1 Competencia de la Oficina
La Oficina lleva a cabo su propia apreciación de la prueba de uso presentada. Esto significa que su valor probatorio se aprecia con independencia de las observaciones presentadas por el solicitante a este respecto. La apreciación de la importancia, pertinencia, carácter concluyente y eficacia de la prueba se basa en la facultad discrecional y de enjuiciamiento de la Oficina, y no incumbe a las partes, quedando excluida del principio de contradicción por el que se rigen los procedimientos inter partes (decisiones de 1.8.2007, R 201/2006-4 – "OCB", apartado 19 y de 14.11.2000, R 823/1999-3 – "SIDOL").
Una declaración del solicitante según la cual el uso ha quedado acreditado no tiene, por tanto, ningún efecto sobre la decisión de la Oficina. La petición de la prueba de uso es un motivo de defensa del solicitante. No obstante, una vez alegado el motivo de defensa por el solicitante, corresponde únicamente a la Oficina conducir el procedimiento posterior y valorar si la prueba presentada por el oponente posee suficiente valor probatorio. Con todo, el solicitante puede retirar formalmente la petición de la prueba de uso (véase supra el apartado 3.4.4.).
Lo anterior no es contrario al artículo 76, apartado 1, del RMC, el cual establece que en los procedimientos inter partes el examen de la Oficina se limitará a los hechos, pruebas, alegaciones y pretensiones presentadas por las partes. Sin embargo, aunque la Oficina queda vinculada a los hechos, pruebas y alegaciones que las partes proporcionan, no queda obligada por el valor jurídico que las partes les conceden a los mismos. En consecuencia, las partes pueden estar de acuerdo sobre los hechos que han sido acreditados o no, pero no pueden determinar si tales hechos son suficientes o no para acreditar el uso efectivo (decisiones de 1.8.2007, R 0201/2006-4 – "OCB", apartado 19, y de 14.11.2000, R 0823/1999-3 – "SIDOL", apartado 20; así como en la resolución de 13.3.2001, R 0068/2000-2 – "NOVEX PHARMA").
3.7.2 Necesidad de tomar una decisión
No siempre es necesaria una decisión relativa al cumplimiento de la obligación de haber realizado un uso efectivo de la marca registrada. La cuestión de la prueba de uso no ha de considerarse una cuestión preliminar que deba examinarse siempre antes de adoptar una resolución sobre el fondo. Ni el artículo 42, apartado 2, del RMC ni la regla 22, apartado 1, del REMC indican que deba ser así.
Cuando el solicitante pida prueba de uso de los derechos anteriores, la Oficina también examinará si, y en qué medida, se ha demostrado el uso para las marcas anteriores, siempre que esto sea pertinente para el resultado de la decisión de que se trate:
Si existen derechos anteriores que no están sujetos a la obligación de uso y que llevan a la conclusión de que existe riesgo de confusión, no es necesario evaluar la prueba de uso aportada para otros derechos anteriores.
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Asimismo, si los signos o los productos o servicios para los que está registrada la marca anterior son distintos de los de la marca impugnada, o no existe riesgo de confusión entre los signos, no será necesario abordar la cuestión de la prueba de uso.
3.7.3 Apreciación global de las pruebas presentadas
Tal como se ha establecido con más detalle anteriormente (véase supra el apartado 2.2), la Oficina ha de evaluar las pruebas presentada en relación con el lugar, tiempo, alcance y naturaleza del uso en una apreciación global. No es adecuado realizar una evaluación por separado de los diversos factores pertinentes, cada uno considerados de manera aislada (sentencia de 17.2.2011, T-324/09, "Friboi", apartado 31).
Resulta aplicable el principio de interdependencia, lo cual significa que una prueba débil respecto de un factor relevante (por ejemplo, un volumen de ventas reducido) podría compensarse con pruebas sólidas relativas a otro factor (por ejemplo, un uso continuado durante un largo periodo).
Deben tenerse en cuenta todas las circunstancias de un asunto específico junto con otras para determinar la prueba de uso efectivo de la marca de que se trate. Las circunstancias concretas pueden incluir, por ejemplo, las características específicas de los productos/servicios de que se trate (por ejemplo, precios altos o bajos, productos de masa frente a productos especiales) o el mercado o el ámbito de actividad determinado.
Las pruebas indirectas/circunstanciales, en ciertas condiciones incluso por sí mismas, pueden ser adecuadas para demostrar un uso efectivo.
Como la Oficina no valora el éxito comercial, incluso un uso mínimo (pero que no tenga un carácter simbólico o interno) puede ser suficiente para considerarlo «efectivo», siempre que se vea como una garantía en el sector económico de que se trate para mantener o adquirir una cuota de mercado.
La resolución indica cuál fue la prueba que se presentó. Sin embargo, por lo general, solo se menciona la prueba pertinente para la conclusión. Si se considera que la prueba es concluyente, bastará que la Oficina indique los documentos que se utilizaron para llegar a dicha conclusión así como el motivo por el que se utilizaron. Si se desestima una oposición porque la prueba de uso fue insuficiente, no se abordará la cuestión del riesgo de confusión.
3.7.4 Ejemplos
Los siguientes asuntos constituyen ejemplos de algunas de las resoluciones dictadas por la Oficina o el Tribunal (con resultados distintos) en las que era importante llevar a cabo una apreciación global de las pruebas presentadas:
3.7.4.1 Uso efectivo aceptado
Nº de asunto Observación
Sentencia de El oponente (Fribo Foods Ltd.) presentó varias facturas relativas a grandes
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cantidades de productos, dirigidas a su compañía de distribución (Plusfood Ltd.), que pertenece al mismo grupo (Plusfood Group). Conviene señalar que la compañía de distribución coloca los productos en el mercado posteriormente. Asimismo, el oponente presentó folletos sin fecha, un recorte de prensa y tres listados de precios. Respecto de las facturas «internas», el Tribunal consideró que la cadena productor-distribuidor-mercado era un método común de organización empresarial, que no podía considerarse un uso puramente interno. Los folletos sin fecha deben considerarse junto con otras pruebas fechadas como las facturas y los listados de precios y, por lo tanto, aún podrían tenerse en cuenta. El Tribunal aceptó el uso efectivo y destacó que la apreciación global implicaba que todos los factores pertinentes deben considerarse de forma conjunta y no aislada.
Resolución de 2.5.2011, R 0872/2010-4, "CERASIL"
El oponente presentó, entre otros, cerca de 50 facturas, que no estaban en la lengua del procedimiento. Se tacharon tanto los nombres de los destinatarios como las cantidades. La Sala de Recurso consideró que las facturas estándar que incluían la información habitual (la fecha, indicación del nombre/dirección del comprador y del vendedor, producto de que se trate, precio pagado) no necesitaban traducción. Aunque los nombres de los destinatarios y las cantidades vendidas fueron tachados, las facturas en cambio confirmaron la venta de los productos «CERATOSIL», indicados en kilogramos, a empresas en todo el territorio de referencia durante el periodo de referencia. Junto con el resto de pruebas (folletos, declaraciones juradas, artículos, fotografías), se consideró suficiente para acreditar el uso efectivo.
Resolución de 29.11.2010, B 1 477 670
El oponente, que estaba activo en el ámbito de mantenimiento de vehículos y la gestión de empresas vinculadas con la compraventa de vehículos, aportó diversos informes anuales que proporcionaron una visión general de sus actividades comerciales y financieras globales. El DO consideró que estos informes, por sí mismos, no constituyen información suficiente sobre el uso real de la mayoría de los servicios reivindicados. Sin embargo, junto con los anuncios y la publicidad que muestran la marca de que se trate para servicios especiales, el DO concluyó que las pruebas en su conjunto aportaron las suficientes indicaciones respecto del alcance, la naturaleza, el periodo y el lugar de uso para dichos servicios.
Resolución de 29.11.2010, R 0919/2009-4 – "GELITE"
Los documentos presentados por el apelante demuestran un uso de la marca en relación con «materiales de revestimiento basados en resinas artificiales (capas bases, intermedias y primeras capas) y lacas industriales». Las etiquetas adjuntas demuestran el uso de la marca para diversas capas bases y primeras capas). Esta información coincide con los listados de precios adjuntos. Las hojas de información técnica describen estos productos como revestimiento contra la corrosión basada en resinas artificiales, que se ofrecen a la venta en diversos colores. Las facturas adjuntas demuestran que estos productos fueron suministrados a varios clientes en Alemania. Aunque las cifras de negocios establecidas en la declaración escrita respecto del periodo entre 2002 a 2007 no hacen referencia expresa a Alemania, debe concluirse que al menos se obtuvieron en parte también en dicho país. En consecuencia, la marca se considera utilizada para los productos «lacas, pinturas lacadas, barnices, pinturas; productos de dispersión y emulsiones para revestir y reparar superficies» porque no es posible crear otras subcategorías para estos productos.
Resolución de 20.4.2010, R 0878/2009-2 – "SOLEA"
La declaración solemne hace referencia a elevadas cifras de venta (más de 100 millones de euros) de productos comercializados entre 2004 y 2006 y adjunta extractos de Internet de fotografías de los productos vendidos durante el periodo de referencia (jabón, champú, desodorante (para pies y cuerpo), lociones y artículos de higiene). Aunque los extractos de Internet llevan una fecha de derechos de autor de 2008, la credibilidad de lo que afirma la declaración se ve reforzada por la sentencia del tribunal estatal de Mannheim, una copia que el oponente aportó previamente para acreditar el carácter distintivo elevado de la marca anterior y que hacía referencia a la cuota de mercado de la que gozan los productos que llevan la marca del oponente para productos para el cuidado facial para mujeres (6,2%), lociones (6,3%), jabones y champús para la ducha (6,1%) y productos de afeitar y para el cuidado facial masculino (7,9%). Asimismo, la sentencia establece que, según un estudio del GfK, una quinta parte de ciudadanos alemanes adquieren al menos un producto BALEA al año. También se hace referencia a otros dos estudios que demuestran que la marca tiene renombre en Alemania. Por lo tanto, la prueba de uso para la marca ha quedado
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suficientemente acreditada para los productos en que se basa la oposición.
Resolución de 25.3.2010, R 1752/2008-1 – "ULUDAG"
Las pruebas aportadas para justificar el uso de la marca danesa parecen suficientes. La Sala de Recurso está satisfecha de que la factura aportada acredita el lugar y el tiempo del uso, así como la venta a una empresa danesa de 2 200 cartones de productos en la fecha de referencia. Las etiquetas presentadas acreditan el uso en refrescos que llevan la marca tal como está indicado en el certificado de registro. Por lo que a la pregunta de si la prueba que está compuesta por una sola factura es suficiente respecto del alcance del uso, en opinión de la Sala de Recurso, el contenido de dicha factura, en el contexto del resto de documentos de prueba, sirve para concluir que el uso realizado por la marca en Dinamarca es suficiente y efectivo respecto de «aguas gaseosas, aguas gaseosas con sabor a frutas y aguas sodas».
3.7.4.2 Uso efectivo no aceptado
Nº de asunto Observación
Sentencia de 18.1.2011, T-382/08, "VOGUE"
El oponente presentó una declaración por parte del socio gestor del oponente y de 15 fabricantes de calzado («el calzado ha sido fabricado por el oponente con la marca VOGUE durante una serie de X años»), 35 fotografías de modelos de calzado VOGUE, fotografías de establecimientos y 670 facturas emitidas por los fabricantes de calzado al oponente. El Tribunal consideró que las declaraciones no proporcionaban pruebas suficientes relativas al alcance, lugar y tiempo del uso. Las facturas eran relativas a la venta de calzado al oponente, no a la venta de calzado a los consumidores finales y, por tanto, no son adecuadas para acreditar el uso externo. Las meras presunciones y suposiciones («altamente improbable», «excesivo pensar», «… que probablemente explican la ausencia de facturas…», «razonable presumir», etc.) no pueden sustituir las pruebas sólidas, por lo que se desestimó el uso efectivo.
Decisión de 19.9.2007, 1359 C (confirmada por R 1764/2007-4)
El titular de la marca era propietario de una compañía aérea con sede en EE.UU., que solo opera en los EE.UU. El hecho de que los vuelos también podían reservados por Internet desde la Unión Europea no altera el hecho de que los servicios de transporte (clase 39) reales se prestaron exclusivamente fuera del territorio de referencia. Asimismo, los listados de pasajeros presentados con direcciones en la Unión Europea no demuestran que los vuelos hayan sido reservados desde Europa. Por último, la página web estaba escrita exclusivamente en inglés, los precios se anunciaron en dólares estadounidenses y los correspondientes números de teléfono y de fax eran de EE.UU., por lo que se desestimó el uso efectivo en el territorio de referencia.
Resolución de 4.5.2010, R 0966/2009-2 – "COAST"
No existen circunstancias especiales que podrían justificar la conclusión de que los catálogos presentados por el oponente, por sí mismos o junto con extractos de la página web y de revistas, acreditan la magnitud del uso de cualquiera de los signos anteriores para cualquiera de los productos y servicios implicados. Aunque las pruebas presentadas demuestran el uso del signo anterior junto con «prendas de vestir de hombres y mujeres», el oponente no aportó ninguna prueba que indicase el volumen comercial de la explotación de dicho signo para acreditar que dicho uso fue efectivo.
Resolución de 8.6.2010, R 1076/2009-2 – "EURO CERT"
Queda establecido en la jurisprudencia que una declaración, incluso si es jurada o solemne con arreglo a la legislación con la que se presta, debe corroborarse con pruebas independientes. La declaración en este asunto, que fue redactada por un empleado de la empresa oponente, incluye un resumen de la naturaleza de los servicios de referencia, aunque solo declaraciones generales relativas a las actividades comerciales. No incluyen detalles sobre las cifras de venta o publicitarias ni ningún otro dato que podrían acreditar el alcance y el uso de la marca. Asimismo, solo tres facturas con datos financieros importantes tachados y un listado de clientes difícilmente pueden considerarse pruebas corroborantes, por lo tanto no quedó acreditado el uso efectivo de la marca anterior.
Resolución de Las hojas de cálculo con cifras de facturación y los informes de análisis y de
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revisión relativos a las cifras de ventas son documentos elaborados por el propio apelante o encargado por el mismo y, por lo tanto, tienen un valor probatorio reducido. Ninguna de las pruebas presentadas incluye una indicación clara relativa al lugar de uso de la marca anterior. Las hojas de cálculo y los informes de análisis y revisión, que incluyen datos compilados por un valor total de ventas estimadas (en SEK) entre los años 2003 y 2007, no incluyen ninguna información sobre el lugar en que se realizaron las ventas. No se hace referencia al territorio de la Unión Europea, en que está registrada la marca anterior. Las facturas no incluyen ninguna venta de productos que el recurrente haya realizado, por lo tanto, las pruebas presentadas son claramente insuficientes para acreditar el uso efectivo de la marca anterior.
Sentencia de 12.12.2002, T-39/01, "HIWATT"
Un catálogo en el que aparecía la marca sobre tres modelos distintos de amplificador (sin indicación del lugar, fecha y alcance), un catálogo de la feria internacional de Frankfurt en el que constaba que una empresa denominada HIWATT Amplification International exponía en la citada feria (sin indicar el uso de la marca) y una copia del catálogo de HIWATT Amplification de 1997 en el que figuraba la marca sobre distintos modelos de amplificador (sin indicación del lugar o alcance del uso) no fueron considerados suficientes para acreditar el uso efectivo, debido principalmente a la ausencia de indicaciones sobre el alcance del uso.
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE D
ANULACIÓN
SECCIÓN 1
PROCEDIMIENTOS DE ANULACIÓN
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Índice
1 Introducción: Aspectos generales del procedimiento de anulación.................................................................................................... 4
2 Solicitud de anulación............................................................................... 5 2.1 Personas facultadas para presentar una solicitud de anulación............5 2.2 Solicitud por escrito................................................................................... 5
3 Pago de la tasa .......................................................................................... 6
4 Examen de admisibilidad.......................................................................... 7 4.1 Requisitos de admisibilidad relativos (regla 37, del REMC).................... 8
4.1.1 Número de registro de la marca comunitaria impugnada y nombre y dirección de su titular (regla 37, letra a), incisos i) y ii), del REMC)............... 8
4.1.2 Alcance de la solicitud de anulación (regla 37, letra a), inciso iii), del REMC) ............................................................................................................ 8
4.1.3 Motivos de la solicitud de anulación y hechos, pruebas y alegaciones justificativos de dichos motivos (regla 37, apartado b), del REMC)............... 9
4.1.4 Identificación del solicitante (regla 37, letra c), del REMC).......................... 10
4.2 Invitación a subsanar irregularidades .................................................... 11
5 Notificación de la solicitud al titular de la marca comunitaria y posteriores comunicaciones entre las partes....................................... 12
6 Lenguas utilizadas en los procedimientos de anulación..................... 13 6.1 Traducción de la solicitud de anulación................................................. 14 6.2 Traducción de la prueba aportada por el solicitante en apoyo de
la solicitud ................................................................................................ 14 6.3 Traducción de las observaciones presentadas por las partes en el
curso del procedimiento .......................................................................... 15 6.4 Traducción de la prueba aportada por el titular de la marca en el
curso del procedimiento .......................................................................... 15 6.5 Traducciones de la prueba del uso......................................................... 16
7 Otras cuestiones ..................................................................................... 16 7.1 Continuación del procedimiento ............................................................. 16 7.2 Suspensión............................................................................................... 17 7.3 Renuncias y retiradas .............................................................................. 17
7.3.1 Renuncias que afecten a todos los productos y/o servicios controvertidos ............................................................................................... 18
7.3.2 Renuncias que afectan únicamente a una parte de los productos y/o servicios controvertidos ................................................................................ 19
7.3.3 Retiradas ...................................................................................................... 19
7.4 Solicitudes de caducidad y nulidad contra la misma marca comunitaria............................................................................................... 19
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7.5 Registros internacionales que designan a la UE impugnados ............. 20
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1 Introducción: Aspectos generales del procedimiento de anulación
Los procedimientos ante la Oficina relativos a la caducidad o nulidad de una marca comunitaria registrada (MC) se agrupan bajo el título general «Procedimiento de anulación» y los gestiona en primera instancia la División de Anulación. Las reglas básicas relativas a estos procedimientos se encuentran principalmente en los artículos 56 y 57, del RMC y reglas 37 a 41, del REMC.
Los procedimientos de anulación se incoan con la presentación de una solicitud de caducidad o de declaración de nulidad (la «solicitud de anulación») contra una MC registrada. No es admisible una solicitud de anulación contra una solicitud de MC que aún no esté registrada.
Una vez recibida la solicitud de anulación, la Oficina comprobará que se ha abonado la tasa correspondiente. (La solicitud únicamente se considerará presentada una vez que se haya abonado la tasa exigida). A continuación, la Oficina lleva a cabo una comprobación preliminar de los requisitos de admisibilidad, que incluye, en particular, los establecidos en la regla 37, del REMC. La Oficina también notifica la solicitud al titular de la MC. Si existe alguna irregularidad respecto a los requisitos de admisibilidad relativos, la Oficina pedirá al solicitante que las subsane dentro de un plazo determinado.
Una vez comprobada la admisibilidad, la Oficina efectuará una inscripción en el Registro del procedimiento de anulación pendiente de la marca comunitaria impugnada (regla 84, apartado 3, letra n), del REMC). Su finalidad es informar a terceros de su existencia. Simultáneamente, se iniciará la fase contradictoria del procedimiento y se invitará a las partes a que presenten sus observaciones (y, en su caso, la prueba del uso).
Normalmente se suelen celebrar dos rondas de observaciones, tras las cuales se cierra la fase contradictoria y el expediente queda a la espera de que se adopte una resolución. Una vez que la resolución adquiera fuerza de cosa juzgada (esto es, si no se ha interpuesto recurso dentro del plazo establecido o cuando el procedimiento de recurso ha finalizado), la Oficina efectuará la correspondiente inscripción en el Registro, de conformidad con el artículo 57, apartado 6, del RMC.
En muchos aspectos los procedimientos de anulación están sujetos a las mismas o a análogas normas procesales que las establecidas para los procedimientos de oposición (p. ej. conciliación, limitaciones a la marca comunitaria impugnada y retirada de la solicitud de anulación, subsanación de errores y caducidad, plazos, anulaciones múltiples, cambio de partes, restitutio, etc.). Para todas estas cuestiones véanse las secciones pertinentes de las Directrices y, en particular, la Parte C, Oposición, Sección 1, Aspectos procesales. Esta parte de las Directrices, por tanto, únicamente se centrará en aquellos aspectos de los procedimientos de anulación que difieran de los procedimientos de oposición.
Procedimientos
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2 Solicitud de anulación
2.1 Personas facultadas para presentar una solicitud de anulación
Artículos 41, apartado 1; y artículo 56, apartado 1, del RMC
La Oficina no puede iniciar un procedimiento de anulación de oficio, sino únicamente previa recepción de una solicitud de terceros.
Podrán presentar las solicitudes de caducidad o de nulidad basadas en causas absolutas (artículos 51 y 52, del RMC):
1. toda persona física o jurídica, o
2. cualquier agrupación constituida para la representación de los intereses de fabricantes, productores, prestadores de servicios, comerciantes o consumidores que, a tenor de la legislación, que le es aplicable, tenga capacidad procesal.
Respecto a las solicitudes de caducidad o nulidad basadas en causas absolutas, no es necesario que el solicitante demuestre un interés individual para ejercitar la acción (véase la sentencia de 08/07/2008, en el asunto T-160/07, «COLOR EDITION», apartados 22-26, confirmada por la sentencia de 25 de febrero de 2010, en el asunto C-408/08 P, «COLOR EDITION», apartados 37-40). Esto se debe a que mientras que los motivos de nulidad relativos protegen los intereses de los titulares de determinados derechos anteriores, los motivos de denegación absolutos tienen por objeto la protección del interés general que los sustenta (incluido, en el caso de caducidad basada en la falta de uso, el interés general de anular el registro de marcas que no cumplan el requisito de uso).
Por el contrario, las solicitudes de nulidad basadas en causas relativas (artículo 53, del RMC) únicamente podrán presentarlas las personas contempladas en el artículo 41, apartado 1, del RMC (en el caso de solicitudes basadas en el artículo 53, apartado 1, del RMC o aquellas a las que la legislación del Estado miembro de que se trate confiera el derecho a ejercitar los derechos de que se trate (en el caso de solicitudes basadas en el artículo 53, apartado 2, del RMC).
Las solicitudes de caducidad o nulidad basadas en los artículos 73 o 74, del RMC (en particular, la caducidad específica y los motivos absolutos para marcas comunitarias colectivas) están sujetas a las mismas normas, en cuanto al derecho al ejercicio, que las solicitudes de caducidad o nulidad basadas en causas absolutas (artículo 63, apartado 3, del RMC).
2.2 Solicitud por escrito
Artículo 56, apartado 2, del RMC
Las solicitudes de anulación deben presentarse por escrito. No es obligatorio utilizar los formularios facilitados por la Oficina, siempre que se cumplan los requisitos de admisibilidad. No obstante, es muy aconsejable hacer uso de los formularios oficiales.
Procedimientos
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3 Pago de la tasa
Artículos 8, apartado 3; y artículo 56, apartado 2, del RMC Regla 39, apartado 1, del REMC
En lo que atañe al pago, véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos.
Una solicitud de anulación únicamente se considerará presentada una vez que se haya abonado la tasa exigida. Por este motivo, antes de examinar la admisibilidad de la solicitud, la Oficina comprobará que ha recibido el pago de la tasa.
En el caso de que la Oficina compruebe que no se ha abonado la tasa, invitará al solicitante a pagarla en un determinado plazo (en la práctica suele ser de un mes). Si la tasa exigida no se abona dentro del plazo establecido, la Oficina informará al solicitante de que no se considerará presentada la solicitud de anulación y (si efectuó el pago, pero fuera del plazo establecido) se devolverá la tasa al solicitante. En los casos en los que se reciba la tasa fuera del plazo establecido por la Oficina, pero el solicitante aporte prueba de que dentro del mismo dio orden a una entidad bancaria para que realizase una transferencia del importe del pago en un Estado miembro, se aplicará el artículo 8, apartado 3, del RMC, incluyendo el pago de un recargo, de ser aplicable, (véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de tasas, costas y gastos).
La fecha de presentación de una solicitud de anulación no se verá afectada por la fecha de pago de la tasa, dado que el artículo 56, apartado 2, del RMC, es una regla de orden en el contexto de los procedimientos de anulación y no establece ninguna consecuencia respecto a la fecha de presentación de la solicitud. Por tanto, cuando se abone la tasa antes de que expire el plazo establecido en la regla 39, apartado 1, del REMC, se considerará que se ha presentado la solicitud y la fecha de presentación de la misma será aquella en la que la Oficina recibió la declaración escrita.
Como principio general, la tasa de anulación es una tasa de solicitud que se ha de pagar por presentar la solicitud, con independencia del resultado del procedimiento. Por ello, no se reembolsará en los casos de inadmisibilidad.
Tampoco se reembolsará la tasa de anulación en los casos en los que se retire la solicitud de anulación, en cualquier etapa del procedimiento.
En este contexto, la única disposición que prevé el reembolso de la tasa de anulación es la regla 39, apartado 1, del REMC, que solo es aplicable en los casos en los que se considere que la solicitud no se ha presentado como consecuencia del retraso en el pago.
Procedimientos
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4 Examen de admisibilidad
Artículos 51 y 53, apartado 4; y artículo 56, apartado 3, del RCM Regla 37 y regla 38, apartado 1, del REMC
Una vez que la Oficina ha verificado que se ha abonado la correspondiente tasa, lleva a cabo el examen de admisibilidad de la solicitud.
A diferencia de los procedimientos de oposición, en los procedimientos de anulación no existe período de reflexión ni plazo posterior para la fundamentación. Esto significa, en particular, que en el caso de solicitud de nulidad basada en motivos relativos, la prueba de la existencia, validez y ámbito de protección de todos los derechos anteriores, así como la prueba que demuestre el derecho del solicitante a ejercitarlos, deberán aportarse, en principio, junto con la solicitud.
El examen de admisibilidad puede dar lugar a la detección de irregularidades absolutas o relativas de la solicitud.
Las irregularidades de admisibilidad absolutas son aquellas que el solicitante no puede subsanar, que conducen directamente a la inadmisibilidad de la solicitud y son las siguientes:
Se presenta la solicitud contra una marca comunitaria que aún no se ha registrado. Las solicitudes de anulación únicamente se pueden presentar contra marcas comunitarias registradas. Una solicitud dirigida contra una solicitud que aún no esté registrada es prematura y debe ser rechazada por inadmisible (véase la resolución de 22/10/2007, en el asunto R 0284/2007-4, «VISION»).
Existe cosa juzgada (artículo 56, apartado 3, del RMC), por ejemplo cuando existe una resolución previa con fuerza de cosa juzgada de la División de anulación o de un tribunal de un Estado miembro, en el contexto de una demanda de reconvención, en relación a la misma marca, los mismos productos y/o servicios y las mismas partes.
En los supuestos de nulidad basados en causas relativas, cuando el solicitante es titular de varios derechos anteriores y ya ha solicitado la nulidad (también demandas de reconvención) de la misma marca comunitaria sobre la base de otro de esos derechos (artículo 53, apartado 4, del RMC).
Se presenta una solicitud de caducidad, basada en la falta de uso, contra una marca que no ha estado registrada durante los cinco años anteriores a la fecha de solicitud (artículo 51, del RMC).
Se presenta una solicitud de anulación sin utilizar el formulario oficial y sin utilizar la lengua correcta establecida en el artículo 119, del RMC, o que no se ha traducido a esa lengua dentro del plazo de un mes desde que se presentó la solicitud de anulación (regla 38, apartado 1, del REMC).
Cuando se detecte una irregularidad de admisibilidad absoluta, la Oficina ofrecerá al solicitante la posibilidad de presentar sus observaciones en el plazo de dos meses. Si, una vez haya formulado sus observaciones el solicitante, la Oficina sigue considerando que existe una irregularidad de admisibilidad absoluta, adoptará una resolución rechazando la solicitud por inadmisible.
Procedimientos
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Las irregularidades de admisibilidad relativas, por el contrario, son aquellas que, en principio, el solicitante puede subsanar. Entre otras, se encuentran el incumplimiento de uno o varios de los requisitos de admisibilidad relativos establecidos en la regla 37, del REMC (que se describen en detalle en el apartado 4.1 infra). En tales casos, de conformidad con la regla 39, apartado 3, del REMC, la Oficina ofrecerá al solicitante la posibilidad de subsanar la irregularidad en el plazo de dos meses (véase el apartado 4.2 infra).
Cuando se detecten una o varias irregularidades de admisibilidad relativas y no se subsanen dentro del plazo establecido, se adoptará una resolución rechazando la solicitud de anulación por inadmisible.
Cualquier resolución que rechace una solicitud de anulación íntegramente por inadmisible se comunicará al solicitante y al titular de la marca comunitaria (regla 39, apartado 4, del REMC). El solicitante podrá recurrir dicha resolución.
No obstante, si el resultado del examen de admisibilidad es que la solicitud se considera parcialmente admisible (esto es, admisible por algunas de las causas y/o derechos anteriores en los que se base), el procedimiento continuará. Si una de las partes no estuviera de acuerdo con el resultado de la comprobación de admisibilidad, podrá recurrirla junto con la resolución que ponga fin al procedimiento (artículo 58, apartado 3, del RMC).
4.1 Requisitos de admisibilidad relativos (regla 37, del REMC)
Los requisitos de admisibilidad relativos establecidos en la regla 37, del REMC son los indicados a continuación.
4.1.1 Número de registro de la marca comunitaria impugnada y nombre y dirección de su titular (regla 37, letra a), incisos i) y ii), del REMC)
Una solicitud de anulación debe contener el número de registro de la marca comunitaria y el nombre y dirección de su titular (ha de tenerse en cuenta que esto difiere de los procedimientos de oposición, en los que la regla 15, apartado 2 únicamente exige que el oponente identifique la solicitud de marca comunitaria impugnada y el nombre del solicitante, pero no su dirección).
La Oficina comprobará que el nombre y dirección del titular se corresponden con la marca comunitaria identificada por su número de registro. En el supuesto de irregularidades (u omisión de uno de esos detalles), se enviará una carta de notificación de irregularidades al solicitante en la que se le ofrecerá la posibilidad de subsanar esta irregularidad (véanse los apartados siguientes sobre irregularidades).
4.1.2 Alcance de la solicitud de anulación (regla 37, letra a), inciso iii), del REMC)
El solicitante debe indicar si la solicitud se presenta contra todos los productos y servicios o contra parte de los productos y servicios contenidos en el registro impugnado. En este caso, tendrá que identificar claramente los productos y servicios concretos en una lista.
Procedimientos
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Ha de tenerse en cuenta la diferencia con los procedimientos de oposición en los que, a los efectos de admisibilidad, el alcance de la oposición únicamente es una indicación opcional (regla 15, apartado 3, del REMC).
4.1.3 Motivos de la solicitud de anulación y hechos, pruebas y alegaciones justificativos de dichos motivos (regla 37, apartado b), del REMC)
El RMC y el REMC distinguen claramente entre una solicitud de caducidad y una solicitud de declaración de nulidad. Por tanto, las causas de caducidad y nulidad no se pueden combinar en una única solicitud, sino que deben ser objeto de solicitudes separadas, lo que implica el pago de tasas separadas. No obstante, una solicitud de caducidad se puede basar en distintas causas de caducidad y una solicitud de nulidad se puede basar en una combinación de causas absolutas y relativas. Si un solicitante presenta una única solicitud basada en causas de caducidad y nulidad, la Oficina enviará una carta de notificación de irregularidades en la que le ofrecerá la posibilidad de elegir uno u otro tipo de causas e informará al solicitante de que puede presentar otra solicitud de anulación sujeta al pago de una tasa de solicitud adicional. Si el solicitante no indica qué tipo de causas quiere elegir, se rechazará la solicitud por inadmisible (regla 39, apartado 3, del REMC).
Una solicitud de anulación debe contener una indicación de las causas en las que se basa, esto es, las disposiciones concretas del RMC que justifican la solicitud de anulación. El solicitante podrá limitar las causas sobre las que la solicitud se basaba inicialmente, pero no podrá ampliar el alcance de la solicitud alegando causas adicionales durante el transcurso del procedimiento.
Asimismo, cuando una solicitud de nulidad se base en causas relativas (artículo 53, del RMC), la solicitud deberá contener los pormenores del derecho o derechos en los que se basa la solicitud y, en su caso, los pormenores que demuestren que el solicitante está facultado para alegar el derecho anterior como causa de nulidad (esto es, todas las indicaciones contenidas en la regla 15, letras b), e), f), g) y h), del REMC, que se aplican por analogía). En el caso de solicitudes basadas en el artículo 53, apartado 2, del RMC, se deberán indicar las disposiciones de la legislación nacional exactas que demuestren que el solicitante está facultado, al amparo de la legislación nacional aplicable, para alegar tal derecho.
De conformidad con la regla 37, letra b), inciso iv), del REMC, una solicitud de anulación deberá contener también una indicación de los hechos, pruebas y alegaciones justificativos de las causas de anulación. Esto significa que la mera presentación de un formulario de solicitud en la que todas las casillas pertinentes estén marcadas, pero que no incluya, o al menos indique, todos los hechos, pruebas y alegaciones presentados para respaldarla, normalmente dará lugar a una irregularidad de admisibilidad. La única excepción es aplicable a las solicitudes de caducidad basadas en la falta de uso (artículo 51, apartado 1, letra a), del RMC), en las que la carga de la prueba recae en el titular de la marca comunitaria.
Por último, se debe indicar una importante diferencia entre los requisitos de admisibilidad y de fundamentación. Como ya se ha indicado en la introducción al apartado 4 supra, aun cuando en los procedimientos de nulidad basados en causas relativas no exista límite de tiempo para la fundamentación de los derechos anteriores y la prueba de la existencia, validez y ámbito de protección de todos los derechos anteriores, así como que la prueba del derecho del solicitante a los mismos tenga que aportarse junto con la solicitud, esto no significa que no exista diferencia entre los
Procedimientos
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requisitos de admisibilidad y de fundamentación. Si, por ejemplo, un solicitante identifica claramente la marca anterior sobre la que se basa la solicitud (regla 37, letra b), inciso ii), del REMC) e indica la prueba justificativa de dichas causas (regla 37, letra b), inciso iv), del REMC), la solicitud será admisible. Si la prueba aportada posteriormente se considera insuficiente para acreditar el derecho anterior (p. ej. certificado que no procede de una fuente oficial o no se ha traducido a la lengua del procedimiento), se rechazará la solicitud por infundada (véase, por analogía, la regla 20, apartado 1, del REMC) y no por inadmisible (véase la resolución de 12/07/2013, en el asunto R 1306/2012-4, «URB EUROPE», apartado 21; la resolución de 12/07/2013, en el asunto R 1310/2012-4, «URB Bearings», apartado 21; y la resolución de 12/07/2013, en el asunto R 1309/2012-4, « URB», apartado 20).
No obstante, la ausencia de límite de tiempo para acreditar los derechos anteriores implica que en una fase posterior del procedimiento (antes de la conclusión de la fase contradictoria) el solicitante podrá subsanar, a iniciativa propia, cualquier irregularidad en lo que respecta a la fundamentación.
En lo que atañe a los requisitos de fundamentación de derechos anteriores, véase la sección sobre la prueba de existencia de los derechos anteriores de las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales y la sección sobre procedimientos de nulidad basados en causas relativas de las Directrices, Parte D, Anulación, Sección 2, Disposiciones sustantivas.
4.1.4 Identificación del solicitante (regla 37, letra c), del REMC)
Una solicitud de anulación deberá contener el nombre y dirección del solicitante y, si ha designado a un representante, el nombre y dirección del representante. Los solicitantes que no tengan ni domicilio, ni sede, ni establecimiento industrial o comercial efectivo y serio en la Unión Europea deberán hacerse representar por un representante profesional (artículo 92, apartado 2, del RMC). Para obtener más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
Cuando haya varios solicitantes, las solicitudes de nulidad basadas en causas relativas se regirán por las mismas normas que los procedimientos de oposición (véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales). Estas normas están directamente conectadas con los requisitos de los derechos de ejercicio del artículo 56, apartado 1, del RMC; y artículo 41, apartado 1, del RMC (véanse apartados anteriores).
Por el contrario, en el caso de solicitudes de nulidad basadas en causas absolutas y de caducidad no existen requisitos especiales respecto a una pluralidad de solicitantes, salvo que tienen que estar claramente indicados en la solicitud.
Ha de tenerse en consideración que en todos los casos en los que haya una pluralidad de solicitantes serán de aplicación las reglas 75 y 94, apartado 7, letra e), del REMC (designación de un representante común y fijación de costas).
Procedimientos
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4.2 Invitación a subsanar irregularidades
Regla 39, apartado 3 y apartado 4, del REMC
De conformidad con la regla 39, apartado 3, del REMC, en el caso de que la Oficina compruebe que la solicitud no cumple la regla 37, invitará al solicitante a subsanar las irregularidades encontradas dentro de un plazo determinado (en la práctica de la Oficina, dos meses). Se hará tan pronto como se detecte la irregularidad, dentro o no del contexto del examen de admisibilidad. Ha de tenerse en consideración que esta disposición es únicamente aplicable a irregularidades en lo que respecta a los requisitos de admisibilidad y no a irregularidades respecto a requisitos de fundamentación, que el solicitante deberá subsanar a iniciativa propia (véase el apartado 4.1.3 supra).
De no subsanarse estas irregularidades en el plazo señalado, la Oficina adoptará una resolución en la que rechazará la solicitud por inadmisible. En los casos en los que la solicitud de anulación se base en varias causas y/o derechos anteriores y las irregularidades únicamente estén relacionadas con algunos de ellos, el procedimiento podrá continuar respecto a las otras causas o derechos anteriores para los que no existan irregularidades de admisibilidad (admisibilidad parcial).
Como se ha indicado anteriormente en lo relativo a las causas de solicitud, en el contexto de la regla 39, apartado 3, del REMC, el hecho de que se invite al solicitante a subsanar una irregularidad no puede dar lugar a una ampliación del alcance del procedimiento (derechos anteriores, productos y servicios, etc.) determinado en la solicitud inicial. Por ejemplo, si la solicitud de anulación indica que se dirige contra parte de los productos y servicios del registro impugnado y la Oficina invita al solicitante, de conformidad con la regla 39, apartado 3, del REMC, a especificar contra qué productos y servicios concretos de la marca comunitaria se dirige la solicitud, la respuesta debe enumerar con claridad la parte de los productos y servicios contra los cuales se dirige la solicitud de anulación. Si el solicitante no respondiera debidamente, la Oficina adoptará una resolución en la que rechazará la solicitud por inadmisible.
Por último, la regla 39, apartado 3, del REMC será únicamente aplicable a la lista de requisitos de admisibilidad relativos recogidos en la regla 37, del REMC. Las irregularidades relativas a los requisitos de admisibilidad absolutos (p. ej. la falta de traducción de la solicitud en virtud de la regla 38, apartado 1, del REMC, la existencia de cosa juzgada, de una solicitud previa de nulidad basada en otro derecho anterior del mismo titular o el incumplimiento del período de cinco años entre la solicitud de caducidad y el registro de la marca comunitaria impugnada) no están cubiertos por la regla 39, apartado 3, del REMC y no se pueden subsanar (esto es, dan lugar a la desestimación de la solicitud considerada por inadmisible).
Procedimientos
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5 Notificación de la solicitud al titular de la marca comunitaria y posteriores comunicaciones entre las partes
Artículo 57, del RMC Regla 40, del REMC
La regla 40, apartado 1, del RMC establece que todas las solicitudes de caducidad o de nulidad que se consideren presentadas se notificarán al titular de la marca comunitaria y que cuando la Oficina considere admisible una solicitud, invitará al titular de la marca comunitaria a que presente sus observaciones dentro del plazo que ella establezca.
Por tanto, una vez que la Oficina haya verificado la recepción del pago (y de ese modo se considere que la solicitud se ha presentado) y haya llevado a cabo el examen de admisibilidad, notificará al titular de la marca comunitaria la solicitud de anulación.
Si no se detectan irregularidades en el examen de admisibilidad, la notificación de la solicitud al titular de la marca comunitaria también contendrá una invitación para presentar observaciones (y en el caso de una solicitud de caducidad basada en el artículo 51, apartado 1, letra a), del RMC, una invitación a aportar la prueba del uso efectivo, véase la regla 40, apartado 5, del REMC). En la práctica, la Oficina concede al titular de la marca comunitaria tres meses para responder a la solicitud.
Si el examen de admisibilidad revela que existen algunas irregularidades que deben subsanarse, también se notificará la solicitud al titular de la marca comunitaria y se le informará de las irregularidades que el solicitante debe subsanar. No obstante, en este caso solo se enviará notificación de la solicitud y la Oficina no invitará al titular de la marca comunitaria a presentar observaciones (o, en su caso, prueba del uso) hasta que el solicitante haya subsanado las irregularidades.
De conformidad con la sentencia del Tribunal de Justicia de 18 de octubre de 2012, en el asunto C-402/11 P, «REDTUBE» (aplicable por analogía a los procedimientos de anulación), la notificación enviada a las partes tras el examen de admisibilidad informándoles de que la anulación es admisible, a tenor de la regla 37, del REMC, constituye una resolución que puede ser recurrida junto con la resolución final, según establece el artículo 58, apartado 2, del RMC. Por consiguiente, la Oficina está vinculada por esta resolución y únicamente podrá revocarla en una fase posterior del procedimiento, siempre que se cumplan los requisitos para la revocación de resolución establecidos en el artículo 80, del RMC.
En virtud del artículo 57, apartado 1, del RMC, la Oficina podrá invitar a las partes, cuantas veces sea necesario, a que le presenten sus observaciones. En la práctica y en interés de evitar una prolongación innecesaria del procedimiento, la Oficina suele conceder dos rondas de observaciones, que suelen acaban con las del titular de la marca comunitaria (esto es, solicitud de anulación, observaciones del titular de la marca comunitaria, observaciones del solicitante, observaciones del titular de la marca comunitaria). Sin embargo, en los casos en los que una de las partes, dentro del plazo para presentar observaciones, no aporte pruebas ni presente observaciones o indique que no tiene nada más que comentar, la Oficina procederá directamente a la conclusión de la fase contradictoria del procedimiento, notificando a las partes la resolución que adoptará.
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No obstante, puede conceder rondas de observaciones adicionales en casos excepcionales, en particular, cuando se aporten pruebas pertinentes en la última ronda, que no pudieron aportarse con antelación. La práctica de la Oficina es dar a las partes un plazo de dos meses para presentar sus observaciones (salvo para la primera presentación por parte del titular de la marca comunitaria, véanse los puntos anteriores).
En lo que respecta a las solicitudes de nulidad basadas en causas relativas, el titular de la marca comunitaria puede también pedir la prueba del uso de las marcas anteriores en las que basa la solicitud. Si la petición es admisible (respecto a las reglas sobre la admisibilidad de una petición de la prueba del uso, véanse las Directrices, Parte C, Oposición, Sección 6, Prueba del uso), la Oficina invitará al solicitante a aportar la prueba (artículo 57, apartados 2 y 3, del RMC; y regla 40, apartado 6, del REMC). A diferencia de los procedimientos de oposición (regla 22, apartado 1, del REMC), en los procedimientos de anulación el titular de la marca comunitaria puede pedir la prueba del uso junto con su primera respuesta a la solicitud o en cualquiera de las rondas de observaciones posteriores.
Una vez que las partes han presentado sus observaciones y la prueba del uso (en su caso), la fase contradictoria concluye y el expediente queda a la espera de que se adopte una resolución.
Si en cualquier fase del procedimiento una de las partes no presenta observaciones dentro del plazo señalado, la Oficina pondrá fin a la fase contradictoria y adoptará una resolución con arreglo a las pruebas de que disponga (regla 40, apartado 2, del RMC), aplicable por analogía a ambas partes).
Con respecto a las reglas sobre plazos, ampliaciones, notificación o cambio de partes durante el curso del procedimiento, etc., véase la sección de los aspectos procesales de las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales dado que las normas son aplicables mutatis mutandis.
6 Lenguas utilizadas en los procedimientos de anulación
Artículo 119, apartados 5, 6 y 7, del RMC Reglas 38, apartados 1 y 3, 39, apartados 2 y 3 y 96, apartados 1 y 2, del REMC
Para normas detalladas sobre el uso de las lenguas en los procedimientos, véase la sección de aspectos procesales de las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales. Esta sección únicamente analizará las normas específicas de aplicación a los procedimientos de anulación.
Las partes en los procedimientos de anulación también podrán acordar que la lengua del procedimiento sea otra lengua oficial de la Unión Europea (artículo 119, apartado 7, del RMC). Este acuerdo se deberá comunicar a la Oficina en un plazo de dos meses desde la notificación de la solicitud de anulación al titular de la marca comunitaria. En tal caso, el solicitante debe presentar una traducción de la solicitud a la lengua elegida por ambas partes (si no la ha presentado en esa lengua) dentro del plazo de un mes desde la fecha en que se comunica el acuerdo a la Oficina. Cuando no se presente la traducción o se presente fuera de plazo, no se modificará la lengua del procedimiento (regla 38, apartado 3, del REMC).
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6.1 Traducción de la solicitud de anulación
Artículo 119, apartado 6, del RMC Reglas 38, apartados 1 y 3 y 39, apartado 2, del REMC
Si la solicitud se presenta en una lengua de la Oficina que es una de las dos lenguas de la marca comunitaria impugnada, esa lengua se convertirá automáticamente en la lengua del procedimiento.
Si la solicitud se presenta en una lengua de la Oficina que no fuere una de las dos lenguas de la marca comunitaria impugnada y no se hubiera utilizado el formulario oficial, el solicitante, a sus expensas, deberá presentar una traducción en la lengua correcta (cualquiera de las dos lenguas de la marca comunitaria impugnada, si ambas son lenguas de la Oficina, o la segunda lengua de la marca comunitaria impugnada, cuando la primera no sea una lengua de la Oficina) dentro del plazo de un mes desde la fecha de presentación de la solicitud de anulación. En adelante, la lengua de procedimiento será aquella a la que se haya efectuado la traducción del escrito.
Si el solicitante no presenta una traducción a la lengua adecuada dentro del plazo, se rechazará la solicitud de anulación por inadmisible (artículo 119, apartado 6, del RMC, reglas 38, apartado 1 y 39, apartado 2, del REMC).
La regla 39, apartado 3, del REMC no hace referencia a la regla 38, apartado 1, del REMC y, por tanto, en tales casos la Oficina no enviará una notificación de irregularidad. El solicitante deberá aportar en el plazo de un mes, desde la fecha de presentación de la solicitud, la traducción de la solicitud de anulación. Cuando el solicitante utilice el formulario oficial de caducidad o nulidad y este formulario no esté en la lengua correcta, existen excepciones relativas a la traducción y la indicación de la lengua del procedimiento. Véanse las distintas opciones en las páginas 11 a 12 de las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales.
6.2 Traducción de la prueba aportada por el solicitante en apoyo de la solicitud
Reglas 38, apartado 2 y 39, apartado 3, del REMC
En virtud de la regla 38, apartado 2, del REMC, en el caso de que las pruebas justificativas de la solicitud no se presenten en la lengua del procedimiento de caducidad o nulidad, el solicitante deberá presentar una traducción de dichas pruebas a dicha lengua en un plazo de dos meses contado a partir de la presentación de las mismas. Esta disposición es aplicable a todas las pruebas aportadas por el solicitante en el curso del procedimiento, bien se aporten junto con la solicitud, o bien en una fase posterior.
La Oficina no enviará una notificación de irregularidad y corresponde al solicitante presentar la traducción de las pruebas justificativas de la solicitud a iniciativa propia.
En el caso de que el solicitante no aporte una traducción de la prueba justificativa de la solicitud que se exige para apreciar la admisibilidad del asunto (p. ej. no se traducen
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los pormenores del derecho anterior sobre el que se basa la solicitud o la indicación de los hechos, pruebas y alegaciones justificativos de las causas), la Oficina invitará al solicitante a subsanar la irregularidad a tenor de la regla 39, apartado 3, del REMC (resolución de 02/03/2007, en el asunto R 0300/2006-4, «ACTILON/AC TELION»). En el caso de que no se subsane la irregularidad, se rechazará la solicitud de anulación, por ser total o parcialmente inadmisible (artículo 119, apartado 6, del RMC, reglas 38, apartado 2 y 39, apartado 3, del REMC).
En el caso de que el solicitante no aporte las traducciones del resto de pruebas, que no afecten a la admisibilidad del asunto, se considerará que la Oficina no ha recibido cualquier documento en apoyo de la solicitud que el solicitante no traduzca a la lengua del procedimiento dentro del plazo señalado en la regla 38, apartado 2, del REMC y, por tanto, no se tendrá en consideración (regla 98, apartado 2, del REMC) (véase la resolución de 05/03/2012, en el asunto R 0826/2010-4, «MANUFACTURE PRIM 1949 (FIG.MARK)», apartado 25).
6.3 Traducción de las observaciones presentadas por las partes en el curso del procedimiento
Reglas 96, apartado 1; y regla 98, apartado 2, del REMC
La parte que presente observaciones en una lengua de la Oficina distinta a la lengua del procedimiento, deberá presentar una traducción de las observaciones en la lengua del procedimiento en el plazo de un mes a partir de la fecha de presentación del documento original (regla 96, apartado 1, del REMC).
La Oficina no exigirá las traducciones y continuará con el procedimiento. Corresponde a la parte presentar las traducciones exigidas.
En el caso de que no se presenten las traducciones en el plazo de un mes, se considerará que la Oficina no ha recibido las observaciones y, por tanto, no se tendrán en consideración (regla 98, apartado 2, del REMC).
6.4 Traducción de la prueba aportada por el titular de la marca en el curso del procedimiento
Reglas 96, apartado 2; y regla 98, apartado 2, del REMC
Los documentos presentados por el titular de la marca comunitaria en el curso del procedimiento (salvo la prueba del uso, véase más adelante) están sujetos a la regla 96, apartado 2, del REMC y, por tanto, pueden presentarse en cualquier lengua oficial de la Unión Europea.
De conformidad con esta disposición, el titular de la marca comunitaria no está obligado automáticamente a presentar una traducción, pero la Oficina puede exigirle que lo haga dentro de un plazo.
Ejerciendo su discrecionalidad en el asunto, la Oficina podrá tener en consideración la naturaleza de las pruebas y el interés de las partes.
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En los casos en los que la Oficina invite al titular de la marca comunitaria a presentar traducciones de las pruebas, el hecho de que no lo haga en el plazo señalado para ello, implicará que los documentos no traducidos no se tendrán en consideración (regla 98, apartado 2, del REMC).
6.5 Traducciones de la prueba del uso
Regla 22, apartado 6, del REMC
Aunque la regla 40, apartados 5 y 6, del REMC únicamente se refiere expresamente a la regla 22, apartados 2, 3 y 4, del REMC, se considera que la regla 22, apartado 6, del REMC también se debería aplicar por analogía a los procedimientos de anulación, dado que la lógica subyacente es la misma, esto es, exigir la traducción de las pruebas, que en el caso de la prueba del uso suele ser bastante larga, solo en la medida en que se considere necesario (véase la resolución de 11/03/2010, en el asunto R 0167/2009-1, «INA/INA (marca figurativa)», apartados 24-25). Por consiguiente, la regla 22, apartado 6, del REMC es aplicable lex specialis, ante la lex generalis contenida en la regla 38, apartado 2, del REMC (prueba aportada por el solicitante) y regla 96, apartado 2 del REMC (prueba aportada por el titular de la marca comunitaria), en lo que respecta a la prueba del uso presentada por ambas partes.
A tenor de la regla 22, apartado 2, del REMC, en el caso de que las pruebas facilitadas no estén en la lengua del procedimiento, la Oficina podrá exigir a la parte que las presentó, que facilite una traducción de las mismas a dicha lengua dentro del plazo de dos meses. Ejerciendo su discrecionalidad en el asunto, la Oficina podrá tener en consideración la naturaleza de las pruebas y el interés de las partes. En los casos en los que la Oficina invite al titular de la marca comunitaria a presentar traducciones de las pruebas, el hecho de que no lo haga en el plazo señalado para ello, implicará que los documentos no traducidos no se tendrán en consideración (excepto los que se considere que son evidentes). Para mayor orientación sobre la aplicación de la regla 22, apartado 6, del REMC, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales y Parte C, Oposición, Sección 6, Prueba del uso.
7 Otras cuestiones
7.1 Continuación del procedimiento
Artículo 82, del RMC
De conformidad con el artículo 82, apartado 1, del RMC, cualquier parte en un procedimiento ante la Oficina que no hubiera respetado un plazo frente a ésta, podrá obtener, previa solicitud, la continuación del procedimiento, siempre que, en el momento de presentación de dicha solicitud, haya cumplido el acto omitido. La solicitud solo será admisible en el plazo de dos meses a partir de la expiración del plazo incumplido. La solicitud solo se tendrá por presentada cuando se haya pagado la tasa de prosecución del procedimiento.
Esta disposición es aplicable a todos los procedimientos ante la Oficina. Para obtener más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, Plazos.
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No obstante, la razón por la que se menciona específicamente respecto a los procedimientos de anulación es para señalar la diferencia con los procedimientos de oposición. En lo que respecta a la oposición, el artículo 82, apartado 2, del RMC establece que la continuación del procedimiento no es aplicable, entre otros, a los plazos regulados en los artículos 41 y 42, del RMC (plazo para presentar notificación de oposición, plazos señalados por la Oficina para presentar hechos, pruebas y alegaciones u observaciones). En los procedimientos de anulación, por el contrario, la continuación de los procedimientos se puede solicitar en relación con cualquiera de los distintos plazos dentro de los procedimientos de anulación (salvo para el plazo establecido en el artículo 60, del RMC para presentar un recurso).
7.2 Suspensión
Artículo 104, del RMC
Respecto a la suspensión, véanse, en general, las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales (teniendo en consideración, sin embargo, que en los procedimientos de anulación no existe período de reflexión). La regla 20, apartado 7, del REMC es aplicable por analogía.
La principal particularidad de los procedimientos de anulación en este sentido está relacionada con las normas específicas sobre acciones relacionadas ante los tribunales de marcas comunitarias. En virtud del artículo 104, apartado 2, del RMC, a no ser que existan razones especiales para proseguir el procedimiento, la Oficina, si recibiere solicitud de anulación, suspenderá el procedimiento, de oficio, previa audiencia de las partes, o a instancia de parte y previa audiencia de las demás, si la validez de la marca comunitaria se hallara ya impugnada mediante demanda de reconvención ante un tribunal de marcas comunitarias.
El artículo 104, apartado 2, del RMC también establece que si una de las partes lo solicitara en el procedimiento ante el tribunal de marcas comunitarias, el tribunal, previa audiencia de las otras partes en dicho procedimiento, podrá suspender el procedimiento. En tal caso, la Oficina reanudará el procedimiento pendiente ante ella.
Una solicitud de suspensión al amparo del artículo 104, apartado 2, del RMC debe justificarse mediante las pruebas pertinentes. Las solicitudes de suspensión únicamente se considerarán relevantes para el procedimiento y podrían concederse a tenor del artículo 104, apartado 2, del RMC en los casos en los que hagan referencia a la marca comunitaria impugnada y no cuando se refieran a otras marcas comunitarias impugnadas en procedimientos de anulación paralelos.
7.3 Renuncias y retiradas
La práctica de la Oficina respecto a la renuncia de marcas comunitarias se describe en las Directrices, Parte E, Operaciones de registro, Sección 1, Cambios en un registro.
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7.3.1 Renuncias que afecten a todos los productos y/o servicios controvertidos
En principio, las consecuencias de una renuncia total a la marca comunitaria impugnada en los procedimientos de anulación (o de una renuncia parcial que afecte a todos los productos y/o servicios contra los que se dirige la solicitud de anulación) son similares a los de la retirada de una solicitud de marca comunitaria en los procedimientos de oposición.
No obstante, a diferencia de lo que ocurre con la retirada de una solicitud de marca comunitaria, los efectos de la renuncia a una marca comunitaria registrada no son los mismos que los de la resolución sobre el fondo que pone fin al procedimiento considerado. Mientras la renuncia a una marca comunitaria únicamente tiene efectos a partir de la fecha en la que se registra, la resolución que anula la marca comunitaria produce sus efectos desde una fecha anterior, que puede ser la de registro de la marca comunitaria (en el caso de nulidad) o la fecha en la que se presenta la solicitud de anulación (en el caso de caducidad). Por consiguiente, como regla y a pesar de la renuncia a la marca comunitaria impugnada, se considera que el solicitante sigue teniendo un interés legítimo en continuar el procedimiento de anulación a fin de obtener una resolución sobre el fondo (véase la sentencia de 24/03/2011, en el asunto C-552/09 P, «TiMi KiNDERJOGHURT», apartado 39; y resolución de 22/10/2010, en el asunto R 0463/2009-4, «MAGENTA», apartados 25-27).
En la práctica, cuando se renuncia a una marca comunitaria que es objeto de un procedimiento de anulación, la Oficina suspenderá el registro del renunciante y, paralelamente, la División de Anulación notificará la renuncia al solicitante de la anulación, invitándole a presentar observaciones en el plazo de dos meses y a indicar si desea continuar el procedimiento o si está de acuerdo con poner fin al mismo sin una resolución sobre el fondo. Esta carta informará al solicitante, asimismo, de que si no responde, se pondrá fin al procedimiento de anulación sin una resolución sobre el fondo.
Si el solicitante responde y expresamente acepta que se ponga fin al procedimiento, se registrará la renuncia y se considerará que la acción de anulación se ha retirado y que se pondrá fin al procedimiento sin una resolución sobre el fondo. Los gastos recaerán en el solicitante (artículo 85, apartado 3, del RMC).
Si el solicitante no presenta observaciones en el momento de finalización del procedimiento de anulación, la División de Anulación enviará a ambas partes una carta en la que ponga fin al procedimiento y en la que informe al solicitante de su posible pérdida de derechos a los efectos de la regla 54, apartado 2, del REMC. Si el solicitante no solicita expresamente una resolución sobre el fondo dentro del plazo establecido en esta regla, se registrará la renuncia en el Registro.
Si el solicitante solicita la continuación del procedimiento de anulación (como respuesta a la invitación de la Oficina para presentar observaciones o al solicitar una resolución al amparo de la regla 54, apartado 2, del REMC), el procedimiento de anulación continuará hasta que se adopte una resolución final sobre el fondo. En tales casos, los gastos recaerán en la parte vencedora y no necesariamente en la parte que ponga fin al procedimiento, según se establece en el artículo 85, apartado 3, del RMC. Una vez que la resolución sobre la anulación adquiera fuerza de cosa juzgada, la renuncia únicamente se registrará respecto a los productos y/o servicios para los que no se haya declarado la caducidad o nulidad de la marca comunitaria impugnada, en su caso.
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7.3.2 Renuncias que afectan únicamente a una parte de los productos y/o servicios controvertidos
El titular de la marca comunitaria podrá renunciar parcialmente a su marca para parte de los bienes y/o servicios controvertidos. En tales casos la Oficina notificará tal circunstancia al solicitante de la anulación y le invitará a indicar si desea mantener su solicitud de anulación. Si el solicitante de anulación no solicita la continuación del procedimiento y mantiene su solicitud de anulación, el procedimiento continuará a pesar de la renuncia parcial a la marca comunitaria en el Registro. En el caso de que el solicitante de anulación no desee mantener su solicitud de anulación, la Oficina pondrá fin al procedimiento y adoptará una resolución sobre el reparto de gastos, indicando que cada parte debe asumir sus propios gastos (artículo 85, apartado 2, del RMC)
7.3.3 Retiradas
El solicitante de la anulación puede retirar su solicitud en cualquier momento del procedimiento. La Oficina informará al titular de la marca comunitaria sobre la retirada, pondrá fin al procedimiento y adoptará una decisión sobre el reparto de gastos, que recaerán en el titular de la marca comunitaria (artículo 85, apartado 3, del RMC), salvo en los casos en los que la retirada vaya seguida inmediatamente de una renuncia (véanse los apartados anteriores).
Las partes podrán indicar que una renuncia o retirada es consecuencia de un acuerdo al que han llegado y que no es necesaria una resolución sobre el reparto de gastos. La Oficina no adoptará una decisión sobre el reparto de gastos si tal solicitud se recibe junto con una solicitud de renuncia o retirada y ambas partes la firman. Dicha solicitud también se podrá enviar en dos cartas separadas a la Oficina. En los casos en los que no se indique si las partes han llegado a un acuerdo sobre el reparto de gastos, la Oficina adoptará una resolución al respecto inmediatamente. La Oficina no revisará una resolución sobre el reparto de gastos ya adoptada en el supuesto de que las partes faciliten dicha información después de la fecha de la resolución. Las partes deciden si respetan el acuerdo y no ejecutan la resolución de la Oficina sobre el reparto de gastos.
7.4 Solicitudes de caducidad y nulidad contra la misma marca comunitaria
Si la misma marca comunitaria es objeto tanto de un procedimiento de caducidad como de un procedimiento de nulidad, la Oficina tiene el poder discrecional para decidir en cada caso, teniendo en consideración los principios de economía del procedimiento y eficiencia administrativa, si uno de los procedimientos se tiene que suspender hasta que el otro termine o en qué orden se deben decidir los procedimientos.
Si se decide en primer lugar la nulidad total de la marca comunitaria (o la nulidad parcial pero de todos los productos o servicios contra los que se dirige la solicitud de caducidad) y una vez que la resolución adquiera fuerza de cosa juzgada, se pondrá fin automáticamente al procedimiento paralelo de caducidad, dado que ya no tiene objeto.
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La Oficina fijará libremente los gastos (artículo 85, apartado 4, del RMC) y suele concluir que cada parte debe asumir sus propios gastos.
No obstante, teniendo en consideración los distintos efectos de una caducidad (ex nunc) y de una declaración de nulidad (ex tunc), cuando se declara en primer lugar la caducidad total de la marca comunitaria (o parcial pero para todos los productos o servicios contra los que se dirige la nulidad), la Oficina informará al solicitante de su resolución cuando adquiera fuerza de cosa juzgada y le invitará a que presente sus observaciones acerca de poner fin al procedimiento de nulidad. Si el solicitante demuestra un interés jurídico suficiente en obtener una resolución declarativa de la nulidad, el procedimiento continuará.
7.5 Registros internacionales que designan a la UE impugnados
Artículo 152, apartado 2; y artículo 158, del RMC
Los procedimientos de anulación también se pueden dirigir contra registros internacionales (RI) que designan a la UE. Las normas específicas aplicables en estos casos (en particular, en conexión con la fecha de presentación y el plazo pertinente para la prueba del uso) se encuentran recogidas en las Directrices, Parte M, Marcas internacionales.
Se puede presentar una solicitud de anulación contra un RI tras la fecha de publicación del RI que designe a la UE en el Boletín Oficial de la Oficina (M.3.1. – Registros internacionales con o sin modificaciones desde su publicación en virtud del artículo 152, apartado 1, del RMC).
Respecto a los representantes de la OMPI de los titulares de los RI impugnados, como regla general, la Oficina se comunicará con ellos, con independencia de la ubicación del titular del RI, cuando cumplan los criterios del artículo 93, del RMC.
Cuando el representante de la OMPI del titular del RI no cumpla los criterios del artículo 93, del RMC, la notificación de la solicitud de anulación se enviará directamente al titular del RI y se enviará una copia a su representante de la OMPI a efectos informativos.
La notificación de la solicitud de anulación también invitará al titular del RI a designar un representante profesional de conformidad con el artículo 93, del RMC dentro del plazo de tres meses desde su recepción. En los casos de representación obligatoria (artículo 92, apartado 2, del RMC), la notificación indicará las consecuencias de no cumplir este requisito (a saber, que cualquier comunicación enviada por el titular del RI en el curso del procedimiento no se tendrá en consideración).
Transformación
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 2
TRANSFORMACIÓN
Transformación
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Índice
1 Introducción............................................................................................... 3
2 Transformación de marcas comunitarias y de registros internacionales que designen a la UE ..................................................... 4 2.1 Transformación de marcas comunitarias................................................. 4 2.2 Transformación de registros internacionales que designen a la UE......5
3 Validez de la solicitud como condición para la transformación ........... 6
4 Motivos que impiden la transformación.................................................. 6 4.1 Caducidad por falta de uso........................................................................6 4.2 Motivo de denegación restringido a un Estado miembro o ampliado
a toda la UE.................................................................................................7 4.3 Retirada/renuncia tras la adopción de una resolución............................ 8 4.4 Competencia para decidir sobre los motivos que impiden la
transformación ........................................................................................... 8
5 Requisitos formales que debe satisfacer la solicitud de transformación .......................................................................................... 9 5.1 Plazo............................................................................................................9
5.1.1 Inicio del plazo cuando la Oficina emite una notificación ............................... 9 5.1.2 Fecha a partir de la cual el plazo comienza a correr en los demás casos .... 9
5.2 Solicitud de transformación .................................................................... 10 5.3 Lengua ...................................................................................................... 12 5.4 Tasas......................................................................................................... 13
6 Examen efectuado por la Oficina ........................................................... 13 6.1 Fases del procedimiento, competencia .................................................. 13 6.2 Examen ..................................................................................................... 14
6.2.1 Tasas ............................................................................................................ 14 6.2.2 Plazo............................................................................................................. 14 6.2.3 Lengua.......................................................................................................... 14 6.2.4 Requisitos formales ...................................................................................... 15 6.2.5 Motivos ......................................................................................................... 15 6.2.6 Representación ............................................................................................ 16 6.2.7 Transformación parcial ................................................................................. 16
6.3 Inscripción en el Registro y publicación de la solicitud........................ 17 6.4 Transmisión a las oficinas designadas .................................................. 17
7 Efectos de la transformación ................................................................. 19
Transformación
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1 Introducción
Una transformación consiste en la conversión de una marca comunitaria en una o varias demandas nacionales (en solicitudes de marca nacional en uno o varios Estados miembros). Los artículos 112 a 114, del RMC y las reglas 44 a 47, del REMC regulan sus principales características. Si una marca comunitaria (MC) deja de existir, podrá transformarse, en función de la razón concreta de dicha circunstancia, en marcas válidas en determinados Estados miembros. La transformación es particularmente útil a la hora de solventar eventuales problemas ligados al carácter unitario de la MC. Por ejemplo, si la marca comunitaria se ve confrontada a un problema de registrabilidad en uno o varios países por motivos absolutos o como consecuencia de un procedimiento de oposición basado en un derecho anterior válido en un único o varios países, el solicitante de la marca comunitaria podrá solicitar la transformación de la marca comunitaria en solicitudes individuales de marca nacional en los otros países no afectados por estos motivos.
El régimen de la marca comunitaria se basa en el principio de su complementariedad con el régimen de marcas nacionales. Ambos se encuentran ligados, especialmente en virtud de procedimientos relativos a la antigüedad y la transformación. El sistema está concebido de tal manera que la fecha de presentación anterior de un derecho registrado prevalecerá siempre en el territorio en el que es válida, independientemente de si la marca es el resultado de una solicitud nacional, una designación internacional o una solicitud de marca comunitaria (véase la resolución de la Gran Sala de Recurso, de 15 de julio de 2008, en el asunto R 1313/2006-G, y la resolución de 22 de septiembre de 2008, en el asunto R 0207/2007-2 «RESTORIA», apartado 34).
La transformación es un régimen a dos niveles que implica, en primer lugar, abonar la tasa de transformación por importe de 200 EUR y el examen de la solicitud de transformación ante la OAMI, a lo que sigue el propio procedimiento de transformación ante las oficinas nacionales. En función de la legislación nacional, la marca transformada se registra inmediatamente o es objeto del procedimiento de examen, registro y oposición como una solicitud normal de marca nacional.
Cuando se designe a la UE en un registro internacional y, en la medida en que dicha designación hubiese sido desestimada o retirada o dejase de producir efectos, también se podrá presentar una solicitud de transformación en solicitud de marca nacional en uno, varios o todos los Estados miembros, o en designación posterior de los Estados miembros en virtud del sistema de Madrid.
No se debe confundir la transformación (en inglés, «conversion») de registros internacionales que designan a la UE con la transformación, que es una figura jurídica introducida en virtud del Protocolo de Madrid (PM) con el fin de suavizar las consecuencias del plazo de dependencia de cinco años, ya previsto en el Arreglo de Madrid (véase el artículo 6, apartado 3 del PM). La transformación permite transformar una marca impugnada a nivel central en una solicitud directa de MC, pero no permite la transformación de una designación de la UE en presentaciones nacionales. Para más información sobre la transformación, véase las Directrices, Parte M, Marcas internacionales.
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2 Transformación de marcas comunitarias y de registros internacionales que designen a la UE
2.1 Transformación de marcas comunitarias
Artículo 112, apartado 1, artículo 113, apartado 1 y artículo 159, del RMC Regla 44, apartado 1, letra e) y letra f), reglas 122 y 123, del REMC
El solicitante de una marca comunitaria o el titular de una marca comunitaria registrada podrán pedir que se transforme su solicitud de marca comunitaria o su marca comunitaria registrada. Puede solicitarse la transformación en solicitudes de marca nacional en uno, varios o todos los Estados miembros, considerándose que, en el caso de Bélgica, Luxemburgo y los Países Bajos, la expresión «solicitudes nacionales» u «oficina nacional» alude a una solicitud de marca del Benelux o a la Oficina de Marcas del Benelux.
La transformación será posible en las siguientes circunstancias («motivos de transformación»):
cuando la solicitud de marca comunitaria hubiere sido finalmente denegada por la Oficina (artículo 112, apartado 1, letra a), del RMC), en una resolución sobre los motivos absolutos o relativos de rechazo durante un procedimiento de examen o de oposición;
cuando la solicitud de marca comunitaria hubiere sido retirada por el solicitante (artículo 112, apartado 1, letra a) y artículo 44, del RMC);
cuando la solicitud de marca comunitaria se tuviere por retirada, a saber, cuando las tasas por clase no son abonadas en el plazo establecido tras la presentación de la solicitud (artículo 112, apartado 1, letra a), y artículo 36, apartado 5, del RMC);
cuando el registro de una marca comunitaria dejare de producir efectos (artículo 112, apartado 1, letra b), del RMC), situación que se produce:
○ si el registro de una marca comunitaria ha sido objeto de renuncia (artículo 50, del RMC);
○ si el registro de una marca comunitaria no ha sido renovado (artículo 47, del RMC);
○ si el registro de una marca comunitaria ha sido objeto de una declaración de nulidad por la Oficina o por un Tribunal de Marcas Comunitarias (artículos 55 y 100, del RMC);
○ si los derechos del titular del registro de una marca comunitaria ha sido objeto de una declaración de caducidad por la Oficina o por un Tribunal de Marcas Comunitarias (artículo 55, del RMC), salvo en el caso de caducidad por falta de uso (artículo 112, apartado 2, del RMC).
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2.2 Transformación de registros internacionales que designen a la UE
El titular de un registro internacional que designe a la UE podrá pedir que se transforme la designación de la UE:
en solicitudes de marca nacional en uno, varios o todos los Estados miembros;
en designaciones posteriores de uno o varios Estados miembros en virtud del Arreglo o el Protocolo de Madrid («opting-back»), siempre y cuando el Estado miembro fuere parte en cualquiera de ambos Tratados no solo en el momento de la solicitud de transformación, sino ya en la fecha del registro internacional que designe a la UE;
en solicitudes de marca nacional para algunos Estados miembros y en designaciones posteriores para otros Estados miembros, entendiéndose que solo se podrá designar una vez a un mismo Estado miembro.
La transformación será posible en las siguientes circunstancias («motivos de transformación»), cuando la designación de la CE en un registro internacional dejare de producir efectos, situación que se produce en las siguientes circunstancias:
si la Oficina o un Tribunal de Marcas Comunitarias ha declarado la nulidad de los efectos de un registro internacional que designe a la Comunidad Europea (artículo 158 del RMC y regla 117, del REMC);
si se inscribe en el registro internacional la renuncia a la designación de la UE (regla 25, apartado 1 y regla 27 del Reglamente Común [RC]);1;
si se inscribe en el Registro Internacional la cancelación del registro internacional (reglas 25, apartado 1 y 27 del RC): en tales casos la transformación con «opting-back» no es posible; únicamente es posible la transformación nacional si la OMPI informa a la Oficina de que el registro internacional no se ha renovado, siempre que haya concluido el plazo de gracia para la renovación (regla 31, apartado 4, letra a) o b) del RC).
si la Oficina hubiere denegado definitivamente un registro internacional que designe a la CE (regla 113, apartado 2, letras b) y c) y regla 115, apartado 5, letras b) y c), del REMC).
Se puede solicitar la transformación para todos o para parte de los productos o servicios a los que se refiere el acto o resolución a que se ha hecho referencia.
Cuando los actos o resoluciones mencionados se refieran únicamente a una parte de los productos y servicios para los que se solicitó o registró la marca comunitaria, podrá solicitarse la transformación para esos productos o servicios específicos o para una parte de esos productos o servicios.
1 Reglamento Común del Arreglo de Madrid relativo al Registro Internacional de Marcas y del Protocolo concerniente a ese Arreglo.
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3 Validez de la solicitud como condición para la transformación
Artículo 112, apartado 1, del RMC
La transformación de una solicitud de marca comunitaria solo podrá concederse cuando la solicitud sea válida (véanse las Directrices, Parte B, Examen, Sección 2, Examen de las formalidades).
4 Motivos que impiden la transformación
Artículo 112, apartado 2 y artículo 159, del RMC Reglas 45 y 123, del REMC
No habrá lugar a la transformación en dos supuestos, a saber, cuando el titular de la marca comunitaria o del registro internacional que designe a la UE haya sido privado de sus derechos por falta de uso de esa marca (véase punto 4.1), o cuando el motivo particular por el cual deja de tener efectos la solicitud de marca comunitaria, la marca comunitaria registrada o el registro internacional que designe a la UE impida el registro de los mismos en el Estado miembro de que se trata (véase el punto 4.2 siguiente). Por tanto, no se admitirá una solicitud de transformación de una solicitud de marca comunitaria desestimada respecto al Estado miembro en el que son de aplicación los motivos de desestimación, nulidad o caducidad.
Aunque el motivo de la transformación sea la retirada de una solicitud, si dicha retirada se produce tras la adopción de una resolución que deniegue la marca fundamentándose en un motivo que impediría el registro en el Estado miembro en cuestión, dicha solicitud de transformación será denegada si no se ha presentado recurso.
Aunque el motivo de la transformación sea la renuncia de un registro, si tal renuncia se produce después de una declaración de caducidad de una marca comunitaria o registro internacional por falta de uso, o la denegación de la marca fundamentándose en un motivo que impida el registro en el Estado miembro, tal solicitud de transformación se denegará si no se ha interpuesto ningún recurso (véase punto 4.3).
4.1 Caducidad por falta de uso
Artículo 112, apartado 2, letra a), del RMC
El primer motivo de exclusión de la transformación se produce en el caso de que el titular de marca o el registro internacional haya sido privado de sus derechos por falta de uso.
La transformación no tendrá lugar cuando el titular de la marca comunitaria o del registro internacional haya sido privado de sus derechos por falta de uso de esa marca, salvo si la marca comunitaria ha sido objeto de uso efectivo en el Estado miembro para el que se solicita la transformación de conformidad con la legislación nacional aplicable.
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No se admitirán alegaciones posteriores del solicitante de la transformación sobre el fondo del asunto. Por ejemplo, si se hubiere declarado la caducidad de la marca comunitaria por falta de uso, el solicitante de la transformación no podrá alegar ante la Oficina que puede demostrar el uso en un Estado miembro concreto.
4.2 Motivo de denegación restringido a un Estado miembro o ampliado a toda la UE
Artículo 112, apartado 2, letra b), del RMC Regla 45, apartado 4, del REMC
La segunda razón que excluye la transformación guarda relación con la existencia de motivo de denegación del registro de una marca comunitaria, o con un motivo de caducidad (que no sea la falta de uso) o de nulidad. Esta regla se aplica cuando la resolución de la Oficina o de un Tribunal de Marcas Comunitarias indica expresamente que el motivo de la denegación, caducidad o nulidad se aplica en relación con un Estado miembro en particular, y excluye la transformación para dicho Estado miembro (resolución de 5 de marzo de 2009, en el asunto R 1619/2008-2, «orange - colour trade mark», apartados 23 y 24).
Ejemplos:
Cuando un motivo de denegación absoluto existe únicamente en relación con una lengua, no habrá lugar a la transformación en el Estado miembro en el que dicha lengua sea oficial. Por ejemplo si se invoca un motivo absoluto de denegación respecto al público anglófono, no habrá lugar a la transformación en el Reino Unido, Irlanda y Malta (véase la regla 54, apartado 4 del REMC.
• Cuando un motivo de denegación absoluto existe únicamente en relación con un Estado miembro porque la marca es descriptiva o engañosa en un Estado miembro en particular y no en otros Estados miembros (véase las Directrices, Parte B, Examen, Sección 4, Motivos absolutos de denegación y marcas comunitarias colectivas), no habrá lugar a la transformación en relación con ese Estado miembro, a la vez que se mantendrá la posibilidad de transformación para todos aquellos Estados miembros en los que no se haya constatado expresamente la existencia de dicho motivo de denegación.
Cuando se deniega una solicitud de marca comunitaria o de registro internacional que designe a la UE en un procedimiento de oposición basado en una marca nacional anterior registrada en un Estado miembro, la transformación queda excluida en relación con ese Estado miembro. Cuando se deniegue una solicitud de marca comunitaria en un procedimiento de oposición sobre la base de diversos derechos anteriores de distintos Estados miembros, pero la resolución definitiva deniega la solicitud de marca comunitaria de un registro internacional que designe a la UE fundamentándose en un único derecho anterior, se podrá pedir la transformación en los demás Estados miembros. Por ejemplo, cuando en un procedimiento de oposición basado en un derecho nacional del Reino Unido, Italia y Francia, se estima la oposición en la medida en que se basa en un derecho nacional del Reino Unido y no se analizan los demás derechos anteriores, no habrá lugar a la transformación en relación con el Reino Unido, pero podrá tener lugar respecto a Italia y Francia (y demás Estados miembros) (véase la sentencia de 16 de septiembre de 2004, T-342/02, «MGM» y la sentencia de 11 de mayo de 2006, T-194/05, «Teletech»).
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De conformidad con la regla 45, apartado 4, del REMC, aplicable mutatis mutandis a los registros internacionales que designan a la UE en virtud de la regla 123, apartado 2, del REMC, cuando una solicitud de marca comunitaria haya sido denegada , o el registro de una marca comunitaria se haya declarado nulo fundamentándose en motivos relativos sobre la base de una marca comunitaria anterior, o, en el caso de una declaración de nulidad, sobre la base de cualquier otro derecho de propiedad industrial comunitario, ello tendrá por efecto la exclusión de la transformación para el conjunto de la Unión, aunque cuando solo exista riesgo de confusión en una parte de ésta. Tal es el caso aunque a la marca comunitaria le corresponda una reivindicación de antigüedad en virtud del artículo 34 o 35, del RMC.
4.3 Retirada/renuncia tras la adopción de una resolución
Cuando, en cualquiera de los casos anteriores, el solicitante retire una solicitud de marca comunitaria, el titular renuncie a la marca comunitaria o a la designación de la UE antes de que la resolución adquiera fuerza de cosa juzgada (es decir, durante la fase de recurso) y solicite posteriormente la transformación de la marca en una marca nacional en algunos o todos los Estados miembros en los que es de aplicación el motivo de denegación, caducidad o nulidad, se denegará dicha solicitud de transformación respecto a tales Estados miembros.
Si el solicitante o titular presenta un recurso y posteriormente retira la solicitud o renuncia a la marca comunitaria o a la designación anulada o denegada y a continuación solicita la transformación, la retirada o la renuncia será enviada a la Sala de Recursos competente y su tramitación podrá ser pospuesta hasta que haya finalizado el procedimiento de recurso (véase la sentencia de 24 de marzo de 2011, C- 552/09 P, «TiMi KiNDERJOGHURT», apartado 43, la resolución de 22 de octubre de 2010, R 0463/2009-4, «MAGENTA», apartados 25-27 y la resolución de 7 de agosto de 2013, R 2264/2012-2 «SHAKEY’S»). Sólo una vez que la retirada o la renuncia haya sido procesada será admitida la transformación para todos los Estados miembros para los que se haya solicitado o rechazada, dependiendo de la resolución del caso (véanse también las Directrices, Parte D, Anulación y Parte E, Sección 1, Cambios en un registro).
4.4 Competencia para decidir sobre los motivos que impiden la transformación
Artículo 113, apartados 1 y 3, del RMC
Compete a la Oficina decidir si la solicitud de transformación cumple los requisitos establecidos en las reglas en conexión con cualquier resolución firme (fallo y motivación) que dé lugar a la transformación.
Si concurre uno de los motivos que impiden la transformación, la Oficina rehusará transmitir la solicitud de transformación a la oficina nacional correspondiente (o, en el caso de una transformación con «opting-back», rehusará transmitir a la OMPI la transformación como una designación posterior para los Estados miembros para los que la transformación está excluida por los motivos mencionados). Esta resolución será susceptible de recurso.
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5 Requisitos formales que debe satisfacer la solicitud de transformación
5.1 Plazo
El plazo habitual para cursar la solicitud de transformación es de tres meses, y la fecha a partir de la cual el plazo comienza a correr depende del motivo de la transformación.
Dicho plazo no es prorrogable.
Asimismo, no se podrá solicitar la continuación del procedimiento para este plazo, de conformidad con el artículo 82, apartado 2, del RMC. No obstante, la restitutio in integrum es, en principio, posible.
5.1.1 Inicio del plazo cuando la Oficina emite una notificación
Artículo 112, apartado 4, del RMC Regla 70, apartado 4, del REMC
Cuando una solicitud de marca comunitaria se considere retirada, la Oficina notificará al solicitante o al titular, que puede solicitar una transformación en un plazo de tres meses desde la fecha de dicha comunicación.
La notificación estará incluida en la comunicación relativa a la pérdida de derechos.
5.1.2 Fecha a partir de la cual el plazo comienza a correr en los demás casos
Artículo 112, apartados 5 y 6, del RMC
En todos los demás casos, el plazo de tres meses para solicitar la transformación se inicia automáticamente, a saber,
cuando la solicitud de marca comunitaria hubiere sido retirada, la fecha en la que la retirada ha sido recibida por la Oficina;
cuando la marca comunitaria hubiere sido objeto de una renuncia, la fecha en que la renuncia se hubiere inscrito en el Registro de Marcas Comunitarias (que es la fecha en la que deviene efectiva de conformidad con el artículo 50, apartado 2, del RMC);
cuando la protección del registro internacional se hubiere restringido o hubiere sido objeto de renuncia con efectos para la UE, la fecha en la que la OMPI la hubiere inscrito de acuerdo con la regla 27, apartado 1, letra b), del RC;
cuando el registro de la marca comunitaria no se hubiere renovado, el día siguiente al último día del plazo en el que pudiere presentarse una solicitud de renovación de acuerdo con el artículo 47, apartado 3, del RMC, es decir, al cabo
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de seis meses desde el último día del mes en el que la protección hubiere expirado;
cuando el registro internacional no se hubiere renovado con efectos para la UE, el día siguiente al último en el que la renovación pudiere efectuarse ante la OMPI de acuerdo con el artículo 7, apartado 4, del Protocolo de Madrid;
cuando se hubiere denegado la solicitud de marca comunitaria o el registro internacional que designe a la UE, la fecha en la que la resolución adquiriere fuerza de cosa juzgada;
cuando se hubiere declarado la nulidad o caducidad de la marca comunitaria o del registro internacional que designe a la UE, la fecha en la que la resolución de la Oficina o del Tribunal de Marcas Comunitarias adquiera fuerza de cosa juzgada.
Una resolución de la Oficina adquiere fuerza de cosa juzgada
cuando no ha sido recurrida una vez transcurrido el plazo de recurso de dos meses con arreglo al artículo 60, del RMC;
tras una resolución de las Salas de Recurso una vez transcurrido el plazo de recurso ante el Tribunal General, o, en su caso, como consecuencia de la resolución definitiva del Tribunal de Justicia.
Una resolución de un Tribunal de Marcas Comunitarias adquiere fuerza de cosa juzgada,
cuando no ha sido recurrida una vez transcurrido el plazo conforme a la legislación nacional,
en otro caso, por resolución definitiva del Tribunal de Marcas Comunitarias en última (segunda o tercera) instancia.
Por ejemplo, si una resolución de la Oficina deniega una marca comunitaria con base en motivos absolutos y se notifica el 11 de noviembre de 2011, dicha resolución adquiere fuerza de cosa juzgada el 11 de enero de 2012. El plazo de tres meses para pedir la transformación finaliza el 11 de abril de /2012
5.2 Solicitud de transformación
Artículo 113, apartado 1, del RMC Regla 83, apartado 2, del REMC
La solicitud de transformación se presentará a la Oficina. El formulario de transformación está a disposición del público en la página web de la Oficina, cuyo uso se recomienda.
El formulario de solicitud de transformación de un registro internacional que designa a la CE está a disposición del público en la página web de la Oficina. Dicho formulario se utilizará asimismo en el caso de una transformación del tipo «opting-back». También puede utilizarse el formulario MM 16 de la OMPI aunque no se recomienda; de hecho,
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la Oficina enviará a la OMPI los datos de la transformación en formato electrónico, pero no el formulario propiamente dicho.
Al utilizar los formularios que la Oficina pone a disposición del público, se permite a esta última extraer la información correspondiente a la marca comunitaria objeto de transformación y los datos relativos al solicitante y al representante de su base de datos y transmitirlos, junto con el formulario de transformación, a las oficinas designadas.
Regla 44, apartados 1 y 2, del REMC
Los solicitantes o sus representantes podrán utilizar formularios con una estructura similar a los que la Oficina pone a disposición del público, siempre que contengan la información básica siguiente:
el nombre y dirección de la persona que solicita la transformación, es decir, el solicitante de la marca comunitaria, el titular de la marca comunitaria registrada o el titular del registro internacional;
el nombre del representante, si lo hubiere;
el número de expediente de la solicitud de marca comunitaria, el número de registro de la marca comunitaria o del registro internacional;
la fecha de presentación de la solicitud, del registro de la marca comunitaria o, en el caso de un registro internacional que designe a la UE, la fecha del registro internacional o de la designación posterior;
los pormenores de la reivindicación de prioridad o de antigüedad, en su caso;
el Estado o Estados miembros en relación con los cuales se pide la transformación; en el caso de un registro internacional deberá indicarse además si se pide la transformación en una solicitud nacional para ese Estado miembro o en una designación del Estado miembro en virtud del Arreglo o del Protocolo de Madrid. En lo que atañe a Bélgica, Países Bajos y Luxemburgo, solo es posible pedir la transformación para los tres países conjuntamente, y no para cada uno de ellos por separado; el impreso de transformación que facilita la OAMI solo permite designar a Bélgica, Países Bajos y Luxemburgo de forma conjunta. Cuando, a pesar de ello, el solicitante indique únicamente uno de estos tres países, la Oficina considerará que se solicita la transformación para Bélgica, Países Bajos y Luxemburgo y transmitirá la solicitud a la Oficina de Marcas del Benelux.
el motivo por el que se pide la transformación:
○ cuando la transformación se pida por haberse retirado la solicitud, deberá indicarse la fecha en que fue retirada;
○ cuando la transformación se pida como consecuencia de la falta de renovación del registro, se indicará la fecha en que expiró la protección;
○ cuando la transformación se pida como consecuencia de la renuncia a una marca comunitaria, se indicará la fecha en que se registró;
○ cuando la transformación se pida como consecuencia de una renuncia parcial, se indicarán los productos o servicios para los que expiró la
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protección de la marca comunitaria y la fecha en que se registró la renuncia parcial;
○ cuando la transformación se pida como consecuencia de una limitación, se indicarán los productos o servicios para los que expiró la protección de la solicitud de marca comunitaria y la fecha de la limitación;
○ cuando la transformación se pida porque la marca deja de tener efecto como consecuencia de una resolución de un Tribunal de Marcas Comunitarias, se indicará la fecha en la que dicha resolución adquiera fuerza de cosa juzgada, y se presentará una copia de la misma, la cual podrá estar en la lengua en el que se adoptó;
○ cuando la transformación se pida porque la Oficina haya finalmente denegado un registro internacional con designación de la UE, deberá indicarse la fecha de dicha decisión;
○ cuando la transformación se pida porque la Oficina o un Tribunal de Marcas Comunitarias han anulado los efectos de un registro internacional que designe a la UE, se indicará la fecha en la que la decisión de la Oficina o la resolución del Tribunal de Marcas Comunitarias adquieran fuerza de cosa juzgada, y se adjuntará una copia de la resolución;
○ cuando la transformación se pida porque se haya renunciado o anulado la designación de la UE ante la OMPI, deberá indicarse la fecha en la que la OMPI lo registró;
○ cuando la transformación se pida porque no se haya renovado el registro internacional que designe a la UE, y siempre que haya transcurrido el plazo para renovarlo, deberá indicarse la fecha en que expiró la protección.
La solicitud de transformación podrá comportar:
la mención de que la solicitud se refiere tan solo a una parte de los productos y servicios para los cuales se hubiere presentado o registrado la solicitud, supuesto en el cual deberán indicarse los productos y servicios para los que se pide la transformación;
la mención de que la transformación se solicita para productos y servicios diferentes para los distintos Estados miembros, supuesto en el cual deberán indicarse los productos y servicios correspondientes a cada Estado miembro.
En la solicitud de transformación también puede nombrarse a un representante ante una oficina nacional designada, marcando las correspondientes casillas en el anexo al formulario de transformación. Aunque esta indicación sea de carácter voluntario y carezca de importancia en el marco del procedimiento de transformación ante la Oficina, será útil para las oficinas nacionales tras la recepción de la solicitud de transformación, puesto que les permitirá ponerse inmediatamente en comunicación con un representante facultado para ejercer su profesión ante la oficina nacional de que se trate (véase el punto 6).
5.3 Lengua
Regla 95, letra a) y regla 126, del REMC
Cuando la solicitud de transformación se refiera a una solicitud de marca comunitaria, deberá presentarse en la lengua utilizada para presentar la solicitud o en la segunda lengua indicada en la misma.
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Cuando la solicitud se refiera a un registro internacional que designe a la UE antes de la fecha en la que se hubiere expedido una declaración de concesión de protección de conformidad con la regla 116 del REMC, la solicitud deberá presentarse en la lengua utilizada para presentar la solicitud internacional a la OMPI o en la segunda lengua indicada en la misma.
Regla 95, letra b) y regla 126, del REMC
Cuando la solicitud se refiera a un registro de marca comunitaria, podrá presentarse en una de las cinco lenguas de la Oficina. Cuando la solicitud de transformación se refiera a un registro internacional que designe a la UE tras haberse expedido una declaración de concesión de protección, la solicitud podrá presentarse en una de las cinco lenguas de la Oficina, excepto en el caso de una transformación de tipo «opting- back» en el que la solicitud deberá presentarse en inglés, francés o español.
No obstante, cuando la solicitud de transformación se presente utilizando el formulario facilitado por la Oficina de conformidad con la regla 83 del REMC, el formulario podrá presentarse en cualquiera de las lenguas oficiales de la Comunidad, siempre que sea una de las lenguas de la Oficina en lo que a los elementos textuales se refiere. Esto será aplicable, en particular, a la lista de productos y servicios en caso de solicitar una transformación parcial.
5.4 Tasas
Artículo 113, apartado 1, del RMC Regla 45, apartado 2, del REMC Artículo 2, apartado 20 y artículo 8, apartado 3 del RMC
La solicitud de transformación está sujeta al pago de una tasa de 200 EUR, incluido el caso de la transformación de un registro internacional que designe a la UE. No se tendrá por presentada la solicitud hasta que no se haya abonado la tasa de transformación. Lo anterior significa que la tasa de transformación deberá abonarse en el citado plazo de tres meses. Cuando un pago se ha efectuado tras haber vencido el plazo, se tendrá por respetado dicho plazo, si la persona aporta la prueba de que ha efectuado, en un Estado miembro y dentro del plazo, el pago en un banco o ha dado una orden de transferencia, y al mismo tiempo abona un recargo del diez por ciento sobre la tasa correspondiente, (véanse las Directrices, Parte A, Disposiciones Generales, Sección 3, Pago de las tasas y las costas).
6 Examen efectuado por la Oficina
6.1 Fases del procedimiento, competencia
La tramitación de las solicitudes de transformación por parte de la Oficina comprenderá las siguientes fases:
Artículo 113, apartados 2 y 3, del RMC Reglas 45-47, del REMC
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examen
publicación
transmisión de las solicitudes a las oficinas designadas.
6.2 Examen
El examen de la solicitud de transformación efectuado por la Oficina abarca los puntos siguientes:
tasas plazo lengua requisitos formales motivos representación transformación parcial.
6.2.1 Tasas
Regla 45, apartado 2 y regla 122, apartado 3, del REMC
La Oficina examinará si la tasa de transformación ha sido abonada dentro del plazo.
En el caso de que no se haya abonado la tasa de transformación dentro del plazo, la Oficina comunicará al solicitante que no se considera presentada la solicitud de transformación. Las tasas abonadas fuera de plazo serán objeto de reembolso.
6.2.2 Plazo
Regla 45, apartado 1 y regla 122, apartado 3, del REMC
La Oficina examinará si la solicitud ha sido presentada dentro del plazo de tres meses.
La Oficina denegará la solicitud de transformación, si esta no hubiere sido presentada dentro del plazo de tres meses. Las tasas abonadas fuera de plazo no serán objeto de reembolso.
6.2.3 Lengua
Regla 95, letra a) y regla 126, del REMC
La Oficina examinará si la solicitud ha sido presentada en la lengua correcta.
Cuando la solicitud se presente en una lengua que no sea una de las lenguas autorizadas para el procedimiento de transformación (véase el punto 5.3), la Oficina
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enviará al solicitante una notificación de irregularidad y especificará un plazo concreto en el que deberá subsanar la solicitud de transformación. Si el solicitante no responde, la solicitud no se tramitará y se considerará no presentada. Las tasas abonadas no serán objeto de reembolso.
6.2.4 Requisitos formales
Regla 44, apartado 1, letras b), d) y e), del REMC
La Oficina examinará si la solicitud cumple los requisitos formales previstos en el Reglamento de ejecución (véase el punto 5).
Cuando el solicitante de la transformación no hubiere utilizado el formulario de transformación que proporciona la Oficina y cuando la irregularidad consistiere en no haber indicado los elementos contemplados en la regla 44, apartado 1, letras b), d) o e), se invitará al solicitante de la transformación a que facilite las indicaciones que faltan o, en caso de que dichas indicaciones puedan obtenerse fácilmente de los datos que obraren en poder de la Oficina, esta se tendrá por autorizada para remitir a las oficinas designadas los extractos pertinentes de su base de datos.
6.2.5 Motivos
La Oficina examinará:
si concurre uno de los motivos de transformación referidos en el punto 2, supra;
si concurre uno de los motivos que impiden la transformación referidos en el punto 4, supra;
Regla 123, apartado 2, del REMC
en el caso de una transformación con «opting-back», si hubiera sido posible, en la fecha del registro internacional, designar al Estado miembro respectivo en una solicitud internacional;
en el caso de una transformación parcial, si los productos y servicios objeto de la transformación están comprendidos, y no exceden, en la lista de productos y servicios de la marca comunitaria o el registro internacional que designe a la UE en el momento en el que se extinguió o dejó de producir efectos (véase punto 6.3, supra);
en el caso de una transformación parcial en el sentido de que parte de la marca comunitaria o del registro internacional que designe a la UE sigue en vigor, si los productos y servicios para los que se pide la transformación no se solapan con los productos y servicios para los que la marca permanece en vigor (véase el punto 6.3, infra).
Con los dos últimos puntos de examen se pretende evitar la transformación de un mayor número de productos y servicios o de unos productos y servicios más amplios que han sido objeto de denegación o anulación.
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Cuando la solicitud de transformación no cumpla alguno de los demás requisitos e indicaciones obligatorios que se mencionan en los puntos 4 y 5.2, la Oficina invitará al solicitante de la transformación a subsanar la irregularidad mediante una notificación de irregularidad y especificará un plazo concreto en el que deberá subsanar la solicitud de transformación. Si el solicitante no responde, la solicitud no se tramitará y se considerará no presentada. Las tasas abonadas no serán objeto de reembolso.
6.2.6 Representación
Regla 76, apartados 1 y 4, del REMC
En lo que atañe a la representación, resultan de aplicación las reglas sobre representación (véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional). La persona que solicita la transformación puede designar un nuevo representante o un representante adicional (abogado o representante profesional de la OAMI) para el procedimiento de transformación.
Todo poder que permita actuar en nombre del solicitante o titular será válido únicamente para las actuaciones ante la Oficina. La cuestión de saber si un representante designado para actuar ante la Oficina puede actuar ante la oficina nacional en relación con la solicitud nacional resultante y, en caso afirmativo, si necesita presentar un poder suplementario, viene determinada por la legislación nacional aplicable. En el caso de una transformación con «opting-back», se transmitirá a la OMPI el nombre del representante designado ante la OAMI.
6.2.7 Transformación parcial
Artículo 112, apartado 1, del RMC Regla 44, apartado 1, letra e), del REMC
Cuando la transformación se solicite solo para una parte de los productos y servicios, o la lista de productos y servicios no sea la misma para los distintos Estados miembros («transformación parcial»), la Oficina examinará si los productos y servicios para los que se pide la transformación están comprendidos en los productos y servicios a los que afecta el motivo de transformación. Para este examen se aplicarán los mismos criterios que en situaciones procesales similares, tales como una limitación de una solicitud o una denegación parcial en un procedimiento de oposición.
Cuando se deniegue parcialmente una solicitud o se declare la nulidad o caducidad parcial de un registro, podrá pedirse la transformación únicamente en relación con los productos y servicios para los cuales se denegó la solicitud o se declaró la nulidad o caducidad del registro, y no para los productos y servicios para los cuales la solicitud o el registro siga siendo válido.
Cuando una solicitud sea limitada o se declare la nulidad o caducidad parcial de un registro, podrá pedirse la transformación únicamente en relación con los productos y servicios para los cuales se desestimó parcialmente la solicitud o se declaró la nulidad o caducidad parcial del registro, y no para los productos y servicios para los cuales la solicitud o el registro siga siendo válido. No obstante, véase el punto 4.3 cuando dicha limitación o declaración parcial tengan lugar tras una resolución.
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El solicitante deberá indicar en tales supuestos los productos y servicios para los que se pide la transformación. La limitación podrá expresarse de forma negativa, por ejemplo usando expresiones del tipo de «bebidas a excepción de...», en la misma medida en que tales expresiones son admisibles en el caso de limitación de una solicitud de marca comunitaria o de renuncia parcial de un registro de marca comunitaria (véanse las Directrices, Parte B, Examen, Sección 3, Clasificación).
6.3 Inscripción en el Registro y publicación de la solicitud
Artículo 113, apartado 2, del RMC Regla 84, apartado 3, letra p), del REMC
Tras la recepción de una solicitud de transformación que se considere presentada por haberse abonado la tasa exigida, la Oficina efectuará una inscripción en el Registro de Marcas Comunitarias en la que hará mención de la recepción de la solicitud de transformación, siempre y cuando la transformación se solicite para una solicitud de marca comunitaria o marca comunitaria registrada.
Artículo 113, apartado 2, del RMC Regla 46, apartado 1, del REMC
Una vez examinada la solicitud de transformación y declarada conforme, la Oficina la registrará y publicará en el Boletín de Marcas Comunitarias, en la Parte E.1. para marcas comunitarias y en la Parte E.3. para registros internacionales que designan a la UE. No obstante, tal publicación no se llevará a cabo si la solicitud de transformación se presentare cuando la solicitud de marca comunitaria no se hubiere publicado todavía con arreglo a lo previsto en el artículo 39 del RMC.
Regla 46 del REMC
La publicación se efectuará cuando la Oficina haya concluido el examen de la solicitud de transformación y solo si la hallara conforme. La solicitud no está conforme si no se ha efectuado el pago.
Regla 46, apartado 2, del REMC
La publicación de la solicitud de transformación deberá incluir las indicaciones a que se refiere la regla 46, apartado 2, del REMC y, salvo que se refiera a un registro internacional que designe a la UE, contendrá una referencia a la publicación anterior en el Boletín de Marcas Comunitarias y a la fecha de la solicitud de transformación.
Regla 46, apartado 2 y reglas 122 y 123, del REMC
La lista de productos y servicios para los que se pide la transformación no se publicará si la transformación se refiere a un registro internacional que designe a la UE.
6.4 Transmisión a las oficinas designadas
Artículo 113, apartado 3 y artículo 114, apartado 1, del RMC.
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Regla 47 del REMC
Cuando la Oficina haya concluido el examen de la solicitud de transformación y la hallare conforme, la transmitirá inmediatamente a las oficinas designadas. La transmisión se llevará a cabo independientemente de que se haya efectuado o no la publicación requerida.
La Oficina enviará una copia de la solicitud de transformación y un extracto de su base de datos con la información contemplada en la regla 84, apartado 2, del REMC de la marca comunitaria o el registro internacional. Todo órgano central de la propiedad industrial al que se transmita la solicitud de transformación podrá obtener de la Oficina cualquier información adicional relativa a la solicitud, que permita a dicho órgano decidir sobre la marca nacional resultante de la transformación.
Regla 47 del REMC
Al mismo tiempo, la Oficina informará al solicitante de la fecha de transmisión a las oficinas nacionales.
En el caso de una transformación con «opting-back», la OMPI la tramitará como una designación posterior de acuerdo con la regla 24, apartados 6 y 7, del RC.
Si la oficina designada es una oficina nacional, la transformación tendrá como resultado una solicitud nacional.
Artículo 114, apartado 3, del RMC
La legislación nacional en vigor en los Estados miembros interesados podrá establecer que la solicitud de transformación reúna uno o todos los requisitos siguientes:
el abono de la tasa nacional de depósito;
la presentación de una traducción de la solicitud y de los documentos que la acompañan en una de las lenguas oficiales del Estado miembro de que se trate; en particular, para las solicitudes de transformación previas a la publicación de la marca comunitaria, la oficina nacional por lo general solicitará una traducción de la lista de productos y servicios.
la mención de un domicilio en el Estado miembro en cuestión;
la presentación de una reproducción de la marca en el número de ejemplares que indique dicho Estado miembro.
Serán aplicables las leyes nacionales en cuanto a la designación de un representante local. Cuando, en el formulario de transformación, se haga uso de la facultad de indicar a un representante a efectos del procedimiento ante una determinada oficina nacional, esta última podrá comunicarse directamente con el representante, con lo cual no será necesaria una comunicación separada destinada a que se designe a un representante local.
Artículo 114, apartado 2, del RMC
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La legislación nacional no podrá imponer a la solicitud de transformación requisitos de forma diferentes o adicionales a los establecidos en el RMC y el REMC.
7 Efectos de la transformación
Artículo 112, apartado 3, del RMC
A la solicitud de marca nacional que derive de la transformación le corresponderá, en el Estado miembro de que se trate, la fecha de presentación o, en su caso, la fecha de prioridad de la solicitud de marca comunitaria, y la antigüedad de una marca anterior con efecto en dicho Estado válidamente reivindicada para la solicitud o el registro de la marca comunitaria con arreglo al artículo 34 o al artículo 35 del RMC. Véase el Manual Parte A, Sección 9, Ampliación, para información sobre la solicitud de transformación de una marca comunitaria en una marca nacional de un nuevo Estado Miembro.
En el caso de una transformación del tipo «opting-back», a la solicitud internacional resultante de la designación posterior del Estado miembro en virtud de la regla 24, apartado 6, letra e) y apartado 7 del Reglamento Común le corresponderá la fecha original del registro internacional que designe a la UE, es decir, bien la fecha efectiva del registro internacional (incluida, en su caso, la fecha de prioridad) bien la fecha de la designación posterior de la UE.
No obstante, no existe un procedimiento armonizado para el examen de la marca comunitaria transformada en las oficinas nacionales. Según se indica en la introducción, el procedimiento de transformación es un sistema a dos niveles, en el que el segundo nivel, el propio procedimiento de transformación, se tramita ante las oficinas de marcas y patentes nacionales. En función de la legislación nacional, la marca transformada se registrará inmediatamente o se someterá al proceso de examen, registro y oposición como cualquier otra solicitud de marca nacional normal.
Se considerará que las solicitudes nacionales derivadas de la transformación de una (solicitud de) marca comunitaria anterior surgen en el momento en que se presenta una solicitud válida de transformación Por lo tanto, en los procedimientos de oposición, tales derechos se considerarán debidamente identificados a los efectos de admisibilidad de la regla 18, apartado 1, del REMC cuando el oponente indique el número de (solicitud de) marca comunitaria que se quiere transformar y los países para los que se solicita dicha transformación.
Si, durante los procedimientos de oposición o nulidad basados en causas relativas, la solicitud de marca comunitaria (o marca comunitaria) sobre la que se base la oposición deja de existir (o la lista de productos y servicios es limitada), pero se presenta al mismo tiempo una solicitud de transformación, los procedimientos de oposición o nulidad podrán continuar. Ello se debe a que los registros de marcas nacionales derivados de una transformación de solicitud de marca comunitaria (o marca comunitaria) pueden constituir la base del procedimiento de oposición o nulidad que originariamente se inició fundamentándose en dicha solicitud de marca comunitaria o registro (véase la resolución de la Gran Sala de Recurso, de 15 de julio de 2008, R 1313/2006-G, apartado 34) (véanse también las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales).
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 4
RENOVACIÓN
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Índice
1 Advertencia sobre posibles fraudes........................................................ 4 1.1 Empresas privadas que envían facturas engañosas ............................... 4 1.2 Renovación por parte de terceros no autorizados...................................4 1.3 Información de contacto ............................................................................4
2 Período de registro.................................................................................... 4
3 Notificación de expiración del registro.................................................... 5
4 Renovación de una solicitud de marca comunitaria .............................. 5
5 Tasas y otros requisitos formales para la solicitud de renovación ...... 5 5.1 Personas que pueden presentar una solicitud de renovación................ 6 5.2 Contenido de la solicitud de renovación .................................................. 7
5.2.1 Nombre y dirección y otros datos de la persona que presenta una solicitud de renovación ................................................................................... 7 5.2.1.1 Solicitud presentada por el titular de la marca comunitaria .........................7 5.2.1.2 Solicitud presentada por una persona autorizada por el titular....................7
5.2.2 Número de registro de la marca comunitaria ................................................. 7 5.2.3 Indicación del período de renovación............................................................. 8
5.3 Lenguas ......................................................................................................8 5.4 Plazos..........................................................................................................8
5.4.1 Período de seis meses antes de la expiración para la renovación (período básico).............................................................................................. 8
5.4.2 Período de gracia de seis meses después de la expiración (período de gracia)............................................................................................................. 9
5.5 Tasas...........................................................................................................9 5.5.1 Tasas que deben pagarse.............................................................................. 9 5.5.2 Plazo de pago............................................................................................... 10 5.5.3 Pagos realizados por terceros...................................................................... 10 5.5.4 Reembolso de las tasas ............................................................................... 11
6 Procedimiento ante la Oficina ................................................................ 11 6.1 Examen de los requisitos formales......................................................... 11
6.1.1 Cumplimiento de los plazos.......................................................................... 11 6.1.1.1 Pago durante el período básico o el período de gracia .............................11 6.1.1.2 Pago una vez finalizado el período de gracia............................................12 6.1.1.3 Situación en la que el titular posee una cuenta corriente ..........................13 6.1.1.4 Continuación del procedimiento ................................................................13 6.1.1.5 Restitutio in integrum.................................................................................13
6.1.2 Cumplimiento de los requisitos formales del Reglamento de ejecución ...... 14 6.1.2.1 Renovación solicitada por una persona autorizada...................................14 6.1.2.2 Otros requisitos .........................................................................................14
6.2 Elementos que no deben examinarse..................................................... 15 6.3 Modificación ............................................................................................. 15
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7 Inscripciones en el Registro................................................................... 15
8 Fecha de entrada en vigor de la renovación, o expiración, conversión ............................................................................................... 16 8.1 Fecha de entrada en vigor de la renovación .......................................... 16 8.2 Conversión de marcas comunitarias caducadas................................... 17
9 Renovación de marcas internacionales que designan a la UE ........... 17
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1 Advertencia sobre posibles fraudes
1.1 Empresas privadas que envían facturas engañosas
La Oficina ha tenido conocimiento de que los usuarios en Europa reciben una cantidad creciente de correo no solicitado de empresas que exigen el pago por servicios relacionados con marcas, dibujos y modelos, como la renovación.
En el sitio web de la Oficina se ha publicado una lista de las cartas de empresas o registros que, según los usuarios, son engañosas. Se recuerda que estos servicios no están relacionados con servicios oficiales de registro de marcas, dibujos o modelos prestados por oficinas de propiedad intelectual u otros organismos públicos en la Unión Europea, como la OAMI.
Si usted recibe una carta o factura, compruebe minuciosamente lo que se le ofrece y su origen. Recuerde que la OAMI nunca envía facturas a los usuarios ni cartas solicitándoles el pago directo de servicios (véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos).
1.2 Renovación por parte de terceros no autorizados
La Oficina también ha tenido conocimiento de que defraudadores utilizan el módulo de renovación electrónica para solicitar renovaciones sin la autorización del titular, bloqueando así la renovación a través del módulo a las personas autorizadas para hacerlo. Este bloqueo técnico está destinado a evitar que se pague dos veces por la misma renovación. Si al presentar una solicitud de renovación en el módulo de renovación electrónica descubre que la marca está «bloqueada», debido a que ya se ha solicitado la renovación de esta marca, póngase en contacto con la Oficina.
1.3 Información de contacto
Si tiene alguna duda o detecta un nuevo caso, consulte a sus asesores jurídicos o póngase en contacto con la Oficina llamando al teléfono +34 965 13 91 00 o por correo electrónico en la dirección information@oami.europa.eu.
2 Período de registro
Artículo 46, del RMC Artículos 26 y 27, del RMC Regla 9, del REMC
El período de registro de una marca comunitaria es de diez años a partir de la fecha de presentación de la solicitud. Por ejemplo, una marca comunitaria cuya fecha de presentación sea el 16 de abril de 2006 expirará el 16 de abril de 2016.
La fecha de presentación de la solicitud se establece con arreglo a los artículos 26 y 27, del RMC y la regla 9, del REMC.
El registro puede renovarse indefinidamente por períodos de diez años.
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3 Notificación de expiración del registro
Artículo 47, apartado 2, del RMC Regla 29, del REMC Comunicación nº 5/05 del Presidente de la Oficina de 27 de julio de 2005
Al menos seis meses antes de la expiración del registro, la Oficina comunicará:
al titular registrado de la marca comunitaria y a cualquier persona que haya registrado un derecho respecto a una marca
comunitaria
que se acerca la fecha de expiración del registro. Entre las personas que han registrado un derecho se encuentran los titulares de una licencia registrada, los titulares de un derecho real registrado, los acreedores de un procedimiento de ejecución forzosa o las autoridades competentes para actuar en nombre del titular en los procedimientos de insolvencia.
El hecho de no comunicar esta información no afecta a la expiración del registro y no implica responsabilidad alguna para la Oficina.
4 Renovación de una solicitud de marca comunitaria
En el caso excepcional en que una solicitud no haya sido registrada debido a la existencia de un procedimiento en curso, la Oficina no enviará la notificación contemplada en el artículo 47, apartado 2, del RMC. El solicitante no está obligado a renovar su solicitud durante un procedimiento que dure más de diez años y cuando no exista la certeza de que se realizará el registro. La Oficina no invitará al titular a renovar la marca comunitaria y pagar la tasa de renovación (con efecto retroactivo) hasta que la marca esté registrada. En tal caso, el titular tendrá dos meses para pagar la tasa de renovación (incluidas las tasas para clases adicionales). Si la tasa de renovación no se paga en este primer plazo, se concederá al titular un segundo plazo de otros dos meses (en total cuatro meses a partir de la fecha de la primera carta) para pagar la tasa de renovación. En este nuevo plazo de dos meses no se aplica el recargo del 25% sobre la tasa de renovación contemplado en el artículo 2, apartado 16, del RTMC. Si la tasa de renovación no se paga en el plazo adicional concedido, la Oficina enviará una notificación indicando que el registro ha expirado.
5 Tasas y otros requisitos formales para la solicitud de renovación
Reglas 79, 80 y 82, del REMC Comunicación nº 8/05 del Presidente de la Oficina, de 21 de diciembre de 2005, relativa a la renovación de marcas comunitarias
Se aplican las normas generales relativas a las comunicaciones con la oficina (véanse las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, plazos), lo que significa que la solicitud puede presentarse de las siguientes maneras:
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por los medios electrónicos disponibles en la página web de la OAMI (módulo de renovación electrónica). En caso de renovación electrónica se aplica un descuento del 10% de la tasa básica de renovación. La introducción del nombre y apellidos en los campos correspondientes del formulario electrónico se considera una firma. Aparte de este descuento, el uso de la renovación electrónica ofrece otras ventajas, como la recepción automática de una confirmación electrónica inmediata de la solicitud de renovación o el uso del administrador de renovación electrónica para cumplimentar el formulario para tantas marcas comunitarias como sea necesario;
mediante el envío de un formulario original firmado por fax, correo o cualquier otro medio (véanse las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, plazos). El formulario normalizado está disponible en el sitio web de la OAMI. Es necesario firmar los formularios, pero no los anexos.
5.1 Personas que pueden presentar una solicitud de renovación
Artículo 17, apartado 7, y artículo 47, apartado 1, del RMC Comunicación nº 8/05 del Presidente de la Oficina, de 21 de diciembre de 2005, relativa a la renovación de marcas comunitarias
La solicitud de renovación puede ser presentada por:
el titular registrado de la marca comunitaria;
si el registro de la marca comunitaria se ha cedido, el derechohabiente a partir del momento en que la Oficina haya recibido una solicitud de registro de la cesión;
cualquier persona expresamente autorizada por el titular de la marca comunitaria para hacerlo. Esta persona puede ser, por ejemplo, un licenciatario registrado, un licenciatario no registrado o cualquier otra persona que haya obtenido la autorización del titular de la marca comunitaria para renovarla.
Debe existir una autorización a su favor; sin embargo, esta última no debe presentarse ante la Oficina a menos que esta la solicite (véase el punto 6.1.2.1 infra). Si la Oficina recibe tasas de dos fuentes que no son ni el titular ni el representante en el expediente se pondrá en contacto con el titular para saber qué persona está autorizada a presentar la solicitud de renovación. En caso de que no reciba respuesta de este, la Oficina validará el pago recibido en primer lugar.
(sentencia de 12/05/2009, en el asunto T-410/07, «JURADO», apartados 33-35 y resolución de 13/01/2008, en el asunto R 0989/2007-4, «ELITE GLASS-SEAL», apartados 17-18).)
La representación en virtud del artículo 92, apartado 2, del RMC no es obligatoria para la renovación.
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5.2 Contenido de la solicitud de renovación
Artículo 47, apartado 1, del RMC Regla 30, apartados 1 y 3, del REMC
La solicitud de renovación debe incluir la siguiente información: nombre y dirección de la persona que solicita la renovación y nombre de registro de la marca comunitaria para la que se solicita la renovación. La renovación se considera total por defecto. El pago puede constituir por sí mismo una solicitud de renovación válida, a condición de que dicho pago llegue a la Oficina y se indique el nombre del pagador, el número de registro de la marca comunitaria y la mención «renovación». En tal caso no es necesario cumplir otras formalidades (véanse las Directrices, Parte A, Disposiciones generales, Sección 3, Pago de las tasas, costas y gastos).
5.2.1 Nombre y dirección y otros datos de la persona que presenta una solicitud de renovación
5.2.1.1 Solicitud presentada por el titular de la marca comunitaria
Si la solicitud la presenta el titular de la marca comunitaria, debe indicar su nombre.
Si la Oficina ha asignado un número de identificación al titular, debe indicar dicho número junto con el nombre.
5.2.1.2 Solicitud presentada por una persona autorizada por el titular
Regla 1, apartado 1, letras b) y e) REMC
Si la solicitud de renovación la presenta una persona autorizada por el titular, deben indicarse el nombre y la dirección de dicha persona.
Deben indicarse el nombre y dirección, o el número de identificación y el nombre (véase el punto anterior) de la persona autorizada en virtud de la regla 1, apartado 1, letra b), del REMC.
5.2.2 Número de registro de la marca comunitaria
Regla 30, apartado 1, letra b), del REMC
Debe indicarse el número de registro de la marca comunitaria.
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5.2.3 Indicación del período de renovación
Regla 30, apartado 1, letra c), del REMC
Si la renovación es total, es decir, si se solicita para todos los productos y servicios para los que fue registrada la marca, es necesario indicarlo; si no se indica nada, la renovación se considera total por defecto.
Si la renovación se solicita únicamente para algunos de los productos o servicios para los que se registró la marca:
debe indicarse clara e inequívocamente las clases o productos y servicios para los que se solicita la renovación. La renovación electrónica sólo permite eliminar clases, pero no parte de una clase.
O bien,
deben indicarse clara e inequívocamente las clases o productos y servicios para los que no se solicita la renovación (lo que sólo es posible presentando el formulario impreso).
5.3 Lenguas
Regla 95, letra b), del REMC
Las solicitudes de renovación pueden presentarse en cualquiera de las cinco lenguas oficiales de la Oficina. Esta lengua se convierte en la lengua del procedimiento de renovación. Sin embargo, si la solicitud de renovación se presenta utilizando el formulario facilitado por la Oficina con arreglo a la regla 83, dicho formulario puede utilizarse en cualquiera de las lenguas oficiales de la Unión Europea, a condición de que los elementos de texto del formulario se cumplimenten en una de las lenguas de la Oficina. Estos elementos se refieren, en particular, a la lista de productos y servicios en caso de renovación parcial.
5.4 Plazos
Artículo 46 y artículo 47, apartado 3, del RMC Regla 72, apartado 1, del REMC
5.4.1 Período de seis meses antes de la expiración para la renovación (período básico)
La solicitud de renovación y la tasa de renovación deberán presentarse en un plazo de seis meses que terminará el último día del mes en que expire el plazo de protección.
Por ejemplo, si la fecha de presentación de la marca comunitaria es el 1 de abril de 2006, el último día del mes en que finalizará la protección será el 30 de abril de 2016. Por consiguiente, la solicitud de renovación debe presentarse y la tasa de renovación pagarse entre el 1 de noviembre de 2015 y el 30 de abril de 2016, o bien,
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si se trata de un sábado, domingo o día festivo de la Oficina, o esta no recibe correo ordinario a efectos de la regla 72, apartado 1, del REMC, el siguiente día laborable en que la Oficina esté abierta al público y reciba correo ordinario.
5.4.2 Período de gracia de seis meses después de la expiración (período de gracia)
Si la marca comunitaria no se renueva dentro del período básico, la solicitud aún puede presentarse y la tasa de renovación pagarse, previo pago de una tasa adicional (véase el punto 5.5 infra), en un nuevo período de seis meses a partir del último día del mes en que finaliza la protección.
Por ejemplo, si la fecha de presentación de la marca comunitaria es el 1 de abril de 2006, el último día del mes en que finalizará la protección será el 30 de abril de 2016. Por consiguiente, el período de gracia en el que se puede introducir la solicitud de renovación mediante el pago de la tasa de renovación y de una tasa adicional comienza a partir del día siguiente al 30 de abril de 2016, es decir, a partir del 1 de mayo de 2016, y termina el 31 de octubre de 2016, o si esta fecha cae en sábado, domingo o día festivo de la Oficina, o esta no recibe correo ordinario a efectos de la regla 72, apartado 1, del REMC, el siguiente día laborable en que la Oficina esté abierta al público y reciba correo ordinario. Este plazo se aplica igualmente si, en el ejemplo anterior, el 30 de abril de 2016 es un sábado o domingo; la norma que establece que el plazo que debe cumplirse con la Oficina se prorroga hasta el día laborable siguiente se aplica solamente una vez al final del período básico y no en la fecha inicial del período de gracia.
5.5 Tasas
5.5.1 Tasas que deben pagarse
Artículo 47, apartado 3, del RMC Regla 30, apartado 2, letras a) y b), del REMC Artículo 2, del RTMC
Las tasas que deben pagarse por la renovación de una marca comunitaria consisten en una tasa básica y una tasa por cada clase de productos y servicios incluida en la marca comunitaria, a partir de la cuarta, para las cuales se solicita la renovación.
La tasa básica
por una marca individual es de 1 500 EUR /1 350 EUR en caso de renovación, y por una marca colectiva es de 3 000 EUR.
La tasa por clase a partir de la cuarta
en el caso de una marca individual es de 400 EUR, en el caso de una marca colectiva es de 800 EUR.
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5.5.2 Plazo de pago
La tasa debe pagarse en un plazo de seis meses que acaba el último día del mes en que finaliza la protección (para calcular este plazo, véase el ejemplo que figura en el punto 5.4.1).
Artículo 47, apartado 3, del RMC Regla 30, apartado 2, letra c) y apartado 4, del REMC Artículo 2, apartado 16, y artículo 8, apartado 3, del RTMC
La tasa puede pagarse en un período adicional de seis meses a partir del último día del mes en que finaliza la protección (véase el punto 5.4.2), a condición de que se pague una tasa adicional equivalente al 25 % del total de la tasa de renovación, incluidas las tasas por clases, pero cuyo importe máximo es de 1 500 EUR.
La renovación tendrá lugar únicamente si la Oficina recibe el pago de todas las tasas (tasas de renovación y, en su caso, la tasa adicional por pago con retraso) durante el periodo de gracia (véase el punto 5.4.2 supra).
Las tasas que se paguen antes de que comience el primer período de seis meses, en principio no se tomarán en consideración y se reembolsarán.
Regla 72, apartado 1, del REMC
Si el titular de la marca comunitaria tiene una cuenta corriente en la Oficina, la tasa de renovación (incluidas las tasas por clases) solo se cargará en ella una vez presentada una solicitud de renovación y el cargo se efectuará el último día del plazo de seis meses contemplado en el artículo 47, apartado 3, del RMC, es decir, el último día del mes en que finaliza la protección, a menos que se impartan otras instrucciones.
Artículo 7, apartado 1, letra d), de la Decisión nº EX-96-1 del Presidente de la Oficina, de 11 de enero de 1996, relativa a las modalidades de apertura de cuentas corrientes en la Oficina, modificada por la Decisión n º EX-03-1, de 20 de enero de 2003, y la Decisión nº EX-06-1 de 12 de enero de 2006
En caso de que la solicitud de renovación se presente con retraso (véase el punto 5.4.2 supra), y siempre que el titular de la marca comunitaria tenga una cuenta corriente en la Oficina, la tasa de renovación y el recargo se cargarán el último día del plazo adicional de seis meses contemplado en el artículo 47, apartado 3, del RMC, es decir, el último día del mes en que finaliza la protección, a menos que se impartan otras instrucciones.
5.5.3 Pagos realizados por terceros
El pago también pueden hacerlo las personas indicadas en el punto 5.1.
Para realizar un pago mediante débito en una cuenta corriente de un tercero es necesaria una autorización expresa del titular de la cuenta corriente para que la tasa se cargue en dicha cuenta. En tal caso, la Oficina comprobará si existe una autorización. Si no existe esta, enviará una carta al solicitante de la renovación pidiéndole que presente la autorización para efectuar el débito en la cuenta de un
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tercero. En estos casos, el pago se considerará efectuado en la fecha en que la Oficina reciba la autorización.
5.5.4 Reembolso de las tasas
Regla 30, apartados 6 y 7, del REMC
Las tasas de renovación y, en su caso, la tasa adicional por pago con retraso podrán reembolsarse con sujeción a determinadas circunstancias. Para más información, véase la Parte A, Sección 3, Pago de las tasas, costas y gastos.
6 Procedimiento ante la Oficina
6.1 Examen de los requisitos formales
El examen de la solicitud de renovación se limita a las formalidades y se refiere a los siguientes aspectos:
6.1.1 Cumplimiento de los plazos
Artículo 47, apartados 3 y 4, del RMC Regla 30, apartados 2 y 3, del REMC
6.1.1.1 Pago durante el período básico o el período de gracia
Si la solicitud de renovación se presenta y la tasa de renovación se paga durante el período básico, la Oficina registrará la renovación, siempre que se cumplan las demás condiciones establecidas en el RMC y el REMC (véase el punto 6.1.2 supra).
Artículo 47, apartado 3, del RMC Comunicación nº 8/05 del Presidente de la Oficina de 21 de diciembre de 2005
Si no se ha presentado una solicitud de renovación, pero la Oficina recibe un pago por la tasa de renovación en el que figuren los datos mínimos (nombre y dirección de la persona que solicita la renovación y número de registro de la marca comunitaria para la que se solicita la renovación), dicho pago constituye una solicitud válida y no es necesario cumplir otras formalidades.
Sin embargo, si no se ha presentado una solicitud de renovación, pero se ha pagado la tasa de renovación sin indicar los datos mínimos (nombre y dirección de la persona que solicita la renovación y número de registro de la marca comunitaria para la que se solicita la renovación), la Oficina invitará al titular de la marca comunitaria a presentar un solicitud de renovación y a pagar, en su caso, la tasa adicional por la presentación con retraso de dicha solicitud. Se remitirá una carta lo antes posible tras la recepción de la tasa, a fin de que la solicitud se presente dentro del plazo establecido y no deba pagarse la tasa adicional.
Si la solicitud se ha presentado en el período básico, pero la tasa de renovación no se ha pagado o no se ha pagado en su totalidad, la Oficina invitará a la persona que
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solicita la renovación a pagar la tasa de renovación o la parte restante de ella y el recargo por pago atrasado. En caso de pago incompleto de la tasa, el titular de la marca comunitaria podrá limitar su solicitud de renovación al número de clases correspondiente, en lugar de pagar el importe que falta.
Si la solicitud de renovación la presenta una persona autorizada por el titular de la marca comunitaria, este último recibirá una copia de la notificación.
6.1.1.2 Pago una vez finalizado el período de gracia
Artículo 47, apartado 3, del RMC; regla 30, apartado 5, y regla 54, del REMC
Si la solicitud de renovación no se presenta o se presenta una vez finalizado el período de gracia, la Oficina dictaminará que el registro ha expirado y remitirá una notificación sobre la pérdida de derechos al titular y a todas las personas que tengan derechos sobre la marca y figuren en el Registro.
Si las tasas no se pagan o se pagan una vez finalizado el período de gracia, la Oficina dictaminará que el registro ha expirado y remitirá una notificación sobre la pérdida de derechos al titular y a todas las personas que tengan derechos sobre la marca y figuren en el Registro.
Si la cuantía de las tasas pagadas es inferior a la tasa básica y la tasa por pago atrasado o presentación con retraso de la solicitud de renovación, la Oficina dictaminará que el registro ha expirado y remitirá una notificación sobre la pérdida de derechos al titular y a todas las personas que tengan derechos sobre la marca y figuren en el Registro.
Si la cantidad pagada cubre la tasa básica y la tasa por pago atrasado, pero no todas las tasas por clases, la Oficina solo renovará el registro de algunas clases. La decisión respecto a las clases de productos y servicios que se renovarán se basa en los siguientes criterios.
Si la solicitud de renovación se limita expresamente a determinadas clases, solo se renovarán estas clases.
Cuando la solicitud deje claro de otra forma la clase o clases para las que se solicita la renovación, estas se renovarán.
La Oficina podrá ponerse en contacto con el titular para conocer las clases que desea renovar en caso de pago parcial.
En ausencia de otros criterios, la Oficina tendrá en cuenta las clases en orden numérico de clasificación, comenzando por la clase con el número más bajo.
Si no se han pagado las tasas de todas las clases y la Oficina dictamina que el registro ha expirado para algunas clases de productos y servicios, enviará, junto con la confirmación de renovación, una notificación sobre la pérdida de derechos sobre estas clases, al titular y, si procede, a la persona que solicita la renovación y a las personas que tengan derechos sobre la marca y figuren en el Registro. Si la persona interesada no está de acuerdo con la determinación de la Oficina, puede solicitar una decisión al respecto en un plazo de dos meses a partir de la notificación de pérdida de derechos.
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6.1.1.3 Situación en la que el titular posee una cuenta corriente
La Oficina no efectuará el débito en la cuenta corriente a menos que se haya presentado una solicitud de renovación expresa. Realizará el débito en la cuenta de la persona que haya actuado (titular de la marca comunitaria o tercero).
Si la solicitud se presenta en el período básico, la Oficina efectuará el débito correspondiente a las tasas de renovación (tasas de renovación y tasas por clases, en su caso) sin recargo.
Si la solicitud se presenta durante el período de gracia, la Oficina realizará el débito correspondiente a la tasa de renovación más el recargo del 25 % (véase el punto 5.5 supra).
6.1.1.4 Continuación del procedimiento
Artículo 82, apartado 2, del RMC Comunicación nº 6/05 del Presidente de la Oficina de 16 de septiembre de 2005
El plazo para solicitar la renovación está excluido expresamente de la continuación del procedimiento.
6.1.1.5 Restitutio in integrum
Artículo 81, del RMC Artículo 67, del RDMC
La restitutio in integrum está disponible durante el plazo en que se puede solicitar la renovación. Para más información, véanse las Directrices, Parte A, Disposiciones generales, Sección 8, Restitutio in Integrum.
El funcionamiento incorrecto del software de renovación no suele ser motivo para justificar la restitutio in integrum (véase la sentencia de 13/05/2009, en el asunto T-136/08, «AURELIA»; la sentencia de 19/09/2012, en el asunto T-267/11, «Video Research USA», y la sentencia de 28/06/2012, en el asunto T-314/10, «COOK’S»).
En caso de no presentar la solicitud de renovación o de no pagar la tasa de renovación, el plazo de un año comienza el día en que finaliza la protección, y no en la fecha en que finaliza el período de gracia de seis meses.
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6.1.2 Cumplimiento de los requisitos formales del Reglamento de ejecución
6.1.2.1 Renovación solicitada por una persona autorizada
Comunicación nº 8/05 del Presidente de la Oficina de 21 de diciembre de 2005
Si la solicitud de renovación se efectúa en nombre del titular de la marca, no es necesario presentar una autorización. Sin embargo, debe existir una autorización a favor de la persona que presenta la solicitud por si la Oficina la solicita.
6.1.2.2 Otros requisitos
Regla 30, apartado 1, letra b) y apartado 4, del REMC
Si la solicitud de renovación no cumple otros requisitos formales, a saber, si no se han indicado de modo suficiente el nombre y dirección de la persona que solicita la renovación, si no se ha indicado el número de registro, si la solicitud no se ha firmado correctamente, o si se ha solicitado una renovación parcial, pero los productos y servicios que deben renovarse no se han indicado adecuadamente, la Oficina invitará a la persona que solicita la renovación a subsanar estas deficiencias en un plazo de dos meses. Este plazo será de aplicación incluso si ya ha finalizado el período de gracia.
La Oficina entenderá que la solicitud de renovación abarca todos los productos y servicios, a menos que se solicite expresamente una renovación parcial. En caso de renovación parcial, véase el punto 5.2.3 supra.
Si la solicitud de renovación la presenta una persona autorizada por el titular de la marca comunitaria, este último recibirá una copia de la notificación.
Si dos personas que afirman estar autorizadas por el titular de la marca comunitaria («persona autorizada») presentan una solicitud de renovación para la misma marca, la Oficina se pondrá en contacto directamente con el titular para aclarar quién es la persona autorizada.
Regla 30, apartado 5, y regla 54, del REMC
Si estas deficiencias no se subsanan antes de que finalice el plazo correspondiente, la Oficina procederá de la siguiente manera.
Si la deficiencia consiste en no haber indicado los productos y servicios de la marca comunitaria cuya renovación se solicita, la Oficina renovará el registro de todas las clases para las que se hayan pagado las tasas, y si estas no cubren todas las clases incluidas en el registro de la marca comunitaria, las clases se renovarán de acuerdo con los criterios que figuran en el punto 6.1.1.2 supra. La Oficina remitirá al titular y a cualquier persona que tenga derechos sobre la marca y figure en el Registro, junto con la confirmación de renovación, una notificación sobre la pérdida de derechos sobre aquellas clases de productos o servicios que la Oficina considere expiradas.
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Si la deficiencia consiste en que el titular no ha respondido a una solicitud de aclaración sobre la identidad de la persona autorizada, la Oficina aceptará la solicitud de renovación presentada por el representante autorizado que figure en el expediente. Si ninguna de las solicitudes de renovación ha sido presentada por un representante autorizado que figure en el expediente, la Oficina aceptará la solicitud de renovación que haya recibido primero.
En caso de tratarse de otras deficiencias, la Oficina dictaminará que el registro ha expirado y enviará una notificación de pérdida de derechos al titular o, si procede, a la persona que haya solicitado la renovación y cualquier persona que tenga derechos sobre la marca y figure en el Registro.
6.2 Elementos que no deben examinarse
Durante la renovación no se examinará el carácter registrable de una marca, ni se examinará si la marca ha sido objeto de uso efectivo.
Durante la renovación, la Oficina no examinará si la clasificación de la marca es correcta, ni se reclasificará un registro que se haya realizado de conformidad con una versión de la Clasificación de Niza que ya no esté vigente en el momento de la renovación. Todo ello sin perjuicio de lo dispuesto en el artículo 50, del RMC.
6.3 Modificación
Artículo 48, del RMC
La marca comunitaria no se modificará en el Registro al proceder a su renovación. Puesto que la renovación se considera una simple prórroga del período de protección de la marca comunitaria, previo pago de las tasas establecidas, no puede incluir cambios de la representación de la marca en su forma más reciente, es decir, a la expiración del período de protección vigente.
Todos los demás cambios que no modifiquen la marca en sí misma (cambios de nombre, de dirección, etc.) que el titular desee inscribir en el Registro durante la renovación, deben comunicarse por separado a la Oficina de acuerdo con los procedimientos aplicables (véanse las Directrices, Parte E, Operaciones de registro, Sección 1, Cambios en un registro). Estos cambios solo se incluirán en los datos registrados durante la renovación si se han inscrito en el Registro de marcas comunitarias a más tardar en la fecha de expiración del registro de la marca comunitaria.
7 Inscripciones en el Registro
Artículo 47, apartado 5, del RMC Regla 84, apartado 3, letra k), y apartado 5, del REMC
Si la solicitud de renovación cumple todos los requisitos se registrará la renovación.
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La Oficina notificará al titular de la marca comunitaria la renovación del registro de esta y su inscripción en el Registro. La renovación surtirá efecto a partir del día siguiente a la fecha en que expire el registro existente (véase el punto 8).
Si solo se han renovado algunos productos y servicios incluidos en el registro, la Oficina notificará al titular y a cualquier persona que tenga derechos sobre la marca y figure en el Registro, los productos y servicios cuyo registro se ha renovado, la inscripción de la renovación en el Registro y la fecha a partir de la cual surte efecto dicha renovación (véase el punto 8 infra). Al mismo tiempo, la Oficina notificará la expiración del registro para los demás productos y servicios, y su cancelación del Registro.
Regla 30, apartados 5 y 6, y regla 54, apartado 2, del REMC
Si la Oficina ha dictaminado que el registro ha expirado en virtud de la regla 30, apartado 6, del REMC, cancelará la marca del Registro y lo notificará al titular. El titular podrá solicitar en un plazo de dos meses una decisión al respecto con arreglo a la regla 54, apartado 2, del REMC.
Regla 84, apartado 3, letra l) y apartado 5, del REMC
La Oficina comunicará al titular y a cualquier persona que tenga derechos sobre la marca y figure en el Registro que el registro ha expirado y ha sido cancelado del Registro.
8 Fecha de entrada en vigor de la renovación, o expiración, conversión
8.1 Fecha de entrada en vigor de la renovación
Artículo 47, apartado 5, del RMC Regla 70, apartado 3, y regla 30, apartado 6, del REMC
La renovación entrará en vigor a partir del día siguiente a la fecha en la que caduca el registro existente.
Por ejemplo, si la fecha de presentación es el 1 de abril de 2006, el registro expirará el 1 de abril de 2016. Por lo tanto, la renovación surte efecto a partir del día siguiente al 1 de abril de 2016, es decir, el 2 de abril de 2016. Su nuevo período de registro es de diez años a partir de esta fecha, y finaliza el 1 de abril de 2026. El hecho de que estos días caigan en sábado, domingo o día festivo carece de importancia. Incluso en los casos en que la tasa de renovación se pague durante el período de gracia, la renovación surte efecto a partir del día siguiente a la fecha en que expira el registro existente.
Si la marca ha expirado y se ha eliminado del Registro, la cancelación surtirá efecto a partir del día siguiente a la fecha en que expire el registro existente.
Por ejemplo, si la fecha de presentación del registro es el 1 de abril de 2006, el registro expirará el 1 de abril de 2016. Por lo tanto, la eliminación del Registro surtirá efecto a partir del día siguiente al 1 de abril de 2016, es decir, el 2 de abril de 2016.
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8.2 Conversión de marcas comunitarias caducadas
Artículo 47, apartado 3 y artículo 112, apartado 5, del RMC
Si el titular desea convertir su marca comunitaria caducada en marca nacional, debe presentar la solicitud en un plazo de tres meses a partir del día siguiente a la fecha del último día del plazo para presentar una solicitud de renovación con arreglo al artículo 47, apartado 3, del RMC, es decir, seis meses después del último día del mes en que finaliza la protección. El plazo de tres meses para solicitar la conversión comienza automáticamente sin notificación (véanse las Directrices, Parte E, Operaciones de registro, Sección 2, Transformación).
9 Renovación de marcas internacionales que designan a la UE
Artículo 159, apartado 1, del RMC Regla 107, del REMC
El principio consiste en que el titular del registro internacional presente directamente a la OMPI los cambios relativos a dicho registro. La Oficina no se ocupa de las solicitudes de renovación ni del pago de las tasas correspondientes.
El procedimiento de renovación de marcas internacionales es gestionado en su totalidad por la Oficina Internacional. La Oficina Internacional envía las notificaciones de renovación, recibe las tasas y registra la renovación en el Registro Internacional. La fecha en que surte efecto la renovación es la misma para todas las designaciones incluidas en el Registro Internacional, independientemente de la fecha en que se hayan inscrito estas designaciones en él. Si se renueva el registro internacional que designa a la UE, la Oficina Internacional lo comunica a la OAMI.
Si no se renueva el registro internacional, este puede convertirse en marca nacional o en designaciones posteriores de los Estados miembros en virtud del Protocolo de Madrid. El período de tres meses para solicitar la conversión comienza el día siguiente al último día para realizar la renovación ante la OMPI, con arreglo al artículo 7, apartado 4, del Protocolo de Madrid (véanse las Directrices, Parte E, Operaciones de registro, Sección 2, Transformación).
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 5
CONSULTA PÚBLICA
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Índice
1 Principios generales.................................................................................. 4
2 Los Registros de marcas comunitarias y de dibujos y modelos comunitarios .............................................................................................. 5
3 Consulta pública de los Registros........................................................... 5 3.1 Información contenida en los Registros................................................... 5
3.1.1 El Registro de marcas comunitarias............................................................... 5 3.1.2 El Registro de dibujos y modelos comunitarios.............................................. 5
4 Consulta pública........................................................................................ 6 4.1 Personas o entidades autorizadas para solicitar el acceso a los
expedientes.................................................................................................6 4.2 Documentos que forman el expediente .................................................... 6
4.2.1 Expedientes relativos a las solicitudes de marca comunitaria ....................... 7 4.2.2 Expedientes relativos a las solicitudes de dibujos y modelos
comunitarios ................................................................................................... 8 4.2.3 Expedientes relativos a las marcas comunitarias registradas ....................... 8 4.2.4 Expedientes relativos a los dibujos o modelos comunitarios
registrados ...................................................................................................... 8 4.2.5 Expedientes relativos a los registros internacionales que designan a
la Unión Europea............................................................................................ 9
5 Partes del expediente excluidas de la consulta pública ...................... 10 5.1 Documentos excluidos ............................................................................ 10
5.1.1 Documentos relativos a una exclusión o recusación ................................... 10 5.1.2 Proyectos de resolución y de dictamen y documentos internos .................. 10 5.1.3 Partes del expediente que la parte interesada ha mostrado especial
interés por mantener confidenciales ............................................................ 11
5.2 Acceso del solicitante o titular a los documentos excluidos................ 12
6 Procedimiento ante la Oficina relativo a las peticiones de consulta pública ...................................................................................... 13 6.1 Extractos certificados o no certificados de los registros...................... 13
6.1.1 Extractos del Registro de marcas comunitarias ........................................... 13 6.1.2 Extractos del Registro de dibujos y modelos comunitarios .......................... 13
6.2 Copias certificadas o no certificadas de los documentos del expediente ................................................................................................ 14
6.3 Acceso en línea a los expedientes.......................................................... 15 6.4 Descarga de copias certificadas ............................................................. 15 6.5 Solicitudes de consulta pública presentadas en línea .......................... 16 6.6 Solicitudes de consulta pública presentadas por escrito ..................... 16 6.7 Lenguas .................................................................................................... 16
6.7.1 Para las solicitudes de MC o de DMC.......................................................... 16
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6.7.2 Para las marcas comunitarias registradas y los dibujos o modelos registrados .................................................................................................... 17
6.8 Representación y autorización................................................................ 17 6.9 Contenido de la solicitud de consulta pública ....................................... 17 6.10 Irregularidades ......................................................................................... 18 6.11 Tasas de consulta pública y de comunicación de datos incluidos
en el expediente ....................................................................................... 18 6.11.1 Comunicación de datos incluidos en un expediente .................................... 18 6.11.2 Consulta pública ........................................................................................... 19 6.11.3 Consecuencias de la falta de pago .............................................................. 20 6.11.4 Reembolso de tasas..................................................................................... 20
6.12 Requisitos para tener derecho a consulta pública cuando la solicitud de MC no publicada o el DMC aplazado es presentado por un tercero ........................................................................................... 21 6.12.1 Aceptación .................................................................................................... 21 6.12.2 Declaración de que serán invocados los derechos conferidos por la
MC o el DMC ................................................................................................ 22
6.13 Concesión de la consulta pública, formas de consulta......................... 22 6.13.1 Comunicación de datos incluidos en un expediente .................................... 22 6.13.2 Copias de documentos del expediente ........................................................ 23
7 Procedimiento de consulta de los tribunales o autoridades de los Estados miembros .................................................................................. 23 7.1 Exención del pago de tasas..................................................................... 24 7.2 Ausencia de restricciones para las solicitudes no publicadas............. 24 7.3 Formas de consulta.................................................................................. 25
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1 Principios generales
Artículos 87, 88 y 90, del RMC Artículos 72, 74 y 75, del RDC Reglas 84, apartado 1, 89, 90, 92 y 93, del REMC Artículos 69, apartado 1, 74, 75, 77 y 78, del REDC Artículo 2, apartado 27, del RTMC
El principio establecido en el sistema de la marca comunitaria y los dibujos y modelos comunitarios es el siguiente:
el «Registro de marcas comunitarias» y el «Registro de dibujos y modelos comunitarios» contienen todos los datos relativos a las solicitudes de marca comunitaria y de dibujos y modelos comunitarios y a las marcas comunitarias registradas y dibujos y modelos comunitarios registrados, y
los «expedientes» contienen toda la correspondencia y resoluciones relacionadas con dichas marcas y dibujos y modelos.
En principio, tanto los Registros como los expedientes de la Oficina están abiertos a la consulta del público. Sin embargo, la consulta antes de la publicación de la solicitud de marca comunitaria, el registro de dibujo o modelo comunitario o cuando un dibujo o modelo comunitario registrado (DMC) está sujeto a una publicación aplazada solamente es posible en casos excepcionales (véanse los apartados 4.2.1 y 4.2.2 infra).
Toda la información de los Registros se almacena en las bases de datos de la Oficina y, si procede, se publica en formato electrónico en el Boletín de Marcas Comunitarias y Dibujos y Modelos Comunitarios.
Las presentes Directrices se refieren específicamente a la consulta pública.
La consulta se llevará a cabo:
mediante consulta de los registros;
mediante la expedición de extractos certificados o no certificados de los registros;
mediante consulta de los documentos obrantes en el propio expediente;
en forma de comunicación de datos incluidos en el expediente, lo que implica la comunicación de datos específicos incluidos en el expediente sin facilitar los documentos obrantes en éste;
mediante la expedición de copias, certificadas o no, de los documentos del expediente.
En las presentes Directrices se empleará la expresión «consulta pública» para referirse a todas las formas de consulta de expendientes descritas, salvo indicación en contrario.
Las disposiciones del RDC y del REDC que tratan sobre la consulta pública de los expedientes de dibujos y modelos comunitarios son casi idénticas a las disposiciones
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equivalentes del RMC y del REMC, respectivamente. Por lo tanto, lo indicado a continuación se aplica mutatis mutandis a los dibujos y modelos comunitarios. Cuando el procedimiento es distinto, dichas diferencias se especificarán en un subapartado independiente.
2 Los Registros de marcas comunitarias y de dibujos y modelos comunitarios
Artículo 87, del RMC Artículo 72, del RDC Regla 84, del REMC Artículo 69, del REDC
Los Registros se mantienen en formato electrónico y están constituidos por inscripciones en las bases de datos de la Oficina. Se encuentran disponibles para consulta pública en el sitio web de la Oficina, excepto en el caso de los dibujos y modelos comunitarios, salvo disposición en contrario del artículo 50, apartado 2, del RDC. Puesto que algunos de los datos de los Registros no se encuentran disponibles aún en línea, la única forma de acceder a ellos es a través de una petición de información, o bien de la expedición de extractos de los Registros, certificados o no, con el consiguiente pago de una tasa.
3 Consulta pública de los Registros
3.1 Información contenida en los Registros 3.1.1 El Registro de marcas comunitarias
Regla 84, del REMC Decisión nº EX-00-1 del Presidente de la Oficina, de 27 de noviembre de 2000, relativa a las inscripciones en el Registro de marcas comunitarias Decisión nº EX-07-1 del Presidente de la Oficina, de 16 de marzo de 2007, relativa a las inscripciones en el Registro de Marcas Comunitarias
El Registro de marcas comunitarias contiene la información que se especifica en la regla 84 del REMC y cualquier otra mención que el Presidente de la Oficina disponga.
3.1.2 El Registro de dibujos y modelos comunitarios
Artículo 50, del RDC Artículos 69 y 73, del REDC Decisión nº EX-07-2 del Presidente de la Oficina, de 16 de marzo de 2007 relativa a las inscripciones en el Registro de Dibujos y Modelos Comunitarios
El Registro de dibujos y modelos comunitarios contiene la información que se especifica en el artículo 69 del REDC y cualquier otra mención que el Presidente de la Oficina disponga.
De conformidad con el artículo 73, letra a), del REDC, cuando los dibujos o modelos comunitarios registrados estén sujetos a aplazamiento de la publicación de conformidad con el artículo 50, apartado 1, del RDC, el acceso al Registro de
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personas que no sean el titular se limitará al nombre del titular, el nombre de cualquiera de los representantes, la fecha de presentación y registro, el número de expediente de la solicitud y la indicación de que la publicación está aplazada.
4 Consulta pública
4.1 Personas o entidades autorizadas para solicitar el acceso a los expedientes
Las normas y el grado de acceso a los expedientes varían en función de quien solicite la consulta.
Los Reglamentos sobre la marca comunitaria y los Reglamentos de ejecución distinguen las tres categorías siguientes:
el solicitante o titular de la marca comunitaria o dibujo o modelo comunitario; terceros; tribunales o autoridades de los Estados miembros.
La consulta de los expedientes por los tribunales o autoridades de los Estados miembros se rige por el régimen de cooperación administrativa con la Oficina (véase el punto 7 infra).
4.2 Documentos que forman el expediente
Los expedientes relativos a una MC o a un DMC están constituidos por toda la correspondencia mantenida entre el solicitante o titular y la Oficina, por toda la documentación generada en la fase de examen y por toda la correspondencia relativa a la marca comunitaria o dibujo o modelo comunitario resultante. El expediente no incluye los informes de búsqueda de la marca comunitaria elaborados por las oficinas nacionales.
También forman parte del expediente los documentos relativos a los procedimientos de oposición, anulación, nulidad y recurso tramitados por la Oficina y los relativos a otros procedimientos como los de inscripción (cesión, licencia, etc.).
Cuando las partes utilicen los servicios de mediación ofrecidos por la Oficina para la solución amistosa de litigios, de conformidad con la Decisión nº 2011-1 del Presidium de las Salas de Recurso, de 14 de abril de 2011, relativa a la solución amistosa de litigios, o los servicios de conciliación de conformidad con la Decisión nº 2014-2 del Presidium de las Salas de Recurso, de 31 de enero de 2014, relativa a la solución amistosa de los litigios por la Sala competente, toda la correspondencia relacionada con dicha mediación o conciliación queda excluida de la consulta pública.
Regla 91, del REMC Artículo 76, del REDC
Incluso cuando una solicitud de MC deje de estar pendiente o un registro de MC o un registro de DMC dejen de producir efectos, la consulta de los respectivos expedientes seguirá siendo posible mientras estos se conserven tal y como si la solicitud o registro estuvieran pendientes o en plenitud de efectos. Una solicitud de MC o de solicitud de
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DMC deja de estar pendiente cuando es denegada, retirada o dada por retirada, y un registro de MC o registro de DMC deja de producir efectos cuando expira o es declarado objeto de renuncia, nulidad o caducidad. La Oficina conservará los expedientes completos durante al menos cinco años contados a partir del final del año en que tales acontecimientos sucedan.
4.2.1 Expedientes relativos a las solicitudes de marca comunitaria
Artículos 39 y 88, del RMC Reglas 12, 85 y 89, apartado 2, del REMC
Una vez publicada la solicitud de marca comunitaria por la Oficina en el Boletín de Marcas Comunitarias, los expedientes de estas solicitudes se abrirán para consulta pública. La fecha de publicación será la fecha de edición que aparezca en la portada del Boletín de Marcas Comunitarias y que se refleja en el Registro mediante el código INID 442. La difusión de datos relativos a solicitudes de MC que no se hayan publicado, en línea o por otros medios, no constituye publicación de la solicitud con arreglo a lo previsto en el artículo 39, del RMC y la regla 12, del REMC.
Antes de la publicación de la solicitud, la consulta pública está restringida y sólo es posible si se cumplen los requisitos siguientes:
que el solicitante de la consulta pública sea el solicitante o el titular de la MC;
que el solicitante de la MC haya consentido que se consulte el expediente relativo a la solicitud (véase apartado 6.12.1 infra);
que quien solicita la consulta pueda probar que el solicitante de la MC ha declarado que va a prevalerse de derechos inherentes a la MC, una vez registrada esta, contra él (véase el apartado 6.12.2 infra).
Artículo 36, apartado 3, del RMC Regla 91, del REMC
El solicitante tendrá siempre acceso a los expedientes relativos a su propia solicitud de MC. Esto incluye:
la solicitud de MC, aun cuando la Oficina se haya negado a otorgarle una fecha de presentación, o cuando la solicitud no cumpla los requisitos mínimos para la asignación de una fecha de presentación, en cuyo caso la solicitud no se tramitará como solicitud de MC y, en términos jurídicos, no será una solicitud de MC;
los expedientes mientras se conserven (véase el apartado 3.2), aun después de la desestimación o retirada de la solicitud.
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4.2.2 Expedientes relativos a las solicitudes de dibujos y modelos comunitarios
Artículos 50 y 74, del RDC Artículos 70 y 74, apartado 2, del REDC
Los expedientes relativos a las solicitudes de dibujos o modelos comunitarios o las solicitudes de un dibujo o modelo comunitario registrado sometido a aplazamiento de la publicación, que o bien hubiere sido objeto de renuncia, estando sujeto a tal aplazamiento, antes o en el momento de expirar el periodo de aplazamiento, o bien se considere que de conformidad con el artículo 50, apartado 4, del RDC, no ha surtido en ningún momento los efectos establecidos en dicho Reglamento, estarán disponibles para consulta pública únicamente si se cumple una de las siguientes condiciones:
el solicitante de la consulta pública es el solicitante o titular del DMC,
el solicitante del dibujo o modelo comunitario ha aceptado la consulta relativa a la solicitud de dibujo o modelo comunitario,
el solicitante de la consulta pública ha demostrado tener un interés legítimo en ella; en particular cuando el solicitante del dibujo o modelo comunitario declare que una vez registrado el dibujo o modelo alegará los derechos que este confiere contra la persona que solicite la consulta pública.
En el caso de una solicitud múltiple de dibujos o modelos comunitarios, dicha restricción de consulta pública será aplicable únicamente a la información relacionada con los dibujos o modelos comunitarios sometidos a aplazamiento de la publicación o a aquellos que no son finalmente registrados bien porque la Oficina los deniega o bien porque el solicitante renuncia a ellos.
4.2.3 Expedientes relativos a las marcas comunitarias registradas
Los expedientes relativos a las marcas comunitarias registradas están abiertos a consulta pública.
4.2.4 Expedientes relativos a los dibujos o modelos comunitarios registrados
Los expedientes relativos a los dibujos y modelos comunitarios registrados podrán ser consultados una vez que su registro haya sido publicado por la Oficina en el Boletín de Dibujos y Modelos Comunitarios. La fecha de publicación es la fecha de edición que aparezca en el Boletín de Dibujos y Modelos Comunitarios y se refleja en el Registro con el código INID 45.
Cuando la consulta pública de los expedientes se refiera a un dibujo o modelo comunitario registrado sometido a aplazamiento de la publicación de conformidad con el artículo 50, apartado 4, del RDC, que o bien hubiere sido objeto de renuncia, estando sujeto a tal aplazamiento, antes o en el momento de expirar dicho periodo, o bien se considere que de conformidad con el artículo 50, apartado 4, del RDC, no ha surtido en ningún momento los efectos establecidos en dicho Reglamento, la consulta del registro se limitará y únicamente será posible si se cumple alguna de las siguientes condiciones:
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el titular del dibujo o modelo comunitario ha aceptado la consulta del expediente relativo al registro del dibujo o modelo comunitario,
el solicitante de la consulta pública ha demostrado tener un interés legítimo en ella; en particular cuando el titular del dibujo o modelo comunitario declare que ha adoptado alguna medida para alegar contra la persona que solicite la consulta pública dicho derecho.
En el caso de una solicitud múltiple de dibujos o modelos comunitarios, dicha restricción de consulta pública será aplicable únicamente a la información relacionada con los dibujos o modelos comunitarios sometidos a aplazamiento de la publicación o a aquellos que no son finalmente registrados bien porque la Oficina los deniega o bien porque el solicitante renuncia a ellos.
4.2.5 Expedientes relativos a los registros internacionales que designan a la Unión Europea
Artículos 151 y 152, del RMC Artículo 106, letra d), del RDC Regla 89, del REMC Artículo 741, del REDC
Los registros internacionales son derechos exclusivos administrados por la Oficina Internacional de la Organización Mundial de la Propiedad Intelectual (OMPI) de Ginebra, de conformidad con el Protocolo de Madrid (en el caso de las marcas) y con el Acta de Ginebra (en el caso de los dibujos o modelos). La OMPI tramita las solicitudes y las remite seguidamente a la OAMI, para su examen con arreglo a las condiciones especificadas en el RMC y en el RDC. Dichos registros tienen los mismos efectos que la presentación directa de una solicitud de marca comunitaria o de un dibujo o modelo comunitario registrado.
Los expedientes conservados por la Oficina y relacionados con registros de marcas internacionales que designen a la Unión Europea pueden consultarse, previa petición, a partir de la fecha de publicación mencionada en el artículo 152, apartado 1, del RMC y con sujeción a la regla 88, del REMC.
La Oficina proporciona información sobre los registros internacionales de dibujos o modelos que designan a la UE en forma de enlace electrónico a la base de datos con función de búsqueda de la Oficina Internacional ( https://www.wipo.int/ipdl/es/hague/search-struct.jsp ). Los expedientes de la Oficina pueden hacer referencia a la denegación de un dibujo o modelo internacional de conformidad con el artículo 106 sexies del RDC y a la anulación de un dibujo o modelo internacional de conformidad con el artículo 106 septies del RDC. Pueden ser consultados sometidos a las restricciones de conformidad con el artículo 72, del REDC (véase el apartado 5, Partes del expediente excluidas de la consulta pública infra).
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5 Partes del expediente excluidas de la consulta pública
5.1 Documentos excluidos
Artículo 137, del RMC Regla 88, del REMC Artículo 72, del REDC
Determinados documentos contenidos en los expedientes son excluidos de consulta pública, a saber:
los documentos relativos a la exclusión o la recusación de miembros del personal de la Oficina, por ejemplo por infundir sospechas de parcialidad;
los proyectos de resolución y de dictamen, así como cualquier otro documento interno, utilizados para preparar resoluciones y dictámenes;
aquellas partes del expediente que la parte interesada haya mostrado especial interés por mantener confidenciales;
todos los documentos relativos a las propuestas de solución amistosa realizadas por la Oficina, a excepción de los que afecten directamente a la marca o al dibujo o modelo, como limitaciones, cesiones, etc., y hayan sido declarados a la Oficina. (Sobre los procedimientos de mediación y conciliación, véase el apartado 4.2.)
5.1.1 Documentos relativos a una exclusión o recusación
Regla 88, letra a), del REMC Artículo 72, letra a), del REDC
Esta excepción se refiere a los documentos en los que un examinador declare que estima no poder participar en un asunto, así como a los documentos en que esa persona formule observaciones sobre una recusación efectuada por una de las partes en el procedimiento basada en una causa de exclusión o en sospechas de parcialidad. No obstante, esta excepción no afecta a los escritos en que una de las partes en el procedimiento plantee, separada o conjuntamente con otras declaraciones, una recusación basada en una causa de exclusión o en sospechas de parcialidad, ni a la eventual resolución sobre la acción a ejercitar en los supuestos antes mencionados. La resolución adoptada por el órgano competente de la Oficina sin la participación de la persona que se abstenga o que hubiere sido recusada formará parte del expediente.
5.1.2 Proyectos de resolución y de dictamen y documentos internos
Regla 88, letra b), del REMC Artículo 72, letra b), del REDC
Esta excepción se refiere a los documentos utilizados para preparar resoluciones y dictámenes, como los informes y notas redactadas por un examinador que contengan consideraciones o sugerencias respecto a la tramitación o resolución relativas a un
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asunto, o las notas que contengan instrucciones específicas o de carácter general sobre la tramitación de determinados asuntos.
Los documentos que contengan una comunicación, notificación o resolución definitiva de la Oficina en relación con un asunto particular no están comprendidos en esta excepción. Cualquier notificación de un documento hecha a una parte en el procedimiento se llevará a cabo entregando el documento original, o bien una copia certificada por la Oficina o provista de su sello, o bien una impresión de ordenador en que figure dicho sello. Se conservará en el expediente bien el original de la comunicación, notificación o resolución, bien una copia de la misma.
Las notas y directrices de la Oficina relativas a los procedimientos generales y a la tramitación de los asuntos, como las presentes Directrices, no forman parte de los expedientes. Lo mismo puede decirse de las medidas e instrucciones en materia de atribución de funciones.
5.1.3 Partes del expediente que la parte interesada ha mostrado especial interés por mantener confidenciales
Regla 88, letra c), del REMC Artículo 72, letra c), del REDC
Están excluidas de consulta pública las partes del expediente que la parte interesada haya mostrado especial interés por mantener confidenciales antes de que se presentase la solicitud de consulta pública, a menos que la consulta de tales partes del expediente se justifique por el hecho de que la parte interesada posea intereses legítimos preponderantes.
La parte interesada debe haber invocado expresamente y haber demostrado de forma suficiente un interés especial por mantener confidencial el documento al presentarlo.
Cuando la parte interesada exija la confidencialidad, pero no demuestra su interés por mantener confidencial el documento, la Oficina denegará la solicitud de confidencialidad e invitará a la parte interesada a que presente observaciones en el plazo de dos meses.
La parte interesada no podrá exigir la confidencialidad de cualquier documento en una fase posterior.
Si se alega un interés especial por mantener confidencial un documento, la Oficina debe comprobar si se ha demostrado suficientemente el interés especial. Los documentos comprendidos en esta categoría deben ser documentos originados por la parte interesada (solicitante de MC o de DMC, oponente). El interés especial debe responder a la naturaleza confidencial del documento o a su carácter de secreto comercial. Este puede ser el caso, por ejemplo, cuando el solicitante ha presentado documentos probatorios en relación con una solicitud de inscripción de una cesión o licencia. Cuando la Oficina llegue a la conclusión de que no se cumplen los requisitos para mantener confidenciales los documentos, se lo comunicará a la persona que presentó los documentos y podrá resolver al respecto. El solicitante puede presentar las pruebas de forma que eviten revelar aquellas partes del documento que considere confidenciales, siempre que las partes del documento proporcionado contengan la información requerida. Por ejemplo, cuando se presenten contratos u otro tipo de documentos como prueba de una cesión o licencia, podrá ocultarse determinada
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información antes de presentar estos documentos a la Oficina, u omitirse determinadas páginas.
En el supuesto de que la Oficina invite a las partes en un procedimiento de oposición, de anulación o de nulidad a pactar una solución amistosa, todos los documentos relativos a dicho procedimiento se considerarán confidenciales y, en principio, no estarán disponibles para consulta pública.
Podrá autorizarse el acceso a los documentos que la Oficina haya admitido como confidenciales, y que estén, por tanto, excluidos de consulta pública, a la persona que acredite un interés legítimo preponderante por consultarlos. Debe ostentar este interés legítimo preponderante la persona que solicita la consulta.
Si el expediente contiene dichos documentos, la Oficina informará al solicitante de la consulta pública de la existencia de dichos documentos que integran el expediente. El solicitante de la consulta pública puede entonces decidir si desea o no presentar una solicitud invocando un interés legítimo preponderante. Estas peticiones deben examinarse una por una.
Antes de denegar la solicitud, la Oficina deberá dar al solicitante de la consulta la oportunidad de formular observaciones.
La petición y las eventuales observaciones deberán comunicarse a la parte interesada, la cual tendrá derecho a ser oída antes de que se conceda el acceso a los documentos que la Oficina haya admitido como excluidos de consulta.
Artículo 59, del RMC Artículo 56, del RDC
La Oficina deberá adoptar una resolución sobre si permite o no el acceso a dichos documentos. Dicha resolución será susceptible de recurso por la parte interesada correspondiente.
5.2 Acceso del solicitante o titular a los documentos excluidos
Regla 88, del REMC Artículo 72 del REDC
Cuando el solicitante o el titular solicite consultar su propio expediente, la consulta abarcará todos los documentos obrantes en el expediente, exceptuando únicamente los contemplados en la regla 88, letras a) y b), del REMC y el artículo 72, letras a) y b), del REDC.
En los procedimientos inter partes en los que la otra parte interesada (el oponente o solicitante de la caducidad o nulidad) haya mostrado un especial interés por mantener la confidencialidad de sus documentos frente a terceros, se informará a esa parte de que no es posible mantener tal confidencialidad respecto a la otra parte en el procedimiento, y se le invitará a hacer públicos los documentos, o bien a retirarlos del procedimiento. Si insiste en la confidencialidad de los documentos, no se entregarán
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los mismos a la parte contraria, y la Oficina tampoco los tomará en consideración a efectos de la correspondiente resolución.
Por otro lado, si desea que los documentos se tomen en consideración, pero sin que puedan acceder a ellos terceros, la Oficina los podrá entregar a la parte contraria en el procedimiento y no se permitirá el acceso de terceros (sobre los procedimientos de oposición, véanse las Directrices de Oposición, Parte C, Sección 1, Aspectos procesales).
6 Procedimiento ante la Oficina relativo a las peticiones de consulta pública
6.1 Extractos certificados o no certificados de los registros
6.1.1 Extractos del Registro de marcas comunitarias
Regla 84, apartado 6, del REMC
La Oficina expedirá extractos certificados o no certificados del registro previa solicitud y pago de una tasa.
Las solicitudes de extractos del Registro de marcas comunitarias podrán presentarse cumplimentando el formulario oficial «Solicitud de consulta pública del expediente», disponible en todas las lenguas de la Oficina, o por otro medio equivalente.
Puede utilizarse cualquier versión lingüística de dicho formulario, siempre que se cumplimente en una de las lenguas mencionadas en el apartado 6.7 infra.
Reglas 80 y 82, del REMC
Las solicitudes de consulta pública pueden presentarse a través de un documento original firmado por fax, por correo o por vía electrónica (véase el apartado 6.5 infra).
6.1.2 Extractos del Registro de dibujos y modelos comunitarios
Artículo 50, del RDC Artículos 69 y 73, del REDC
De conformidad con el artículo 73, del REDC, la Oficina facilitará extractos del Registro, certificados o no certificados, previa solicitud y pago de una tasa.
Cuando el registro está sometido a aplazamiento de la publicación de conformidad con el artículo 50, apartado 1, del RDC, los extractos certificados (o no certificados) del Registro incluirán únicamente el nombre del titular, el nombre del representante, la fecha de presentación y registro, el número de expediente de la solicitud y la indicación de que la publicación está aplazada, excepto cuando la solicitud la hubiere hecho el titular o su representante.
Las solicitudes de un extracto del Registro de Dibujos o Modelos Comunitarios podrán presentarse cumplimentando el formulario oficial de «Solicitud de consulta pública del
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expediente», disponible en todas las lenguas de la Oficina, o por otro medio equivalente.
Puede utilizarse cualquier versión lingüística de dicho formulario, siempre que se cumplimente en una de las lenguas mencionadas 6.7 infra.
Artículos 65, 66 y 67, del REDC
Las solicitudes de consulta pública pueden presentarse a través de un documento original firmado por fax, por correo o por vía electrónica (véase el apartado 6.5 infra).
6.2 Copias certificadas o no certificadas de los documentos del expediente
La Oficina facilitará copias certificadas o no certificadas de los documentos que forman el expediente (véase el apartado 4.2 supra) previa solicitud y pago de una tasa.
Las solicitudes de copias certificadas o no certificadas de documentos podrán presentarse cumplimentando el formulario oficial «Solicitud de consulta pública del expediente», disponible en todas las lenguas de la Oficina, o por otro medio equivalente.
Puede utilizarse cualquier versión lingüística de dicho formulario, siempre que se cumplimente en una de las lenguas mencionadas en el apartado 6.7 infra.
También podrán solicitarse copias certificadas de la propia solicitud de MC o del certificado de registro del DMC como alternativa a la descarga gratuita de copias certificadas (véase el apartado 6.4 infra).
Las copias certificadas de la solicitud de MC o del certificado de registro del DMC únicamente estarán disponibles cuando se haya asignado una fecha de presentación (para saber más información sobre los requisitos de la fecha de presentación de la MC, consúltese la Parte B, Sección 2, Examen de las formalidades; para más información sobre los requisitos de la fecha de presentación del DMC, consúltense las Directrices de examen de las solicitudes de dibujos y modelos comunitarios registrados).
Cuando se trate de una solicitud múltiple de dibujos o modelos, únicamente estarán disponibles copias certificadas para aquellos dibujos o modelos a los cuales se les haya asignado una fecha de presentación.
En los casos en que no se haya publicado todavía la solicitud de MC o el registro de DMC, la solicitud de copias certificadas o no certificadas de los documentos del expediente estará sometida a las restricciones indicadas en los apartados 4.2.1 a 4.2.4 supra.
Conviene tener presente que la copia certificada de la solicitud o registro únicamente refleja los datos existentes en la solicitud o registro. Puede ocurrir que la marca o el dibujo o modelo haya sido objeto de cesión, renuncia total o parcial o de otro ámbito que afecte al alcance de la protección y que no se reflejará en la copia certificada del formulario de solicitud de MC o en el certificado de registro del DMC. Podrá obtenerse
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información actualizada en la base de datos electrónica, o bien solicitando un extracto certificado del Registro (véase el apartado 6.1 supra).
6.3 Acceso en línea a los expedientes
El contenido de los expedientes está disponible a través de la sección «Correspondencia» del expediente «eSearch plus» del sitio web de la OAMI.
Siempre que se haya publicado la solicitud de MC o el registro de DMC (no sometido a aplazamiento), los usuarios registrados del sitio web podrán consultar estos expedientes gratuitamente.
6.4 Descarga de copias certificadas
Decisión nº EX-13-2 del Presidente de la Oficina, de 26 de noviembre de 2013, relativa a la comunicación electrónica con y desde la Oficina («Decisión de base sobre comunicaciones electrónicas»), artículo 6.
Se pueden generar y descargar automáticamente copias certificadas de las solicitudes de MC o de los certificados de registro de MC o DMC a través de un enlace directo desde el sitio web de la OAMI, mediante la aplicación «eSearch plus», desde el formulario de presentación electrónica de la consulta del expediente y desde los expedientes para una marca o dibujo o modelo determinado.
En la lista de documentos aparece un icono junto al documento del que se puede descargar una copia certificada. Al hacer clic sobre el icono, se genera esa copia en formato PDF.
El documento PDF consta de una portada en las cinco lenguas de la OAMI, que sirve de presentación del documento certificado y contiene un código identificativo único correspondiente al documento original. A continuación el documento certificado propiamente dicho (formulario de solicitud de MC, certificado de registro de MC o certificado de registro de DMC). Cada página del documento lleva un encabezado y un pie que incluyen elementos importantes para garantizar la autenticidad de la copia certificada, a saber: un código identificativo único, un sello que indica «copia», la firma del miembro del personal de la OAMI responsable de la expedición de las copias certificadas, la fecha de la copia, el número de MC o de DMC y el número de página. La fecha es la correspondiente al día en que se haya generado automáticamente la copia certificada.
Las copias certificadas generadas de forma automática tienen el mismo valor que las enviadas en papel en respuesta a una solicitud, y pueden utilizarse tanto en formato electrónico como impresas.
Cuando un organismo oficial recibe una copia certificada, puede cotejar en línea el documento original mediante el código identificativo único que figura en la copia certificada. En la sección «Bases de datos» del sitio web de la OAMI se dispone del enlace «Comprobar las copias certificadas». Haciendo clic sobre este enlace aparece una pantalla con un recuadro en el que debe introducirse el código identificativo que permitirá recuperar y mostrar el documento original conservado en los sistemas en línea de la OAMI.
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Conviene tener presente que la copia certificada únicamente refleja los datos existentes en la fecha de la solicitud o registro. Puede ocurrir que la marca o el dibujo o modelo haya sido objeto de cesión, renuncia total o parcial o de otro ámbito que afecte al alcance de la protección y que no se reflejará en la copia certificada del formulario de solicitud de MC o en el certificado de registro de la MC o del DMC. Podrá obtenerse información actualizada en la base de datos electrónica, o bien solicitando un extracto certificado del Registro.
6.5 Solicitudes de consulta pública presentadas en línea
Es posible solicitar en línea la consulta pública. El usuario puede acceder al formulario de solicitud de consulta haciendo clic sobre el icono correspondiente en la página de información detallada de la MC o del DMC seleccionado. A continuación se le redirigirá a su cuenta de usuario, en la que será invitado a registrarse y a cumplimentar la solicitud de consulta de expediente para copias, certificadas o no, de documentos específicos.
6.6 Solicitudes de consulta pública presentadas por escrito
Regla 79, del REMC Artículo 65, del REDC
Es posible solicitar la consulta pública cumplimentando el formulario oficial de «Solicitud de consulta pública del expediente», disponible en todas las lenguas de la Oficina, o por otro medio equivalente.
Puede utilizarse cualquier versión lingüística de dicho formulario, siempre que se cumplimente en una de las lenguas mencionadas en el apartado 6.7 infra.
Reglas 80 y 82, del REMC Artículo 67, del REDC
Las solicitudes de consulta pública pueden presentarse a través de un documento original firmado por fax, por correo o por vía electrónica (véase el apartado 6.5).
6.7 Lenguas
La solicitud de consulta pública deberá presentarse en una de las lenguas prescritas más adelante.
6.7.1 Para las solicitudes de MC o de DMC
Regla 95, letra a), y reglas 96 y 98, del REMC Artículos 80, 81, 83 y 84, del REDC
Cuando la solicitud de consulta se refiera a una solicitud de MC o de dibujo o modelo comunitario, publicada o no, deberá presentarse en la lengua de presentación de la solicitud de MC o solicitud de DMC («primera lengua») o en la segunda lengua indicada por el solicitante en su solicitud («segunda lengua»).
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Cuando la solicitud de consulta se presente en una lengua distinta de las indicadas anteriormente, el solicitante de la consulta pública deberá, por propia iniciativa, presentar, en el plazo de un mes, la traducción a una de esas lenguas, sin cuyo requisito la solicitud de consulta se considerará no presentada.
Lo anterior no se aplica cuando el solicitante de la consulta pública no haya podido conocer las lenguas utilizadas en la solicitud de MC o de DMC (lo cual solamente puede suceder cuando no se dispone de dicha información en el registro en línea y la solicitud se trata de forma inmediata). En tal caso, la solicitud de consulta se podrá presentar en cualquiera de las cinco lenguas de la Oficina.
6.7.2 Para las marcas comunitarias registradas y los dibujos o modelos registrados
Regla 95, letra b), y reglas 96 y 98, del REMC Artículo 80, letra b), y artículos 81, 83 y 84, del REDC
Cuando la solicitud de consulta se refiera a una MC registrada o a un DMC registrado, deberá presentarse en una de las cinco lenguas de la Oficina.
La lengua en que se presente la solicitud será la lengua del procedimiento de consulta.
Cuando la solicitud de consulta se presente en una lengua distinta de las indicadas anteriormente, el solicitante de la consulta pública deberá, por propia iniciativa, presentar, en el plazo de un mes, la traducción a una de estas lenguas, sin cuyo requisito la solicitud de consulta se considerará no presentada.
6.8 Representación y autorización
Para presentar una solicitud de consulta pública no es obligatoria la representación.
Si se designa un representante, serán de aplicación las normas de carácter general correspondientes a la representación y autorización. Véanse las Directrices, Parte A, Disposiciones generales, Sección 5, Representación profesional.
6.9 Contenido de la solicitud de consulta pública
La solicitud de consulta pública mencionada en los anteriores apartados 6.5 y 6.6 deberá incluir lo siguiente:
la indicación del número de expediente o del número de registro cuya consulta se solicita;
el nombre y dirección de la persona que solicita la consulta;
en su caso, la indicación del documento o de los datos objeto de la consulta que se solicita (las solicitudes pueden referirse a la consulta del expediente completo, o bien únicamente de documentos específicos). Cuando se desee consultar un documento específico, será preciso describir su naturaleza (por ejemplo,
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«solicitud», «escrito de oposición», etc.). En caso de solicitar la comunicación de datos incluidos en el expediente, deberá especificarse el tipo de los mismos. Cuando la solicitud de consulta se refiera a una solicitud de MC que no se haya publicado aún, la solicitud de un dibujo o modelo comunitario registrado que aún no haya sido publicada o un dibujo o modelo registrado comunitario sometido a aplazamiento de la publicación de conformidad con el artículo 50 del RDC que o bien hubiere sido objeto de renuncia, estando sujeto a tal aplazamiento, antes o en el momento de expirar el periodo de aplazamiento y sea un tercero quien la presente, se deberá justificar el derecho de este tercero a consultar el expediente;
cuando se pidan copias, deberá indicarse el número de éstas, si han de ser certificadas o no, si los documentos se destinan a su presentación en un país tercero que requiera autenticación de la firma (legalización), indicando los países que precisen este requisito;
la firma del solicitante de la consulta pública con arreglo a la regla 79 del REMC y el artículo 65, del REDC.
6.10 Irregularidades
Cuando la solicitud de consulta pública incumpla los requisitos relativos al contenido, se invitará al solicitante de la misma a subsanar las irregularidades. Si dichas irregularidades no se subsanan dentro del plazo señalado, la solicitud será denegada.
6.11 Tasas de consulta pública y de comunicación de datos incluidos en el expediente
Todas las tasas deberán pagarse en la fecha de recepción de la solicitud de consulta pública (véanse los apartados 6.5 y 6.6).
6.11.1 Comunicación de datos incluidos en un expediente
Regla 90, del REMC Artículo 75, del REDC Artículo 2, apartado 29, del RTMC Artículo 2 (anexo apartado 23), del RTDC
La comunicación de datos incluidos en un expediente estará sujeta al pago de una tasa de 10 EUR.
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6.11.2 Consulta pública
Regla 89, apartado 1, del REMC Artículo 74, apartado 1, del REDC Artículo 2, apartado 27, del RTMC Artículo 2 (anexo, apartado 21), del RTDC
La solicitud de consulta pública en los locales de la Oficina estará sujeta al pago de una tasa de 30 EUR.
Regla 89, apartado 4, del REMC Artículo 74, apartado 4, del REDC Artículo 2, apartado 28, letra a), del RTMC Artículo 2 (anexo, apartado 22), del RTDC
Cuando la consulta pública se efectúe mediante la expedición de copias no certificadas de documentos obrantes en el expediente, dichas copias estarán sujetas al pago de una tasa de 10 EUR hasta un número de 10 copias, más 1 EUR por cada copia adicional.
Regla 24, apartado 2, regla 84, apartado 6, y regla 89, apartado 5, del REMC Artículo 17, apartado 2, artículo 69, apartado 6, y artículo 74, apartado 5, del REDC Artículo 2, apartado 26, letra a), del RTMC Artículo 2 (anexo, apartado 20), del RTDC
La expedición de copias no certificadas de una solicitud de MC o de una solicitud de DMC, de un certificado de registro, de un extracto del Registro o de un extracto de la solicitud de MC o de una solicitud de DMC de la base de datos estará sujeta al pago de una tasa de 10 EUR por cada copia o extracto.
Regla 89, apartado 4, del REMC Artículo 74, apartado 4, del REDC Artículo 2, apartado 28, letra b), del RTMC Artículo 2 (anexo, apartado 22), del RTDC
Cuando la consulta pública se efectúe mediante la expedición de copias certificadas de documentos obrantes en el expediente, dichas copias estarán sujetas al pago de una tasa de 30 EUR hasta un número de 10 copias, más 1 EUR por cada copia adicional.
Regla 24, apartado 2, regla 84, apartado 6, y regla 89, apartado 5, del REMC Artículo 17, apartado 2, artículo 69, apartado 6, y artículo 74, apartado 5, del REDC Artículo 2, apartado 26, letra b), del RTMC Artículo 2 (anexo apartado 20), del RTDC
La expedición de copias certificadas de una solicitud de MC o de DMC, de un certificado de registro de MC, de un extracto del Registro o de un extracto de la solicitud de MC o de DMC de la base de datos, estará sujeta al pago de una tasa de 30 EUR por cada copia o extracto.
Sin embargo, los usuarios registrados del sitio web podrán obtener gratuitamente copias electrónicas certificadas de solicitudes de MC o de DMC o de certificados de registro a través del sitio web.
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6.11.3 Consecuencias de la falta de pago
Regla 89, apartado 1, del REMC Artículo 74, apartado 1, del REDC
Una solicitud de consulta pública no se considerará presentada hasta que se haya abonado la tasa correspondiente. Las tasas son aplicables no sólo cuando la solicitud sea presentada por un tercero, sino también cuando la presente el solicitante o el titular de la MC o del DMC. La Oficina no tramitará la solicitud hasta que la tasa haya sido abonada.
No obstante, si la tasa no ha sido abonada, o no lo ha sido en su totalidad, la Oficina lo notificará al solicitante de la consulta pública:
si la Oficina no recibe el pago correspondiente a una copia, certificada o no, de una solicitud de MC o de DMC, de un certificado de registro o de un extracto del Registro o de la base de datos;
si la Oficina no recibe el pago correspondiente a la consulta de los expedientes mediante la expedición de copias, certificadas o no, de los documentos del expediente;
si la Oficina no recibe el pago correspondiente a la comunicación de datos incluidos en un expediente.
La Oficina enviará un escrito indicando el importe de las tasas a pagar. Si el solicitante de la consulta pública desconoce el importe exacto de la tasa porque depende del número de páginas, la Oficina incluirá esta información en la carta-tipo o le informará por otros medios apropiados.
6.11.4 Reembolso de tasas
Cuando la solicitud de copias certificadas o no o de datos incluidos en los expedientes sea retirada antes de que la Oficina la haya atendido, la tasa será reembolsada o, en el caso de cuenta corriente, no se cargará en la cuenta.
Cuando se deniegue una solicitud de consulta pública, no se reembolsará la tasa correspondiente. No obstante, en los casos en que tras el pago de la tasa la Oficina considere que no pueden expedirse todas las copias certificadas o no, se reembolsarán las tasas que hayan podido abonarse en exceso de la tasa finalmente debida.
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6.12 Requisitos para tener derecho a consulta pública cuando la solicitud de MC no publicada o el DMC aplazado es presentado por un tercero
Artículo 88, apartados 1 y 2, del RMC Artículo 74, del RCD Regla 89, apartado 2, del REMC Artículo 74, apartado 2, del REDC
Cuando una solicitud de consulta pública relativa a una solicitud de CTM que aún no ha sido publicada o a un expediente relativo a un DMC sometido a aplazamiento de la publicación de conformidad con el artículo 50, del RCC, que o bien hubiere sido objeto de renuncia, estando sujeto a tal aplazamiento, antes o en el momento de expirar el periodo de aplazamiento (consúltense los apartados 4.2.1 y 4.2.2) es presentada por un tercero (es decir, por una persona distinta del solicitante de MC o de DMC o de su representante), pueden darse diversas situaciones.
Cuando la solicitud de consulta pública la realiza un tercero basándose en los motivos previstos en la regla 89, apartado 2, del REMC (véase el apartado 4.2.1) o en el artículo 74, apartado 2, del REDC o el artículo 74, apartado 2, del RDC (véase el apartado 4.2.2), ésta debe incluir la indicación y las pruebas de que el solicitante de la MC o el solicitante o titular del DMC ha aceptado la consulta, o ha declarado que, una vez que se registre la MC o el DMC, invocará los derechos correspondientes contra el solicitante de la consulta.
6.12.1 Aceptación
Deberá figurar la aceptación del solicitante de la MC o del solicitante o titular del DMC en forma de declaración escrita en la que éste acepte la consulta del expediente o expedientes concretos. La aceptación podrá limitarse a la consulta de determinadas partes del expediente, como la solicitud, etc., en cuyo caso la solicitud de consulta pública no podrá sobrepasar los límites de la aceptación.
Cuando el solicitante de la consulta pública no presente una declaración escrita del solicitante de la MC o del solicitante o titular del DMC en la que conste la aceptación de dicha consulta, recibirá una notificación al respecto y se le concederán dos meses, a partir de la fecha de la notificación, para que subsane esta irregularidad.
Si, una vez expirado el plazo, la aceptación no ha sido presentada, la Oficina denegará la solicitud de consulta pública. La resolución denegatoria será notificada al solicitante de la consulta pública.
Dicha resolución podrá ser recurrida por el solicitante de la consulta pública (artículos 59 y 60, del RMC y artículo 56, del RCD).
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6.12.2 Declaración de que serán invocados los derechos conferidos por la MC o el DMC
Regla 89, apartado 2, del REMC Artículo 74, apartado 2, del RCD Artículo 74, apartado 2, del REDC
Cuando la solicitud se funde en la declaración de que el titular de la MC o del RCD invocará los derechos conferidos por ésta una vez registrada, el solicitante de la consulta deberá probar dicha alegación. La prueba que debe presentarse consistirá en prueba documental, por ejemplo, una declaración del solicitante de la MC o del solicitante o titular del RCD para las solicitudes de MC, la solicitud de DMC o el dibujo o modelo comunitario registrado o aplazado de que se trate, correspondencia comercial, etc. El hecho de presentar una oposición basada en una solicitud de MC constituye declaración de que la MC será invocada. Las meras presunciones del solicitante de la consulta pública no constituirán una prueba suficiente.
La Oficina examinará en primer lugar si la prueba es suficiente.
Cuando tal sea el caso, la Oficina notificará la solicitud de consulta pública y los documentos probatorios al solicitante de la MC o solicitante o titular del DMC y le invitará a formular sus observaciones en el plazo de dos meses. Si el solicitante de la MC o el solicitante o titular del DMC manifiesta su aceptación, la consulta pública será concedida. Si el solicitante de la MC o el solicitante o titular del DMC presenta observaciones oponiéndose a la consulta, la Oficina las transmitirá al solicitante de la consulta pública. Cualquiera declaración adicional del solicitante de la consulta pública se transmitirá al solicitante de la MC o al solicitante o titular del DMC, y viceversa. La Oficina tomará en consideración todos los escritos presentados por las partes dentro de plazo y resolverá en consecuencia. La resolución de la Oficina se notificará tanto al solicitante de la consulta pública como al solicitante de la MC o del solicitante o titular del DMC, pudiendo ser recurrida por la parte cuyas pretensiones hayan sido desestimadas (artículos 59 y 60, del RMC, y artículo 56, del RCD).
6.13 Concesión de la consulta pública, formas de consulta
Cuando se haya concedido la consulta, la Oficina transmitirá, según proceda, las copias de los documentos del expediente o los datos solicitados al solicitante de la consulta pública o le invitará a llevar a cabo la consulta en los locales de la Oficina.
6.13.1 Comunicación de datos incluidos en un expediente
Regla 90, del REMC Artículo 75, del REDC
La Oficina, previa solicitud, podrá comunicar datos incluidos en cualquier expediente relativo a solicitudes o registros de MC o de DMC
Podrán facilitarse datos incluidos en los expedientes, sin necesidad de solicitud de consulta, entre otros casos, cuando la parte interesada desee saber si una solicitud de MC determinada ha sido presentada por un solicitante determinado, o la fecha de
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dicha solicitud, o si la lista de productos y servicios ha sido modificada en el periodo transcurrido entre la presentación de la solicitud y su publicación.
Una vez obtenidos estos datos, la parte interesada podrá decidir si solicita o no copias de los documentos pertinentes, o si solicita la consulta del expediente.
Los datos incluidos en los expedientes no serán comunicados cuando la parte interesada desee conocer, entre otros, las alegaciones de un oponente en un procedimiento de oposición, los documentos presentados en relación con una antigüedad, o el texto exacto de la lista de productos y servicios presentado. En vez de ello, la Oficina invitará a la parte interesada a solicitar la consulta pública del expediente en cuestión.
En estos supuestos, la cantidad y complejidad de los datos que deben comunicarse sobrepasarían los límites de lo razonable y generarían una carga administrativa excesiva.
6.13.2 Copias de documentos del expediente
Cuando la consulta pública se haya concedido en la forma de expedición de copias certificadas o no de los documentos del expediente, los documentos solicitados se remitirán por correo.
Cuando se conceda la consulta mediante el acceso a los expediente en la Oficina, se citará al solicitante de la consulta pública para dicha consulta.
7 Procedimiento de consulta de los tribunales o autoridades de los Estados miembros
Artículo 90, del RMC Artículo 75, del RCD Reglas 92 y 93, del REMC Artículos 77 y 78, del REDC
A los efectos de la cooperación administrativa, la Oficina, previa solicitud, asistirá a los tribunales o autoridades de los Estados miembros, proporcionándoles información o permitiéndoles la consulta de expedientes.
A los efectos de la cooperación administrativa, la Oficina, previa solicitud, proporcionará también a los servicios centrales de la propiedad industrial de los Estados miembros la información necesaria sobre la presentación de solicitudes de MC o de DMC y sobre los procedimientos relativos a dichas solicitudes y a las MC registradas o DMC como consecuencia de dichas solicitudes.
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7.1 Exención del pago de tasas
Regla 92, apartado 3, y regla 93, apartados 1 y 2, del REMC Artículo 77, apartado 3, artículo 78, apartados 1 y 2, del REDC
La consulta pública y la comunicación de datos incluidos en los expedientes solicitada por los tribunales o autoridades de los Estados miembros no está sujeta al pago de tasas.
Regla 93, apartado 2, del REMC Artículo 78, apartado 2, del REDC
Los tribunales o fiscalías de los Estados miembros pueden poner a disposición de terceros, para su consulta, expedientes o copias de los mismos remitidos por la Oficina. La Oficina no impondrá tasa alguna por dicha consulta.
7.2 Ausencia de restricciones para las solicitudes no publicadas
Artículo 90, del RMC Artículo 75, del RDC Reglas 88 y 92, apartado 1, del REMC Artículo 72 y artículo 77, apartado 1, del REDC
La consulta pública y la comunicación de datos incluidos en los expedientes solicitada por los tribunales o autoridades de los Estados miembros no está sometida a las restricciones previstas en el artículo 88 del RMC y en el artículo 74 del DMC. Por lo tanto, puede concederse a estos organismos el acceso a los expedientes relativos a solicitudes de MC no publicadas (véase el apartado 4.2.1) y al DMC sometido a aplazamiento de la publicación (véase el apartado 4.2.2) así como a las partes de los expedientes que la parte interesada haya mostrado especial interés por mantener confidenciales. No obstante, los documentos relativos a la exclusión y recusación, y los documentos contemplados en la regla 88, letra b), del REMC y el artículo 72, letra b), del REDC.
Regla 88 y regla 93, apartado 2, del REMC Artículo 74, del RDC, y artículo 72 y artículo 78, apartado 2, del REDC
Los tribunales o fiscalías de los Estados miembros podrán poner a disposición de terceros, para su consulta, expedientes o copias que les hayan sido remitidos por la Oficina. La consulta posterior estará sometida a las restricciones previstas en el artículo 88 y la regla 88, del REMC o el artículo 74, del RDC, es decir, a las que serían aplicables si la consulta la hubiera solicitado un tercero.
Regla 93, apartado 3, del REMC Artículo 78, apartado 4, del REDC
Cuando se transmitan los expedientes o copias de los mismos a los tribunales o las fiscalías de los Estados miembros, la Oficina indicará las restricciones a las que está sometida la consulta de los expedientes relativos, por un lado, a solicitudes de MC o a marcas comunitarias registradas, de conformidad con el artículo 88 del RMC y con la regla 88 del REMC y, por otro, a solicitudes de DMC o registros de DMC, de conformidad con el artículo 74 del RDC y el artículo 72 del REDC.
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7.3 Formas de consulta
Regla 93, apartado 1, del REMC Artículo 78, apartado 1, del REDC
La consulta de los expedientes de solicitudes de MC o de DMC o de marcas comunitarias registradas por parte de los tribunales o de las autoridades de los Estados miembros podrá efectuarse entregándoles copias de los originales. Puesto que los expedientes no contienen documentos originales, la Oficina facilitará impresiones en papel de los datos incluidos en su sistema electrónico.
Reconvención
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
PARTE E
OPERACIONES DE REGISTRO
SECCIÓN 6
OTRAS INSCRIPCIONES EN EL REGISTRO
CAPÍTULO 1
RECONVENCIÓN
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Índice
1 Introducción............................................................................................... 3
2 Solicitud de registro de la interposición de una demanda de reconvención ante un tribunal de MC o de DMC .................................... 3
3 Solicitud de registro de la sentencia relativa a una demanda de reconvención ante un tribunal de MC o de DMC .................................... 4
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1 Introducción
Las demandas de reconvención, tal como establecen el artículo 100, del RMC y el artículo 84 del RDC, son demandas de defensa interpuestas por el demandado a quien se procesa por la violación de una marca comunitaria (MC) o dibujo y modelo comunitario registrado (DMC). A través de dicha demanda de reconvención el demandado solicita al tribunal de marcas comunitarias o al tribunal de dibujos y modelos comunitarios que declare la caducidad o la nulidad de la MC o la nulidad del DMC que supuestamente ha violado(a).
El objetivo del registro de la presentación y la sentencia firme de la demanda de reconvención en el Registro de la Oficina consiste en el interés general de poner a disposición del público toda la información relevante sobre las demandas de reconvención relativas a las marcas comunitarias y a los diseños y modelos comunitarios, en particular de las sentencias firmes relacionadas con los mismos. En este sentido, la Oficina podrá aplicar de este modo las sentencias firmes, en particular aquellas que declaran la caducidad o la nulidad total o parcial de una MC, así como las que declaren la nulidad total de los diseños y modelos comunitarios.
Al inscribir dichas demandas de reconvención y sus sentencias firmes en el Registro, la Oficina se esfuerza por cumplir los principios de veracidad, fe pública y seguridad jurídica de un Registro público.
2 Solicitud de registro de la interposición de una demanda de reconvención ante un tribunal de MC o de DMC
Artículo 100, apartado 4, del RMC Regla 84, apartado 3, letra n), del REMC Artículo 86, apartado 2, del RDC Artículo 69, apartado 3, letra p), del REDC Comunicación nº 9/05 y nº 10/05 del Presidente
De conformidad con el artículo 100, apartado 4, del RMC y el artículo 86, apartado 2, del RDC, el tribunal de marcas comunitarias o el tribunal de dibujos y modelos comunitarios ante el que se haya presentado una demanda de reconvención por caducidad de una MC o por nulidad de la MC o del DMC comunicará a la Oficina la fecha en que se haya presentado dicha demanda de reconvención.
Las Comunicaciones nº 9/05 y nº 10/05 de 28 de noviembre de 2005 hacen referencia a la designación de los tribunales de marcas comunitarias y los tribunales de dibujos y modelos comunitarios de los Estados miembros (en adelante, «los tribunales de MC o de DMC») con arreglo a lo dispuesto en el artículo 95, apartado 2, del RMC.
La Oficina permite asimismo que cualquier parte del procedimiento de la demanda de reconvención solicite la inscripción de una demanda de reconvención en el Registro, si todavía no ha sido comunicada por el tribunal de MC o de DMC.
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El solicitante del registro (el tribunal de MC o de DMC o una de las partes del procedimiento de la demanda de reconvención) deberá indicar y presentar:
la fecha de presentación de la demanda de reconvención, el número de la MC o el DMC de que se trate, una indicación de si la solicitud tiene por objeto la caducidad o la declaración
de nulidad, si el solicitante del registro es una de las partes, la confirmación oficial por
parte del tribunal de MC o de DMC de que tiene competencia para dictar sentencia sobre la demanda de reconvención, incluido, en su caso, el número de asunto o la referencia del tribunal.
Si el solicitante del registro no presenta una confirmación oficial por parte del tribunal de MC o de DMC o si es necesario aclarar la información presentada por el solicitante, la Oficina solicitará una confirmación por escrito.
La Oficina notificará al titular de la MC o del DMC y al tribunal de MC o de DMC que se ha inscrito la demanda de reconvención en el Registro. Si la solicitud fue presentada por una de las partes del procedimiento de reconvención, la Oficina informará asimismo a dicha parte.
La inscripción en el Registro pertinente será publicada en la Parte C.9.3. del Boletín de Marcas Comunitarias o en la Parte B.3.1. del Boletín de Dibujos y Modelos Comunitarios.
3 Solicitud de registro de la sentencia relativa a una demanda de reconvención ante un tribunal de MC o de DMC
Artículo 100, apartado 6, del RMC Regla 84, apartado 3, letra o), del REMC Artículo 86, apartado 4, del RDC Artículo 69, apartado 3, letra q), del REDC
Cuando un tribunal de MC o de DMC dicte una sentencia, que sea firme, sobre una demanda de reconvención de caducidad de una MC o de nulidad de una MC o un DMC, deberá enviar una copia de dicha sentencia a la Oficina.
La Oficina permite asimismo que cualquier parte del procedimiento de la demanda de reconvención solicite la inscripción de la sentencia relativa a la acción de reconvención en el Registro, si aún no ha sido comunicada por el tribunal de MC o de DMC.
El solicitante de la inscripción (el tribunal de MC o de DMC o una de las partes del procedimiento de la demanda de reconvención) deberá indicar y presentar:
una copia de la sentencia, junto con la confirmación por parte del tribunal de MC o de DMC de que la sentencia es firme;
la fecha en que la sentencia se convierte en firme; el número de la MC o el DMC de que se trate; una indicación de si la solicitud tiene por objeto la caducidad o la declaración
de nulidad;
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en el caso de anulación o nulidad parcial, la lista de productos y servicios que resultan afectados por la sentencia, en su caso.
Es necesario que la Oficina reciba la confirmación de que la sentencia ha adquirido fuerza de cosa juzgada (final/rechtskräftig/ /passée en force de chose jugée, etc.). Si la Oficina requiere aclaraciones, solicitará una confirmación por escrito.
Cuando la sentencia firme anula parcialmente una MC, la Oficina modificará la lista de productos y servicios con arreglo a la sentencia del tribunal de MC y, en su caso, enviará la lista modificada de productos y servicios para su traducción.
La Oficina notificará al titular de la MC o al titular del DMC y al tribunal de MC o de DMC que se ha inscrito la sentencia en el Registro. Si la solicitud fue presentada por una de las partes del procedimiento de reconvención, la Oficina informará asimismo a dicha parte.
La inscripción en el Registro pertinente será publicada en la Parte C.9.4. del Boletín de Marcas Comunitarias o en la Parte B.3.2. del Boletín de Dibujos y Modelos Comunitarios.
Examen de las solicitudes de nulidad de dibujos y modelos
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DIRECTRICES RELATIVAS AL EXAMEN QUE LA OFICINA DE ARMONIZACIÓN DEL
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO
SOBRE LOS DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS
DIBUJOS Y MODELOS COMUNITARIOS REGISTRADOS
EXAMEN DE LAS SOLICITUDES DE NULIDAD DE DIBUJOS Y MODELOS
Examen de las solicitudes de nulidad de dibujos y modelos
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Índice
1 Finalidad........................................................................................................... 5
2 Introducción – Principios generales aplicables al procedimiento de nulidad.............................................................................................................. 5 2.1 Obligación de fundamentar los motivos..........................................................5 2.2 Derecho a ser oído ............................................................................................6 2.3 Alcance del examen que lleva a cabo la División de anulación.....................6 2.4 Cumplimiento de los plazos .............................................................................7
3 Presentación de una solicitud........................................................................ 8 3.1 Formulario de solicitud.....................................................................................8 3.2 Alcance de la solicitud......................................................................................8 3.3 Lengua del procedimiento ................................................................................9 3.4 Identificación de la solicitud.............................................................................9 3.5 Legitimidad activa del solicitante.....................................................................9 3.6 Representación de la solicitud.......................................................................10
3.6.1 Si la representación es obligatoria .......................................................................10 3.6.2 Quién puede asumir la representación ................................................................10
3.7 Identificación del dibujo o modelo comunitario impugnado........................11 3.8 Registros caducados ......................................................................................11 3.9 Declaración de motivos, hechos, pruebas y alegaciones ............................11
3.9.1 Declaración de motivos ........................................................................................11 3.9.2 Hechos, pruebas y alegaciones ...........................................................................12 3.9.3 Admisibilidad respecto de una de las causas invocadas .....................................14
3.10 Firma de la solicitud........................................................................................14 3.11 Medios de presentación..................................................................................14 3.12 Pago de la tasa ................................................................................................15 3.13 Subsanación de irregularidades ....................................................................15 3.14 Comunicación al titular ...................................................................................15 3.15 Intervención del supuesto infractor ...............................................................16
4 Fase contradictoria del procedimiento........................................................ 17 4.1 Intercambio de comunicaciones ....................................................................17
4.1.1 Observaciones por parte del titular ......................................................................17 4.1.1.1 Aspectos generales........................................................................................... 17 4.1.1.2 Solicitud de prueba del uso de una marca anterior ........................................... 17
4.1.2 Traducción de las observaciones del titular .........................................................18 4.1.3 Alcance de defensa ..............................................................................................18 4.1.4 Respuesta por parte del solicitante ......................................................................18
4.1.4.1 Aspectos generales........................................................................................... 18 4.1.4.2 Traducción de la respuesta del solicitante......................................................... 19 4.1.4.3 Presentación de la prueba del uso de una marca anterior ................................ 19
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4.1.5 Finalización del intercambio de observaciones....................................................20 4.1.6 Prórroga de los plazos y suspensión ...................................................................20
4.1.6.1 Prórroga de los plazos....................................................................................... 20 4.1.6.2 Suspensión........................................................................................................ 21
4.1.7 Práctica de la prueba............................................................................................22 4.1.8 Procedimiento oral................................................................................................22
4.2 Examen ............................................................................................................23 4.2.1 Inicio del examen..................................................................................................23 4.2.2 Examen de las causas de nulidad........................................................................23
5 Las distintas causas de nulidad................................................................... 24 5.1 No es un dibujo o modelo...............................................................................24
5.1.1 Organismos vivos .................................................................................................25
5.2 Falta de derechos............................................................................................25 5.3 Función técnica ...............................................................................................26
5.3.1 Justificación ..........................................................................................................26 5.3.2 Examen.................................................................................................................27 5.3.3 Formas alternativas ..............................................................................................28
5.4 Dibujos y modelos de interconexiones .........................................................28 5.5 Falta de novedad y de carácter singular........................................................28
5.5.1 Divulgación de un dibujo o modelo anterior .........................................................28 5.5.1.1 Principios generales .......................................................................................... 28 5.5.1.2 Publicaciones oficiales ...................................................................................... 29 5.5.1.3 Exposiciones y comercialización ....................................................................... 30 5.5.1.4 Divulgaciones derivadas de Internet ................................................................. 31 5.5.1.5 Declaraciones escritas bajo juramento o solemnes (declaraciones juradas) .... 32 5.5.1.6 Divulgación insuficiente..................................................................................... 32 5.5.1.7 Divulgación a un tercero en condiciones tácitas o expresas de
confidencialidad................................................................................................. 33 5.5.1.8 Divulgación durante el período de prioridad...................................................... 34 5.5.1.9 Período de gracia .............................................................................................. 34
5.5.2 Apreciación de la novedad y del carácter singular...............................................35 5.5.2.1 Principios comunes ........................................................................................... 35
5.6 Conflicto con el derecho de un dibujo o modelo anterior ............................44 5.7 Uso de un signo distintivo anterior................................................................45
5.7.1 Signo distintivo .....................................................................................................45 5.7.2 Uso en un dibujo o modelo posterior....................................................................45 5.7.3 Fundamentación de la solicitud de conformidad con el artículo 25, apartado 1,
letra e), del RDC (signos distintivos anteriores) ...................................................45 5.7.4 Examen por parte de la División de Anulación.....................................................46
5.8 Uso no autorizado de una obra protegida en virtud de la normativa sobre derechos de autor de un Estado miembro..........................................47 5.8.1 Fundamentación de la solicitud de conformidad con el artículo 25, apartado 1,
letra f), del RDC (derechos de autor anteriores) ..................................................47 5.8.2 Examen por parte de la División de Anulación.....................................................47
5.9 Nulidad parcial.................................................................................................48 5.10 Causas de nulidad que pueden ser aplicables simplemente a causa de la
adhesión de un nuevo Estado miembro ........................................................49
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6 Conclusión del procedimiento ..................................................................... 49 6.1 Terminación del procedimiento sin resolución sobre el fondo ...................49 6.2 Resolución sobre costas ................................................................................49
6.2.1 Casos en los que procede adoptar una resolución sobre las costas...................49 6.2.2 Casos en los que no procede adoptar una resolución sobre las costas..............50
6.2.2.1 Acuerdo sobre costas........................................................................................ 50 6.2.2.2 Imposición de costas......................................................................................... 50 6.2.2.3 Fijación de costas.............................................................................................. 50
6.3 Corrección de errores e inscripción en el Registro ......................................51 6.3.1 Corrección de errores ...........................................................................................52 6.3.2 Inscripción en el Registro .....................................................................................52
7 Recurso .......................................................................................................... 52 7.1 Derecho a recurrir ...........................................................................................52 7.2 Revisión ...........................................................................................................52
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1 Finalidad
Las presentes directrices tienen por objeto explicar el procedimiento que seguirá la División de Anulación de la OAMI en el momento de aplicar en la práctica los requisitos formales contemplados en el Reglamento sobre los dibujos y modelos comunitarios 1 (RDC), el Reglamento de ejecución del Reglamento sobre los dibujos y modelos comunitarios 2 (REDC), y el Reglamento de tasas3 (RTDC), desde el momento de la recepción de una solicitud de declaración de nulidad de un dibujo o modelo comunitario registrado (en adelante, «solicitud») hasta el momento en que concluye el procedimiento de nulidad. Las directrices también tienen por objeto garantizar la coherencia de las resoluciones de la División de Anulación, así como velar por una práctica coherente en la tramitación de los expedientes. Las presentes Directrices no pretenden, como tampoco pueden, ampliar o reducir el contenido jurídico de los Reglamentos.
2 Introducción – Principios generales aplicables al procedimiento de nulidad
2.1 Obligación de fundamentar los motivos
Las resoluciones de la División de Anulación deberán fundamentar los motivos (artículo 62 del RDC). El razonamiento debe ser lógico y no debe mostrar incoherencias internas.
La obligación de fundamentar los motivos cumple una doble finalidad: permitir que las partes interesadas conozcan la justificación de la medida adoptada para que puedan proteger sus derechos, así como facultar a la siguiente instancia para que ejerza su poder para revisar la legalidad de la resolución. Por otra parte, la obligación de fundamentar los motivos constituye un requisito procedimental esencial, tan distinto de la cuestión de si los motivos planteados son correctos o no, que atañe a la legalidad sustantiva de la medida objeto de oposición (sentencia de 27/06/2013, T-608/11, «Instrumento para escribir II», apartados 67 y 68 y la jurisprudencia citada en la misma).
La División de Anulación deberá pronunciarse sobre cada una de las pretensiones que le remitan las partes (sentencia de 10/06/2008, T-85/07, «GABEL», apartado 20). Ahora bien, no está expresamente obligada a motivar sus apreciaciones sobre el valor de cada una de las pruebas aportadas, en especial si considera que carecen de interés o pertinencia para la resolución del litigio (véase, por analogía, la sentencia de 15/06/2000, C-237/98 P, «Dorsch Consult v Council and Commission», apartado 51). Es suficiente que se refiera a los hechos y las consideraciones jurídicas que revisten una importancia decisiva en el
1 Reglamento (CE) nº 6/2002 del Consejo, de 12 de diciembre de 2001, sobre los dibujos y modelos comunitarios), modificado por el Reglamento (CE) nº 1891/2006 del Consejo, de 18 de diciembre de 2006, por el que se modifican los Reglamentos (CE) nº 6/2002 y (CE) nº 40/94 para hacer efectiva la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al Registro internacional de dibujos y modelos industriales 2 Reglamento (CE) nº 2245/2002 de la Comisión, de 21 de octubre de 2002, de ejecución del Reglamento (CE) nº 6/2002 del Consejo sobre los dibujos y modelos comunitarios, modificado por el Reglamento (CE) nº 876/2007 de la Comisión, de 24 de julio de 2007, que modifica el Reglamento (CE) nº 2245/2002 de ejecución del Reglamento (CE) nº 6/2002 del Consejo sobre los dibujos y modelos comunitarios a raíz de la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales 3 Reglamento (CE) nº 2246/2002 de la Comisión, de 16 de diciembre de 2002 relativo a las tasas, modificado por el Reglamento (CE) nº 877/2007 de la Comisión, de 24 de julio de 2007, que modifica el Reglamento (CE) nº 2246/2002, relativo a las tasas que se han de abonar a la Oficina de Armonización del Mercado Interior (marcas, dibujos y modelos), a raíz de la adhesión de la Comunidad Europea al Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales
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contexto de la resolución (sentencia de 12/11/2008, T-7/04, «Limoncello della Costiera Amalfitana shaker», apartado 81).
Para evaluar si la motivación de una resolución cumple dichos requisitos, se debe tener en cuenta no sólo el tenor literal de la misma, sino también su contexto, así como el conjunto de normas jurídicas que regulan la materia en cuestión (sentencia de 07/02/2007, T-317/05, «Forme d’une guitare», apartado 57).
La División de Anulación aplicará los principios explicados en las Directrices relativas a los procedimientos ante la Oficina de Armonización del Mercado Interior (Marcas, dibujos y modelos), Parte A, Disposiciones generales, Sección 2, Principio general que debe respetarse en los procedimientos, Capítulo 1, Motivación adecuada.
2.2 Derecho a ser oído
Las resoluciones de la División de Anulación sólo podrán fundarse en motivos o pruebas respecto a los cuales las partes hayan podido presentar sus alegaciones (segunda frase del artículo 62 del RDC).
A tal fin, la División de Anulación invitará a las partes, cuantas veces sea necesario, a que le remitan sus observaciones propias o hechas por las otras partes (artículo 53, apartado 2, del RDC).
El derecho a ser oído se extiende a todos los elementos de hecho o de derecho y a las pruebas que constituyen el fundamento de la resolución, aunque no se aplica a la posición final que la División de Anulación decida adoptar (sentencia de 20/04/2005, T-273/02, «CALPICO/CALYPSO», apartados 64-65).
La División de Anulación podrá basar su análisis en hechos que sean el resultado de la experiencia práctica generalmente adquirida en la comercialización de productos y que cualquier persona puede conocer, y en particular, los usuarios informados de dichos productos; en tal caso no estará obligada a facilitar ejemplos o pruebas de dicha experiencia práctica.
La División de Anulación aplicará los principios explicados en las Directrices, Parte A, Disposiciones generales, Sección 2, Principio general que debe respetarse en los procedimientos, Capítulo 2, Derecho a ser oído.
2.3 Alcance del examen que lleva a cabo la División de anulación
En los procedimientos de nulidad, el examen llevado a cabo por la División de Anulación se circunscribe a los hechos, pruebas y argumentos presentados por las partes (artículo 63, apartado 1, del RDC). Sin embargo, deberá ponderar los hechos, pruebas y alegaciones, pronunciarse sobre su valor y, a continuación, extraer conclusiones jurídicas de los mismos, sin estar vinculada por los puntos del acuerdo entre las partes. No se tendrán en cuenta los hechos alegados para los que no se hayan presentado pruebas (resolución de la División de Anulación de 22/04/2008 [ICD 4448]).
Los hechos, pruebas y alegaciones son tres elementos diferenciados que no deben ser objeto de confusión. Por ejemplo, la fecha de divulgación de un dibujo o modelo anterior es un hecho. La prueba de tal hecho podría ser la fecha de publicación de un catálogo en que aparezca el dibujo o modelo anterior junto con las pruebas de que el catálogo se ha puesto
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a disposición del público antes de la fecha de presentación o la fecha de prioridad del dibujo o modelo comunitario impugnado. El solicitante podría alegar que el dibujo o modelo anterior obstaculiza la novedad del dibujo o modelo comunitario impugnado, dado que la impresión de conjunto que produce en el usuario informado es similar. Que un dibujo o modelo comunitario carezca o no de novedad no es un hecho sino una cuestión jurídica que debe dilucidar la División de Anulación basándose en los hechos, pruebas y alegaciones facilitadas por las partes.
Los informes y dictámenes de expertos y otras declaraciones escritas se inscriben dentro de los medios de prueba indicados en el artículo 65, apartado 1, letras c) y f), del RDC. No obstante, el hecho de que la declaración sea admisible desde el punto de vista procesal no implica automáticamente que sea creíble, ni que sirva como prueba de los hechos que han de declararse probados. Por el contrario, se examinará detalladamente la exactitud y la veracidad de la información contenida en dichas declaraciones, así como si proceden de una fuente independiente y si están limitadas o basadas en información escrita (resolución de la División de Anulación de 22/04/2008 [ICD 4448]).
Además, los criterios jurídicos para solicitar una causa de nulidad constituyen un elemento natural de las cuestiones jurídicas presentadas a examen de la División de anulación. La División de Anulación puede verse obligada a resolver una cuestión de Derecho no planteada por las partes si dilucidar esta cuestión se revelase necesario para garantizar la aplicación correcta del RDC. La División de Anulación examinará de oficio las cuestiones de Derecho que puedan evaluarse independientemente de los elementos de hecho para la estimación o denegación de las alegaciones de las partes, incluso si las partes no se hubieran expresado sobre esta cuestión (véase, por analogía, la sentencia de 01/02/2005, T-57/03, «HOOLIGAN», apartado 21). Las cuestiones de Derecho incluyen, entre otras, la definición de usuario informado y el grado de libertad del autor, con arreglo al artículo 6 del RDC.
2.4 Cumplimiento de los plazos
La División de Anulación podrá declarar inadmisibles hechos o pruebas que las partes no hayan alegado a su debido tiempo (artículo 63, apartado 2, del RDC).
Se recuerda a las partes que deberán presentar a su debido tiempo y dentro de los plazos establecidos por la División de Anulación los hechos y las pruebas en que se apoyan, ya que en caso contrario corren el riesgo de que no sean tenidas en cuenta. Las partes no gozan del derecho incondicional a que los hechos o pruebas sean tomados en consideración por la División de Anulación.
En los casos en que la División de Anulación ejerza su margen de apreciación con arreglo al artículo 63, apartado 2, del RDC, deberá indicar por un lado los motivos por los que los elementos presentados extemporáneamente pueden en un primer momento ser realmente pertinentes a efectos del resultado del procedimiento de nulidad formulado ante ella y, por otro lado, que la fase del procedimiento en la que se produce dicha presentación extemporánea y las circunstancias que la rodean no se oponen a dicha toma en consideración (sentencia de 13/03/2007, C-29/05 P, «OHIM v Kaul», apartados 42 a 44).
Cuando una parte presente documentación por fax, deberá indicar en la carta adjunta si se envía o no una copia de confirmación (que, según los casos, podrá contener documentos en color). Tanto el fax como la copia de confirmación deberán llegar a la oficina dentro del plazo estipulado. De conformidad con el artículo 63, apartado 2, del RDC, la Oficina podrá
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tener en cuenta una copia de confirmación que las partes no hayan enviado a su debido tiempo.
Si el plazo no ha expirado, la parte interesada podrá solicitar una prórroga del mismo con arreglo al artículo 57, apartado 1, del REDC.
Para obtener información general sobre plazos y continuación de los procedimientos, véanse las Directrices, Parte A, Disposiciones generales, Sección 1, Medios de comunicación, Plazos.
En lo que respecta a los faxes incompletos o ilegibles, véase el punto 3.11 a continuación.
No obstante, se recuerda a los solicitantes que el plazo de un mes, recogido en el punto 3.11 más abajo, sólo se aplica a la presentación de una solicitud de declaración de nulidad (para la cual la Oficina no estipula ningún plazo) y no para otras etapas del procedimiento en las que la Oficina sí fija un plazo.
3 Presentación de una solicitud
3.1 Formulario de solicitud
Para presentar una solicitud (artículo 52, del RDC) la Oficina ofrece un formulario (artículo 68, apartado 1, letra f), del REDC) que puede descargarse en el sitio web de la Oficina.
Se recomienda encarecidamente utilizar dicho formulario (artículo 68, apartado 6, del REDC) para facilitar la gestión de la solicitud y evitar errores.
La solicitud, con todos los documentos justificativos, deberá presentarse por duplicado de manera que un ejemplar se conserve en el archivo de la Oficina y otro pueda enviarse al titular sin incurrir en pérdida de calidad debido a las copias. Si la solicitud se presentase en un solo ejemplar, la División de Anulación podrá requerir del solicitante que presente un segundo ejemplar en el plazo de un mes, o de dos meses si el solicitante no tiene su sede principal o un establecimiento en la Unión Europea (artículo 57, apartado 1, del REDC).
3.2 Alcance de la solicitud
En los procedimientos de nulidad, las pretensiones del solicitante sólo pueden consistir en la declaración de nulidad del dibujo o modelo comunitario registrado impugnado (artículo 25 del RDC).
Si los dibujos o modelos comunitarios impugnados forman parte de un registro múltiple, cada uno de ellos podrá impugnarse independientemente e identificarse mediante referencia al número de registro completo (artículo 37, apartado 4, del RDC). Una única solicitud (y un escrito de motivación común) puede hacer referencia a más de un dibujo o modelo comunitario de un registro múltiple. En dicho caso, deberá abonarse la tasa de solicitud para cada uno de los dibujos y modelos comunitarios impugnados. Sin embargo, en aras a una mayor claridad, la Oficina recomienda que se presenten solicitudes separadas para cada dibujo o modelo comunitario impugnado.
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3.3 Lengua del procedimiento
La lengua de la solicitud de registro del dibujo o modelo comunitario impugnado (lengua de la presentación) será la lengua del procedimiento de nulidad (lengua de procedimiento), siempre que la lengua de la presentación sea una de las cinco lenguas de la Oficina (artículo 98, del RDC; artículo 29, del REDC).
Si la lengua de la presentación no fuera una de las cinco lenguas de la Oficina, la lengua de procedimiento será aquella indicada como segunda lengua en la solicitud de dibujo o modelo comunitario impugnado (artículo 98, apartado 4, del RDC; artículo 29, apartado 1, del REDC).
La solicitud de declaración de nulidad deberá presentarse en la lengua del procedimiento. Cuando la solicitud no se presente en la lengua de procedimiento, la División de Anulación se pondrá en contacto con el solicitante y le instará a que presente una traducción en un plazo de dos meses a partir de la fecha de recepción de la notificación. En el caso de que el solicitante haga caso omiso de la petición, la solicitud será denegada por considerarse inadmisible (artículo 30, apartado 1, del REDC).
Las partes en el procedimiento de nulidad podrán acordar otra lengua del procedimiento siempre que sea una lengua oficial de la Unión Europea. La información sobre el acuerdo deberá llegar a la Oficina en el plazo de dos meses desde que se ha notificado la solicitud al titular. Si la solicitud no ha sido presentada en esa lengua, el solicitante deberá presentar una traducción de aquélla a dicha lengua en el plazo de un mes a partir de la fecha en la que la Oficina haya sido informada del acuerdo (artículo 98, apartado 5, del RDC; artículo 29, apartado 6, del REDC).
Por lo que al régimen lingüístico aplicable a los documentos justificativos se refiere, véase infra el apartado 3.9.2.
3.4 Identificación de la solicitud
La solicitud incluirá una indicación del nombre y dirección del solicitante (artículo 28, apartado 1, letra c), del REDC).
Si la información facilitada en la solicitud no permite identificar inequívocamente al solicitante y la irregularidad no se subsana en el plazo de dos meses desde que así lo solicita la División de Anulación, la solicitud será denegada por considerarse inadmisible (artículo 30, apartado 1, del REDC).
3.5 Legitimidad activa del solicitante
Cualquier persona física o jurídica, así como las autoridades públicas competentes, podrán presentar ante la División de Anulación una solicitud de declaración de nulidad de un dibujo o modelo comunitario, con arreglo al artículo 25, apartado 1, letras a) y b), del RDC (artículo 52, apartado 1, del RDC).
Sin embargo, cuando la causa de nulidad sea la vulneración de un derecho anterior, en el sentido del artículo 25, apartado 1, letras c) y f), del RDC, o el uso indebido de emblemas oficiales, en el sentido del artículo 25, apartado 1, letra g), del RDC, la admisibilidad de la solicitud de declaración de nulidad exige que el titular tenga derecho al derecho anterior o que esté afectado por el uso del emblema oficial, según el caso (artículo 52, apartado 1,
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del RDC). El derecho se examinará con arreglo a la legislación internacional, nacional o de la Unión Europea que rija el derecho anterior o el emblema oficial en cuestión.
Por lo que a la justificación del derecho del solicitante se refiere, véase infra el apartado 3.9.2.
3.6 Representación de la solicitud
3.6.1 Si la representación es obligatoria
En principio, las normas que regulan la representación en el procedimiento de marca comunitaria se aplican mutatis mutandis al procedimiento de nulidad para los dibujos y modelos comunitarios (véanse las Directrices, Parte A, Normas generales, Sección 5, Representación profesional). Las personas que tengan su domicilio, sede social o establecimiento industrial o comercial efectivo y real en la Unión Europea no precisan designar un representante para los procedimientos ante la Oficina.
Cuando el solicitante no tenga su domicilio, sede social o establecimiento industrial o comercial efectivo en el territorio de la Unión Europea, deberá designar un representante, de lo contrario la Oficina requerirá al solicitante que designe uno en un plazo de dos meses. En el caso de que el solicitante haga caso omiso de la petición, la solicitud será denegada por considerarse inadmisible (artículo 77, apartado 2, del RDC; artículo 30, apartado 1 y artículo 28, apartado 1, letra c), del REDC).
Al examinar si el solicitante tiene un establecimiento real y efectivo industrial o comercial en la Unión Europea, la División de Anulación seguirá las orientaciones del Tribunal de Justicia en la sentencia de 22/11/1978, C-33/78, «Somafer SA», apartado 12 («el concepto de sucursal, agencia o cualquier otro establecimiento, supone un centro de operaciones, que se manifiesta de modo duradero hacia el exterior como la prolongación de una empresa principal, dotado de una dirección y materialmente equipado para poder realizar negocios con terceros»). La prueba de que un solicitante tiene un establecimiento real y efectivo industrial o comercial en la Unión Europea puede consistir, entre otros, en estatutos, informes anuales, declaraciones escritas y otros documentos comerciales.
3.6.2 Quién puede asumir la representación
Sólo podrá asumir la representación de terceros ante la Oficina un abogado o un representante autorizado que cumpla los requisitos contemplados en el artículo 78, apartado 1, del RDC.
Las personas físicas y jurídicas que tengan su domicilio, sede social o establecimiento industrial o comercial efectivo en la Comunidad podrán ser representadas ante la Oficina por un empleado. Los empleados de personas jurídicas también podrán representar a otras personas jurídicas que tengan vínculos económicos con la primera, aun cuando dichas personas jurídicas carezcan de domicilio, sede social o establecimiento industrial o comercial efectivo y real en la Unión Europea (artículo 77, apartado 3, del RDC).
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3.7 Identificación del dibujo o modelo comunitario impugnado
En una solicitud de declaración de nulidad deberán figurar el número de registro del dibujo o modelo comunitario impugnado y el nombre y la dirección del titular, tal como aparecen en el registro (artículo 28, apartado 1, letra a), del REDC).
Cuando la información proporcionada por el solicitante no permita identificar inequívocamente el dibujo o modelo comunitario impugnado, la Oficina instará al solicitante a proporcionar dicha información en un plazo de dos meses. En caso de que el solicitante no subsane la irregularidad, la solicitud será denegada por considerarse inadmisible (artículo 30, apartado 1, del REDC).
3.8 Registros caducados
El dibujo o modelo comunitario podrá ser declarado nulo incluso después de su caducidad o de la renuncia al mismo (artículo 24, apartado 2, del RDC).
Si el dibujo o modelo comunitario impugnado ha caducado o se ha renunciado a él en la fecha de presentación de la solicitud o con anterioridad, la Oficina invitará al solicitante a presentar pruebas, en un plazo de dos meses, que demuestren que tiene interés legal en la declaración de nulidad. En caso de que el solicitante haga caso omiso de la petición, la solicitud será denegada por considerarse inadmisible (artículo 30, apartado 1, del REDC) (resolución de 16/07/2011 de la División de Anulación [ICD 8231]).
Por ejemplo, el interés legal quedará demostrado cuando el solicitante demuestre que el titular del dibujo o modelo comunitario impugnado ha tomado medidas orientadas a aducir contra él derechos otorgados por dicho dibujo o modelo.
Si el dibujo o modelo comunitario impugnado ha caducado o se ha renunciado a él en el transcurso del procedimiento de nulidad, se pedirá al solicitante que confirme si mantiene su solicitud en un plazo de dos meses y, en su caso, que presente los motivos que avalan su petición de obtener una resolución sobre el fondo del asunto.
3.9 Declaración de motivos, hechos, pruebas y alegaciones
La solicitud deberá incluir una indicación de los motivos en que se basa la solicitud (artículo 52, apartado 2, del RDC; artículo 28, apartado 1, letras b) e i), del REDC) junto con una declaración de motivos que indique los hechos, pruebas y alegaciones que apoyen dichos motivos (artículo 28, apartado 1, letra b), inciso vi), del REDC).
3.9.1 Declaración de motivos
En el caso de que el solicitante utilice el formulario de la Oficina (artículo 68, apartado 1, letra f), del REDC) la indicación de los motivos en que se funda se efectuará seleccionando una o varias de las casillas en el campo «Motivos». La División de Anulación examinará la solicitud a la luz de todos los motivos indicados en la declaración, incluso si no se hubieran seleccionado las correspondientes casillas del formulario utilizado para presentar la acción.
Si el solicitante no utiliza el formulario de la Oficina, bastará con especificar el punto pertinente del artículo 25, apartado 1, del RDC, indicando por ejemplo «motivo del
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artículo 25, apartado 1, letra a), del RDC», para determinar la admisibilidad de la solicitud en lo que se refiere a la declaración de motivos.
Cuando la solicitud no permita identificar inequívocamente el motivo o motivos en los que se basa, la Oficina invitará al solicitante a facilitar más información en este sentido en un plazo de dos meses. Si el solicitante no cumpliera dicha invitación, la solicitud será denegada por considerarse inadmisible (artículo 30, apartado 1, del REDC).
Las causas de nulidad distintas de las específicamente invocadas en la solicitud se considerarán inadmisibles cuando se presenten con posterioridad ante la División de Anulación.
La Oficina recomienda encarecidamente que todas las causas de nulidad sean indicadas en una única solicitud. En caso de que se hayan presentado solicitudes por separado contra el mismo dibujo o modelo comunitario impugnado basadas en distintas causas, la División de Anulación podrá tramitarlas en un solo bloque de procedimientos. Posteriormente, la División de Anulación podrá decidir no seguir tramitándolas de este modo (artículo 32, apartado 1, del REDC).
3.9.2 Hechos, pruebas y alegaciones
El solicitante deberá indicar los hechos, pruebas y alegaciones en apoyo del motivo o motivos en los que se basa la solicitud (artículo 28, apartado 1, letra b), inciso vi), del REDC).
Las alegaciones se indicarán en la correspondiente casilla del formulario de la Oficina (artículo 68, apartado 1, letra f), del REDC) o en una declaración de motivos adjunta a la solicitud.
Si el solicitante alegara que el dibujo o modelo comunitario impugnado carece de novedad o de carácter singular (artículo 25, apartado 1, letra b), del RDC), la solicitud deberá contener una reproducción del dibujo o modelo anterior que pudiera anular la novedad o el carácter singular del dibujo o modelo comunitario impugnado, así como los documentos que den fe de la divulgación previa de dicho dibujo o modelo anterior (artículo 7 del RDC; artículo 28, apartado 1, letra b), inciso v), del REDC).
Cuando el solicitante alegue que el titular carece de legitimación sobre el dibujo o modelo comunitario impugnado (artículo 25, apartado 1, letra c), del RDC), la solicitud deberá contener la información que demuestre que el solicitante tiene derecho al dibujo o modelo comunitario impugnado por resolución judicial (artículo 28, apartado 1, letra c), inciso iii), del REDC).
Si el solicitante aduce que el dibujo o modelo comunitario impugnado entra en conflicto con un dibujo o modelo anterior (artículo 25, apartado 1, letra d), del RDC), la solicitud deberá contener una representación y los datos que identifiquen el dibujo o modelo anterior. Asimismo, la solicitud deberá incluir las pruebas que demuestren que el solicitante es el titular del dibujo o modelo anterior como motivo de nulidad (artículo 28, apartado 1, letra b), inciso ii), del REDC).
Cuando el solicitante alegue que el dibujo o modelo comunitario impugnado vulnera un derecho anterior, en concreto, que hace un uso no autorizado de un signo distintivo (artículo 25, apartado 1, letra e), del RDC) o de una obra protegida en virtud de la normativa sobre derechos de autor de un Estado miembro (artículo 25, apartado 1, letra f),
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del RDC), la solicitud deberá contener una representación y los datos que identifiquen el signo distintivo o la obra protegida en virtud de la normativa sobre derechos de autor.
Asimismo, la solicitud deberá incluir las pruebas que demuestren que el solicitante es el titular del derecho anterior (artículo 28, apartado 1, letra b), inciso iii), del REDC). Cuando el derecho anterior esté registrado, se efectúa una distinción dependiendo de si el dibujo o modelo o la marca anteriores son DMC o una MC. Si el derecho anterior es un DMC o una MC, el solicitante no ha de presentar ningún documento. El examen de la justificación se llevará a cabo respecto a los datos contenidos en la base de datos de la Oficina. En todos los demás casos, el solicitante deberá aportar a la Oficina las pruebas de la presentación y el registro del dibujo o modelo anterior o del signo distintivo registrado. Se aceptarán los siguientes documentos para justificar la existencia de un dibujo o modelo anterior: (1) certificados expedidos por el órgano oficial pertinente; (2) extractos de bases de datos oficiales (véanse las Directrices, Parte C, Oposición, Sección 1, Asuntos de procedimiento, Capítulo 4.2.3.2, Extractos de bases de datos oficiales); (3) extractos de boletines oficiales de las oficinas nacionales de dibujos y modelos pertinentes y la OMPI.
Cuando el derecho anterior no esté registrado, dicho requisito se considerará satisfecho, a efectos del examen de la admisibilidad de la solicitud, cuando el solicitante presente pruebas de que el signo distintivo anterior o la obra protegida en virtud de la normativa sobre derechos de autor anterior ha sido utilizado o divulgado, según el caso, con el nombre del solicitante antes de la fecha de presentación o de la fecha de prioridad del dibujo o modelo comunitario (véanse infra los apartados 5.7.3 y 5.8.1 sobre la justificación de la titularidad del derecho anterior en que se basa, con arreglo al artículo 25, apartado 1, letras e) y f), del RDC).
Cuando el solicitante alegue que el dibujo o modelo comunitario impugnado hace un uso indebido de cualquiera de los objetos que figuran en el artículo 6 ter del Convenio de París o de distintivos, emblemas y blasones distintos de los incluidos en el mencionado artículo 6 ter y que tengan un interés público especial en un Estado miembro (artículo 25, apartado 1, letra g), del RDC), la solicitud deberá contener una representación y los datos del objeto en cuestión así como cualquier información que demuestre que la solicitud ha sido presentada por la persona física o jurídica afectada por el uso indebido (artículo 28, apartado 1, letra b), inciso iv), del REDC).
En caso de no facilitar las indicaciones conforme a lo requerido y en caso de que el solicitante no subsane la irregularidad en un plazo de dos meses desde que hubiera sido invitado a ello por la División de Anulación, la solicitud será denegada por considerarse inadmisible (artículo 30, apartado 1, del REDC).
En caso de que las pruebas facilitadas en apoyo de la solicitud no se presenten en la lengua del procedimiento, el solicitante deberá presentar, por propia iniciativa, una traducción a dicha lengua en un plazo de dos meses a partir de la fecha de presentación de las mismas (artículo 29, apartado 5, del REDC). Queda a criterio del solicitante determinar si ciertos elementos de los documentos justificativos podrán ser considerados irrelevantes para la solicitud y, por lo tanto, no deberán traducirse. En los casos en que no se presente una traducción, la División de Anulación desestimará los elementos textuales de la prueba que no hubieran sido traducidos y fundamentar su fallo únicamente en las pruebas de que disponga que hubieran sido traducidas a la lengua del procedimiento (artículo 31, apartado 2, del REDC).
Los documentos presentados como apoyo a una solicitud deberán incluirse en una lista dentro de una relación de anexos que se adjuntará a la propia solicitud. A modo de buena práctica, la relación de anexos deberá indicar, para cada documento adjunto, el número de
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anexo (anexo A.1, A.2…), una breve descripción del documento (p. ej., «carta») seguida de su fecha, el autor o autores y el número de páginas, la referencia de la página y el número de párrafo del escrito de alegación en que se menciona el documento y se describe su pertinencia.
Los documentos que se adjuntan al escrito de alegación deben indicar las páginas, a fin de garantizar que todas las páginas de los anexos han sido efectivamente escaneadas y se han comunicado a otras partes.
3.9.3 Admisibilidad respecto de una de las causas invocadas
Las solicitudes basadas en más de una causa de nulidad serán admisibles si se cumplen los requisitos de admisibilidad al menos para una de dichas causas.
3.10 Firma de la solicitud
La solicitud de declaración de nulidad deberá estar firmada por el solicitante o por su representante si dispone de él (artículo 65, apartado 1, del REDC).
Cuando falte la firma, la División de Anulación lo comunicará al solicitante y le pedirá que subsane este defecto en el plazo de dos meses. En el caso de que el solicitante no subsane la irregularidad, la solicitud será denegada por considerarse inadmisible (artículo 30, apartado 1, del REDC).
3.11 Medios de presentación
Las solicitudes de declaración de nulidad podrán remitirse a la Oficina por correo ordinario, servicio de reparto especial, en persona o por telefax/fax (artículo 65 del REDC). La presentación de solicitudes por medios electrónicos estará autorizada mediante decisión posterior del Presidente, una vez concretados los requisitos técnicos.
En el caso de que una comunicación recibida por fax sea incompleta o ilegible o de que la División de Anulación tenga dudas razonables sobre la precisión de la transmisión, informará en consecuencia al remitente y le invitará a que, en el plazo que establezca, vuelva a transmitir el original por telefax o a presentar el original. Cuando esta petición sea atendida dentro del plazo señalado, la fecha de recepción de la retransmisión o del original será considerada como la fecha de recepción de la comunicación original. Cuando esta petición no sea atendida dentro del plazo señalado, la comunicación se considerará no recibida (artículo 66, apartado 2, del REDC).
No se recomienda la transmisión por fax para presentar solicitudes de declaración de nulidad, en particular cuando se alegue falta de novedad y/o de carácter singular, ya que la reproducción necesaria del/de los dibujos o modelos anteriores puede verse distorsionada por la transmisión de fax y se perdería la información sobre el color.
Cuando una solicitud se transmita por fax, la Oficina recomienda que el solicitante presente dos ejemplares del original en el plazo de un mes desde la fecha de transmisión del fax y la División de Anulación transmitirá uno de los ejemplares al titular. Si el solicitante no presentase los documentos originales después de la transmisión del fax, la División de Anulación resolverá a partir los documentos de que disponga.
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El solicitante tiene la responsabilidad de garantizar que las características de los dibujos o modelos u otros derechos anteriores, tal como aparecen en el fax recibido por la División de Anulación, son lo suficientemente visibles e identificables como para permitir que la División de Anulación adopte una decisión. Se denegará una solicitud por infundada si las pruebas transmitidas por fax de los conocimientos técnicos anteriores, o de derechos anteriores, a pesar de que no son totalmente ilegibles, carecen de la calidad suficiente que permita discernir todos los detalles para compararlos con el dibujo o modelo impugnado (resolución de 10/03/2008, R 586/2007-3 – «Barbacoas», apartados 23 a 26).
3.12 Pago de la tasa
La solicitud de declaración de nulidad no se considerará presentada hasta que no se hayan abonado en su totalidad las tasas (artículo 52, apartado 2, del RDC; artículo 28, apartado 2 y artículo 30, apartado 2, del REDC).
Los métodos de pago son mediante transferencia a una cuenta bancaria de la Oficina (artículo 5, apartado 1, del RTDC) o para los titulares de cuentas corrientes, mediante la cuenta corriente. En caso de pago mediante cuenta corriente, las tasas se imputarán automáticamente en la cuenta corriente del solicitante al recibir la solicitud. La fecha de referencia para el pago será la fecha en que el importe se haga realmente efectivo en la cuenta bancaria de la Oficina (artículo 7, apartado 1, del RTDC).
Véanse para más información las Directrices, Parte A, Normas generales, Sección 3, Pago de tasas, gastos y costas.
El pago no podrá ser efectuado mediante cheque.
Cuando la División de Anulación considere que no se han abonado las tasas, lo notificará al solicitante y le invitará a abonarlas en un plazo de dos meses a partir de la recepción de la notificación. Si el solicitante no da curso a la petición de la Oficina, la solicitud se considerará no presentada y se informará de ello al solicitante. En caso de que la tasa exigida se abone después de la expiración del plazo establecido, se devolverá al solicitante (artículo 30, apartado 2, del REDC).
La fecha de pago de la tasa determina la fecha de presentación de la solicitud de declaración de nulidad (artículo 52, apartado 2, del RDC; artículo 30, apartado 2, del REDC).
3.13 Subsanación de irregularidades
En el caso de que la División de Anulación considere que la solicitud es inadmisible y la irregularidad no se subsane en el plazo indicado, la División de Anulación adoptará una resolución por la que se rechazará la solicitud (artículo 30, apartado 1, del REDC). La tasa no será reembolsada.
3.14 Comunicación al titular
La comunicación de una solicitud de declaración de nulidad a un titular de un DMC sólo tiene lugar después de admitida la solicitud (artículo 31, apartado 1, del REDC). La comunicación como tal constituye una decisión respecto a la admisibilidad, en lugar de una
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simple medida de organización del procedimiento. Dicha resolución podrá recurrirse junto con la resolución final (artículo 55, apartado 2, del RDC).
La resolución sobre la admisibilidad podrá, no obstante, ser retirada, con arreglo a los principios generales del Derecho administrativo y procesal, si las irregularidades son detectadas de oficio por la Oficina, en un plazo razonable, o a instancia del titular del DMC en sus primeras observaciones (artículo 31, apartado 1, del REDC), y si el solicitante de la nulidad no procede a subsanar dichas irregularidades en el plazo establecido por la Oficina (artículo 30 del REDC) (véase el artículo 68 del RDC y, por analogía, la sentencia de 18/10/2012, C-402/11 P, «REDTUBE / REDTUBE», apartado 59).
En el caso de que la División de Anulación considere que la solicitud es admisible, se lo comunicará al titular y le instará a que presente sus observaciones al respecto en un plazo de dos meses (véase infra el apartado 4.1.1 Observaciones del titular).
3.15 Intervención del supuesto infractor
Mientras la Oficina no haya dictado resolución final, podrá intervenir como parte en el procedimiento de nulidad que se base en el dibujo o modelo comunitario impugnado cualquier tercero que demuestre que se ha iniciado en contra suya un procedimiento de infracción del mismo dibujo o modelo comunitario registrado (artículo 54 del RDC; artículo 33 del REDC).
El presunto infractor deberá comunicar su intervención en los tres meses posteriores a la fecha en que se hubiera iniciado el procedimiento por infracción. Salvo si el titular presenta prueba en contrario de que debe tenerse en cuenta otra fecha, con arreglo al Derecho nacional de que se trate, la División de Anulación asumirá que el procedimiento se «incoa» en la fecha de notificación de la acción al supuesto infractor. El supuesto infractor deberá presentar pruebas relativas a la fecha de notificación de la acción.
También podrá intervenir como parte en el procedimiento de nulidad cualquier tercero que demuestre que (i) el titular del derecho sobre el dibujo o modelo ha solicitado que cese en su supuesta infracción de dicho derecho y que (ii) haya iniciado un procedimiento para obtener una declaración judicial de que no está infringiendo el derecho sobre el dibujo o modelo comunitario (si el Derecho nacional permite las acciones de declaración de inexistencia de infracción con relación a dibujos y modelos comunitarios) (artículo 54 y artículo 81, letra b), del RDC).
La solicitud se presentará por escrito en una declaración de motivos y no se tendrá por presentada hasta que no se haya abonado la tasa de nulidad. Las normas explicadas anteriormente en los apartados 3.1 a 3.13 serán aplicables al supuesto infractor (artículo 54, apartado 2, del RDC; artículo 33, del REDC).
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4 Fase contradictoria del procedimiento
4.1 Intercambio de comunicaciones
4.1.1 Observaciones por parte del titular
4.1.1.1 Aspectos generales
Las observaciones presentadas por el titular serán comunicadas sin dilación al solicitante (artículo 31, apartado 3, del REDC).
Los documentos de apoyo de las observaciones deberán incluirse en una lista dentro de una relación de anexos (véase supra el apartado 3.1.9.2).
El titular deberá presentar sus observaciones (con todos los documentos justificativos) por duplicado, de forma que un ejemplar se conserve en el archivo de la Oficina y otro pueda ser enviado al solicitante, para no incurrir en pérdida de calidad debido al copiado de originales por parte de la Oficina. Si las observaciones se presentasen en un solo ejemplar, la División de Anulación podrá requerir al solicitante que presente un segundo ejemplar en el plazo de un mes, o de dos meses si el solicitante no tiene su sede principal o un establecimiento en la Unión Europea (artículo 57, apartado 1, del REDC).
Si el titular no presentase sus observaciones en el plazo de dos meses, la División de Anulación notificará a las partes la conclusión de la parte escrita del procedimiento y que adoptará una resolución sobre el fondo con arreglo a las pruebas de que disponga (artículo 31, apartado 2, del REDC).
4.1.1.2 Solicitud de prueba del uso de una marca anterior
El titular podrá presentar una solicitud de prueba del uso de una marca anterior durante un periodo de cinco años antes de la fecha de la solicitud de declaración de nulidad, si se cumplen las siguientes condiciones acumulativas:
la solicitud está basada en el artículo 25, apartado 1, letra e), del RDC;
el signo distintivo anterior es una marca que surta efectos en la Unión Europea que, en la fecha de solicitud de la declaración de nulidad, esté registrada por un periodo de al menos cinco años;
la solicitud de prueba del uso se presenta junto con la primera presentación del titular en respuesta de la solicitud (sentencia de 12/05/2010, T-148/08, «Instrumento para escribir», apartados 66 a 72; sentencia de 27/06/2013, T-608/11, «Instrumento para escribir II», apartado 87. Véase asimismo la .resolución de 15/11/2013, R 1386/2012- 3, «Cinturones», apartado 21).
«La fecha en que se haya concluido el procedimiento de registro» (artículo 10, apartado 1, de la Directiva 2008/95/CE) que sirve para calcular el punto de partida de la obligación de uso para el registro nacional e internacional, la determina cada Estado miembro en función de sus propias normas de procedimiento (sentencia de 14/06/2007, C-246/05, «Le Chef DE CUISINE», apartados 26 a 28). Por lo que a las marcas comunitarias se refiere, la fecha es la fecha de registro (artículo 15, apartado 1, del Reglamento (CE) nº 207/2009 del Consejo, de 26 de febrero de 2009, sobre la marca comunitaria, en adelante, «RMC»), tal como se publica en el Boletín de marcas comunitarias (regla 23, apartado 5 del
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Reglamento 2868/95 de la Comisión, por el que se establecen normas de ejecución del RMC, en adelante, «REMC». Respecto de los registros internacionales que designan a la Unión Europea, la fecha pertinente es la de la segunda publicación, con arreglo al artículo 152, apartado 2 y al artículo 160, del REMC.
4.1.2 Traducción de las observaciones del titular
Cuando la lengua de procedimiento no sea la utilizada en la presentación del dibujo o modelo comunitario impugnado, el titular podrá presentar sus observaciones en la lengua de la presentación (artículo 98, apartado 4, del RDC; artículo 29, apartado 2, del REDC). La División de Anulación se encargará de hacer traducir dichas observaciones a la lengua de procedimiento, de forma gratuita, y hará llegar la traducción sin dilación al solicitante.
4.1.3 Alcance de defensa
Las observaciones del titular deberán incluir una indicación del alcance de defensa del dibujo o modelo comunitario impugnado. En aquellos casos en que el titular no ofrezca dicha indicación, se asumirá que reivindica el mantenimiento del dibujo o modelo comunitario en la forma en que se registró originariamente, es decir en su totalidad.
Cuando el titular solicite que se mantenga el dibujo o modelo comunitario en forma modificada, su solicitud deberá incluir la forma modificada. La forma modificada deberá cumplir los requisitos de protección y el dibujo o modelo comunitaria deberá mantener su identidad. El mantenimiento en forma modificada podrá consistir en el registro acompañado de una renuncia parcial por parte del titular del dibujo o modelo comunitario registrado, o de la decisión por parte de la División de Anulación que declare la nulidad parcial del dibujo o modelo comunitario (artículo 25, apartado 6, del RDC) (véase el apartado 4.9).
La solicitud de mantenimiento del dibujo o modelo comunitario impugnado en forma modificada deberá presentarse durante el procedimiento de nulidad y antes de que expire el procedimiento escrito. Se concederá al solicitante la oportunidad de pronunciarse sobre si el dibujo o modelo comunitario en su forma modificada cumple los requisitos de protección y sobre si mantiene su identidad comunitaria. La decisión de mantener el dibujo o modelo comunitario en forma modificada se incluirá en la resolución sobre el fondo que finaliza el procedimiento de nulidad.
4.1.4 Respuesta por parte del solicitante
4.1.4.1 Aspectos generales
Si las presentaciones de las partes permiten que la División de Anulación base su decisión en las pruebas de que disponga, la División notificará a las partes que ha concluido la fase escrita del procedimiento.
Sin embargo, el titular podrá responder a las observaciones del titular en el plazo de dos meses (artículo 53, apartado 2 del RDC; artículo 31, apartado 3, del REDC) en las siguientes circunstancias:
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cuando las observaciones del titular contengan nuevos hechos, pruebas o alegaciones que sean pertinentes en principio para adoptar una resolución sobre el fondo; o
cuando el titular solicite que se mantenga el dibujo o modelo comunitario en forma modificada; o
cuando el titular haya solicitado prueba del uso de la marca anterior basándose en el artículo 25, apartado 1, letra e), del RDC.
Se comunicará al titular cualquier respuesta del solicitante (artículo 31, apartado 4, del REDC). Si la respuesta del solicitante se considera admisible, se invitará al titular a presentar una réplica (artículo 53, apartado 2, del RDC).
Si el solicitante no presentase su respuesta en el plazo establecido, la División de Anulación notificará a las partes el cierre de la parte escrita del procedimiento y que adoptará una resolución sobre el fondo con arreglo a las pruebas de que disponga (artículo 31, apartado 2, del REDC).
En la solicitud deberá definirse el objeto del procedimiento (véanse supra los apartados 2.1.9.1 y 2.1.9.2). No se admite la dependencia en otros dibujos o modelos y/o derechos anteriores cuando se presenten en una fase procesal tardía de respuesta, si el efecto es alterar el objeto del procedimiento (resolución de 22/10/2009, R 690/2007-3 – «Chaff cutters», apartados 44 y siguientes). La admisibilidad de hechos, pruebas y alegaciones adicionales relacionadas con los dibujos o modelos y/o derechos anteriores ya mencionados en la solicitud está sujeta al margen de apreciación conferido a la División de Anulación con arreglo al artículo 63, apartado 2, del RDC (véase supra el apartado 2.4).
El solicitante deberá presentar su respuesta por duplicado de forma que un ejemplar se conserve en el archivo de la Oficina y el otro pueda ser enviado al titular, para no incurrir en pérdida de calidad debido al fotocopiado. Si la respuesta se presentase en un solo ejemplar, la División de Anulación podrá requerir al solicitante que presente un segundo ejemplar en un plazo de un mes, o de dos meses si el solicitante no tiene su sede principal o un establecimiento en la Unión Europea (artículo 57, apartado 1, del REDC).
4.1.4.2 Traducción de la respuesta del solicitante
El solicitante deberá presentar su respuesta en la lengua de procedimiento. Cuando se invite al solicitante a responder y utilice para ello una lengua diferente de la lengua de procedimiento, deberá presentar a iniciativa propia una traducción de su respuesta en el plazo de un mes desde la fecha de presentación de la respuesta inicial (artículo 81, apartado 1, del REDC). La División de Anulación no transmitirá en este sentido al solicitante un recordatorio del deber que le incumbe. Cuando el solicitante presente la traducción dentro de tiempo, se dará traslado de la misma al titular. Cuando el solicitante presente la traducción fuera de plazo, su respuesta se entenderá por no presentada.
4.1.4.3 Presentación de la prueba del uso de una marca anterior
Cuando se le pida al titular que aporte pruebas del uso de su marca anterior, éste deberá presentar dichas pruebas (i) para los productos o servicios para los cuales está registrada y en los que se base la solicitud y (ii) y respecto de un periodo de cinco años antes de la fecha de la solicitud de declaración de nulidad, salvo si existen causas justificativas para la falta de uso, que deberán justificarse.
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La prueba del uso de una marca anterior debe cumplir todas las condiciones acumulativas impuestas por la regla 22, apartado 3, del REMC, esto es, las indicaciones sobre el lugar, tiempo, alcance y naturaleza del uso de la marca anterior respecto a los productos y servicios para los que esté registrada y en los que se base la solicitud.
Será admisible el empleo de una marca bajo una forma que difiera por elementos que no alteren el carácter distintivo de la marca en la forma en que ésta ha sido registrada (artículo 5, apartado C, inciso 2 del Convenio de París).
Si la lengua de los documentos presentados por el solicitante no es la lengua del procedimiento, la División de Anulación podrá solicitar que le sea facilitada una traducción en dicha lengua, en el plazo de un mes, o de dos meses si el solicitante no tiene su sede principal o un establecimiento en la Unión Europea (artículo 81, apartado 2 y artículo 57, apartado 1, del REDC).
A falta de prueba del uso efectivo de una marca anterior (salvo si existen causas justificativas de la falta de uso), o a falta de una traducción si así lo exige la División de Anulación, la solicitud de declaración de nulidad será denegada en la medida en que esté basada en el artículo 25, apartado 1, letra e), del RDC. Si la marca anterior sólo se hubiere utilizado para una parte de los productos o de los servicios para los cuales esté registrada, sólo se considerará registrada, a los fines del examen de la oposición, para esa parte de los productos o servicios (véase, por analogía, el artículo 57, apartados 2 y 3, del RMC).
Al examinar la prueba del uso, la División de Anulación aplicará los principios que se explican en las Directrices , Parte C, Oposición, Sección 6, Prueba del uso.
4.1.5 Finalización del intercambio de observaciones
Cuando las observaciones de las partes no contengan nuevos hechos, pruebas o alegaciones que sean, en principio, pertinentes para la resolución sobre el fondo, la División de Anulación informará a ambas partes de que el procedimiento escrito se ha cerrado y de que se va adoptar una resolución (artículo 53, apartado 2, del REDC).
Se considerarán inadmisibles los hechos, pruebas o alegaciones presentadas después de que se hubiera notificado a las partes que se ha cerrado la fase escrita del procedimiento, salvo en circunstancias excepcionales, p. ej., si la prueba no estaba disponible en una fase anterior o si el hecho ha aparecido durante el procedimiento (artículo 63, apartado 2, del RDC, véase supra el apartado 2.4).
4.1.6 Prórroga de los plazos y suspensión
4.1.6.1 Prórroga de los plazos
Las solicitudes deberán presentarse por cualquiera de las partes antes del vencimiento de los mismos (artículo 57, apartado 1, del REDC).
Por regla general, se concederá la primera solicitud de prórroga de un plazo. No se concederán automáticamente nuevas prórrogas. En particular, la División de Anulación podrá prorrogar los plazos con el consentimiento de las otras partes (artículo 57, apartado 2, del REDC).
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Deberá motivarse cualquier solicitud de prórroga ante la División de Anulación. La solicitud de prórroga debe indicar los motivos por los que las partes no pueden cumplir el plazo. Los obstáculos a los que se enfrentan los representantes de las partes no justifican una prórroga (véase por analogía el auto de 05/03/2009, C-90/08 P, «CORPO LIVRE/LIVRE», apartados 20 a 23).
La prórroga no podrá ser superior a seis meses (artículo 57, apartado 1, del REDC) y se informará a ambas partes sobre la misma.
4.1.6.2 Suspensión
A menos que hubiere razones especiales para proseguir la causa, la División de Anulación podrá suspender el procedimiento de oficio previa audiencia a las partes, cuando se haya comunicado a la División de Anulación que la validez del dibujo o modelo comunitario ya se hubiere impugnado ante un tribunal nacional competente por la vía de la reconvención y dicho tribunal no hubiere suspendido el procedimiento (artículo 91, apartado 2, del RDC).
La División de Anulación podrá suspender el procedimiento si así lo aconsejan las circunstancias, en particular:
cuando la solicitud de declaración de nulidad se base en un dibujo o modelo o marca anterior cuyo proceso de registro está pendiente, hasta que se adopte una decisión definitiva en dicho procedimiento (artículo 25, apartado 1, letras d) y e), del RDC);
cuando la solicitud de declaración de nulidad se base en un dibujo o modelo o marca anterior, cuya validez se impugna en un procedimiento administrativo o judicial hasta que se adopte una resolución definitiva en dicho procedimiento;
cuando la División de Anulación recibe una solicitud conjunta de suspensión firmada por ambas partes para alcanzar un acuerdo amistoso (artículo 31, apartado 5, del REDC);
cuando se hayan presentado varias solicitudes de declaración de nulidad referidas al mismo dibujo o modelo comunitario y un examen preliminar de una de las solicitudes muestre que el dibujo o modelo comunitario puede ser nulo. La División de Anulación tramitará dicha solicitud primero y suspenderá el resto de procedimientos de nulidad (artículo 32, apartado 2, del REDC).
La División de Anulación dispone de una amplia capacidad de apreciación a la hora de decidir si la suspensión es adecuada. La decisión relativa a la suspensión deberá tener en cuenta la ponderación entre los intereses de las partes respectivas, incluido el interés del solicitante de obtener una decisión en un período razonable (véase por analogía la sentencia de 16/05/2011, T-145/08, «Atlas», apartados 68 a 77).
La División de Anulación notificará a las partes la decisión por la que concede o deniega una suspensión. Si se concede una suspensión por un período determinado, la División de Anulación indicará en su comunicación la fecha de reanudación del procedimiento. El procedimiento se reanudará el día posterior a la fecha de la suspensión. Si la División de Anulación decide no otorgar la suspensión, se comunicarán los motivos de tal decisión, ya sea en la fecha de denegación de la suspensión, o en la resolución de finalización del procedimiento.
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Si se concede una suspensión por un período indeterminado, el procedimiento de nulidad se reanudará cuando las partes comuniquen a la División de Anulación que ha tenido lugar el incidente que justificaba la suspensión o que dicho incidente ha dejado de existir, según sea el caso. La comunicación de la División de Anulación indicará la fecha de reanudación del procedimiento o, de no señalarse dicha fecha, será el día posterior al de la comunicación.
Si en el momento de la suspensión se había iniciado un plazo, se concederá a la parte afectada un plazo de dos meses desde la fecha de reanudación del procedimiento para que presente sus observaciones.
Cuando la suspensión hubiera sido solicitada conjuntamente por las partes, el periodo será siempre de un año, con independencia del periodo que hubieran solicitado las partes. Cualquiera de las partes podrá poner fin a la suspensión («exclusión voluntaria»). Es irrelevante que la otra parte esté o no esté de acuerdo con esta solicitud.
Si una de las partes renuncia a la suspensión, la suspensión concluirá dos semanas después de que las partes hubieran sido informadas. El procedimiento se reanudará al día siguiente. Si en el momento de la suspensión se había iniciado un plazo, se concederá a la parte afectada un plazo de dos meses desde la fecha de reanudación del procedimiento para que presente sus observaciones.
4.1.7 Práctica de la prueba
Las partes podrán presentar pruebas en forma de documentos y demás medios de prueba, dictámenes periciales y audiencia de testigos, y/o declaraciones escritas bajo juramento o solemnes que produzcan efectos similares según la legislación del Estado en el que se efectúe la declaración (artículo 65, apartado 1, del RDC).
Cuando una parte presente pruebas en forma de declaraciones de testigos o de dictámenes periciales, la División de Anulación invitará a la parte a que aporte la declaración del testigo o el dictamen del experto por escrito, salvo si se considera urgente una audiencia (artículo 65 del RDC; artículos 43 y 46, del REDC).
4.1.8 Procedimiento oral
El procedimiento oral se celebrará a petición de la División de Anulación o de cualquiera de las partes (artículo 64 del RDC; artículo 38, apartado 1 y artículo 42, del REDC).
La División de Anulación estará investida de una amplia facultad discrecional respecto a la cuestión de si, cuando lo solicita una parte, es realmente necesario celebrar una audiencia. No se celebrará una audiencia cuando la División de Anulación disponga de toda la información necesaria de base para la parte dispositiva de la resolución sobre nulidad (resolución de 13/05/2008, R 135/2007-3,«macchine da gioco automatiche», apartado 14).
Cuando la División de Anulación hubiera resuelto celebrar un procedimiento oral y citar a las partes, el plazo de notificación no podrá ser inferior a un mes salvo si las partes acuerdan un plazo inferior.
Dado que la finalidad de todo procedimiento oral es aclarar todos los puntos restantes que deban solucionarse antes de adoptar una resolución sobre el fondo, conviene que la División de Anulación destaque en su citación aquellos puntos sobre los que, en su opinión,
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es preciso deliberar a fin de dictar resolución. En los casos en que la División de Anulación lo estime oportuno, y para facilitar la audiencia, podrá instar a las partes a presentar sus observaciones escritas o pruebas antes de la vista oral. El período establecido por la División de Anulación para recibir dichas observaciones tendrá en cuenta el hecho de que deben llegar a la División de Anulación dentro de un período razonable para que puedan ser presentadas al resto de partes.
Las partes podrán, asimismo, presentar pruebas que justifiquen sus alegaciones, por iniciativa propia. Sin embargo, si dichas pruebas se han presentado en una fase anterior del procedimiento, la División de Anulación será la única que pueda valorar la admisibilidad de dichos medios de prueba, respetando el principio de contradicción, en su caso.
El procedimiento oral, incluida la lectura del fallo, será público en los casos en los que el dibujo o modelo comunitario impugnado haya sido publicado salvo cuando la publicidad pudiera entrañar un perjuicio grave e injustificado, sobre todo para alguna de las partes del procedimiento. Se informará de ello a las partes en la citación.
Se remitirá copia del acta a las partes, en la que figurarán los datos fundamentales del procedimiento oral y de las declaraciones pertinentes de las partes (artículo 46 del REDC).
La División de Anulación aplicará los principios explicados en las Directrices , Parte A, Disposiciones generales, Sección 2, Principio general que deberá observarse en los procedimientos, Capítulo 5, Procedimiento oral.
4.2 Examen
4.2.1 Inicio del examen
La División de Anulación comienza el examen de la solicitud una vez que se informa a las partes de que se ha cerrado la fase escrita del procedimiento y de que no se podrán presentar ulteriores observaciones (artículo 53 del RDC).
4.2.2 Examen de las causas de nulidad
Las causas para declarar la nulidad de un dibujo o modelo comunitario guardan una relación exhaustiva con el artículo 25 del RDC. No se admitirán las solicitudes de declaración de nulidad basadas en causas distintas de las enumeradas en el RDC (p. ej., una reivindicación de que el titular estaba actuando de mala fe al solicitar el dibujo o modelo comunitario registrado) en lo que respecta a la causa implicada (sentencia de 18/03/2010, T-9/07, «Representación de un soporte promocional circular», apartados 30 a 31).
En la solicitud podrá invocarse más de una causa sin por ello incurrir en el pago de tasas adicionales. Cuando el solicitante utilice el formulario de la Oficina, deberá seleccionar la casilla correspondiente a la(s) causa(s) en las que se base la solicitud.
Cada causa deberá justificarse con sus propios hechos, pruebas y alegaciones.
El artículo 25, apartado 1, letra b), del RDC incluye varias causas, en concreto la causa de incumplimiento de los requisitos del artículo 4 del RDC (novedad, carácter singular y visibilidad de los componentes de productos complejos), las causas del artículo 8,
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apartados 1 y 2, del RDC (función técnica y dibujos y modelos de interconexiones), y la causa del artículo 9 del RDC (contrario al orden público o a las buenas costumbres).
En el caso de que se haya marcado la casilla «Causas» del formulario de solución que corresponda con el artículo 25, apartado 1, letra b), del RDC, la División de Anulación determinará en qué causa(s) específica(s) se basa el solicitante a partir de los hechos, pruebas y alegaciones mencionados en el escrito motivado y limitará el alcance del examen de la solicitud como corresponda (resolución de 17/04/2008, R 976/2007-3, «Radiadores de calefacción», apartado 26).
Las observaciones anteriores son aplicables a la casilla «Causas» del formulario de solicitud correspondiente al artículo 25, apartado 1, letras c), d), e), f) o g), del RDC.
La División de Anulación examinará la solicitud a la luz de todos los motivos indicados en el escrito motivado original, incluso si no fueron seleccionadas las correspondientes casillas del formulario. Por lo tanto, cuando el solicitante indica en el escrito motivado que el dibujo o modelo comunitario impugnado no «era novedoso», dicha indicación constituye una declaración válida de motivos incluso si no se ha marcado la casilla de «Causas» relativa a los requisitos de los artículos 4 a 9, del RDC (resolución de 02/08/2007, R 1456/06-3, «saucepan handles», apartado 10).
Si el solicitante impugna expresamente la novedad de un dibujo o modelo comunitario y facilita pruebas de una divulgación anterior, se supone que pretende una declaración de nulidad basada en la causa del artículo 25, apartado 1, letra b), del RDC junto con el artículo 4 del RDC. Por lo tanto, la División de Anulación examinará el carácter singular del dibujo o modelo comunitario impugnado (resolución de 22/11/2006, R 196/2006-3, « underwater motive device»).
Una vez que haya presentado la solicitud, el solicitante no podrá alegar nuevas causas de nulidad. El solicitante podrá presentar, en cambio, otra solicitud de declaración de nulidad basada en causas distintas.
Cuando la solicitud pueda estimarse sobre la base de una de las diversas causas indicadas por el solicitante, la División de Anulación no se pronunciará respecto del resto (resolución de 15/12/2004 – ICD 321). Si una solicitud puede estimarse basándose en la existencia de uno de los dibujos o modelos o derechos anteriores en los que se basa el solicitante, no se examinará el resto de dibujos o modelos o derechos anteriores (véase por analogía la sentencia de 16/09/2004, T-342/02, «MGM/M.G.M.» y el auto de 11/05/2006, T-194/05, «TELETECH INTERNATIONAL/TELETECH»).
SEGUIR 5 Las distintas causas de nulidad
5.1 No es un dibujo o modelo
Con arreglo al artículo 25, apartado 1, letra a), del RDC, un dibujo o modelo comunitario podrá declararse nulo si no se ajusta a la definición de la letra a) del artículo 3 del RDC. Tal será el caso si las perspectivas del dibujo o modelo comunitario no son coherentes y representan distintos productos (salvo en el caso de que formen un «conjunto de productos»; véase el artículo 3 del RDC y las Directrices, Sección 5, Requisitos adicionales relativos a la reproducción del dibujo o modelo, Capítulo 5.2.3, Conjuntos de artículos), o si la representación gráfica está compuesta por simples reproducciones de la naturaleza (paisajes, frutas, animales, etc.) que no son productos con arreglo al artículo 3, apartado 1, letra b), del RDC.
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5.1.1 Organismos vivos
Un dibujo o modelo que represente la apariencia de un organismo vivo en su estado natural, en principio, ha de rechazarse. Incluso si la forma en cuestión se desvía de la común del organismo vivo en cuestión, el dibujo o modelo deberá rechazarse si nada sugiere, prima facie, que la forma es el resultado de un proceso manual o industrial (véase la resolución por analogía de 18/02/2013, R 595/2012-3, «Groente en fruit», apartado 11).
Dibujo o modelo comunitario nº 1943283-0001 para «Groente en fruit» (Tercera Sala de Recurso, resolución de 18/02/2013, R 595/2012-3).
5.1.2 Ideas y métodos de uso
La legislación relativa a los dibujos y modelos confiere protección en relación con la apariencia de la totalidad o parte de un producto, pero no protege la idea subyacente de un dibujo (sentencia de 06/06/2013, T-68/11, «Esferas de reloj de pulsera», apartado 72). Tampoco protege un dibujo o modelo el método de uso o funcionamiento (sentencia de 21/11/2013, T-337/12, «Sacacorchos», apartado 52).
5.2 Falta de derechos
Con arreglo al artículo 25, apartado 1, letra c), del RDC, un dibujo o modelo comunitario podrá declararse nulo si, por resolución judicial, el titular del derecho carece de legitimación sobre el dibujo o modelo comunitario conforme a lo dispuesto en el artículo 14 del RDC.
Mediante la expresión «por resolución judicial» del artículo 25, apartado 1, letra c), del RDC se especifica con claridad que la División de Anulación no tiene competencia para determinar quién carece de derechos sobre un dibujo o modelo comunitario con arreglo a lo dispuesto en el artículo 14 del RDC. Dicha competencia pertenece al tribunal que es competente con arreglo al artículo 27, el artículo 79, apartados 1 y 4, del RDC, junto con el artículo 93 del RDC. A falta de resolución judicial, la División de Anulación no podrá declarar nulo el dibujo o modelo comunitario impugnado de conformidad con lo dispuesto en el artículo 25, apartado 1, letra c), del RDC (resolución de 11/02/2008, R 64/2007-3, «Altavoces», apartado 15).
El artículo 15, apartado 1, del RDC que aborda las reivindicaciones para ser reconocido como legítimo titular del dibujo o modelo comunitario tampoco resulta pertinente en relación con la causa del artículo 25, apartado 1, letra c), del RDC.
Dicha reivindicación se inscribe dentro de la categoría de «acciones sobre dibujos y modelos comunitarios distintas de las previstas en el artículo 81 del RDC» y, por lo tanto, compete a la jurisdicción de un tribunal nacional con arreglo al artículo 93, apartado 1, del RDC en lugar de ser competencia de la División de Anulación. Lo anterior queda
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confirmado por el texto del artículo 27, apartado 3, del REDC en que se hace referencia al hecho de que «se interponga una acción judicial» para dicha reivindicación.
5.3 Función técnica
El artículo 8, apartado 1, del RDC establece que «no podrá reconocerse un dibujo o modelo comunitario en las características de apariencia de un producto que estén dictadas exclusivamente por su función técnica».
5.3.1 Justificación
«El artículo 8, apartado 1, del RDC niega la protección a aquellas características de la apariencia de un producto que se escogieron exclusivamente con el fin de permitir que un producto cumpliera su función, en contraposición con aquellas características que fueron elegidas, al menos hasta cierto grado, con el fin de mejorar la apariencia visual del producto», tal como estableció la Tercera Sala de Recurso (resolución de 22/10/2009, R 690/2007-3, «Cosechadoras picadoras», apartados 35 y siguientes).
El hecho de que el artículo 8, apartado 1, del RDC deniegue la protección a una determinada característica de la apariencia de un producto no significa que todo el dibujo o modelo deba ser declarado nulo, con arreglo a lo dispuesto en el artículo 25, apartado 1, letra b), del RDC. El dibujo o modelo en su totalidad sólo será nulo si todas las características esenciales de la apariencia del producto de que se trate han sido dictadas por su función técnica (resolución de 29/04/2010, R 211/2008-3, «Equipo de distribución de fluidos», apartado 36).
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Dibujo o modelo comunitario nº 232996-0008 para «Equipo de distribución de fluidos» (Tercera Sala de Recurso, resolución de 29/04/2010, R 211/2008-3)
Dibujo extraído de la solicitud de patente europea anterior (EP 1 568 418 A2) respecto de un «método y sistema de apoyo y/o alineación de los componentes de un sistema de difusión de líquidos»
5.3.2 Examen
Para determinar si las características esenciales de la apariencia del producto en el que se incorporará el dibujo o modelo comunitario impugnado están dictadas únicamente por su función técnica, primero es necesario determinar cuál es la función técnica del producto. Hay que tener en cuenta la indicación que al mismo se refiere en la solicitud de registro del dibujo o modelo (artículo 36, apartado 2, del RDC) pero también, en su caso, el propio dibujo o modelo, en la medida en que precisa la naturaleza del producto, su destino o su función (véase por analogía la sentencia de 18/03/2010, T-9/07, «Representación de un soporte promocional circular», apartado 56).
Si el artículo 8, apartado 1, del RDC se aplica o no debe apreciarse de forma objetiva y no desde la percepción del usuario informado, quien puede tener un conocimiento limitado de las cuestiones técnicas.
La funcionalidad técnica de las características de un dibujo o modelo podrá valorarse, entre otros, teniendo en cuenta los documentos relativos a las patentes que describen los elementos funcionales de la forma de que se trate.
Según el caso, y en particular a la vista de su grado de dificultad, la División de Anulación podrá designar a un experto (artículo 65, apartado 3, del RDC y artículo 44, del REDC).
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La División de Anulación aplicará los principios explicados en las Directrices, Parte A, Disposiciones generales, Sección 2, Principio general que debe respetarse en los procedimientos, Capítulo 4.3. Designación de expertos.
5.3.3 Formas alternativas
El artículo 8, apartado 1, del RDC no exige que el único medio para lograr la función técnica del producto sea una determinada característica. El artículo 8, apartado 1, del RDC es aplicable en los casos en que la necesidad de lograr la función técnica del producto fuera el único factor pertinente para elegir la característica de que se trate (resolución de 22/10/2009, R 690/2007-3, «Cosechadoras picadoras», apartados 31 a 32); resolución de 10/06/2013, R 2466/2011-3, «Cuchillas», apartados 15 y 16).
El examen del artículo 8, apartado 1, del RDC debe realizarse analizando el dibujo o modelo comunitario y no los dibujos o modelos que estén compuestos por otras formas.
5.4 Dibujos y modelos de interconexiones
Las características de un dibujo o modelo comunitario están excluidas de la protección si es necesario que deban reproducirse en su forma y dimensiones exactas para permitir que el producto en que se incorpora o al que se aplica esté conectado mecánicamente o se coloque, alrededor o contra otro producto para que el producto pueda realizar su función. Si el artículo 8, apartado 2 del RDC se aplica a todas las características esenciales del dibujo o modelo comunitario, éste último deberá ser declarado nulo (resolución de 20/11/2007, ICD 2970).
La prueba de que puede formularse una objeción al dibujo o modelo comunitario sobre la base del artículo 8, apartado 2, del RDC recae en el solicitante. El solicitante deberá justificar la existencia del producto cuya forma y dimensiones dictan las del dibujo o modelo comunitario así como presentar hechos, pruebas y alegaciones que demuestren las funciones que realiza este producto y el dibujo o modelo comunitario de forma individual y/o conjunta.
Como excepción, el artículo 8, apartado 2, del RDC no será aplicable a los dibujos o modelos comunitarios que permitan el ensamble o la conexión múltiples de productos mutuamente intercambiables dentro de un sistema modular (artículo 8, apartado 3, del RDC). La prueba de que el dibujo o modelo comunitario sirve para dicha finalidad recae en el titular.
5.5 Falta de novedad y de carácter singular
5.5.1 Divulgación de un dibujo o modelo anterior
5.5.1.1 Principios generales
Impugnar la validez de un dibujo o modelo comunitario atendiendo a su falta de novedad o de carácter singular exige prueba del uso de que el dibujo o modelo anterior que es idéntico o que produce una impresión de conjunto similar se haya hecho público antes de la fecha de presentación de la solicitud de registro o, si se reivindica la prioridad, antes de la fecha de prioridad (artículos 5 y 6 del RDC).
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El público en cuestión está compuesto por los miembros de los círculos especializados del sector de que se trate, que operen en la Unión Europea (artículo 7, apartado 1, del RDC).
El término círculos especializados del sector de que se trate, en el sentido del artículo 7, apartado 1, del RDC no se limita a las personas que intervienen en la creación de dibujos o modelos y en el desarrollo o la manufactura de productos basados en tales dibujos o modelos en el sector en cuestión.
El artículo 7, apartado 1, del RDC no establece restricción alguna respecto a la naturaleza de la actividad de las personas físicas o jurídicas que puedan considerarse parte de los círculos especializados del sector de que se trate. En consecuencia, los comerciantes también pueden formar parte de los «círculos especializados» en el sentido del artículo 7, apartado 1, del RDC (véase, por analogía, la sentencia de 13/02/2014, C-479/12, «Gartenmöbel», apartado 27).
A efectos del artículo 7 del RDC, se entiende por «dibujo o modelo» la apariencia de la totalidad o de una parte de un producto, que se derive de las características especiales de, en particular, línea, configuración, color, forma, textura o material del producto en sí o de su ornamentación (artículo 3, letra a), del RDC). Es irrelevante si el «dibujo o modelo» anterior, con arreglo al artículo 3, letra a), del RDC, disfruta de protección jurídica (como dibujo o modelo, marca, obra con derechos de autor, modelo de utilidad o de otro tipo).
El solicitante deberá justificar la divulgación de un dibujo o modelo anterior.
Se presume que un dibujo o modelo ha sido hecho público en cualquier lugar del mundo y en cualquier momento, como resultado de la publicación con posterioridad a su registro o de algún otro modo, o si se ha expuesto, comercializado o divulgado de algún otro modo, a los fines de la aplicación de los artículos 5 y 6 del RDC (artículo 7, apartado 1, del RDC).
Sin embargo, los actos de divulgación de un dibujo o modelo anterior no serán tenidos en cuenta si el titular presenta hechos, pruebas y alegaciones convincentes que justifiquen la opinión de que estos hechos no han podido ser razonablemente conocidos en el tráfico comercial normal por los círculos especializados del sector de que se trate, que operen en la Unión Europea (artículo 7, apartado 1, del RDC; artículo 63, apartado 1, del RDC) (resolución de 22/03/2012, R 1482/2009-3, «Bloques aislantes», apartado 38).
En los apartados 5.5.1.7 a 5.5.1.8 se abordaran otras excepciones.
5.5.1.2 Publicaciones oficiales
La publicación de un dibujo o modelo anterior en el diario oficial de cualquier servicio central de la propiedad industrial del mundo se entiende como divulgación y dicha norma sólo estará afectada por la excepción si dicha publicación no ha podido ser razonablemente conocida en el sector de que se trate de la Unión Europea. Por lo tanto, una vez que el solicitante haya aportado la prueba de la publicación, se presume que la divulgación ha tenido lugar y que, considerando la globalización de los mercados, incumbe al titular aportar hechos, alegaciones o pruebas en contrario, en concreto de que la publicación del dibujo o modelo anterior no haya podido ser razonablemente conocida en los círculos especializados del sector, que operen en la Unión Europea (resolución de 27/10/2009, R 1267/2008-3, «Relojes», apartado 35 y siguientes; resolución de 07/07/008, R 1516/2007-3, «Latas», apartado 9).
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Las publicaciones en los diarios oficiales de marcas y patentes también podrían haber sido conocidas en el tráfico comercial normal por los círculos especializados del sector que operen en la Unión Europea. Por lo tanto, cuando se ha solicitado la apariencia de un producto y se ha publicado como marca, se considerará como divulgación de un «dibujo o modelo» a efectos del artículo 7 del RDC (sentencia de 16/12/2010, T-513/09, «Figura sentada», apartado 20). Lo mismo es aplicable cuando las representaciones incluidas en una solicitud de patente muestran la apariencia de un artículo industrial o artesanal (resolución de 22/03/2010, R 417/2009-3, «Cañas para beber», apartado 21). Sin embargo, la presencia de un documento conservado en una oficina de marcas y patentes, que se ha puesto a disposición del público sólo mediante una solicitud de consulta de los expedientes, no puede considerarse que ha sido conocido en el tráfico comercial normal por los círculos especializados del sector de que se trate y, por lo tanto, no demuestra la divulgación de un dibujo o modelo anterior con arreglo del artículo 7 del RDC (resolución de 22/03/2012, R 1482/2009-3, «Bloques aislantes», apartados 39, 43; resolución de 15/04/2013, R 442/2011-3, «Rodapiés», apartado 26).
Para justificar la divulgación, el certificado de registro debe especificar la fecha de publicación, con independencia de la fecha de presentación o la fecha de registro. La publicación en el Boletín Oficial de una oficina nacional de patentes deberá considerarse un acto de divulgación o puesta a disposición del público de conformidad con el artículo 7, apartado 1, del RDC (sentencia de 07/11/2013, T-666/11, «Gatto domestico», apartado 25). Que la publicación tenga lugar antes o después del registro es irrelevante (resolución de 15/04/2013, R 442/2011-3, «Rodapiés», apartado 24).
Por otra parte, bastará que la fecha de publicación pueda ser identificada mediante la indicación de un código INID («Identificación Numérica Internacionalmente acordada en materia de Datos (bibliográficos)» estandarizado por la norma ST.9 de la OMPI. Véase la resolución de la División de Anulación de 14/11/2006 (ICD 2061)).
5.5.1.3 Exposiciones y comercialización
La divulgación de un dibujo o modelo en una exposición internacional en cualquier lugar del mundo es un acontecimiento que puede ser conocido en el tráfico comercial normal por los círculos del sector de que se trate, que operan en la Unión Europea, salvo prueba en contrario (resolución de 26/03/2010, R 9/2008-3, «Calzado», apartados 73 a 82; resolución de 01/06/2012, R 1622/2010-3, «Lámparas», apartado 24). La cuestión de si los acontecimientos que tienen lugar fuera de la Unión Europea pueden ser conocidos razonablemente por las personas que forman parte de dichos círculos es una cuestión de hecho. La respuesta a la misma ha de ser evaluada por la OAMI con arreglo a las circunstancias específicas de cada caso concreto (sentencia de 13/02/2014, C-479/12, «Gartenmöbel», apartado 34).
La comercialización es otro ejemplo mencionado en el artículo 7, apartado 1, del RDC como medio de divulgación de un dibujo o modelo, con independencia de si dicho uso se ha producido fuera o dentro de la UE (resolución de 26/03/2010, R 9/2008-3, «Calzado», apartados 63 a 71).
La divulgación de un dibujo o modelo puede ser el resultado de una comercialización cuando no existe prueba en el expediente de que los productos en que está incorporado el dibujo o modelo anterior han sido efectivamente puestos en el mercado en Europa. Bastará que los productos hayan sido ofrecidos a la venta en los catálogos distribuidos (resolución de 22/10/2007, R 1401/2006-3, «Ornamentación», apartado 25) o importados de un país tercero a la Unión Europea (sentencia de 14/06/2011, T-68/10, «Reloj unido a
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una cinta», apartados 31 a 32) o que hayan sido objeto de un acto de compra entre dos operadores europeos (sentencia de 09/03/2012, T-450/08, «Botella», apartados 30 a 45).
Por lo que se refiere a la presentación de catálogos, el valor probatorio no depende en si estos se distribuyen al público general. Los catálogos que se ponen a disposición únicamente de profesionales también pueden ser medios de prueba válidos, teniendo en cuenta que el público relevante para evaluar la divulgación son los «círculos especializados del sector de que se trate» (artículo 7, apartado 1, del RDC).
El alcance de la distribución de los catálogos, o las circunstancias que rodean a la misma, pueden ser factores relevantes (sentencia de 13/02/2014, C-479/12, «pérgola», apartados 35 a 36). No obstante, en el contexto del artículo 7 del RDC, lo que importa es si los profesionales europeos en el sector de que se trate, considerados en conjunto, han tenido una oportunidad razonable de acceder al dibujo o modelo, independientemente del número real de profesionales que aprovechó la oportunidad y se enfrentó finalmente al dibujo o modelo divulgado.
La Oficina lleva a cabo una apreciación global de todos los documentos aportados por el solicitante de la anulación con el fin de determinar si la divulgación ha tenido lugar, incluida la tarea de establecer si un catálogo es auténtico y se ha divulgado en los círculos interesados.
Bastará que la divulgación tenga lugar en un momento en que pueda ser identificado con una certeza razonable antes de la fecha de presentación de la fecha de prioridad del dibujo o modelo comunitario impugnado incluso si se desconoce la fecha exacta de la divulgación (sentencia de 14/06/2011, T-68/10, «Reloj unido a una cinta», apartados 31 a 32).
5.5.1.4 Divulgaciones derivadas de Internet
Por norma general, las divulgaciones derivadas de Internet forman parte del estado de la técnica anterior. La información que se divulga en Internet o en las bases de datos en línea se considera a disposición del público desde la fecha en que se hubiere publicado. Las páginas web suelen incluir información muy relevante: es posible incluso que determinada información solo esté disponible en dichas páginas web de Internet. Ello incluye, por ejemplo, las publicaciones en línea de los registros de dibujos y modelos efectuados por los servicios de la propiedad industrial.
Internet, por su propia naturaleza, puede complicar la determinación de la fecha real en que se hubiese puesto la información a disposición del público. Por ejemplo, no todas las páginas web incluyen una referencia al momento en que hubiesen sido publicadas. Además, las páginas web se actualizan con facilidad, si bien la mayoría no ofrece ningún archivo del material mostrado anteriormente, ni de los registros de datos que permitan a los miembros del público establecer de manera precisa en qué momento se publicó cada dato.
En este contexto, la fecha de la divulgación en Internet se considerará fiable, en particular cuando:
la página web impone una indicación horaria en relación con el historial de modificaciones efectuadas sobre un archivo o una página web (por ejemplo, tal como está disponible en Wikipedia o se adjunta automáticamente al contenido, p. ej., en los mensajes en foros y en blogs); o
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los motores de búsqueda indican fechas de indexación en la página web (p. ej., del archivo caché de Google); o
las capturas de pantallas de la página web llevan una fecha determinada; o
la información relativa a las actualizaciones de una página web están disponibles en el servicio de archivo de Internet.
Ni la limitación del acceso a un círculo limitado de personas (p. ej., mediante la protección de una contraseña) ni la exigencia de pago del acceso (análogo a la compra de un libro o la suscripción a un diario) evitan que una página web forme parte del estado de la técnica. Bastará que la página web esté disponible sin ninguna obligación de confidencialidad y que se puedan cumplir razonablemente los requisitos de confidencialidad por parte de los profesionales europeos de los círculos de que se trate.
5.5.1.5 Declaraciones escritas bajo juramento o solemnes (declaraciones juradas)
Por norma general, las declaraciones juradas en sí mismas no son suficientes para demostrar un hecho tal como la divulgación de un dibujo o modelo anterior. Sin embargo, podrán corroborar y/o aclarar la exactitud de los documentos adicionales (resolución de 14/10/2009, R 316/2008-3, «Chimeneas», apartado 22. Véase por analogía la sentencia de 13/05/2009, T-183/08, «SCHUHPARK/SCHUHPARK», apartado 43.)
Para evaluar el valor probatorio de una declaración jurada, ha de tenerse en cuenta, ante todo, la verosimilitud de la información que contiene. Es necesario tener en cuenta, en especial, el origen del documento, las circunstancias de su elaboración, así como su destinatario, y preguntarse si, de acuerdo con su contenido, parece razonable y fidedigno (sentencia de 09/03/2012, T-450/08, «Botella», apartados 39 a 40).
Las declaraciones y demás pruebas documentales que proceden de las partes que tienen interés en que se declare la nulidad del dibujo o modelo comunitario gozan de un valor probatorio menor en comparación con los documentos que tienen un origen neutral (sentencia de 14/06/2011, T-68/10, «Reloj unido a una cinta», apartados 33 a 36).
La División de Anulación aplicará los principios que se explican en las Directrices, Parte C, Oposición, Sección 6, Prueba del uso, Capítulo 3.3.2.3, Declaraciones.
5.5.1.6 Divulgación insuficiente
La divulgación de un dibujo o modelo anterior es una cuestión preliminar a la de si dos dibujos o modelos producen la misma impresión general en el usuario informado si el dibujo o modelo anterior no se ha hecho público o si se ha publicado de manera no conforme con los requisitos del artículo 7, apartado 1, del RDC, lo cual será motivo suficiente para desestimar la solicitud en la medida en que se base en los artículos 5 y 6 del RDC (resolución de 10/03/2008, R 586/2007-3, «Barbacoas», apartados 22 y siguientes).
Ni el RDC ni el REDC establecen los elementos de prueba específicos que se exigen para determinar la divulgación. En el artículo 28, apartado 1, letra b), inciso (v), del REDC se dispone únicamente que deberán aportarse los documentos «justificantes de la existencia de esos dibujos y modelos anteriores». Del mismo modo, no existe disposición alguna respecto a cualesquiera formas obligatorias de prueba que deban presentarse. En el
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artículo 65 del RDC figura una lista de posibles medios de aportación de pruebas ante la Oficina, pero de su contenido se deduce claramente que tal lista no es exhaustiva («incluirá lo siguiente»). En consecuencia, las pruebas de una divulgación quedan a discreción del solicitante y, en principio, toda prueba capaz de demostrar la divulgación puede aceptarse.
La División de Anulación llevará a cabo una apreciación global de dichas pruebas, teniendo en cuenta todos los factores pertinentes del asunto en cuestión. La divulgación no puede demostrarse mediante probabilidades o presunciones, sino que debe basarse en elementos concretos y objetivos que acrediten una divulgación efectiva y suficiente del dibujo o modelo anterior (sentencia de 09/03/2012, T-450/08, «Botella», apartados 21 a 24).
Un examen global de los medios de prueba implica que deben evaluarse los unos a la luz de los otros. Aun cuando algunos medios de prueba no permitan demostrar por sí mismos la divulgación, podrán contribuir a conformar la prueba cuando se examinen conjuntamente con otros medios (sentencia de 09/03/2012, T-450/08, «Botella», apartados 25 y 30 a 45).
No se obliga a la División de Anulación que determine a través de presunciones y deducciones qué dibujos o modelos anteriores de entre los que están representados en las pruebas documentales del solicitante pueden ser pertinentes cuando el solicitante no proporciona más especificaciones al respecto (véase supra el apartado 3.1.9.2). Por lo tanto, no se tendrán en cuenta los dibujos o modelos anteriores distintos a los específicamente mencionados como estado de la técnica anterior por parte del solicitante (resolución de 04/10/2006 [ICD 2228]).
Si la representación de un dibujo o modelo anterior no lo representa de la forma adecuada, haciendo que no sea posible la comparación con el dibujo o modelo impugnado, esto no contará como divulgación a efectos del artículo 7, apartado 1, del RDC (resolución de 10/03/2008, «Barbacoas», R 586/2007-3, apartados 22 y siguientes).
Es posible que, en ciertas circunstancias, una divulgación ante una sola empresa pueda bastar para considerar que el dibujo o modelo puede haberse dado a conocer razonablemente en el curso normal de la actividad empresarial a los círculos especializados del sector de que se trate que operen en la Unión Europea (sentencia de 13/02/2014, C-479/12, «Gartenmöbel», apartados 35 y 36). Esta cuestión ha de ser evaluada por la OAMI en cada caso.
5.5.1.7 Divulgación a un tercero en condiciones tácitas o expresas de confidencialidad
No se considerará que el dibujo o modelo comunitario haya sido hecho público por haber sido divulgado a un tercero en condiciones tácitas o expresas de confidencialidad.
Por lo tanto, la divulgación de un dibujo o modelo a un tercero en el contexto de una negociación comercial no es eficaz si las partes en cuestión acuerdan que la información intercambiada debe seguir siendo secreta (resolución de 20/06/2005 [ICD 172] apartado 22).
La carga de la prueba correspondiente a los hechos que establecen la confidencialidad recae en el titular del dibujo o modelo comunitario impugnado.
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5.5.1.8 Divulgación durante el período de prioridad
Las solicitudes de dibujos o modelos comunitarios pueden reivindicar la prioridad de una o más solicitudes anteriores del mismo dibujo o modelo o modelo de utilidad en un Estado parte del Convenio de París, o del Acuerdo por el que se establece la Organización Mundial del Comercio (artículo 41 del RDC; artículo 8 del REDC). El derecho de prioridad es de seis meses a partir de la fecha de presentación de la primera solicitud.
El derecho de prioridad tendrá como efecto que la fecha de prioridad pase a considerarse la fecha de presentación de la solicitud de un dibujo o modelo comunitario registrado a efectos de los artículos 5, 6, 7, 22, de la letra d) del apartado 1 del artículo 27 y del apartado 1 del artículo 50, del RDC (artículo 43 del RDC).
Una reivindicación de prioridad relativa al «mismo dibujo o modelo o modelo de utilidad» exige que exista identidad con el correspondiente dibujo o modelo comunitario sin añadir ni suprimir características. En cambio, una reivindicación de prioridad será válida si el dibujo o modelo comunitario y la solicitud anterior respecto al derecho sobre un dibujo o modelo o a un modelo de utilidad sólo difieren en detalles irrelevantes.
Al examinar una solicitud de dibujo o modelo comunitario, la Oficina no comprueba si la solicitud afecta al «mismo dibujo o modelo o modelo de utilidad» cuya prioridad se reivindica.
La Oficina realizará el examen de una reivindicación de prioridad si el solicitante impugna su validez o si el titular impugna los efectos de la divulgación de un dibujo o modelo, a efectos de los artículos 5, 6 y 7 del RDC, cuando dicha divulgación tenga lugar durante el período de prioridad.
Cuando la validez de la reivindicación de prioridad sea determinante para el resultado de la solicitud, la Oficina podrá adoptar una postura sobre la validez de dicha reivindicación en la resolución sobre el fondo del asunto, o suspender el procedimiento de oficio para permitir que el titular subsane las posibles irregularidades dentro de un plazo determinado (artículo 45, apartado 2, letra d), del RDC; artículo 1, apartado 1, letra f), artículo 10, apartado 3, letra c) y apartados 7 y 8, del REDC).
El procedimiento de nulidad se reanudará una vez que se hayan subsanado las irregularidades o se haya adoptado una decisión definitiva sobre la pérdida del derecho de prioridad (artículo 46, apartados 1 y 4, del RDC) (véase supra el apartado 4.1.6.2 sobre la reanudación del procedimiento).
5.5.1.9 Período de gracia
El artículo 7, apartado 2, del RDC establece un «período de gracia» de doce meses anteriores a la fecha de presentación o de la fecha de prioridad del dibujo o modelo comunitario impugnado. La divulgación durante dicho período no se tendrá en consideración si ha sido llevada a cabo por el autor o su derechohabiente.
Por norma general, el titular del dibujo o modelo debe acreditar que es, o bien el autor del dibujo o modelo invocado como fundamento de dicha solicitud o bien el derechohabiente del autor, a falta de lo cual no será aplicable el artículo 7, apartado 2, del RDC (sentencia de 14/06/2011, T-68/10, «Reloj unido a una cinta», apartados 26 a 29).
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Sin embargo, los actos de divulgación realizados por un tercero como resultado de la información aportada o de la acción adoptada por el autor o su derechohabiente también están cubiertos por el artículo 7, apartado 2, del RDC. Esto puede ocurrir cuando un tercero ha hecho público un dibujo o modelo copiado de un dibujo o modelo que fue divulgado previamente dentro del período de gracia por el propio titular (resolución de 02/05/2011, R 658/2010-3, «Dispositivos de alumbrado», apartados 37 a 39).
La excepción que se menciona en el artículo 7, apartado 2, del RDC podrá aplicarse incluso si el dibujo o modelo divulgado anteriormente no es idéntico al dibujo o modelo comunitario impugnado, con arreglo al artículo 5 del RDC. Esto se debe a que el artículo 7, apartado 2, del RDC también establece la inmunidad contra la pérdida de carácter singular con arreglo al artículo 6 del RDC (resolución de 02/05/2011, R 658/2010-3, «Dispositivos de alumbrado», apartado 40).
El período de gracia también es aplicable cuando la divulgación de un dibujo o modelo es el resultado de un acto abusivo con respecto al autor o su derechohabiente (artículo 7, apartado 3, del RDC). Si la divulgación es resultado de un comportamiento fraudulento o deshonesto es algo que debe valorarse caso a caso, basándose en los hechos, alegaciones y pruebas presentados por las partes (resolución de 25/07/2009, R 0552/2008-3, «Reproductor/grabador de MP3», apartados 24 a 27).
5.5.2 Apreciación de la novedad y del carácter singular
El dibujo o modelo será protegido como dibujo o modelo comunitario si es nuevo y posee carácter singular (artículo 4, apartado 1 y artículos 5 y 6, del RDC). La novedad y el carácter singular de un dibujo o modelo comunitario deben examinarse en la fecha de presentación o, en su caso, en su fecha de prioridad, a la luz del correspondiente estado de la técnica, que está compuesto por los dibujos y modelos anteriores cuya divulgación, con arreglo al artículo 7 del RDC, ha justificado el solicitante (artículo 63 del RDC).
5.5.2.1 Principios comunes
Comparación general
El dibujo o modelo comunitario debe compararse de forma individual con cada uno de los dibujos o modelos anteriores invocados por el solicitante. La novedad y el carácter singular de un dibujo o modelo comunitario no puede frustrarse mediante la combinación de dibujos o modelos anteriores o de partes de dibujos o modelos anteriores (sentencia de 22/06/2010, T-153/08, «Equipo de comunicación», apartados 23 a 24).
Por lo tanto, puede protegerse como un dibujo o modelo comunitario la combinación de características ya divulgadas, siempre que en su conjunto, sea novedoso y tenga un carácter singular.
Como norma general, deben tenerse en cuenta todas las características del dibujo o modelo comunitario a la hora de examinar su novedad y carácter individual. Existen, sin embargo, una serie de excepciones a este principio general.
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Características dictadas por su función y características de interconexión
Las características que únicamente están dictadas por una función técnica y las características que hayan de ser necesariamente reproducidas en su forma y dimensiones exactas a fin de que el producto pueda ser conectado con otro producto no pueden contribuir a la novedad y el carácter singular de un dibujo o modelo comunitario. Por lo tanto, dichas características no deberán tenerse en cuenta a la hora de comparar un dibujo o modelo comunitario con el correspondiente estado de la técnica (artículo 8 del RDC, véase supra el apartado 5.3.1).
El requisito de visibilidad
No se tendrán en cuenta las características de un dibujo o modelo comunitario aplicado o incorporado a un «producto que constituya un componente de un producto complejo» que sean invisibles durante la utilización normal del producto complejo de que se trate (artículo 4, apartado 2, del RDC).
Por «producto complejo» se entiende un producto constituido por múltiples componentes reemplazables que permitan desmontar y volver a montar el producto (artículo 3, letra c), del RDC). Por ejemplo, el requisito de visibilidad no es aplicable a un dibujo o modelo comunitario que representa la apariencia de un contenedor de basura en su conjunto ya que los contenedores de basura pueden ser productos complejos como tales, pero no productos que constituyan un componente de un producto complejo (resolución de 23/06/2008 [ICD 4919]).
Se entenderá por «utilización normal» cualquier utilización efectuada por el usuario final, excluidos los trabajos de mantenimiento, conservación o reparación (artículo 4, apartado 3, del RDC). La utilización normal es el uso realizado de acuerdo con el fin para el que está destinado el producto complejo.
Por ejemplo, por motivos de seguridad, un conector eléctrico es un componente que normalmente está incorporado a una carcasa para que esté protegido de cualquier contacto con usuarios potenciales cuando está en funcionamiento, como un tren o vehículo eléctrico. El hecho de que dicho componente de un producto complejo pueda estar visible, en teoría, cuando se introduce en una carcasa transparente o cubierta constituye un criterio meramente hipotético y aleatorio que no debe ser considerado (resolución de 03/08/2009, R 1052/2008-3, «Contactores eléctricos», apartados 42 a 53).
Cuando ninguna de las características de un dibujo o modelo comunitario aplicado a un componente (p. ej., una junta tórica) sea visible durante la utilización normal del producto complejo (p. ej., un sistema de bomba de calor), dicho dibujo o modelo comunitario será declarado nulo en su conjunto (resoluciones de 10/09/2013, R 293/2012-3 y R 688/2012-3, «Inserts de intercambiadores de calor»).
Sin embargo, el artículo 4, apartado 2, del RDC no exige que un componente sea claramente visible en su totalidad en todo momento durante la utilización del producto complejo. Bastará que la totalidad del componente pueda verse en algún momento de un modo en que puedan apreciarse todas sus características esenciales (resolución de 22/10/2009, R 0690/2007-3, «Cosechadoras picadoras», apartado 21).
Cuando las características de un dibujo o modelo comunitario aplicadas a un componente (p. ej., un motor de combustión interna) sólo son parcialmente visibles durante la utilización normal del producto complejo (p. ej., un cortador de césped), la comparación con el
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correspondiente estado de la técnica anterior se limitará a las partes visibles. «Durante la utilización normal de un cortador de césped, éste se coloca en el suelo y el usuario se sitúa de pie detrás del mismo. De este modo, el usuario, colocado detrás del cortador ve el motor desde arriba y, por lo tanto, ve principalmente el lado superior del motor. De ahí se deduce que el lado superior del motor determina la impresión de conjunto producido por el motor» (sentencia de 09/09/2011, T-10/08, «Motor», apartados 20 a 22).
Características claramente reconocibles
Las características del dibujo o modelo comunitario que no sean claramente reconocibles en su representación gráfica no pueden contribuir a su novedad o a su carácter singular (Directiva 98/71/CE del Parlamento Europeo y del Consejo, de 13 de octubre de 1998, sobre la protección jurídica de los dibujos y modelos, considerando 11). De igual modo, las características del dibujo o modelo anterior que no tienen una calidad suficiente que permita discernir los detalles en la representación del dibujo o modelo anterior no pueden tenerse en cuenta a efectos de los artículos 5 y 6 del RDC (resolución de 10/03/2008, R 586/2007-3, «Barbacoas», apartados 23 a 26).
Las características de un dibujo o modelo anterior pueden complementarse con características adicionales que se hicieron públicas de distintas maneras, por ejemplo, por una parte, a través de la publicación de un registro y, por otra, mediante la presentación al público de un producto que incorpora el dibujo o modelo registrado en los catálogos. Sin embargo, estas representaciones deben hacer referencia a un mismo dibujo o modelo anterior (sentencia de 22/06/2010, T-153/08, «Equipo de comunicación», apartados 25 a 30).
Características no reivindicadas
Las características del dibujo o modelo comunitario que no se reivindiquen no se considerarán a efectos de la comparación de los dibujos o modelos. Esto es aplicable a las características de un dibujo o modelo comunitario representado por líneas punteadas, contornos o colores o que dejen claro de otro modo que se busca la protección respecto de dichas características (sentencia de 14/06/2011, T-68/10, «Reloj unido a una cinta», apartados 59 a 64).
Por el contrario, se tendrán en cuenta las características que no se reivindiquen de un dibujo o modelo registrado anterior a la hora de apreciar la novedad y el carácter singular de un dibujo o modelo comunitario impugnado. En el contexto de los artículos 5 y 6 del RDC, es irrelevante si el titular de un dibujo o modelo registrado anterior puede reivindicar la protección respecto de las características no reivindicadas, siempre que hayan sido divulgadas junto al dibujo o modelo anterior en su totalidad.
5.5.2.2 Novedad
Se considerará que un dibujo o modelo comunitario es nuevo si no se ha divulgado antes un dibujo o modelo idéntico con arreglo al artículo 7 del RDC. Se considerará que los dibujos y modelos son idénticos cuando sus características difieran tan sólo en detalles insignificantes (artículo 5, apartado 2, del RDC).
Existe identidad entre el dibujo o modelo comunitario y un dibujo o modelo anterior cuando este último divulga cada uno de los elementos que componen al primero. El marco de la
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comparación se limita a las características que componen el dibujo o modelo comunitario. Por lo tanto, es irrelevante si el dibujo o modelo anterior divulga otras características. Un dibujo o modelo comunitario no podrá ser nuevo si está incluido en un dibujo o modelo anterior más complejo (resolución de 25/10/2011, R 978/2010-3, «Parte de una compresa higiénica», apartados 20 a 21).
Sin embargo, las características adicionales o diferenciadoras del dibujo o modelo comunitario podrán ser relevantes para decidir si dicho dibujo o modelo es nuevo, salvo si dichos elementos son tan insignificantes que pueden pasar desapercibidos.
Un ejemplo de detalle insignificante es una leve variación del tono del patrón de color de los dibujos o modelos comparados (resolución de 28/07/2009, R 0921/2008-3, «Limas de uñas», apartado 25). Otro ejemplo es poner la marca del fabricante tan pequeña, en uno de los dibujos o diseños comparados, que no es percibida como una característica significativa (resolución de 08/11/2006, R 0216/2005-3, «Cafetera», apartados 23 a 26), como se muestra a continuación:
Dibujo o modelo impugnado nº 5269- 0001 (vista nº 2), por cortesía de
ISOGONA, S.L.
Dibujo o modelo anterior
5.5.2.3 Carácter singular
Se considerará que un dibujo o modelo posee carácter singular cuando la impresión general que produzca en los usuarios informados difiera de la impresión general producida por cualquier otro dibujo o modelo que haya sido hecho público antes del día de presentación de la solicitud de registro o, si se hubiere reivindicado prioridad, de la fecha de prioridad (artículo 6, apartado 1, del RDC).
La impresión diferente o similar producida en el usuario informado puede definirse como la ausencia o presencia de un «déjà vu» (véase, por analogía, la sentencia de 07/11/2013, T-666/11, «Gatto domestico», apartado 29).
Al determinar si un dibujo o modelo posee o no carácter singular, se tendrá en cuenta el grado de libertad del autor al desarrollarlo (artículo 6, apartado 2, del RDC).
El usuario informado
El estatus de «usuario» supone que la persona en cuestión utiliza el producto en el que el dibujo o modelo se encuentra incorporado, de conformidad con el fin para el que se concibió el mismo (sentencia de 22/06/2010, T-153/08, «Equipo de comunicaciones»,
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apartado 46; sentencia de 09/09/2011, T-10/08, «Motor de combustión interna», apartado 24; sentencia de 06/06/2013, T-68/11, «Esferas de relojes de pulsera», apartado 58).
El concepto de «usuario informado» parece quedar a mitad de camino entre el concepto de consumidor medio aplicable a los asuntos de marcas, que no ha de tener un conocimiento específico, y de experto del sector, quien es un experto con amplios conocimientos especializados. Sin ser diseñadores ni expertos técnicos (y, por tanto, sin conocer necesariamente qué aspectos del producto en cuestión vienen dictados por su función técnica, como se determina en la sentencia de 22/06/2010, T-153-08, «Equipo de comunicación», apartado 48), los usuarios informados conocen los diferentes dibujos o modelos existentes en el sector de que se trata, disponen de un determinado grado de conocimiento sobre los elementos que normalmente contienen esos dibujos o modelos y, debido a su interés por los productos de que se trata, prestan un grado de atención relativamente elevado al utilizarlos (sentencia de 20/10/2011, C-281/10 P, «Representación de un soporte promocional circular», apartados 53 y 59; sentencia de 22/06/2010, T-153/08, «Equipo de comunicaciones», apartado 47; sentencia de 20/10/2011, C-281/10 P, «Metal rappers», apartado 59; sentencia de 06/06/2013, T-68/11, «Esferas de relojes de pulsera», apartado 59).
En otras palabras, el usuario informado no es ni un autor ni un experto técnico. Por lo tanto, los usuarios informados son personas que poseen algunos conocimientos de los dibujos o modelos existentes en el sector de que se trate, sin que sepan necesariamente cuáles son los aspectos del producto que responden a su función técnica.
El usuario informado no es ni el fabricante ni el vendedor de los productos en los que se prevé incorporar los dibujos o modelos de que se trate (sentencia de 09/09/2011, T-10/08, «Motor», apartados 25 a 27).
Sin embargo, en función de la naturaleza del producto en que se incorpora el dibujo o modelo comunitario (p. ej., soportes promocionales), el concepto de usuario informado podrá incluir, en primer lugar, a los profesionales que adquieren dichos productos para distribuirlos a los usuarios finales y, en segundo lugar, a los propios usuarios finales (sentencia de 20/10/2011, C-281/10 P, «Representación de un soporte promocional circular», apartado 54). El hecho de que uno de los dos grupos de usuarios informados antes mencionados perciba que los dibujos o modelos de que se trata producen la misma impresión general es suficiente para constatar que el dibujo o modelo controvertido carece de carácter singular (sentencia de 14/06/2011, T-68/10, «Reloj unido a una cinta», apartado 56).
Cuando la naturaleza del producto así lo permita, la impresión general producida por dichos dibujos o modelos se apreciará a partir de la premisa de que el usuario informado puede hacer una comparación directa entre ellos (sentencia de 18/10/2012, asuntos acumulados C-101/11 P y C-102/11 P, «Personaje sentado», apartados 54 y 55).
La impresión general
Salvo si los dibujos o modelos comparados incluyen características funcionales o invisibles o no reivindicadas (véase supra el apartado 5.5.2.1), los dos dibujos o modelos deberán compararse de forma general. Esto no significa, sin embargo, que debe darse la misma importancia a todas las características de los dibujos o modelos comparados.
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En primer lugar, el usuario informado utiliza el producto al que está incorporado el dibujo o modelo de conformidad con la finalidad a la que está destinado dicho producto. La importancia relativa que se da a las características de los dibujos o modelos comparados puede, por tanto, depender de cómo se utiliza el producto. En particular, el papel que desempeñan algunas características podrán ser menos importantes en función de su visibilidad reducida cuando el producto está en uso (sentencia de 22/06/2010, T-153/08, «Equipo de comunicación», apartados 64 a 66 y 72; sentencia de 21/11/2013, T-337/12, «Sacacorchos», apartados 45 y 46; sentencia de 04/02/2014, T-339/12, «Armchairs», apartado 30; sentencia de 04/02/2014, T-357/12, «Armchairs», apartado 57).
En segundo lugar, al apreciar la impresión general causada por los dos dibujos o modelos, el usuario informado dará menos importancia a las características que son totalmente banales y comunes a todos los ejemplos del tipo de producto de que se trate y se concentrarán en las características que son arbitrarias o que difieren de la norma (sentencia de 18/03/2010, T-9/07, «Representación de un soporte promocional circular», apartados 77; resolución de 28/11/2006, R 1310/2005-3, «Galletas», apartado 13; resolución de 30/07/2009, R 1734/2008-3, «Tenedores»", apartados 26 y siguientes).
En tercer lugar, las similitudes que afectan a las características respecto de las que el autor disfruta de un grado de libertad limitado tendrán poca entidad en la impresión general que producen dichos dibujos o modelos en el usuario informado (sentencia de 18/03/2010, T-9/07, «Representación de un soporte promocional circular», apartado 72).
Un ejemplo de lo anterior es el DMC nº 1512633-0001, en el cual se sostuvo que éste creaba una impresión general diferente a la que producía el dibujo o modelo anterior (DMC nº 52113-0001). El Tribunal General respaldó la resolución de la Sala de Recurso que consideró que, en un área en la que el grado de libertad del autor para desarrollar su diseño no tiene ninguna limitación técnica o jurídica, las características diferenciadoras de los dos dibujos o modelos, prevalecían sobre sus aspectos comunes. En concreto, el hecho de que el sillón del dibujo o modelo anterior tenga una forma rectangular en vez de cuadrada, que su asiento esté más bajo y que los brazos sean más anchos, fue decisivo para respaldar la conclusión de que el DMC impugnado tenía carácter singular (sentencia de 04/02/2014, T-339/12, «Armchairs», apartados 23-37).
De acuerdo con el TG, ha de tenerse en cuenta la diferencia entre los dibujos y modelos en cuestión en lo que atañe al ángulo del respaldo y el asiento del sillón representado en el dibujo impugnado, teniendo en cuenta que la impresión general producida en el usuario informado debe determinarse necesariamente a la luz del modo en que se utiliza el producto en cuestión. Dado que un asiento y un respaldo inclinados darán lugar a un nivel de comodidad diferente al procurado por un asiento y un respaldo rectos, el uso que se dará al sillón por un usuario prudente se verá afectado probablemente por tal diferencia (sentencia de 04/02/2014, T-339/12, «Armchairs», apartado 30).
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DMC impugnado nº 1512633-0001, por cortesía de Sachi Premium – Outdoor Furniture, Lda.
DMC anterior nº 52113-0001, por cortesía del Sr. Esteve Cambra (Diseñador: Sr. Jose Ramón Esteve Cambra)
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Por el contrario, la Sala de Recurso consideró que el DMC nº 1512633-0003 carecía de carácter singular con respecto al dibujo o modelo anterior. Sostuvo que las características diferenciadoras entre los dibujos o modelos, incluyendo la presencia de tres cojines en el DMC impugnado, se compensaban por sus características comunes (la forma rectangular, el respaldo y asiento plano, el asiento colocado por debajo de la mitad de la estructura de los sillones y sofás, etc.) (sentencia de 04/02/2014, T-357/12, «Sillones y sofás», apartados 44-60).
El TG confirmó el punto de vista adoptado por la Sala de Recurso (resolución de 27/04/2012, R 969/2011-3, «Sillones y sofás»), respecto a que los cojines son menos importantes que la estructura de los sillones al evaluar la impresión general causada por los dibujos o modelos, ya que los cojines no son elementos fijos y pueden separarse con facilidad del producto principal, y a menudo pueden venderse y adquirirse por separado, a un coste relativamente escaso en comparación con el de la estructura de un sillón. El usuario informado percibe los cojines como un mero accesorio opcional. Difícilmente pueden considerarse «una parte significativa del dibujo o modelo». En consecuencia, la impresión general producida por los dibujos o modelos en cuestión está dominada por la estructura de los sillones en sí, y no por los cojines, que pueden considerarse elementos secundarios (sentencia de 04/02/2014, T-357/12, «Sillones y sofás», apartados 37 y 38).
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DMC impugnada nº 1512633-0003, por cortesía de Sachi Premium – Outdoor Furniture, Lda.
DMC anterior nº 52113-0001, por cortesía del Sr. Esteve Cambra (Diseñador: Sr. Jose Ramón Esteve Cambra)
El grado de libertad del autor
El grado de libertad del autor depende de la naturaleza y de la finalidad del producto en que se incorporará el dibujo o modelo, así como del sector industrial al que pertenece dicho producto. La División de Anulación tendrá en cuenta la relación de los productos a los que vaya a incorporarse o aplicarse el dibujo o modelo (artículo 36, apartado 2, del RDC) pero también, en su caso, el propio dibujo o modelo, en la medida en que precisa la naturaleza del producto, su destino o su función (véase la sentencia de 18/03/2010, T-9/07, «Representación de un soporte promocional circular», apartado 56).
El grado de libertad del autor a la hora de desarrollar el dibujo o modelo se determina, entre otros, sobre la base de los imperativos vinculados a las características impuestas por la función técnica del producto, o de un elemento del producto, o de las prescripciones legales aplicables al producto. Tales imperativos llevan a una normalización de determinadas características que entonces pasan a ser comunes a los dibujos o modelos aplicados al producto de que se trate.
Cuanto mayor sea la libertad del autor en la elaboración del dibujo o modelo impugnado, menor será la probabilidad de que unas diferencias de escasa magnitud entre los dibujos o modelos en cuestión basten para producir una impresión general diferente en el usuario informado. Por el contrario, cuanto más restringida sea la libertad del autor en la elaboración del dibujo o modelo comunitario, más podrán bastar las diferencias de escasa magnitud entre los dibujos o modelos controvertidos para causar una impresión general en el usuario informado (sentencia de 18/03/2010, T-9/07, «Metal rappers», apartados 67 y 72). Por tanto, si el autor disfruta de un amplio grado de libertad en la elaboración de un
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dibujo o modelo, esto refuerza la conclusión de que los dibujos o modelos que carecen de diferencias significativas producen la misma impresión general en el usuario informado (sentencia de 09/09/2011, T-10/08, «Internal combustion engine», apartado 33).
El hecho de que la finalidad prevista de un producto determinado que exige la presencia de determinadas características puede no implicar un grado de libertad restringido del autor cuando las partes presenten pruebas de que existen posibilidades de variación en la posición de dichas características en la apariencia general del propio producto (sentencia de 14/06/2011, T-68/10, «Reloj unido a una cinta», apartado 69; sentencia de 06/10/2011, T-246/10, «Reductor mecánico de velocidad», apartados 21 a 22; sentencia de 09/09/2011, T-10/08, «Internal combustion engine», apartado 37).
El grado de libertad del autor no se ve afectado por el hecho de que coexistan en el mercado dibujos o modelos similares y formen una «tendencia general» o coexistan en los registros de las oficinas de la propiedad industrial (sentencia de 22/06/2010, T-153/08, «Equipo de comunicación», apartado 58; resolución de 01/06/2012, R 0089/2011-3, «Sacacorchos», apartado 27).
5.6 Conflicto con el derecho de un dibujo o modelo anterior
De conformidad con el artículo 25, apartado 1, letra d), del RDC, el dibujo o modelo comunitario sólo podrá declararse nulo si entra en conflicto con un dibujo o modelo anterior que haya sido hecho público después del día de presentación de la solicitud o, si se reivindica prioridad, después de la fecha de prioridad, y que esté protegido desde una fecha anterior a la mencionada:
1. por un dibujo o modelo comunitario registrado o por una solicitud de registro; o
2. por un dibujo o modelo registrado en uno o varios Estados miembros, o por una solicitud de registro; o
3. por un derecho de dibujo o modelo registrado en virtud del Acta de Ginebra del Arreglo de La Haya relativo al registro internacional de dibujos y modelos industriales, adoptada en Ginebra el 2 de julio de 1999, en adelante «el Acta de Ginebra», que fue aprobada por la Decisión 954/2006 del Consejo y que tenga efectos en la Comunidad, o por una solicitud de registro.
Debe interpretarse el artículo 25, apartado 1, letra d), del RDC en el sentido de que un dibujo o modelo comunitario entra en conflicto con un dibujo o modelo anterior cuando, habida cuenta de la libertad del autor en la elaboración de ese dibujo o modelo comunitario, tal dibujo o modelo no produce en el usuario informado una impresión general distinta de la producida por el dibujo o modelo anterior invocado (sentencia de 18/03/2010, T-9/07, «Representación de un soporte promocional circular», apartado 52).
Al tramitar una solicitud basada en el artículo 25, apartado 1, letra d), del RDC la División de Anulación aplicará, por tanto, la misma prueba que para la evaluación del carácter singular con arreglo al artículo 25, apartado 1, letra b), leído conjuntamente con el artículo 6 del RDC.
La División de Anulación presumirá que el dibujo o modelo anterior es válido salvo si el titular aporta pruebas de que una resolución definitiva ha declarado nulo el dibujo o modelo anterior antes de adoptar dicha resolución (véase por analogía la sentencia de 29/03/2011, C-96/09P, «BUD/bud», apartados 94 a 95) (véase supra el apartado 4.1.6.2, Suspensión).
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5.7 Uso de un signo distintivo anterior
El dibujo o modelo comunitario será declarado nulo si se utiliza un signo distintivo en un dibujo o modelo posterior, y el Derecho de la Unión o la legislación del Estado miembro de que se trate por la que se rige dicho signo confiere al titular del signo el derecho a prohibir tal uso (artículo 25, apartado 1, letra e), del RDC).
5.7.1 Signo distintivo
El concepto de «signo distintivo» abarca tanto a las marcas registradas como a los signos que pueden invocarse en el contexto del artículo 8, apartado 4, del RMC (véanse el Manual, Parte C, Oposición, Sección 4, «Artículo 8, apartado 4, del RMC», apartado 3.1, Tipos de derecho contemplados en el artículo 8, apartado 4, del RMC).
5.7.2 Uso en un dibujo o modelo posterior
El concepto de «uso en un dibujo o modelo posterior» no presupone necesariamente una reproducción completa y detallada del signo distintivo anterior en un dibujo o modelo comunitario posterior. Aunque determinados elementos del dibujo o modelo comunitario estuvieran ausentes en el signo distintivo anterior y se le hubieran añadido otros, podría tratarse de un «uso» de dicho signo, en particular cuando los elementos omitidos o añadidos son de importancia secundaria y no es probable que el público de referencia se percate de ello. Bastará que el dibujo o modelo comunitario y el signo distintivo anterior sean similares (sentencia de 12/05/2010, T-148/08, «Instruments for writing», apartados 50 a 52; resolución de 25/04/2013, T-55/12, «Aparato de limpieza», apartado 23; resolución de 09/08/2011, R 1838/2010-3 – «Instrumentos para escribir», apartado 43).
Cuando un dibujo o modelo comunitario incluya un signo distintivo sin ninguna renuncia, dejando claro que no se busca la protección respecto de dicha característica, se considerará que el dibujo o modelo comunitario utiliza el signo distintivo anterior incluso si este último se reproduce en solo una de las perspectivas (resolución de 18/09/2007, R 137/2007-3, «Recipientes», apartado 20).
5.7.3 Fundamentación de la solicitud de conformidad con el artículo 25, apartado 1, letra e), del RDC (signos distintivos anteriores)
Aparte de los elementos exigidos con arreglo al artículo 28 del REDC a efectos de la admisibilidad (véase supra el apartado 3.9.2), las solicitudes incluirán:
los datos que determinen el contenido de la legislación del Derecho nacional que el solicitante invoca en la solicitud, incluidos, en su caso, las resoluciones judiciales y/o los escritos de la doctrina (se aplicarán los principios establecidos en las Directrices, Parte C, Oposición, Sección 4, «Artículo 8, apartado 4, del RMC», apartado 4, Prueba y criterios aplicables a la prueba). Cuando una solicitud de nulidad se base en los derechos incluidos en una marca comunitaria anterior, la presentación de la legislación y de la jurisprudencia relativa a las marcas comunitarias no serán un requisito para acreditar dicho derecho anterior;
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cuando el signo distintivo anterior no está registrado, los datos que demuestren que los derechos se han adquirido en dicho signo distintivo no registrado de conformidad con la legislación invocada, como consecuencia de que se use o no, con anterioridad a la fecha de presentación o a la fecha de prioridad del dibujo o modelo comunitario (véase por analogía la sentencia de 18/01/2012, T-304/09, «BASmALI», apartado 22);
los datos que demuestren que el solicitante cumple los requisitos exigidos, de conformidad con la legislación nacional que solicita que se aplique, para que pueda prohibirse el uso de una marca comunitaria en virtud de un derecho anterior (véase por analogía la sentencia de 05/07/2011, C-263/09 P, «ELIO FIORUCCI», apartado 50).
El solicitante sólo deberá establecer que dispone de un derecho a prohibir el uso del dibujo o modelo comunitario posterior y que no puede ser obligado a demostrar que ese derecho ha sido utilizado, dicho de otro modo, que el solicitante ha sido capaz de prohibir dicho uso (véase por analogía la sentencia de 05/07/2011, C-263/09 P, «ELIO FIORUCCI», apartado 191).
5.7.4 Examen por parte de la División de Anulación
Cuando la disposición nacional invocada por el solicitante constituye la transposición de la correspondiente disposición de la Directiva 2008/95/CE, de 22 de octubre de 2008, relativa a la aproximación de las legislaciones de los Estados miembros en materia de marcas (versión codificada), dicha disposición se interpretará a la luz de la jurisprudencia relativa a la disposición de la Directiva (sentencia de 12/05/2010, T-148/08, «Instrumento para escribir», apartado 96).
Asimismo, cuando la disposición nacional invocada constituye la transposición del artículo 5, apartados 1 y 2 de la Directiva 2008/95/CE, la División de Anulación aplicará los principios establecidos en las Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, y Sección 5, Marcas renombradas, dado que dicha disposición es fundamentalmente idéntica al artículo 8, apartados 1 y 5, del RMC.
A efectos de aplicar dichas disposiciones, la División de Anulación presumirá que el público destinatario percibirá el dibujo o modelo comunitario impugnado como un signo que puede utilizar «para» o «en relación con» productos o servicios (sentencia de 12/05/2010, T-148/08, «Instruments for writing», apartado 107; sentencia de 25/04/2013, T-55/12, «Cleaning devices», apartados 39 y 42).
La División de Anulación presumirá asimismo que el signo distintivo anterior es válido salvo si el titular aporta pruebas de que una resolución definitiva ha declarado nulo dicho signo distintivo anterior antes de adoptar la resolución (resolución de 25/04/2013, T-55/12, «Cleaning devices», apartado 34) (véase supra el apartado 4.1.6.2, Suspensión).
Dado que los signos distintivos están protegidos respecto de determinados productos o servicios, la División de Anulación examinará respecto de qué productos está destinado a utilizarse el dibujo o modelo comunitario impugnado (sentencia de 12/05/2010, T-148/08, «Instrumento para escribir», apartado 108). A efectos de determinar si dichos productos y servicios son idénticos o similares, la División de Anulación tendrá en cuenta la relación de los productos a los que vaya a incorporarse o aplicarse el dibujo o modelo (artículo 36, apartado 2, del RDC) pero también, en su caso, el propio dibujo o modelo, en la medida en que precisa la naturaleza del producto, su destino o su función (sentencia de 18/03/2010,
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T-9/07, «Representación de un soporte promocional circular», apartado 56; resolución de 07/11/2011, R 1148/2010-3, «Envases», apartado 34-37). La apreciación de la similitud de los productos se llevará a cabo sobre la base de los principios definidos en las Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, Capítulo 2, Comparación de los productos y servicios.
Cuando se vaya a incorporar el dibujo o modelo comunitario en logotipos bidimensionales, la División de Anulación considerará que dichos logotipos podrán aplicarse a una gama ilimitada de productos y servicios para los cuales está protegido el signo distintivo anterior (resolución de 03/05/2007, R 609/2006-3, «logotipo MIDAS», apartado 27).
5.8 Uso no autorizado de una obra protegida en virtud de la normativa sobre derechos de autor de un Estado miembro
El dibujo o modelo comunitario será declarado nulo si constituye un uso no autorizado de una obra protegida en virtud de la normativa sobre derechos de autor de un Estado miembro.
5.8.1 Fundamentación de la solicitud de conformidad con el artículo 25, apartado 1, letra f), del RDC (derechos de autor anteriores)
Aparte de los elementos exigidos con arreglo al artículo 28 del REDC a efectos de la admisibilidad (véase supra el apartado 3.9.2), las solicitudes incluirán:
los datos que determinen el contenido del derecho de la legislación nacional en que el solicitante reivindica la solicitud incluso, en su caso, las resoluciones judiciales y/o escritos de la doctrina (véase por analogía la sentencia de 05/07/2011, C-263/09 P, «ELIO FIORUCCI», apartado 50; resolución de 11/02/2008, R 64/2007-3, «Altavoces», apartado 20);
los datos que demuestran que los derechos se han adquirido sobre la obra de conformidad con la legislación de derechos de autor invocada, en beneficio del autor o de sus derechohabientes, con anterioridad a la fecha de presentación o a la fecha de prioridad del dibujo o modelo comunitario (véase por analogía la sentencia de 18/01/2012, T-304/09, «BASmALI», apartado 22);
los datos que demuestren que el solicitante cumple los requisitos exigidos, de conformidad con la legislación nacional que solicita que se aplique, para que pueda prohibirse el uso de una marca comunitaria en virtud de un derecho anterior.
Un solicitante de anulación que se base en la infracción de un derecho de autor ha de probar su derecho a reclamar tal derecho de autor contra el DMC, así como la existencia y el alcance del derecho de autor con arreglo a la legislación nacional (resolución de 17/10/2013, R 951/2012-3, «Children´s chairs»).
5.8.2 Examen por parte de la División de Anulación
Dado que, según la legislación nacional invocada, la protección de los derechos de autor depende de la publicación o de la divulgación de la obra, la División de Anulación sólo declarará nulo un dibujo o modelo comunitario en virtud del artículo 25, apartado 1, letra f), del RDC en los casos más claros.
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En particular, no sería adecuado utilizar el artículo 25, apartado 1, letra f), del RDC cuando el argumento esencial del solicitante sea que el dibujo o modelo comunitario ha sido creado no por el titular registrado sino por el solicitante o un empleado de este último (resolución de 11/02/2008, R 64/2007-3, «Loudspeakers», apartado 20). El artículo 25, apartado 1, letra f), del RDC no puede utilizarse como medio para impedir la competencia exclusiva de los tribunales nacionales en relación con el derecho al dibujo o modelo comunitario (artículo 15 y artículo 25, apartado 1, letra c), del RDC).
El objeto del examen consiste en determinar si se ha producido un uso no autorizado de una obra protegida por la legislación sobre derechos de autor de un Estado miembro, y no establecer si el dibujo o modelo en cuestión posee carácter novedoso o singular en el sentido de los artículos 5 y 6 del RDC (véase por analogía la sentencia de 23/10/2013, T-566/11 y la sentencia T-67/11, «Vajilla», apartado 73).
5.9 Nulidad parcial
De conformidad con el artículo 25, apartado 6, del RDC, un dibujo o modelo comunitario registrado que haya sido declarado nulo con arreglo a las letras b), e), f) y g) del apartado 1 de dicho artículo podrá mantenerse en forma modificada, siempre que de esa forma cumpla los requisitos de protección y que el dibujo o modelo mantenga su identidad.
La solicitud de mantenimiento en forma modificada de un dibujo o modelo comunitario registrado debe realizarla el titular antes de que finalice el procedimiento escrito. La solicitud deberá incluir la forma modificada, que podrá consistir en una representación modificada del dibujo o modelo comunitario de la que se eliminan algunas características o se aclara mediante líneas punteadas, entre otros, o un contorno del que no se pretende la protección respecto de determinadas características. La representación modificada podrá comprender una renuncia parcial no superior a cien palabras (artículo 25, apartado 6 del RDC; artículo 18, apartado 2, del REDC).
Se concederá al solicitante la oportunidad de pronunciarse sobre si el dibujo o modelo comunitario en su forma modificada cumple los requisitos de protección y sobre si mantiene su identidad comunitaria (véase supra el apartado 4.1.4.1).
El dibujo o modelo comunitario deberá mantener su identidad, por lo que el mantenimiento en la forma modificada se limitará a los casos en que las características suprimidas o no reivindicadas no contribuyan a la novedad o al carácter singular del dibujo o modelo comunitario, en particular:
cuando el dibujo o modelo comunitario se incorpora a un producto que constituya un componente de un producto complejo y las características que se suprimen o que no se reivindican son invisibles durante la utilización normal del producto complejo (artículo 4, apartado 2, del RDC); o
cuando las características suprimidas o no reivindicadas están dictadas por su función o a efectos de interconexión (artículo 8, apartados 1 y 2, del RDC); o
cuando las características que se suprimen o no se reivindican son tan insignificantes en función de su tamaño e importancia que es probable que pasen desapercibidas para el usuario informado.
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La decisión de mantener el dibujo o modelo comunitario en forma modificada se incluirá en la resolución sobre el fondo que finaliza el procedimiento de nulidad.
5.10 Causas de nulidad que pueden ser aplicables simplemente a causa de la adhesión de un nuevo Estado miembro
Véanse las Directrices , Sección 13, Ampliación y el dibujo o modelo comunitario registrado.
6 Conclusión del procedimiento
6.1 Terminación del procedimiento sin resolución sobre el fondo
Se pondrá fin al procedimiento de nulidad sin una resolución sobre el fondo, en los siguientes casos:
1. el solicitante retira su solicitud como consecuencia de un acuerdo amistoso o por otro motivo;
2. el titular renuncia al dibujo o modelo comunitario en su totalidad y el solicitante no ha pedido a la Oficina que adopte una resolución sobre el fondo del asunto (artículo 24, apartado 2, del RDC; véase el apartado 3.8); o
3. el dibujo o modelo comunitario impugnado ha caducado y el solicitante no ha pedido a la Oficina que adopte una resolución sobre el fondo del asunto (artículo 24, apartado 2, del RDC; véase el apartado 3.8); o
4. la División de nulidad ha suspendido una serie de solicitudes de declaración de nulidad relativas al mismo dibujo o modelo comunitario registrado. Se considerarán resueltas las solicitudes que hubieran sido objeto de una resolución definitiva que declare la nulidad del dibujo o modelo comunitario (artículo 32, apartado 3, del REDC).
La División de Anulación informará a las partes de que se ha puesto fin al procedimiento sin una resolución sobre el fondo.
6.2 Resolución sobre costas
6.2.1 Casos en los que procede adoptar una resolución sobre las costas
Cuando se dicte una resolución sobre el fondo, la decisión sobre el reparto de costas se adoptará al final de la resolución (artículo 79, apartado 1, del REDC).
En el resto de casos en que la División de Anulación cierra el asunto sin una resolución sobre el fondo, se emitirá una resolución sobre costas separada a petición de cualquiera de las partes. En dicho caso, la División de Anulación comunicará a ambas partes cuando dicte una resolución sobre las costas, y las partes podrán formular alegaciones.
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6.2.2 Casos en los que no procede adoptar una resolución sobre las costas
6.2.2.1 Acuerdo sobre costas
Si las partes informan a la División de Anulación de que han finalizado el procedimiento de nulidad con un acuerdo que incluye las costas, la División de Anulación no emitirá una resolución sobre las costas (artículo 70, apartado 5, del RDC).
Si no se indica nada en cuanto a si las partes han llegado a un acuerdo sobre las costas, la División de Anulación adoptará una resolución sobre las mismas, junto con la confirmación de la retirada de la solicitud. Si las partes informan a la División de Anulación de que han alcanzado un acuerdo sobre las costas después de la retirada de la solicitud, la decisión previamente adoptada no será revisada. Sin embargo, quedará al arbitrio de las partes cumplir su acuerdo y no aplicar la decisión de la División de Anulación relativa a las costas.
6.2.2.2 Imposición de costas
La regla general es que la parte vencida, o la parte que ponga fin al procedimiento por renuncia al dibujo o modelo comunitario o que lo mantenga en su forma modificada, o que abandone la solicitud, sufragará las tasas abonadas por la otra parte y todos los gastos inherentes al procedimiento en que haya incurrido (artículo 70, apartados 1 y 3, del RDC).
Si ambas partes pierden parcialmente, se podrá decidir que las costas se «repartan de otro modo» (artículo 70, apartado 2, del RDC). Por regla general, parece equitativo que cada parte sufrague sus propias costas.
Una vez que una resolución en la que se declare la nulidad del dibujo o modelo comunitario adquiera carácter firme, se considerarán resueltas las solicitudes que hubieran sido objeto de suspensión. Los solicitantes cuyas solicitudes hayan sido consideradas resueltas sufragarán sus propias costas (artículo 70, apartado 4, del RDC). Además, la Oficina reembolsará el 50% de la tasa correspondiente a la solicitud de declaración de nulidad (artículo 32, apartado 4, del REDC).
6.2.2.3 Fijación de costas
Costas recuperables relativas a la representación y las tasas
Cuando las costas se refieran sólo a los gastos de representación y a la tasa de solicitud, la resolución por la que se fija la cuantía de las costas se incluirá en la resolución relativa al reparto de costas.
El importe que tiene derecho a reclamar la parte vencedora se menciona en el artículo 70, apartado 1, del RDC y en el artículo 79, apartados 6 y 7, del REDC.
Por lo que respecta a las tasas, la cantidad se limita al importe de 350 EUR de la tasa correspondiente a la solicitud de declaración de nulidad, en el caso de que el solicitante sea la parte vencedora en el procedimiento.
Por lo que respecta a los gastos de representación, el importe se limita a 400 EUR, tanto para el solicitante como para el titular, a condición de que éste esté representado en el procedimiento de nulidad por un representante autorizado en el sentido del artículo 77 del RDC. La parte vencedora que ya no esté representada por un representante autorizado en
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el momento en que se adopta la resolución tendrá derecho a que se dicte una resolución sobre las costas, con independencia de la fase del procedimiento en que haya cesado dicho representante. Esto se entiende sin perjuicio de la necesidad de designar a un representante autorizado cuando sea obligatorio. El importe que debe sufragar la parte vencida se fija siempre en euros, con independencia de la moneda en la que la parte vencedora tuviere que pagar a su representante.
No se recuperarán las costas del empleado, aun cuando éste pertenezca a otra empresa con vínculos económicos.
Otros gastos recuperables
Cuando las costas incluyen los gastos relativos a la vista oral o la práctica de la prueba, el registro de la División de Anulación fijará el importe de las costas que deban abonarse, a instancia de parte (artículo 70, apartado 6, del RDC). A la solicitud de fijación de costas deberá adjuntarse un pliego de costas con la correspondiente documentación acreditativa (artículo 79, apartado 3, del REDC).
Previa solicitud presentada en el plazo de un mes desde la fecha de notificación de la adjudicación de las costas, la División de Anulación podrá modificar dicho importe (artículo 70, apartado 6, del RDC; artículo 79, apartado 4, del REDC).
Fijación de costas tras devolver el asunto a la División de Anulación para que resuelva
Cuando la resolución de nulidad ha sido anulada, parcial o totalmente, y el asunto sea devuelto por las Salas de Recurso, la situación será la siguiente:
la primera resolución (objeto de recurso) recaída no es firme, ni siquiera en relación con el reparto o la fijación de las costas;
por lo que respecta a las costas del procedimiento de nulidad, deberá adoptarse una única resolución sobre el reparto y la fijación de las costas para el procedimiento de nulidad en su totalidad.
en relación con las costas del procedimiento de recurso, es necesario cerciorarse de si las Salas han dictado una resolución sobre las mismas. El concepto de «parte vencedora» debe aplicarse al resultado del procedimiento de recurso, a resultas de lo cual la resolución puede ser diferente en ambas instancias. El importe reembolsable de los gastos de representación para el procedimiento de recurso es de 500 EUR, importe que se aplica además de los gastos de representación para el procedimiento de nulidad.
6.3 Corrección de errores e inscripción en el Registro
En las resoluciones de la División de anulación, únicamente podrán rectificarse los errores lingüísticos, los errores de transcripción y las carencias manifiestas. La División de Anulación rectificará los errores de oficio o a petición de una parte interesada (artículo 39 del REDC).
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6.3.1 Corrección de errores
En las resoluciones de la División de Anulación, únicamente podrán rectificarse los errores lingüísticos, los errores de transcripción y las carencias manifiestas. La División de Anulación rectificará los errores de oficio o a petición de una parte interesada (artículo 39 del REDC).
6.3.2 Inscripción en el Registro
La fecha y tenor de la resolución sobre la solicitud o cualquier otra medida que hubiera puesto fin al procedimiento se inscribirá en el Registro una vez ésta adquiera carácter firme (artículo 53, apartado 3, del RDC; artículo 69, apartado 3, letra q), del REDC).
7 Recurso
7.1 Derecho a recurrir
Cualquier parte en un procedimiento de nulidad estará legitimada para recurrir contra una resolución que le afecte de modo adverso. Las resoluciones que no pongan fin al procedimiento con respecto a una de las partes sólo podrán recurrirse junto con la resolución con fuerza de cosa juzgada, salvo que la propia resolución permita un recurso independiente. Toda comunicación escrita de tal resolución incluirá una notificación de que la resolución podrá recurrirse en un plazo de dos meses a partir de la fecha de recepción de la notificación de la misma. Los recursos producirán efectos suspensivos (artículo 55 del RDC).
7.2 Revisión
Podrá concederse la revisión siempre que se haya interpuesto un recurso contra una resolución comprendida en el ámbito de competencia de las Salas de Recursos según lo dispuesto en el artículo 55 del RDC.
Si la división o la instancia de la Oficina cuya resolución se haya impugnado tienen el recurso por admisible y fundado, deberá rectificar su resolución. Ello no será de aplicación cuando otra parte en el procedimiento formule oposición a la pretensión del recurrente (artículo 58, apartado 1, del RDC).
Si la resolución no fuere rectificada en el plazo de un mes desde la recepción del escrito de motivación del recurso, éste será remitido sin dilación a la sala de recursos y sin pronunciamiento alguno en cuanto al fondo (artículo 58, apartado 2, del RDC).
El objeto de la revisión es evitar que se impugnen ante las Salas de Recurso resoluciones que la División de Anulación considera necesario revocar. Sin embargo, el objeto de la revisión no es rectificar errores cometidos en resoluciones de la División de Anulación sin modificar el resultado de un asunto, sino acoger la pretensión del recurrente.
Los principios que se aplican a la revisión respecto a las resoluciones adoptadas por la División de Oposición serán aplicables mutatis mutandis a las decisiones adoptadas por la División de Anulación (véanse las Directrices , Parte A, Disposiciones generales, Sección 7, Revisión).
OFFICE DE L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET MODÈLES) Le président
DÉCISION N° EX-14-4 DU PRÉSIDENT DE l'OFFICE du 2 décembre 2014
portant adoption des directives relatives à l’examen pratiqué à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et
modèles) sur les marques communautaires et les dessins ou modèles communautaires enregistrés
LE PRESIDENT DE L'OFFICE DE L'HARMONISATION DANS LE MARCHE INTERIEUR (MARQUES, DESSINS ET MODELES),
vu le règlement (CE) n° 207/2009 du Conseil du 26 février 2009 sur la marque communautaire (le «RMC»), et notamment son article 124, paragraphe 2, point a), et le règlement (CE) n° 6/2002 du Conseil du 12 décembre 2001 sur les dessins ou modèles communautaires (le «RDC»), et notamment son article 100,
à la suite de la consultation du conseil d’administration, en application de l’article 126, paragraphe 4, du RMC et de l’article 101, point b), du RDC,
A ADOPTÉ LA PRÉSENTE DÉCISION:
Article premier
Les directives ci-après relatives à l’examen pratiqué à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) sur les marques communautaires et les dessins ou modèles communautaires enregistrés, et jointes en annexe à la présente décision, sont adoptées.
Nouvelles parties des directives:
A) MARQUES COMMUNAUTAIRES
Partie A: Dispositions générales Section 3, Paiement des taxes et des frais Section 5, Représentation professionnelle
Partie B: Examen Section 2, Examen des formalités Section 4, Motifs absolus de refus, article 7(1)(a), (b), (c), (d), (e) et 7(3)
Partie C: Opposition Section 0, Introduction Section 1, Questions de procédure Section 2, Double identité et risque de confusion
Chapitre 1, Principes généraux et méthodologie Chapitre 2, Comparaison des produits et services Chapitre 3, Comparaison des signes
Chapitre 4, Caractère distinctif Chapitre 5, Caractère dominant Chapitre 6, Public pertinent et degré d’attention Chapitre 7, Autres facteurs Chapitre 8, Appréciation globale
Section 6, Preuve de l’usage
Partie D: Annulation Section 1, Procédures de nullité
Partie E: Opérations dans le registre Section 2, Transformation Section 4, Renouvellement Section 5, Inspection des dossiers Section 6, Autres inscriptions au registre
Chapitre 1, Demandes reconventionnelles
B) DESSIN OU MODELE COMMUNAUTAIRE ENREGISTRÉ
Examen des demandes en nullité d’un dessin ou modèle
Article 2
La pratique de l’Office présentée dans les directives précédentes sur les pratiques en matière de marques et de dessins ou modèles communautaires enregistrés, dans la mesure où elle correspond aux parties visées à l'article premier, est abrogée.
Article 3
Les directives visées à l’article premier sont publiées au Journal officiel de l’Office.
Article 4
La présente décision est publiée au Journal officiel de l’Office et entre en vigueur le 1er février 2015.
Fait à Alicante, le 2 décembre 2014
António Campinos Président
DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES ET LES DESSINS OU
MODÈLES COMMUNAUTAIRES ENREGISTRÉS
NOTE DE L’ÉDITEUR ET INTRODUCTION GÉNÉRALE
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Table des matières
1 Objet ........................................................................................................... 3
2 Objectif des directives .............................................................................. 3
3 Processus de révision des directives...................................................... 4
4 Structure des directives............................................................................ 5
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1 Objet
Le règlement (CE) n° 40/94 du Conseil du 20 décembre 1993 sur la marque communautaire, tel que modifié et codifié par le règlement (CE) n° 207/2009 du Conseil du 26 février 2009 (ci-après le « RMC »), a institué, parallèlement aux systèmes nationaux, un système de marque communautaire dans le but d’éliminer l’un des principaux obstacles à l’achèvement du marché unique européen. Le règlement (CE) n° 6/02 du Conseil du 12 décembre 2001 (ci-après le « RDMC ») a fait de même pour les dessins ou modèles communautaires. Jusqu’alors, la législation applicable à l’enregistrement et à l’utilisation des marques, dessins ou modèles était exclusivement nationale et rendait difficile l’usage de la même marque ou du même dessin ou modèle dans toute l’Union européenne.
L’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) (ci- après l’« OHMI » ou l’« Office »), situé à Alicante, est chargé de l’enregistrement des marques communautaires et des dessins ou modèles communautaires enregistrés. Ces enregistrements offrent une protection uniforme des marques, dessins et modèles dans l’ensemble du territoire de l’Union européenne.
L’Office s’occupe des procédures d’enregistrement (y compris l’examen des demandes sur la base de motifs absolus de refus et, lorsqu’une opposition a été formée à l’encontre d’une demande de marque communautaire, sur la base de motifs relatifs de refus), tient à jour les registres publics de ces droits et statue sur les demandes en nullité lorsque ces droits sont déjà enregistrés. Les directives de l’Office couvrent la pratique dans tous ces domaines.
2 Objectif des directives
Les directives relatives aux marques communautaires et aux dessins ou modèles communautaires ont pour but d’accroître la cohérence, la prévisibilité et la qualité des décisions de l’Office. Les directives sont conçues pour rassembler systématiquement les principes consacrés par la pratique découlant de la jurisprudence de la Cour de justice de l’Union européenne, des chambres de recours de l’Office, des décisions du département « Opérations » de l’Office et le résultat des programmes de convergence de l’Office avec les Offices PI de l’UE. Elles constituent une source de référence unique sur la pratique de l’Office en matière de marques communautaires et de dessins et modèles enregistrés et ont pour ambition de servir au personnel de l’Office chargé des diverses procédures tout autant qu’aux usagers des services de l’Office.
Les directives ont été rédigées afin de refléter la pratique de l’Office dans les situations les plus courantes. Elles ne contiennent que des instructions générales, qui doivent être adaptées aux spécificités d’un cas particulier. Il ne s’agit pas de textes législatifs et ces directives n’ont donc pas un caractère contraignant. Tant les parties concernées que l’Office doivent, le cas échéant, se référer au RMC et au RDMC ainsi qu’à leurs règlements d’exécution respectifs, aux règlements sur les taxes, au règlement (CE) n° 216/96 de la Commission, du 5 février 1996, portant règlement de procédure des chambres de recours et, enfin, à l’interprétation de ces textes par les chambres de recours et la Cour de justice de l’Union européenne, ainsi que le Tribunal de l’Union européenne.
Étant donné que la jurisprudence évolue constamment, les directives vont également évoluer. Elles seront adaptées chaque année dans le cadre d’un exercice de révision
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permanente pour tenir compte des développements intervenus dans la pratique de l’Office (voir point 3 ci-dessous).
3 Processus de révision des directives
Étant la seule source de référence sur la pratique de l’Office en matière de marques communautaires et de dessins et modèles enregistrés, les directives sont disponibles dans toutes les langues officielles de l’UE. Elles sont révisées par les cercles de connaissance interdépartementaux de l’Office dans le cadre d’un processus cyclique et ouvert, « cyclique » parce que la pratique est actualisée chaque année sur la base d’un examen de la jurisprudence de l’année précédente et en tenant compte des besoins opérationnels et des résultats des initiatives de convergence, et « ouvert » parce que des acteurs extérieurs sont impliqués dans la définition de cette pratique.
La participation des offices nationaux et des associations d’usagers est non seulement bénéfique pour la qualité des directives, mais elle est également censée faciliter la convergence, à savoir la recherche d’une approche commune sur des questions pour lesquelles les pratiques divergent. La mise à disposition des directives dans toutes les langues de l’UE améliorera la connaissance de la pratique de l’Office dans les États membres et parmi les usagers et permettra d’identifier plus aisément les différences sur le plan de la pratique.
Le travail de l’année est divisé en deux « lots de travaux », le lot de travaux n° 1 (work package 1 – WP1) couvre chaque année une période de douze mois allant de janvier à décembre, tandis que le lot de travaux n° 2 (work package 2 – WP2) couvre chaque année une période de douze mois courant de juillet à juin.
Le processus de révision comporte les phases suivantes,
a. Lancement de la mise à jour par les parties intéressées
Après avoir été informés des plans de révision de l’Office, notamment ce qui doit être révisé et quand, les offices nationaux et les associations d’usagers sont invités à présenter leurs commentaires avant janvier (WP1) et avant juillet (WP2). Les commentaires reçus après l’expiration du délai seront pris en compte au cours du cycle suivant ou pourront être présentés durant la phase c.
b. Préparation du projet de directives par l’Office
Au cours de cette phase, le projet de directives est élaboré par les cercles de connaissance de l’Office. Le processus débute chaque année en janvier (WP1) et en juillet (WP2). Les observations et les commentaires présentés au préalable par les usagers sont pris en compte. Les trois étapes du processus – analyse, rédaction et discussion – doivent être menées à bien dans les délais. L’analyse implique que les cercles de connaissance dégagent les tendances de la jurisprudence de l’année précédente, étudient les conclusions des projets de convergence et tiennent compte des commentaires émanant des usagers de l’Office et des parties intéressées internes. Ensuite, les cercles de connaissance rédigent les directives. Enfin, les textes sont discutés au sein des différentes unités et départements de l’Office.
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c. Adoption des directives
Au cours de la dernière phase, le projet de directives est envoyé pour traduction dans les langues de l’Office. Les textes et les traductions sont transmis aux associations d’usagers et aux offices de PI de l’UE afin de recevoir leurs observations avant la réunion suivante du conseil d’administration (« CA ») de l’Office. Après avoir consulté le CA conformément à l’article 126, paragraphe 4, du RMC, et à l’article 101, point b), du RDMC, le président adopte les directives mises à jour. Les versions des directives dans les cinq langues de l’Office constituent le texte faisant foi, qui doit être publié en janvier (WP1) et en juillet (WP2) de chaque année, respectivement. En cas de divergences entre les différentes versions linguistiques, le texte de la langue de rédaction (l’anglais) prime sur les autres versions. Dès leur adoption, les directives seront traduites dans les autres langues officielles de l’Union européenne dans un souci de courtoisie et de transparence. Ces traductions supplémentaires seront publiées sur le site internet de l’Office et les parties intéressées externes, qu’il s’agisse des offices nationaux ou des associations d’usagers, pourront formuler des observations sur leur qualité. Toutes les modifications linguistiques résultant de ces observations informelles seront introduites dans les textes sans passer par une procédure formelle.
d. Procédure accélérée
Lorsqu’un événement extérieur majeur produit des effets immédiats sur la pratique de l’Office (par exemple, certains arrêts de la Cour de justice), l’Office peut modifier les directives selon une procédure accélérée qui ne suit pas le calendrier normal mentionné ci-dessus. Cette procédure constitue toutefois l’exception à la règle. Le processus étant cyclique, ces changements feront toujours l’objet de commentaires et d’une révision durant le cycle suivant.
4 Structure des directives
Les éléments abordés dans le WP1 et le WP2 sont énumérés ci-dessous. Dans des cas exceptionnels, certains éléments de la pratique peuvent passer d’un lot de travaux à l’autre. Si un tel changement devait avoir lieu, les parties intéressées en seraient informées.
MARQUE COMMUNAUTAIRE
WP1 WP2
Partie A : Dispositions générales Partie A : Dispositions générales
Section 3, Paiement des taxes, frais et tarifs Section 1, Moyens de communication, délai
Section 5, Représentation professionnelle Section 2, Principes généraux à respecter dans les procédures Section 4, Langue de la procédure
Section 6, Révocation de décisions, suppression d’inscriptions dans le registre et correction d’erreurs
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Section 7, Révision
Section 8, Restitutio in integrum
Section 9, Élargissement
Partie B : Examen Partie B : Examen
Section 2 Formalités Section 1, Procédure
Section 4, Motifs absolus de refus, article 7, paragraphe 1, point a)
Section 3, Classification
Section 4, Motifs absolus de refus, article 7, paragraphe 1, point b)
Section 4, Motifs absolus de refus, article 7, paragraphe 1, point f)
Section 4, Motifs absolus de refus, article 7, paragraphe 1, point c)
Section 4, Motifs absolus de refus, article 7, paragraphe 1, point g)
Section 4, Motifs absolus de refus, article 7, paragraphe 1, point d)
Section 4, Motifs absolus de refus, article 7, paragraphe 1, points h) et i)
Section 4, Motifs absolus de refus, article 7, paragraphe 1, point e)
Section 4, Motifs absolus de refus, article 7, paragraphe 1, points j) et k)
Section 4, Motifs absolus de refus, article 7, paragraphe 3
Section 4, Marques collectives
Partie C : Opposition Partie C : Opposition
Section 0, Introduction Section 3,Dépôt non autorisé par les agents du titulaire de la marque (article 8, paragraphe 3, du RMC)
Section 1, Questions de procédure Section 4, Droits en vertu de l’article 8, paragraphe 4, du RMC
Section 2, Double identité et risque de confusion Section 5, Marques jouissant d’une renommée (article 8, paragraphe 5, du RMC)
Chapitre 1, Principes généraux et méthodologie
Chapitre 2, Comparaison des produits et services
Chapitre 3, Comparaison des signes
Chapitre 4, Caractère distinctif
Chapitre 5, Caractère dominant
Chapitre 6, Public pertinent et degré d’attention
Chapitre 7, Autres facteurs
Chapitre 8, Appréciation globale
Section 6, Preuve de l’usage
Partie D : Annulation Partie D : Annulation
Section 1, Questions de Procédure
Section 2, Dispositions matérielles
Partie E : Inscriptions au registre Partie E : Inscriptions au registre
Section 2, Transformation Section 1, Modifications d’un enregistrement
Section 4, Renouvellement Section 3, La Marque Communautaire, en tant qu’objet de propriété
Section 5, Inspection des dossiers Chapitre 1, Transfert
Section 6, Autres inscriptions au registre Chapitre 2, Licences
Chapitre 1, Demandes reconventionnelles Chapitre 3, Droits réels
Chapitre 4, Exécution forcée
Chapitre 5, Procédures d’insolvabilité ou procédures analogues
Partie M : Marques internationales
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DESSIN OU MODÈLE COMMUNAUTAIRE ENREGISTRÉ DESSIN OU MODÈLE COMMUNAUTAIRE ENREGISTRE
WP1 WP2
Examen des demandes en nullité de dessins ou modèles Examen des demandes de dessins ou modèles communautaires enregistrés Renouvellement des dessins ou modèles communautaires enregistrés
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 3
PAIEMENT DES TAXES, FRAIS ET TARIFS
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Table des matières
1 Introduction................................................................................................ 3
2 Moyens de paiement ................................................................................. 4 2.1 Paiement par virement bancaire................................................................ 4
2.1.1 Compte bancaire ............................................................................................ 4 2.1.2 Données devant accompagner le paiement................................................... 5
2.2 Paiement par carte de débit ou de crédit .................................................. 7 2.3 Débit d’un compte courant détenu auprès de l’OHMI .............................. 8
3 Date d’exigibilité ...................................................................................... 10
4 Date à laquelle le paiement est réputé effectué .................................... 10 4.1 Paiement par virement bancaire.............................................................. 10
4.1.1 Paiement tardif avec ou sans surtaxe .......................................................... 10 4.1.2 Preuves du paiement et de la date de paiement.......................................... 11
4.2 Paiement par carte de débit ou de crédit ................................................ 12 4.3 Paiement par compte courant ................................................................. 12
5 Remboursement de taxes ....................................................................... 13 5.1 Remboursement des taxes pour le dépôt d’une demande.................... 13 5.2 Remboursement de la taxe d’opposition................................................ 14 5.3 Remboursement des taxes de marques internationales désignant l’UE
................................................................................................................... 14 5.4 Remboursement des taxes de recours ................................................... 14 5.5 Remboursement des taxes de renouvellement...................................... 14 5.6 Remboursement de montants minimes.................................................. 15
6 Décisions fixant le montant des frais .................................................... 15 6.1 Répartition des frais................................................................................. 15 6.2 Détermination des frais............................................................................ 15 6.3 Exécution forcée des décisions fixant le montant des frais..................... 16
6.3.1 Conditions..................................................................................................... 16 6.3.2 Autorité nationale.......................................................................................... 16 6.3.3 Procédure ..................................................................................................... 17
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1 Introduction
Article 2 du RTMC
Pour les marques communautaires, outre les dispositions prévues dans le RMC de base et dans le REMC, il existe un règlement spécifique sur les taxes à payer à l’OHMI (RTMC). Ce règlement a été modifié une fois en 2004, deux fois en 2005 et une fois en 2009. Une version consolidée officieuse du RTMC, comportant des références au RMC codifié, est disponible en ligne. La liste complète des taxes peut être consultée sur le site internet de l’OHMI.
De même, pour les dessins ou modèles communautaires, outre les dispositions prévues dans le RDMC de base et dans le REDMC, il existe un règlement spécifique sur les taxes à payer à l’OHMI (RTDMC). Ce règlement a été modifié en 2007 à la suite de l’adhésion de l’Union européenne à l’Acte de Genève de l’arrangement de La Haye concernant l’enregistrement international de dessins ou modèles industriels.
Enfin, le président de l’Office est habilité à fixer les tarifs susceptibles d’être dus à l’Office en raison de prestations de services qu’il peut être amené à fournir, ainsi qu’à autoriser des modes de paiement autres que ceux que le RTMC et le RTDMC prévoient explicitement.
Les différences entre taxes, frais et tarifs sont énoncées ci-dessous.
Les taxes doivent être payées à l’Office par les utilisateurs au titre du dépôt et du traitement des actes de procédure relatifs aux marques, dessins ou modèles; les règlements relatifs aux taxes déterminent le montant des taxes et leur mode de perception. La plupart des procédures devant l’Office sont soumises au paiement de taxes, telles que la taxe pour le dépôt d’une demande de marque communautaire ou de dessin ou modèle communautaire, la taxe de renouvellement, etc. Certaines taxes ont été réduites à zéro (par exemple, les taxes d’enregistrement de marques communautaires ou les transferts de marques communautaires).
Le montant de ces taxes doit être fixé de telle façon que les recettes perçues permettent d’assurer, en principe, l’équilibre du budget de l’Office (voir l’article 144 du RMC), afin de garantir la pleine autonomie et l’indépendance de l’Office. Les recettes de l’Office comprennent principalement le produit des taxes dues par les utilisateurs du système (voir le 18e considérant du RMC).
Les frais se rapportent aux frais exposés par les parties dans le cadre de procédures inter partes devant l’Office, en particulier pour la représentation professionnelle (pour les marques, voir l’article 85 du RMC et la règle 94 du REMC, pour les dessins ou modèles, voir les articles 70-71 du RDMC et l’article 79 du REDMC). Les décisions rendues dans le cadre d’affaires inter partes doivent contenir une décision sur les taxes et les frais du représentant professionnel et en fixer le montant. Toute décision définitive qui fixe le montant des frais forme titre exécutoire en application de l’article 86 du RMC.
Les tarifs sont fixés par le président de l’Office pour des prestations de services assurées par l’Office, autres que celles visées à l’article 2 du RTMC (voir la règle 87, paragraphe 2, du REMC et l’article 3, paragraphes 1 et 2, du RTMC).
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Les montants des tarifs fixés par le président sont publiés au Journal officiel de l’Office et peuvent être consultés sur le site internet sous la rubrique Décisions du président. Parmi ces tarifs figurent notamment les tarifs à payer pour la médiation à Bruxelles ou pour certaines publications de l’Office.
2 Moyens de paiement
Article 5 du RTMC Article 5 du RTDMC Communication nº 2/97 du président de l’Office du 03/07/1997
Les taxes et les tarifs doivent être acquittés en euros. Les paiements effectués dans d’autres monnaies ne sont pas valables, ils ne confèrent aucun droit et sont remboursés.
Les taxes à payer à l’Office ne peuvent pas être payées à ou via un office national.
Dans la plupart des cas, les moyens de paiement acceptés sont les virements bancaires, les débits des comptes courants ouverts auprès de l’Office et les cartes de débit ou de crédit (pour certains services en ligne uniquement). Les paiements en espèces dans les locaux de l’Office et les chèques ne sont plus admis (décision du 3 septembre 2008, «TEAMSTAR», R 524/2008-1).
L’Office ne peut pas émettre de factures. Il peut toutefois délivrer un reçu à la demande de l’utilisateur.
2.1 Paiement par virement bancaire
Le montant à payer peut être envoyé à l’Office par virement. La taxe n’est pas réputée acquittée si l’ordre de virement est donné après l’expiration du délai de paiement imparti. Si le montant de la taxe est envoyé avant l’expiration du délai imparti mais qu’il parvient à l’Office après l’expiration du délai, l’Office peut, sous certaines conditions, considérer que la taxe a été dûment payée (voir le paragraphe 4.1 ci-dessous).
2.1.1 Compte bancaire
Le paiement par virement bancaire ne peut être effectué que sur l’un des deux comptes bancaires de l’Office ci-après:
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Banque Banco Bilbao VizcayaArgentaria La Caixa
Adresse Explanada de España, 11 E-03002 Alicante ESPAGNE
Calle Capitán Segarra, 6 E-03004 Alicante ESPAGNE
Code Swift* BBVAESMMXXX CAIXESBBXXX
IBAN ES8801825596900092222222 ES0321002353010700000888
Frais bancaires** >OUR >OUR
* Code Swift: Certains programmes informatiques n’acceptent pas les trois derniers chiffres XXX du code Swift/BIC. Dans ce cas, les utilisateurs doivent indiquer la mention suivante: BBVAESMM ou CAIXESBB.
** Frais bancaires: Il est important de s’assurer que le montant total parvient à l’Office, sans aucune déduction. Par conséquent, en cas de virement, il faut indiquer le mode de paiement «OUR» pour les frais bancaires afin de garantir la réception de l’intégralité du montant dû à l’Office. Toutefois, pour les paiements SEPA, la mention par défaut «SHA» est requise. Le SEPA est un système unique de paiement en euros qui est utilisé par la plupart des banques dans les États membres de l’UE et dans cinq autres pays européens.
2.1.2 Données devant accompagner le paiement
Article 7 du RTMC Article 6 du RTDMC
Le paiement d’une taxe et l’indication de la nature de la taxe et de la procédure à laquelle elle se réfère ne se substituent pas aux autres exigences formelles de l’acte de procédure concerné. Ainsi, par exemple, le paiement de la taxe de recours et l’indication du numéro de la décision attaquée ne sont pas suffisants pour former un recours valide (arrêt du 31 mai 2005, «PARMITALIA», T-373/03, point 58, et arrêt du 9 septembre 2010, «ETRAX», T-70/08, points 23-25).
Lorsque les éléments fournis ne permettent pas d’identifier l’objet du paiement, l’Office impartira un délai dans lequel les informations manquantes devront être fournies, faute de quoi le paiement sera considéré comme non avenu et le montant versé sera remboursé. L’OHMI reçoit des milliers de paiements chaque jour et l’identification incorrecte ou insuffisante du dossier peut entraîner des retards importants dans le traitement des actes de procédure.
Le formulaire de virement joint au paiement doit comporter les éléments suivants:
le numéro de la marque communautaire/du dessin ou modèle communautaire; le nom et l’adresse du donneur d’ordre ou le numéro d’identification de l’Office; la nature de la taxe, de préférence sous sa forme abrégée.
Afin de traiter rapidement les paiements par virement bancaire, et compte tenu du fait que seul un nombre limité de caractères peut être utilisé dans les champs
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«expéditeur» et «désignation», il est vivement conseillé de renseigner ces champs de la manière indiquée ci-après.
CHAMP DÉSIGNATION
Utilisez les codes recensés dans les tableaux ci-dessous, par exemple: MC au lieu de: TAXE POUR LE DÉPÔT D’UNE DEMANDE DE MARQUE COMMUNAUTAIRE.
Supprimez les zéros initiaux dans les nombres et n’utilisez pas d’espaces ni de tirets, car ces caractères occupent de l’espace inutilement.
Commencez toujours par le numéro de MC ou de DMC, par ex. MC3558961. Si le paiement concerne plusieurs marques ou plusieurs dessins ou modèles,
n’indiquez que le premier et le dernier numéro, par ex. MC3558961-3558969, puis envoyez un fax avec tous les détails concernant les marques ou les dessins ou modèles en question.
Codes de désignation
Désignation Code Exemple
Versement sur un compte courant CC + numéro de compte CC1361
Si le titulaire ou le représentant possède un numéro d’identification
TIT + numéro d’identification, REP + numéro d’identification REP10711
Numéro de la marque ou du dessin ou modèle MC, DMC + numéro
MC5104422 DMC1698
Une courte description de la MC ou du DMC
«XYZABC» ou «forme de bouteille»
Code de l’opération: Taxe pour le dépôt d’une demande de MC ou de DMC Taxe pour le dépôt d’une demande internationale Taxe de renouvellement Taxe d’opposition Taxe de demande en nullité Recours Inscription Transfert Conversion Inspection de dossiers Copies certifiées
MC, DMC INT
RENOUV OPP NULL REC INSC TRANSF CONV INSP COPIES
OPP, INSC, RENOUV, INSP, INT, TRANSF, NULL, CONV, COPIES, REC
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Exemples:
Objet du paiement Exemple de Désignation du paiement
Taxe pour le dépôt d’une demande (MC = marque communautaire) MC5104422 XYZABC
Taxe pour le dépôt d’une demande (DMC = dessin ou modèle communautaire) DMC1234567 forme de bouteille.
Opposition + donneur d’ordre MC4325047 OPP XYZABC REP10711
Demande internationale MC4325047 INT XYZABC
Renouvellement (MC) MC509936 RENOUV
Versement sur le compte courant nº 1361 CC1361
Copies certifiées MC1820061 COPIES
Transfert de plusieurs dessins ou modèles (premier 1420061 et dernier 1420065) + donneur d’ordre DMC1420061-1420065 TRANSF REP10711
Inscription d’une licence de MC MC4325047 INSC LICENCE TIT10711
CHAMP EXPÉDITEUR
Exemples d’adresses
Adresse Exemple
Nom du donneur d’ordre Adresse du donneur d’ordre Ville et code postal du donneur d’ordre
John Smith 58 Long Drive Londres, ED5 6V8.
Utilisez un nom qui puisse être identifié comme donneur d’ordre, demandeur (titulaire ou représentant) ou opposant.
Pour le nom du donneur d’ordre, n’indiquez que le nom, sans abréviation du type DIPL.-ING. PHYS, Dr, etc.
Utilisez le même formulaire d’identification pour les paiements ultérieurs.
2.2 Paiement par carte de débit ou de crédit
Décision nº EX-13-2 du président de l’Office du 26 novembre 2013 concernant les communications électroniques de et vers l’Office: article 7, Paiement électronique des taxes par carte de crédit Article 2, paragraphe 1, point b), article 2, paragraphe 4, article 2, paragraphes 12 à 15, du RTMC et article 5, paragraphe 2 du RTDC
Le paiement par carte de débit ou de crédit n’est pas encore disponible pour toutes les taxes de l’OHMI. Le paiement par carte de débit ou de crédit n’est possible que pour certains services en ligne.
Les cartes de débit ou de crédit suivantes peuvent être utilisées: Visa, Mastercard et Discover.
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Pour les demandes et les renouvellements déposés par voie électronique, le paiement par carte de débit ou de crédit est le mode de paiement recommandé. Les paiements par carte de débit ou de crédit permettent à l’OHMI d’utiliser au mieux ses propres systèmes internes automatiques, de sorte que le traitement du dossier peut commencer plus rapidement.
Les paiements par carte de débit ou de crédit sont immédiats (voir le paragraphe 4.2 ci-dessous) et ne sont donc pas autorisés pour des paiements différés (dans le mois qui suit la date de dépôt).
Pour toutes les autres taxes, l’utilisation de cartes de débit ou de crédit est actuellement impossible. En particulier, les cartes de débit ou de crédit ne peuvent pas être utilisées pour s’acquitter des tarifs visés à l’article 3 du RTMC et à l’article 3 du RTDMC, ou pour réapprovisionner un compte courant.
Les paiements par carte de débit ou de crédit requièrent certaines informations essentielles. Les informations fournies ne seront stockées dans aucune base de données permanente de l’OHMI. Elles ne seront pas conservées après leur envoi à la banque. Toute copie du formulaire comporte uniquement le type de carte de débit ou de crédit (VISA, MasterCard ou Discover) et les quatre derniers chiffres du numéro de la carte. Le numéro de carte complet peut être saisi en toute sécurité, via un serveur sécurisé qui crypte toutes les informations fournies.
2.3 Débit d’un compte courant détenu auprès de l’OHMI
Décision nº Ex-96-1 du président de l’Office du 11 janvier 1996 relative aux modalités d’ouverture de comptes courants auprès de l’Office, comme modifiée en 1996, en 2003 et en 2006 Communication nº 5/01 du président de l’Office du 29 juin 2001 concernant la disponibilité des relevés de compte courant sur le site internet de l’Office Communication nº 11/02 du président de l’Office du 11 octobre 2002 concernant l’ouverture d’un nouveau compte bancaire
Il est conseillé d’ouvrir un compte courant auprès de l’OHMI. En effet, pour toutes les demandes soumises à des délais, telles que des oppositions ou des recours, le paiement est réputé avoir été effectué dans le délai prévu même si le document pertinent au titre duquel le paiement a été effectué (un acte d’opposition, par exemple) est déposé le dernier jour du délai, à condition que le compte courant soit suffisamment approvisionné (voir le paragraphe 4.3 ci-dessous) (décision du 7 septembre 2012, «STAIR GATES», R 2596/2011-3, points 13-14). La date de débit effective du compte courant est généralement ultérieure, mais le paiement sera réputé effectué à la date de réception de la demande d’un acte de procédure par l’Office, ou à toute autre date fixée à la convenance de la partie à la procédure, conformément à l’article 6 de la décision nº Ex-96-1 du président de l’Office, comme modifiée en 2006.
Si la personne (l’une des parties à la procédure ou son représentant) qui a déposé la demande ou l’acte de procédure respectif est titulaire d’un compte courant ouvert auprès de l’Office, l’Office débitera automatiquement le compte courant, sauf si une instruction contraire a été donnée dans le cadre de l’affaire en question. Afin d’identifier correctement le compte, l’Office recommande d’indiquer clairement le numéro d’identification OHMI du titulaire du compte courant détenu auprès de l’Office.
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Le système de comptes courants est un système de débit automatique. Par conséquent, une fois le compte identifié, l’Office peut débiter, au fur et à mesure du déroulement des procédures concernées, le compte courant – pour autant qu’il soit suffisamment approvisionné – des taxes et tarifs dus dans le cadre desdites procédures, en attribuant chaque fois une date de paiement sans autres instructions. La seule exception à cette règle intervient lorsque le titulaire d’un compte courant souhaitant exclure l’utilisation de son compte pour une taxe ou un tarif déterminé en informe l’Office par écrit. Dans ce cas, le titulaire du compte peut toutefois modifier le mode de paiement et revenir au débit de compte courant à tout moment avant l’expiration du délai de paiement.
L’absence d’indication ou l’indication incorrecte du montant de la taxe n’a pas d’effet négatif puisque le compte courant sera automatiquement débité par rapport à l’acte de procédure correspondant pour lequel le paiement est dû.
Si le compte courant est insuffisamment approvisionné, l’Office en informe le titulaire et lui donne la possibilité de réapprovisionner son compte et de payer 20 % pour couvrir les frais administratifs liés à l’insuffisance de fonds. Si le titulaire procède de la sorte, le paiement de la taxe est réputé effectué à la date de réception par l’Office du document pertinent au regard duquel le paiement a été effectué (un acte d’opposition, par exemple). Si le paiement concerne le réapprovisionnement d’un compte courant, il suffit d’indiquer le numéro de compte. Si le compte est réapprovisionné, le titulaire doit s’assurer que le solde créditeur du compte suffit à couvrir tous les paiements dus, ou indiquer au moins les paiements à effectuer en priorité (décision du 3 septembre 2008, «SCHNEIDER», R 1350/2007-1). Si aucune priorité n’est indiquée, l’Office couvre les paiements à mesure qu’ils viennent à échéance.
L’OHMI permet aux titulaires d’un compte courant d’accéder aux informations concernant leur compte par une connexion internet sécurisée, au moins pour l’année écoulée, par l’intermédiaire de son site internet. Ce service comprend le solde du compte, la liste de toutes les opérations effectuées, des relevés mensuels, ainsi qu’un outil de recherche pour trouver des opérations particulières.
Le paiement d’une taxe par débit d’un compte courant détenu par un tiers nécessite une autorisation écrite explicite. Le paiement est considéré comme effectué à la date de réception de l’autorisation par l’Office. L’autorisation doit être accordée par le titulaire du compte courant et doit indiquer que le compte peut être débité d’une taxe spécifique. Si le titulaire n’est ni la partie, ni le représentant de celle-ci, l’Office vérifie que l’autorisation a bien été accordée. En l’absence d’autorisation, l’Office invite la partie concernée à présenter l’autorisation de débiter le compte du tiers avant l’expiration de la date limite de paiement, si l’Office a des motifs de douter de l’existence d’une telle autorisation. La partie demandant le paiement d’une taxe par débit du compte courant d’un tiers doit transmettre l’autorisation à l’Office, afin de permettre le débit du compte.
Un compte courant peut être ouvert auprès de l’OHMI par l’envoi d’une demande au numéro de télécopie général suivant: +34965131344 ou par courrier électronique à: fee.information@oami.europa.eu.
Le montant minimum pour ouvrir un compte courant est de 3 000 EUR.
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3 Date d’exigibilité
Article 4 du RTMC Article 4 du RTDMC
Les taxes doivent être payées avant leur date d’exigibilité.
Lorsqu’un délai est imparti pour acquitter un paiement, celui-ci doit être effectué avant l’expiration de ce délai.
Les taxes et tarifs dont la date d’exigibilité n’est pas précisée dans les règlements sont exigibles à compter de la date de réception de la demande d’exécution de la prestation de service assujettie à la taxe ou au tarif, par exemple une demande d’inscription.
4 Date à laquelle le paiement est réputé effectué
Article 8, paragraphes 1 et 3, du RTMC Article 7 du RTDMC Article 7 de la décision nº Ex-96-1 du président de l’Office du 11 janvier 1996 relative aux modalités d’ouverture de comptes courants auprès de l’Office, comme modifiée en 1996, en 2003 et en 2006 Décision nº EX-13-2 du président de l’Office du 26 novembre 2013 concernant les communications électroniques de et vers l’Office: article 7, Paiement électronique des taxes par carte de crédit
La date à laquelle le paiement est réputé effectué dépend du mode de paiement choisi.
4.1 Paiement par virement bancaire
Lorsque le paiement est effectué par virement ou versement sur un compte bancaire de l’Office, la date à laquelle le paiement est réputé effectué est celle à laquelle le montant est porté au crédit du compte bancaire de l’Office.
4.1.1 Paiement tardif avec ou sans surtaxe
Tout paiement reçu par l’Office après l’expiration du délai est considéré comme effectué dans les délais si l’Office reçoit la preuve que la personne qui a effectué le paiement: a) a donné un ordre de virement en bonne et due forme à un établissement bancaire et, b) a payé une surtaxe égale à dix pour cent du montant total dû (mais en aucun cas supérieure à 200 EUR) (ces deux conditions doivent être respectées, conformément à l’arrêt du 12 mai 2011, «Redtube I», T-488/09, point 38, et à la décision du 10 octobre 2006, «Blue Cross», R 203/2005-1).
Cette règle ne s’applique pas au paiement tardif de la surtaxe. Si la surtaxe n’est pas acquittée dans le délai imparti, le paiement est considéré comme tardif dans sa totalité et il ne peut y être remédié par le paiement d’une «surtaxe sur la surtaxe» (décision du 7 septembre 2012, «LAGUIOLE», R 1774/2011-1, points 12-15).
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Cette surtaxe n’est cependant pas due si la personne apporte la preuve que la procédure de paiement a été lancée plus de dix jours avant l’expiration du délai de paiement.
L’Office peut inviter la personne qui a effectué le paiement après l’expiration du délai à fournir la preuve, dans un délai qu’il détermine, que l’une des conditions précédentes a été remplie.
Pour plus d’informations sur les conséquences d’un paiement tardif dans le cadre de procédures particulières, voir les parties concernées des Directives. À titre d’exemple, la partie B, section 2, Formalités, traite des conséquences du paiement tardif de la taxe pour le dépôt d’une demande, tandis que la partie C, section 1, Questions de procédure, traite des conséquences du paiement tardif de la taxe d’opposition.
4.1.2 Preuves du paiement et de la date de paiement
Article 76 du RMC Article 8, paragraphe 4, du RTMC Article 63 du RDMC Article 7, paragraphe 4, du RTDMC
La preuve du paiement peut être apportée par tout moyen tel que:
un ordre de virement bancaire (un ordre SWIFT par exemple) contenant les cachets et la date de réception par la banque concernée;
un ordre de paiement en ligne envoyé via internet ou une copie d’un ordre de virement électronique, pour autant qu’il contienne des informations concernant la date du virement, la banque à laquelle le virement a été envoyé et une mention telle que «virement effectué».
En outre, les preuves suivantes peuvent être apportées:
accusé de réception des instructions de paiement de la banque; lettres de la banque auprès de laquelle le paiement a été effectué, attestant de la
date à laquelle l’ordre de virement a été donné ou le paiement effectué, et indiquant la procédure pour laquelle le paiement a été effectué;
déclarations écrites de la partie ou de son représentant, faites sous serment ou solennellement ou qui ont un effet équivalent conformément à la législation de l’État dans lequel elles sont faites.
Ces preuves supplémentaires ne sont considérées comme suffisantes que si elles s’appuient sur les preuves initiales.
Cette liste n’est pas exhaustive.
Si les preuves ne sont pas concluantes, l’Office demandera à la partie concernée de produire de nouveaux éléments de preuve.
Si aucune preuve n’est apportée, la procédure pour laquelle le paiement a été effectué est réputée ne pas avoir été engagée.
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En cas de preuves insuffisantes, ou si le donneur d’ordre ne donne pas suite à la demande de l’Office de fournir les informations manquantes, celui-ci considère que le délai de règlement n’a pas été respecté.
L’Office peut également inviter la personne à payer la surtaxe dans le même délai. Si la surtaxe imposée n’est pas payée à temps, le délai de paiement est réputé ne pas avoir été respecté.
La taxe, les tarifs ou une partie de ceux-ci qui ont été versés sont remboursés, car le paiement devient nul et non avenu.
Règle 96, paragraphe 2, du REMC Article 81, paragraphe 2, du REDMC
Langue des preuves: les documents peuvent être déposés dans une des langues officielles de l’UE. Lorsque les documents sont rédigés dans une langue autre que celle de la procédure, l’Office peut exiger qu’une traduction soit produite dans une langue de l’Office.
4.2 Paiement par carte de débit ou de crédit
Le paiement par carte de débit ou de crédit est réputé effectué à la date à laquelle le dépôt électronique auquel il se réfère est exécuté avec succès via internet.
4.3 Paiement par compte courant
Décision nº Ex-96-1 du président de l’Office du 11 janvier 1996 relative aux modalités d’ouverture de comptes courants auprès de l’Office, comme modifiée en 1996, en 2003 et en 2006
Lorsque le paiement est effectué par le débit d’un compte courant détenu auprès de l’Office, la décision nº EX-96-1 du président de l’Office, comme modifiée, garantit que la date à laquelle le paiement est réputé effectué est celle qui convient le mieux à la partie à la procédure. Par exemple, en ce qui concerne la taxe pour le dépôt d’une demande de marque communautaire, les taxes sont généralement débitées du compte courant le dernier jour du délai d’un mois imparti pour acquitter la taxe. Toutefois, le demandeur/représentant peut donner instruction à l’Office de débiter son compte après réception de la demande de marque communautaire. De même, lors du renouvellement, le titulaire du compte peut choisir l’option «débit immédiat» ou l’option «débit à l’expiration». Lorsqu’une partie retire l’acte de procédure (opposition, demande en nullité, recours, demande de renouvellement) avant l’expiration du délai de paiement, les taxes venues à échéance à l’expiration du délai de paiement ne sont pas débitées du compte courant et l’acte de procédure est réputé ne pas avoir été déposé.
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5 Remboursement de taxes
Article 7, paragraphe 2, et articles 9 et13 du RTMC Article 84, 154 et 156 du RMC Article 6, paragraphe 2, et article 8, paragraphe 1, du RDMC Article 30, paragraphe 2, du REDMC
Le remboursement de taxes est explicitement prévu dans les règlements. Les remboursements sont effectués au moyen de virements bancaires ou sur des comptes courants détenus auprès de l’OHMI, même lorsque les taxes ont été acquittées par carte de débit ou de crédit.
5.1 Remboursement des taxes pour le dépôt d’une demande
Règle 9, paragraphes 1 et 2, du REMC Articles 10, 13 et 22 du REDMC Article 44, paragraphe 6, du RMC
En cas de retrait d’une demande de marque communautaire, les taxes ne sont remboursées que si une déclaration de retrait parvient à l’Office:
en cas de paiement par virement bancaire, avant la date à laquelle le montant du virement est effectivement porté au crédit du compte bancaire de l’Office;
en cas de paiement par carte de débit ou de crédit, le jour du dépôt de la demande contenant les instructions/informations concernant la carte de débit ou de crédit;
en cas de débit d’un compte courant, dans le délai d’un mois pour le paiement de la taxe de base pour le dépôt d’une demande ou, si l’ordre écrit de débiter immédiatement le compte courant a été donné, avant ou au plus tard le jour même de la réception de cet ordre.
En cas de remboursement de la taxe de base pour le dépôt d’une demande, toute taxe payée pour une classe additionnelle sera également remboursée.
L’Office ne remboursera les seules taxes par classe additionnelle que dans le cas où elles constituent un trop-perçu par rapport aux classes indiquées par le demandeur dans la demande de marque communautaire, et où ce paiement n’a pas été demandé par l’Office, ou dans le cas où l’Office constate, après avoir examiné la classification, l’inclusion de classes additionnelles qui n’étaient pas nécessaires pour couvrir les produits et services inclus dans la demande initiale.
En ce qui concerne les dessins ou modèles, lorsque des irrégularités sont constatées concernant la date de dépôt, c’est-à-dire lorsque la date de dépôt n’est pas octroyée en raison de ces irrégularités, et qu’il n’est pas remédié à celles-ci dans le délai imparti par l’Office, le ou les dessins ou modèles ne sont pas traités comme des dessins ou modèles communautaires et les taxes éventuellement acquittées sont remboursées. En revanche, les taxes ne sont en aucun cas remboursées si le dessin ou modèle demandé a été enregistré.
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5.2 Remboursement de la taxe d’opposition
Règle 17, paragraphe 1, règle 18, paragraphe 5, et règle 19, paragraphe 1, du REMC.
Lorsqu’une opposition est réputée non introduite (au motif qu’elle a été déposée après l’expiration du délai de trois mois) ou que la taxe d’opposition n’a pas été acquittée entièrement ou a été payée après l’expiration du délai prévu pour former opposition, l’Office doit rembourser la taxe ainsi que la surtaxe.
5.3 Remboursement des taxes de marques internationales désignant l’UE
Décision nº ADM-11-98 du président de l’Office relative à la régularisation de certains remboursements de taxes
Voir le Manuel, partie M, Marques internationales, paragraphe 3.13.
5.4 Remboursement des taxes de recours
Les dispositions concernant le remboursement des taxes de recours sont prévues par la règle 51 du REMC et par l’article 35, paragraphe 3, et l’article 37 du REDMC.
5.5 Remboursement des taxes de renouvellement
Règle 30, paragraphes 6 et 7, du REMC
Les taxes acquittées avant le début de la première période de renouvellement de six mois ne sont pas prises en compte et sont remboursées.
Si les taxes ont été acquittées, alors que l’enregistrement n’est pas renouvelé (c’est-à- dire si la taxe n’a été acquittée qu’après l’expiration du délai supplémentaire, ou si la taxe acquittée est inférieure au montant de la taxe de base et de la surtaxe pour paiement tardif/retard de présentation de la demande de renouvellement, ou s’il n’a pas été remédié à certaines autres irrégularités), elles sont remboursées.
Si le titulaire donne instruction à l’Office de renouveler la marque, puis retire en tout ou en partie (au regard de certaines classes) son instruction de renouvellement, la taxe de renouvellement, ne sera remboursée que dans les cas suivants:
si, dans le cas d’un paiement par virement bancaire, l’Office a reçu la demande de retrait avant de recevoir le paiement;
si, dans le cas d’un paiement par carte de débit ou de crédit, l’Office a reçu la demande de retrait avant la réception ou le jour même de la réception du paiement par carte de débit ou de crédit;
si, en cas de débit d’un compte courant, elle a déjà été acquittée, l’Office a reçu la demande de retrait dans le délai de six mois prévu pour le renouvellement, ou
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si l’ordre écrit de débiter immédiatement le compte courant a été donné, avant ou au plus tard le jour même de la réception de cet ordre par l’Office.
Pour de plus amples informations, voir les Directives, partie E, Opérations d’enregistrement, section 4, Renouvellement.
5.6 Remboursement de montants minimes
Article 10, paragraphe 1, du RTMC Article 9, paragraphe 1, du RTDMC Décision nº EX-03-6 du président de l’Office du 20 janvier 2003 déterminant le montant minime d’une taxe ou d’un tarif
Une taxe n’est considérée comme acquittée qu’après paiement de sa totalité. Dans le cas contraire, la partie du montant déjà versé est remboursée après expiration du délai imparti pour le paiement, puisque dans ce cas la taxe n’a pas d’objet.
Toutefois, dans la mesure du possible, l’Office peut inviter la personne à compléter son paiement dans la limite du temps encore disponible.
Lorsqu’un montant trop élevé est versé en paiement d’une taxe ou d’un tarif, l’excédent n’est pas remboursé s’il est minime et si la partie concernée n’en a pas expressément demandé la restitution. Les montants minimes sont fixés à 15 EUR par décision nº EX-03-6 du président de l’Office du 20 janvier 2003.
6 Décisions fixant le montant des frais
Article 85 du RMC; Règle 94 du REMC.
6.1 Répartition des frais
Dans les procédures inter partes, la division d’opposition, la division d’annulation ou les chambres de recours doivent décider de la répartition des frais. Ces frais comprennent notamment les frais du représentant professionnel (le cas échéant), ainsi que les taxes correspondantes. Pour plus d’informations concernant la répartition des frais dans les procédures d’opposition, voir les Directives, partie C, Opposition, partie 1: Questions de procédure. Lorsque la décision comporte des erreurs manifestes relatives aux frais, les parties peuvent demander une rectification d’erreur (règle 53 du REMC) ou une révocation (article 80 du RMC), selon les circonstances (voir la partie A, section 6, Révocation de décisions, suppression d’inscriptions dans le registre et correction d’erreurs).
6.2 Détermination des frais
La décision fixant le montant des frais comprend le paiement forfaitaire prévu à la règle 94 du REMC pour la représentation professionnelle et les frais (voir ci-dessus)
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exposés par la partie ayant obtenu gain de cause, qu’ils aient été effectivement exposés ou non. La fixation des frais peut être révisée dans le cadre d’une procédure spécifique aux termes de l’article 85, paragraphe 6, du RMC.
6.3 Exécution forcée des décisions fixant le montant des frais
Article 86 du RMC.
Les procédures d’exécution forcée ne relèvent pas de la compétence de l’Office. Celles-ci doivent être engagées par les autorités nationales compétentes.
6.3.1 Conditions
La partie ayant obtenu gain de cause peut exécuter la décision fixant le montant des frais pour autant que:
la décision comporte une décision fixant le montant des frais en sa faveur; la décision soit devenue définitive; la partie peut apporter la preuve que la
décision est devenue définitive en produisant les extraits correspondants des bases de données de l’Office ou une confirmation individuelle de l’Office;
la décision soit revêtue de la formule exécutoire de l’autorité nationale compétente.
6.3.2 Autorité nationale
Chaque État membre désigne une autorité nationale chargée d’apposer la formule exécutoire aux décisions de l’Office fixant le montant des frais. L’État membre donne connaissance de la désignation à l’Office et à la Cour de justice (article 86, paragraphe 2, du RMC).
L’Office publie ces désignations au Journal officiel de l’OHMI.
Des références peuvent être trouvées pour les pays suivants: Allemagne (JO OHMI n° 6/2005, p. 853 et p. 855) Autriche (JO OHMI n° 4/2004, p. 559 et p. 561) Belgique (JO OHMI n° 4/2007) Danemark (JO OHMI n° 10/2002, p. 1883) Estonie (JO OHMI n° 10/2009) France (JO OHMI n° 5/2002, p. 886) Irlande (JO OHMI n° 3/2007) Pays-Bas (JO OHMI n° 12/1999, p. 1517) République tchèque (publication prochaine) Royaume-Uni (JO OHMI n° 12/1998, p. 1381) Slovaquie (JO OHMI n° 11/2004, p. 1273)
Certains autres États membres ont donné mandat à une autorité nationale (par exemple, dans le cas de l’Espagne, le Bureau technique général du ministère de la
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justice, par le décret royal 1523/1997), mais n’en ont pas encore informé l’OHMI ou la CJUE.
6.3.3 Procédure
a. La partie intéressée doit demander à l’autorité nationale compétente d’apposer la formule exécutoire à la décision. Pour l’instant, les conditions régissant la langue de la requête, la traduction des parties pertinentes de la décision, les taxes et la nécessité de faire appel à un représentant, dépendent de la pratique des États membres et ne sont pas harmonisées. Aussi sont-elles déterminées au cas par cas.
L’autorité compétente appose la formule exécutoire à la décision sans autre formalité que celle de la vérification de l’authenticité de la décision. En ce qui concerne les décisions erronées relatives aux frais ou à la fixation des frais, voir les paragraphes 6.1 et 6.2 ci-dessus.
b. Après l’accomplissement de ces formalités, la partie concernée peut poursuivre l’exécution forcée. L’exécution forcée est régie par les règles de la procédure civile en vigueur dans l’État sur le territoire duquel elle a lieu. L’exécution forcée ne peut être suspendue qu’en vertu d’une décision de la Cour de justice de l’Union européenne. Toutefois, le contrôle de la régularité des mesures d’exécution relève de la compétence des juridictions du pays concerné (article 86, paragraphe 4, du RMC).
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 5
REPRÉSENTATION PROFESSIONNELLE
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Table des matières
1 Introduction – Principe de représentation............................................... 4
2 Qui peut représenter des tiers? ............................................................... 4 2.1 Base de données des représentants......................................................... 5 2.2 Représentation professionnelle par des avocats.....................................6
2.2.1 Terme «avocat».............................................................................................. 6 2.2.2 Qualification .................................................................................................... 6 2.2.3 Nationalité et domicile professionnel .............................................................. 6 2.2.4 Habilitation à agir en matière de marques et/ou de dessins ou modèles....... 7
2.3 Mandataires agréés inscrits sur la liste tenue par l’Office ...................... 7 2.3.1 Habilitation en vertu de la législation nationale .............................................. 8 2.3.2 Nationalité et domicile professionnel ............................................................ 10 2.3.3 Attestation..................................................................................................... 10 2.3.4 Dérogations .................................................................................................. 10 2.3.5 Procédure d’inscription sur la liste................................................................ 10 2.3.6 Modification de la liste des représentants professionnels ............................ 11
2.3.6.1 Radiation ...................................................................................................11 2.3.6.2 Suspension de l’inscription sur la liste .......................................................12
2.3.7 Réinscription sur la liste des mandataires agréés........................................ 12
2.4 Représentation par un employé .............................................................. 13 2.4.1 Employés agissant au nom de leur employeur ............................................ 13 2.4.2 Représentation par des employés d’une personne morale à laquelle ils
sont économiquement liés............................................................................ 14
2.5 Représentation légale .............................................................................. 15
3 Désignation d’un représentant professionnel ...................................... 15 3.1 Conditions dans lesquelles la désignation d’un représentant
professionnel est obligatoire................................................................... 15 3.1.1 Domicile professionnel et siège.................................................................... 16 3.1.2 La notion de «dans la Communauté» .......................................................... 16
3.2 Conséquences du non-respect de l’obligation de désigner un représentant professionnel ..................................................................... 16 3.2.1 Procédure d’enregistrement ......................................................................... 16 3.2.2 Procédure d’opposition................................................................................. 17 3.2.3 Procédure d’annulation................................................................................. 18
3.3 Désignation d’un représentant lorsque celle-ci n’est pas obligatoire .. 18 3.4 Désignation d’un représentant ................................................................ 18
3.4.1 Désignation explicite..................................................................................... 18 3.4.2 Désignation implicite..................................................................................... 19 3.4.3 Groupements de représentants.................................................................... 19 3.4.4 Numéros d’identification ............................................................................... 20
4 Communication avec les représentants ................................................ 20
5. Pouvoirs ................................................................................................... 21
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5.1 Pouvoirs individuels ................................................................................ 22 5.2 Pouvoirs généraux ................................................................................... 22
5.2.1 Enregistrement des pouvoirs généraux........................................................ 22
5.3 Conséquences du non-dépôt d’un pouvoir demandé expressément par l’Office ................................................................................................ 23
6 Retrait d’un représentant ou d’un pouvoir ............................................ 23 6.1 Action engagée par la personne représentée ........................................ 23 6.2 Démission du représentant ..................................................................... 23
7 Décès ou incapacité juridique de la partie représentée ou de son représentant............................................................................................. 24 7.1 Décès ou incapacité juridique de la partie représentée......................... 24 7.2 Décès ou incapacité juridique du représentant...................................... 24
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1 Introduction – Principe de représentation
Article 92, paragraphes 1 et 2, et article 93, paragraphe 1, du RMC, règle 76 du REMC, article 77 du RMC
Les personnes qui ont leur domicile ou leur siège ou un établissement industriel ou commercial effectif et sérieux dans l’Union européenne ne sont pas tenues d’être représentées dans les procédures devant l’Office (voir le paragraphe 3.1.1 ci-dessous).
Les personnes physiques qui n’ont pas leur domicile ou les personnes morales qui n’ont ni siège ni établissement industriel ou commercial effectif et sérieux dans l’Union européenne doivent être représentées par un représentant établi dans l’Union européenne. Cette obligation vaut pour toutes les procédures devant l’Office, à l’exception de l’acte de dépôt d’une demande de marque communautaire. Voir le paragraphe 3.2.1 ci-dessous sur les conséquences de la non-désignation d’un représentant, lorsque la représentation est obligatoire, une fois la demande de marque communautaire déposée.
La représentation n’est pas nécessaire pour les demandes de renouvellement de marques communautaires ou de dessins ou modèles communautaires déposés ni pour le dépôt d’une requête en inspection publique.
En principe, les représentants devant l’Office ne doivent pas déposer de pouvoir, sauf si l’Office le demande expressément ou si, dans des procédures inter partes, l’autre partie en fait la demande expresse. En revanche, les employés agissant au nom de personnes physiques ou morales doivent déposer un pouvoir signé qui doit être versé au dossier.
Lorsqu’un représentant a été désigné, l’Office communique exclusivement avec lui.
Pour plus d’informations sur les aspects spécifiques de la représentation professionnelle lors de procédures devant l’Office en rapport avec les marques internationales, veuillez consulter le Manuel, partie M Marques Internationales.
La première partie de cette section (paragraphe 2) définit les différents types de représentants.
La deuxième (paragraphes 3 à 6) traite de la désignation des représentants ou de l’absence d’une telle désignation et des pouvoirs des représentants.
2 Qui peut représenter des tiers?
Article 92, paragraphe 3 et article 93, paragraphe 1, points a) et b), du RMC, règle 76 du REMC, et article 77, paragraphe 3 et article 78, paragraphe 1, points a) et b), du RDMC
La représentation dans des procédures juridiques est une profession réglementée dans tous les États membres, qui ne peut être exercée que dans des conditions spécifiques. La terminologie de l’article 93 du RMC englobe différentes catégories de représentants sous la dénomination de «représentants professionnels». On distingue les catégories suivantes de représentants dans les procédures devant l’Office:
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Les avocats (article 93, paragraphe 1, point a), du RMC et article 78, paragraphe 1, point a), du RDMC) sont des représentants professionnels qui, en fonction de la législation nationale, sont toujours habilités à représenter des tiers devant les offices nationaux (voir le paragraphe 2.2.).
Les autres mandataires agréés [article 93, paragraphe 1, point b), du RMC et article 78, paragraphe 1, point b), du RDMC] doivent satisfaire à des conditions complémentaires et être inscrits sur une liste tenue à cet effet par l’Office (liste des «représentants officiels agréés auprès de l’OHMI»). Parmi ceux-ci, il convient de distinguer deux groupes supplémentaires: les mandataires habilités à représenter des tiers dans des procédures relatives à des dessins ou modèles communautaires (DMC) («liste pour les dessins ou modèles») uniquement ou dans des procédures portant sur des marques communautaires (MC) et des DMC (voir le paragraphe 2.3). L’Office désigne collectivement ces autres professionnels sous le terme de «représentants professionnels»).
Plusieurs avocats et représentants professionnels peuvent s’organiser en entités appelées «groupements de représentants» (règle 76, paragraphe 9, du REMC) (voir le paragraphe 3.4.3).
La dernière catégorie de représentants sont les employés agissant en qualité de représentants de la partie concernée (article 92, paragraphe 3, première alternative, du RMC) (voir le paragraphe 2.4.1) et les employés de personnes morales qui sont économiquement liées (article 92, paragraphe 3, deuxième alternative, du RMC) (voir le paragraphe 2.4.2).
Il convient de distinguer les employés des représentants légaux au titre du droit national (voir le paragraphe 2.5).
2.1 Base de données des représentants
Toutes les personnes qui s’identifient en tant que représentants ou employés de parties individuelles aux procédures devant l’Office et qui remplissent les conditions énoncées dans les règlements sont inscrites dans la base de données des représentants et reçoivent un numéro d’identification. Cette base de données a une double fonction: elle fournit toutes les coordonnées de contact pertinentes sous le numéro d’identification attribué à tout type de représentant, ainsi que les informations publiques sur la liste des représentants professionnels agréés auprès de l’OHMI ou sur la liste des dessins ou modèles.
Tous les représentants, y compris les groupements de représentants, doivent préciser la catégorie à laquelle ils appartiennent, leur nom et leur adresse, conformément à la règle 1 du REMC.
Un représentant peut avoir plusieurs identifiants. Par exemple, des groupements de représentants peuvent avoir des identifiants différents pour leurs différentes adresses officielles (à distinguer des adresses postales différentes, qui peuvent être identifiées au moyen d’un identifiant unique; voir les Directives, partie E. Inscriptions au Registre, Section 1, Modification d’un enregistrement). De même, un représentant individuel peut avoir un identifiant en tant qu’employé assurant la représentation et un deuxième en tant qu’avocat à part entière.
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En principe, un avocat ne peut pas apparaître dans la base de données en tant que «représentant professionnel agréé auprès de l’OHMI», puisqu’il n’a pas besoin d’être admis par l’Office. Par conséquent, l’Office refuse pratiquement toujours les demandes introduites par des avocats en vue de figurer sur la liste des représentants professionnels agréés auprès de l’OHMI. La seule exception concerne le cas où un représentant professionnel repris sur la liste est également avocat et que cette double qualification est autorisée par la législation nationale.
La base de données des représentants professionnels est disponible en ligne. Les représentants y sont répertoriés comme suit: groupement, employé, avocat et représentant professionnel. En interne, cette dernière catégorie est subdivisée en deux sous-catégories: Type 1, qui couvre les mandataires en matière de dessins ou modèles exclusivement habilités à assurer la représentation en matière de dessins ou modèles communautaires au titre de l’article 78 du RDMC, et Type 2, qui comprend les mandataires en matière de marques et de dessins ou modèles au titre de l’article 93 du RMC.
2.2 Représentation professionnelle par des avocats
Article 93, paragraphe 1, point a), du RMC
Un avocat est un représentant professionnel qui est automatiquement et sans autre reconnaissance officielle autorisé à représenter des tiers devant l’Office pour autant qu’il remplisse les trois conditions suivantes:
a) Il doit être habilité à exercer sur le territoire d’un des États membres;
b) Il doit avoir son domicile professionnel dans l’Union européenne;
c) Il doit être habilité, dans cet État, à agir en qualité de mandataire en matière de marques.
2.2.1 Terme «avocat»
La directive n° 98/5/CE du 16 février 1998, JO CE L 77 du 14.3.1998, du Parlement européen et du Conseil définit le terme «avocat». Les titres professionnels sont définis dans la colonne «Terme utilisé au niveau national pour désigner un avocat» à l’Annexe 1 de cette section.
2.2.2 Qualification
La qualification dans l’un des États membres signifie que la personne doit être inscrite au barreau ou autorisée à exercer sous l’un des titres professionnels recensés à l’Annexe 1 conformément à la réglementation nationale applicable. L’Office ne vérifiera cette qualification qu’en cas de doute sérieux à cet égard.
2.2.3 Nationalité et domicile professionnel
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Il n’y a aucune condition à remplir en ce qui concerne la nationalité. L’avocat peut par conséquent être d’une nationalité autre que celles des États membres.
Le domicile professionnel doit être situé dans l’Union européenne (pour la définition de l’Union européenne, voir le paragraphe 3.1.2 ci-après). Une adresse de boîte postale ne constitue pas un domicile professionnel. Ce domicile peut ne pas être le seul lieu d’exercice du représentant. De plus, le domicile professionnel peut se trouver dans un État membre autre que celui dans lequel l’avocat est inscrit au barreau. Toutefois, les avocats qui ont leur seul et unique domicile professionnel en dehors de l’Union européenne ne sont pas habilités à représenter des tiers devant l’Office, même s’ils sont autorisés à exercer dans l’un des États membres.
Lorsqu’un groupement de représentants, tel qu’un cabinet d’avocats, compte plusieurs domiciles professionnels, il ne peut exercer sa mission de représentation qu’à une adresse professionnelle située dans l’Union européenne, et l’Office ne communique avec l’avocat qu’à une adresse au sein de l’Union européenne.
2.2.4 Habilitation à agir en matière de marques et/ou de dessins ou modèles
L’habilitation à agir en qualité de représentant en matière de marques et/ou de dessins ou modèles dans un État membre doit également inclure la représentation de clients devant le service central de la propriété industrielle de cet État. Cette condition s’applique à tous les États membres.
Les avocats visés à l’article 93, paragraphe 1, point a) du RMC qui remplissent les conditions exposées dans cet article sont habilités d’office et de droit à représenter leurs clients devant l’Office. Dans la pratique, cela signifie que, si un avocat est habilité à agir en matière de marques et/ou de dessins ou modèles devant le service central de la propriété industrielle de l’État membre dans lequel il est qualifié, il pourra également agir devant l’OHMI. Les avocats ne sont pas repris sur la liste des représentants professionnels mentionnée à l’article 93, paragraphe 2, du RMC, car les habilitations et les qualifications professionnelles spéciales auxquelles ces dispositions font référence concernent des personnes appartenant à des catégories de représentants professionnels spécialisés dans le domaine de la propriété industrielle ou des marques, alors que les avocats sont par définition habilités à représenter des tiers dans tous les domaines juridiques.
Si un avocat qui a déjà reçu un numéro d’identification en tant que tel demande à être inscrit sur la liste, il conservera son numéro, mais son statut passera de «avocat» à «représentant professionnel». La seule exception concerne le cas où un représentant professionnel repris sur la liste est également avocat et est autorisé par la législation nationale à exercer dans les deux contextes.
L’Annexe 1 explique en détail les règles spécifiques en vigueur dans chaque pays.
2.3 Mandataires agréés inscrits sur la liste tenue par l’Office
Article 93, paragraphe 1, point b) et article 93, paragraphe 2, du RMC et article 78, paragraphe 1, point b), du RDMC
Le second groupe de personnes habilitées à représenter professionnellement des tiers devant l’Office est constitué de celles dont le nom figure sur l’une des deux listes de
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représentants professionnels tenues par l’Office, à savoir la liste des représentants professionnels agréés auprès de l’OHMI et la liste pour les dessins ou modèles.
Pour cette catégorie de représentants professionnels, l’inscription sur la liste des représentants professionnels agréés auprès de l’OHMI ou sur la liste pour les dessins ou modèles les habilite à représenter des tiers devant l’Office. Un représentant qui figure sur la liste des représentants professionnels agréés auprès de l’OHMI mentionnée à l’article 93, paragraphe 1, point b, est d’office habilité à représenter des tiers en matière de dessins ou modèles conformément à l’article 78, paragraphe 1, point b), du RDMC et ne figurera pas sur la liste spécifique des mandataires agréés en matière de dessins ou modèles («liste pour les dessins ou modèles»).
Si une personne figurant sur la liste dressée au titre de l’article 93 du RMC demande à être inscrite sur la liste pour les dessins ou modèles reprenant le nom des mandataires habilités à agir exclusivement en matière de dessins ou modèles communautaires au titre de l’article 78, paragraphe 4, du RDMC, sa demande sera rejetée.
La liste pour les dessins ou modèles concerne uniquement les mandataires habilités à représenter des clients devant l’Office en matière de dessins ou modèles, mais pas en matière de marques.
L’Annexe 2 explique en détail les règles spécifiques en vigueur dans chaque pays.
L’inscription sur les listes implique le dépôt d’une demande complétée et signée par la personne intéressée, à l’aide du formulaire établi à cette fin par l’Office et disponible à l’adresse: http://oami.europa.eu/pdf/forms/prorep_form93_fr.pdf.
Pour figurer sur la liste, trois conditions doivent être remplies:
a) le représentant doit être un ressortissant de l’un des États membres;
b) il doit avoir son domicile professionnel dans la Communauté;
c) il doit être habilité en vertu de la législation nationale à représenter, en matière de marques, des tiers devant le service central de la propriété industrielle; à cet effet, il doit fournir une attestation délivrée par le service central de la propriété industrielle d’un État membre.
2.3.1 Habilitation en vertu de la législation nationale
Les conditions d’inscription sur la liste des représentants professionnels agréés auprès de l’OHMI et la liste pour les dessins ou modèles dépendent de la situation juridique dans l’État membre concerné.
Article 93, paragraphe 2, point c), du RMC et article 78, paragraphe 1, point b), du RDMC
Dans de nombreux États membres, le droit de représenter des tiers devant l’office national en matière de marques est subordonné à la possession d’une qualification professionnelle spéciale [article 93, paragraphe 2, point c), première alternative, du RMC]. La personne doit donc satisfaire à cette exigence pour être habilitée à agir en qualité de représentant. Dans d’autres États membres, cette qualification spéciale n’est pas exigée, ce qui signifie que la représentation en matière de marques est ouverte à
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tous. Dans ce cas, l’intéressé doit avoir représenté des tiers en matière de marques ou de dessins ou modèles devant l’office national concerné à titre habituel pendant au moins cinq ans [article 93, paragraphe 2, point c), deuxième alternative, du RMC]. Cette catégorie comporte une sous-catégorie, qui regroupe les États membres disposant d’un système de reconnaissance officielle de la qualification professionnelle en matière de représentation de tiers devant l’office national concerné, bien que cette reconnaissance ne constitue pas une condition préalable à l’exercice de la représentation professionnelle. Dans ce cas, les personnes ainsi reconnues ne sont pas soumises à la condition d’avoir représenté des tiers à titre habituel pendant au moins cinq ans.
Première alternative - Qualifications professionnelles spéciales
Lorsque, dans l’État membre concerné, le droit de représenter des tiers est subordonné à la possession de qualifications professionnelles spéciales, la personne qui demande à figurer sur la liste doit avoir acquis la qualification en question.
Les pays qui exigent cette qualification professionnelle spéciale (souvent au moyen d’un examen) sont l’Allemagne, l’Autriche, la Bulgarie, la Croatie, l’Espagne, l’Estonie, la France, la Hongrie, l’Irlande, l’Italie, la Lettonie, la Lituanie, la Pologne, le Portugal, la République tchèque, la Roumanie, le Royaume-Uni, la Slovaquie et la Slovénie.
Cependant, si l’intéressé confirme qu’il travaille pour deux groupements de représentants différents ou depuis deux adresses différentes, il peut se voir attribuer deux numéros différents. Il est également possible d’avoir deux numéros différents, l’un en tant qu’avocat et l’autre en tant que représentant professionnel agréé auprès de l’OHMI, lorsque le droit national autorise une double qualification (ce cumul n’est autorisé, par exemple, ni en Belgique ni en France).
Deuxième alternative - Expérience de cinq ans
Lorsque, dans l’État membre concerné, le droit de représenter des tiers n’est pas subordonné à la possession d’une qualification professionnelle spéciale, les personnes demandant leur inscription sur la liste doivent avoir exercé à titre habituel en qualité de représentants professionnels devant un service central de la propriété industrielle d’un État membre pendant cinq ans au moins.
Le président peut accorder une dérogation à cette exigence (voir le paragraphe 2.3.4).
C’est le cas du Benelux, du Danemark, de Malte, de la Finlande et de la Suède.
Troisième alternative - Reconnaissance par un État membre
Les personnes dont la qualification professionnelle pour assurer, en matière de marques et/ou de dessins ou modèles, la représentation de personnes physiques ou morales devant le service central de la propriété industrielle de l’un des États membres est reconnue officiellement, conformément à la réglementation établie par cet État, sont dispensées de la condition relative à l’exercice de la profession pendant au moins cinq ans.
Cette alternative a été appliquée dans de rares cas, au Luxembourg et aux Pays-Bas.
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2.3.2 Nationalité et domicile professionnel
Article 93, paragraphe 2, points a) et b), et article 93, paragraphe 4, du RMC
Le représentant professionnel qui demande de figurer dans la liste doit être un ressortissant d’un État membre et avoir son domicile professionnel ou son lieu de travail dans l’Union européenne. Le droit à représenter des tiers dans d’autres États membres ainsi que l’expérience professionnelle qui y a été acquise ne peuvent être prises en considération que dans le cadre de l’article 93, paragraphe 4, du RMC. Le président peut accorder une dérogation à cette exigence (voir le point 2.3.4).
2.3.3 Attestation
Article 93, paragraphe 3, du RMC
Le respect des conditions susmentionnées, prévues à l’article 93, paragraphe 2, du RMC, doit être démontré par une attestation délivrée par l’office national concerné. Certains offices nationaux délivrent des attestations individuelles, tandis que d’autres fournissent à l’Office des attestations en bloc. Ils transmettent régulièrement des listes actualisées des représentants professionnels habilités à représenter des clients devant eux (voir la communication n° 1/95 du président de l’Office du 18 septembre 1995; JO OHMI 1995, p. 16). Lorsque tel n’est pas le cas, l’intéressé doit joindre à sa demande une attestation individuelle. (voir http://oami.europa.eu/pdf/forms/prorep_form93_certificate_fr.pdf)
2.3.4 Dérogations
Article 93, paragraphe 4, du RMC
Le président de l’Office peut, dans certaines circonstances, accorder une dérogation à l’exigence d’être un ressortissant d’un État membre et d’avoir représenté des tiers en matière de marques à titre habituel pendant au moins cinq ans, à condition que le demandeur fournisse la preuve qu’il a acquis la qualification requise d’une autre manière. Ce pouvoir de dérogation est discrétionnaire.
Tous les cas qui ont été soumis au président de l’Office jusqu’à présent lui ont permis d’accorder une dérogation à l’exigence de nationalité. Quant aux dérogations à l’exigence d’une expérience de cinq ans, elles sont limitées aux cas où l’habilitation à représenter des tiers en matière de marques a été acquise d’une autre manière pendant une période équivalente de cinq ans.
Cela inclut par exemple les cas où le représentant professionnel, avant de devenir agent en propriété industrielle, était chargé de mener à bien des opérations relatives aux marques au sein d’une entreprise sans intervenir personnellement auprès de l’office national concerné. L’expérience doit avoir été acquise dans un État membre.
2.3.5 Procédure d’inscription sur la liste
Article 93, paragraphe 3, et article 88 du RMC
Représentation professionnelle
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L’inscription sur la liste est notifiée par une décision positive, reprenant le numéro d’identification attribué au représentant professionnel. Les inscriptions sur la liste des représentants professionnels agréés auprès de l’OHMI ou sur la liste pour les dessins ou modèles sont publiées au Journal officiel de l’Office.
Si l’une des conditions de l’inscription n’est pas remplie et que le demandeur s’est vu offrir la possibilité de répondre à la notification d’irrégularité de l’Office à cet égard, une décision négative est prise, sauf si le demandeur remédie à l’irrégularité en question. La partie concernée peut former un recours contre cette décision (article 58, paragraphe 1, et article 133 du RMC).
Les représentants professionnels peuvent obtenir gratuitement une copie supplémentaire de la décision. Les dossiers relatifs aux demandes d’inscription sur la liste des représentants professionnels agréés auprès de l’OHMI ou la liste pour les dessins ou modèles ne sont pas ouverts à l’inspection publique.
2.3.6 Modification de la liste des représentants professionnels
2.3.6.1 Radiation
Première alternative - à la requête du mandataire agréé
Règle 78, paragraphes 1 et 6 du REMC
L’inscription d’un mandataire agréé sur la liste des représentants professionnels agréés auprès de l’OHMI ou sur la liste pour les dessins ou modèles sera radiée à sa requête.
La radiation est versée au dossier tenu par l’Office. Elle est notifiée au mandataire et publiée au Journal officiel de l’Office.
Deuxième alternative, radiation d’office de la liste des représentants professionnels agréés
Règle 78, paragraphes 2 et 5, du REMC, et article 64, paragraphe 2, du RDMC
L’inscription d’un mandataire agréé sur la liste des représentants professionnels agréés auprès de l’OHMI ou sur la liste pour les dessins ou modèles est radiée d’office
a) en cas de décès ou d’incapacité légale;
b) s’il ne possède plus la nationalité d’un État membre, à moins que le président de l’Office n’accorde une dérogation en vertu de l’article 93, paragraphe 4, point b), du RMC;
c) s’il n’a plus son domicile professionnel ou le lieu de son emploi dans l’UE;
d) s’il n’est plus habilité à représenter des tiers devant le service central de la propriété industrielle d’un État membre.
Lorsqu’un représentant professionnel passe du statut de mandataire en matière de dessins ou modèles à celui de mandataire en marques, il est radié de la liste pour les
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dessins ou modèles et inscrit sur celle des représentants professionnels agréés auprès de l’OHMI.
L’Office peut être informé de ces événements de diverses manières. En cas de doute, l’Office cherche à clarifier la situation auprès de l’office national concerné avant de radier le mandataire de la liste. L’Office entend également le mandataire agréé, en particulier lorsque celui-ci pourrait éventuellement être maintenu sur la liste sur une autre base juridique ou factuelle.
La radiation est versée au dossier tenu par l’Office. La décision de radiation est notifiée au mandataire et publiée au Journal officiel de l’Office. La partie concernée peut former un recours contre cette décision. (Voir Décision 2009-1 du 16 juin 2009 du présidium des chambres de recours relative aux Instructions aux parties des procédures devant les Chambres de Recours).
2.3.6.2 Suspension de l’inscription sur la liste
Règle 78, paragraphes 3 et 5, du REMC
L’Office suspend d’office l’inscription sur la liste des représentants professionnels ou la liste pour les dessins ou modèles agréés auprès de l’OHMI de tout mandataire agréé dont l’habilitation à représenter des personnes physiques ou morales devant le service central de la propriété industrielle d’un État membre a été suspendue.
Le service central de la propriété industrielle de l’État membre concerné doit, dès qu’il en a connaissance, informer rapidement l’Office de tout événement de ce type. Avant de prendre la décision de suspendre une inscription (décision qui est susceptible de recours), l’Office en informe le mandataire concerné et lui offre la possibilité d’émettre ses observations. (Voir Décision 2009-1 du 16 juin 2009 du présidium des chambres de recours relative aux Instructions aux parties des procédures devant les Chambres de Recours).
2.3.7 Réinscription sur la liste des mandataires agréés
Règle 78, paragraphe 4, du REMC
Sur requête, toute personne radiée ou suspendue est réinscrite sur la liste des représentants professionnels agréés, une fois disparus les motifs qui ont conduit à sa radiation ou à sa suspension.
Une nouvelle demande doit alors être déposée selon la procédure normale d’inscription sur la liste des représentants professionnels agréés (voir le paragraphe 2.2 ci-dessus).
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2.4 Représentation par un employé
Article 92, paragraphe 3, du RMC
Les personnes physiques et morales qui ont leur domicile ou leur siège ou un établissement industriel ou commercial effectif et sérieux dans la Communauté peuvent agir, devant l’Office, par l’entremise d’une personne physique qu’elles emploient («employé»).
Les employés des personnes morales visées ci-dessus peuvent également agir au nom d’autres personnes morales qui sont économiquement liées à la première personne morale (décision du 25 janvier 2012, R 0466/2011-4 «FEMME LIBRE», paragraphe 10) (voir le paragraphe 2.4.2). Tel est le cas même si ces autres personnes morales n’ont ni domicile ni siège ni établissement industriel ou commercial effectif et sérieux dans l’UE (voir le paragraphe 2.4.2). Lorsqu’une personne morale hors de l’UE est représentée de cette manière, elle n’est pas tenue de désigner un représentant professionnel au sens de l’article 93, paragraphe 1, du RMC, ce qui fait exception à la règle disposant que les parties à une procédure qui sont domiciliées hors de l’UE doivent obligatoirement désigner un mandataire agréé.
Règle 83, paragraphe 1, point h), du REMC
Sur les formulaires mis à disposition par l’Office conformément à la règle 83, paragraphe 1, du REMC, l’employé qui signe la demande ou la requête doit indiquer son nom et cocher les cases qui concernent les employés et les pouvoirs, et remplir la rubrique réservée aux représentants professionnels à la page 1 du formulaire ou la fiche de renseignement concernant les représentants professionnels.
Règle 12, point b), et règle 84, paragraphe 2, point e), du REMC
Le nom du ou des employés concernés est inscrit dans la base de données et publié sous la rubrique «représentants» dans le Bulletin des marques communautaires.
2.4.1 Employés agissant au nom de leur employeur
Article 92, paragraphe 3, du RMC et règle 76, paragraphe 2, du REMC
Le cas des employés agissant au nom de leur employeur ne constitue pas un cas de représentation professionnelle au titre de l’article 93, paragraphe 1, du RMC. À ce titre, la règle 94, paragraphe 7, point d) ne s’applique pas à la répartition et à la détermination des frais dans les procédures inter partes (décision du 3 février 2011, R 0898/2010-1 «MY BEAUTY», paragraphes 11 et 12).
Toute personne physique ou morale qui est partie à une procédure devant l’Office peut agir par l’entremise de ses employés, à la seule condition que l’employé dépose auprès de l’Office un pouvoir écrit (décision du 25 janvier 2012, R 0466/2011-4 «FEMME LIBRE», paragraphe 9). Aucune autre condition, telle que l’habilitation des employés à représenter des tiers devant les offices nationaux, ne doit être satisfaite.
En règle générale, l’Office ne vérifie pas la réalité du lien entre l’employé et la partie à la procédure, à moins qu’il ait des raisons d’en douter, par exemple lorsque l’employé
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et l’employeur indiquent des adresses professionnelles différentes ou lorsqu’une même personne est désignée comme l’employé de plusieurs personnes morales.
2.4.2 Représentation par des employés d’une personne morale à laquelle ils sont économiquement liés
Article 92, paragraphe 3, du RMC
L’employé d’une personne morale peut représenter une autre personne morale à condition que ces deux personnes morales soient économiquement liées. Ce type de relations existe en cas de dépendance économique entre ces deux personnes morales, que la partie à la procédure dépende de l’employeur de l’employé concerné, ou vice versa. Cette dépendance économique peut exister:
- soit parce que les deux personnes morales sont membres du même groupe, soit - parce qu’il existe entre elles des mécanismes de contrôle de gestion.
En vertu de l’article 2 de la directive 80/723/CEE de la Commission du 25 juin 1980 (JO CE L 195 p. 35) relative à la transparence des relations financières entre les États membres et les entreprises publiques, et de l’article 10 du règlement (CE) n° 240/96 de la Commission du 31 janvier 1996 concernant l’application de l’article 85, paragraphe 3 du traité à des catégories d’accords de transfert de technologie (JO CE L 31 p. 2), une entreprise est réputée avoir des relations économiques avec une autre entreprise:
- lorsqu’elle détient plus de la moitié du capital de l’autre entreprise, ou; - lorsqu’elle détient plus de la moitié des droits de vote, ou; - lorsqu’elle dispose du pouvoir de désigner plus de la moitié des membres du
conseil d’administration, ou; - lorsqu’elle a le droit de gérer les affaires de l’entreprise.
Conformément à la jurisprudence liée à l’article 106 TFUE, des relations économiques existent également lorsque deux entreprises constituent une unité économique dans laquelle la filiale ou l’agence n’a pas de réelle autonomie dans la définition de sa stratégie commerciale.
En revanche, les conditions suivantes ne sont pas suffisantes pour établir une relation économique:
- un lien établi en vertu d’un contrat de licence d’une marque; - une relation contractuelle entre deux entreprises à des fins de représentation
mutuelle ou d’assistance juridique; - une simple relation fournisseur/client, par exemple sur la base d’un contrat de
distribution exclusive ou de franchise.
Lorsqu’un représentant employé souhaite faire valoir ses liens économiques avec la personne représentée, il doit cocher la partie correspondante du formulaire et indiquer son nom et les nom et adresse de son employeur. Il lui est recommandé de préciser la nature des liens économiques, sauf si celle-ci est évidente à la lumière des documents soumis. En règle générale, l’Office n’effectue aucune vérification à cet égard, sauf s’il a des raisons de douter de la réalité de ces liens, auquel cas il peut demander un complément d’information et, si nécessaire, la production d’une preuve écrite.
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2.5 Représentation légale
On entend par représentation légale la représentation de personnes physiques ou morales par d’autres personnes, conformément à la législation nationale. Par exemple, le président d’une société est le représentant légal de celle-ci.
Les personnes morales ne peuvent agir que par l’entremise de personnes physiques. Lorsque cette personne physique n’est pas simplement un employé, mais qu’elle est, en vertu de la législation applicable aux personnes morales, autorisée de droit à représenter la personne morale dans toutes ses actions juridiques, il n’est pas nécessaire d’y faire référence comme étant un «employé», ni de déposer pour elle un pouvoir écrit. Il suffit, dans ce cas, d’indiquer sous la ou les signatures, outre le nom de la ou des personnes physiques signataires, leur fonction au sein de la société, par exemple «président», «chief executive officer», «gérant», «procuriste», «Geschäftsführer» ou «Prokurist».
Par ailleurs, il n’y a pas de représentation au sens du RMC lorsque, en vertu de la législation nationale en vigueur, une personne physique ou morale agit, dans des circonstances particulières, par l’entremise d’un représentant légal, par exemple lorsque des mineurs sont représentés par leurs parents ou un tuteur, ou lorsqu’une entreprise est représentée par un liquidateur judiciaire. Dans ces cas-là, le signataire doit prouver qu’il est habilité à signer, mais ne doit pas produire un pouvoir.
Il convient toutefois de garder à l’esprit qu’une personne morale qui s’adresse à l’OHMI depuis l’extérieur de l’Union européenne doit être représentée par un représentant professionnel de l’UE. Cette obligation vaut pour toutes les procédures devant l’Office, à l’exception de l’acte de dépôt d’une demande de marque communautaire (la représentation n’est pas nécessaire pour les demandes de renouvellement de marques communautaires ou de dessins ou modèles communautaires déposés ni pour le dépôt d’une requête en inspection publique). Voir le paragraphe 3.2.1 ci-dessous sur les conséquences de la non-désignation d’un représentant, lorsque la représentation est obligatoire, une fois la demande de marque communautaire déposée.
3 Désignation d’un représentant professionnel
3.1 Conditions dans lesquelles la désignation d’un représentant professionnel est obligatoire
À l’exception du cas évoqué au paragraphe 2.4.2 ci-dessus, la désignation d’un représentant professionnel est obligatoire pour les parties à la procédure devant l’Office qui n’ont ni domicile ni siège ni établissement industriel ou commercial effectif et sérieux dans l’Union Européenne. Cette obligation vaut pour toutes les procédures devant l’Office, à l’exception du dépôt d’une demande de marque communautaire.
Cette obligation s’applique également aux enregistrements internationaux désignant l’UE. Pour de plus amples informations sur ce point, veuillez consulter le Manuel, partie M, Marques internationales.
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3.1.1 Domicile professionnel et siège
Le critère en matière de représentation obligatoire est le domicile professionnel, le siège ou l’établissement commercial et non la nationalité. Ainsi, un ressortissant français domicilié au Japon doit être représenté, alors qu’un ressortissant australien domicilié en Belgique n’a pas besoin de représentation. L’Office détermine ce critère en fonction de l’adresse indiquée. Lorsque la partie à la procédure indique une adresse en dehors de l’UE, mais dispose d’une adresse ou d’un établissement dans l’UE, elle doit fournir les indications et explications pertinentes, et toute correspondance devra lui être envoyée à l’adresse dans l’UE. Les critères du siège ou de l’établissement industriel ou commercial effectif et sérieux ne sont pas remplis lorsque la partie à la procédure dispose simplement d’une boîte postale ou d’une adresse de complaisance dans l’UE, ou si le requérant indique l’adresse d’un agent domicilié dans l’UE. Une filiale n’est pas un établissement industriel ou commercial effectif et sérieux, étant donné que la filiale a sa propre personnalité juridique (décision du 01 April 2014, R 1969/2013-4 «DYNATRACE», paragraphes 17 à 19). Lorsque la partie à la procédure indique une adresse à son nom dans l’UE, l’Office ne vérifie pas ce point, sauf s’il a des raisons exceptionnelles de douter de sa véracité.
Pour les personnes morales, le domicile est déterminé conformément à l’article 65 TFUE). Le siège ou l’établissement principal effectif doit être implanté dans l’UE. Le fait que la société soit régie par le droit d’un État membre ne suffit pas.
3.1.2 La notion de «dans la Communauté»
Article 92, paragraphe 2, du RMC
Au sens de l’article 92, paragraphe 2, du RMC, le territoire concerné est celui de l’Union européenne, lequel englobe tous les États membres visés à l’article 355 du traité FUE. Il convient de garder à l’esprit que les membres de l’Espace économique européen en dehors de l’UE (c’est-à-dire les États membres de l’AELE) ne sont pas considérés comme remplissant ce critère (décision du 22 juin 2011, R 2020/2010-4 «GRAND PRIX», paragraphes 13 et 14).
3.2 Conséquences du non-respect de l’obligation de désigner un représentant professionnel
Article 93, paragraphe 1, du RMC
Lorsqu’une partie à une procédure devant l’Office (demandeur, titulaire, opposant, personne demandant l’annulation d’une marque communautaire) se trouve dans l’une des situations décrites au paragraphe 3.1, mais a omis, dans sa demande ou dans sa requête, de désigner un représentant au sens de l’article 93, paragraphe 1, du RMC, ou lorsque l’obligation d’être représenté n’est plus remplie à un stade ultérieur de la procédure (par exemple, lorsque le représentant démissionne), les conséquences juridiques qui en découlent dépendent de la nature de la procédure engagée.
3.2.1 Procédure d’enregistrement
Article 92, paragraphe 2, du RMC et règle 9, paragraphe 3, du REMC
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Lorsque la représentation est obligatoire et que le demandeur de marque communautaire omet de désigner un représentant professionnel sur le formulaire de demande, l’examinateur invite le demandeur, en début de procédure et dans le cadre de l’examen des conditions de forme du dépôt prévu à la règle 9, paragraphe 3, du REMC, à désigner un représentant dans un délai de deux mois. Si le demandeur ne remédie pas à l’irrégularité constatée dans le délai imparti, sa demande est rejetée.
La même règle s’applique lorsque le demandeur cesse d’être représenté au cours de la procédure d’enregistrement, à n’importe quel moment avant l’enregistrement, c’est- à-dire même pendant la période qui s’écoule entre la publication de la demande de marque communautaire et l’enregistrement de cette marque.
Lorsqu’une requête spécifique («collatérale») est adressée au nom du demandeur de la marque communautaire au cours de la procédure d’enregistrement, par exemple une requête en inspection publique, une demande d’enregistrement d’une licence ou une requête en restitutio in integrum, il n’est pas nécessaire de répéter la procédure de désignation d’un représentant. L’Office communique dans ce cas avec le représentant dont le nom figure au dossier, et le représentant du demandeur du changement, s’il ne s’agit pas de la même personne.
3.2.2 Procédure d’opposition
Les paragraphes précédents s’appliquent aux demandeurs de marque communautaire. La procédure utilisée pour remédier à l’irrégularité concernant la représentation se déroule en dehors de la procédure d’opposition, laquelle se clôture par le refus de la demande de marque communautaire si le demandeur ne remédie pas aux irrégularités constatées dans le délai imparti.
Règle 15, paragraphe 2, point h), aliéna ii, et règle 17, paragraphe 4, du REMC
En ce qui concerne l’opposant, toute irrégularité initiale en matière de représentation constitue un motif d’irrecevabilité de l’opposition. Lorsque l’acte d’opposition ne contient pas d’indication de la désignation d’un représentant, l’examinateur, en vertu de l’article 93, paragraphe 1, du RMC, invite l’opposant à en désigner un dans un délai de deux mois. L’opposition est rejetée pour irrecevabilité si cette condition n’est pas remplie dans le délai imparti (voir le paragraphe 2.4.2.6 des directives, Partie B, Section 1).
Lorsqu’un représentant démissionne, la procédure se poursuit avec l’opposant lui- même s’il est domicilié dans l’UE. L’autre partie est informée de la démission du représentant. Si la partie dont le représentant a démissionné n’est pas domiciliée dans l’UE, une lettre est envoyée pour informer la partie concernée que, en vertu de l’article 92, paragraphe 2, du RMC, les parties qui n’ont ni domicile ni siège ni établissement industriel ou commercial effectif et sérieux dans la Communauté doivent être représentées devant l’Office conformément à l’article 93, paragraphe 1, du RMC dans toutes les procédures, à l’exception du dépôt d’une demande de marque communautaire, et qu’un nouveau représentant doit être désigné dans un délai de deux mois.
La non-désignation d’un représentant entraîne le rejet de l’opposition pour irrecevabilité.
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En cas de changement de représentant au cours d’une procédure d’opposition, l’Office en informe l’autre partie en envoyant une copie de la lettre et de l’autorisation (le cas échéant).
3.2.3 Procédure d’annulation
Règle 37, point c), sous ii), et règle 39, paragraphe 3, du REMC
Dans la procédure d’annulation, le point ci-dessus concernant l’opposition s’applique mutatis mutandis à la personne qui dépose une demande en déchéance ou en nullité d’une marque communautaire.
Lorsque le titulaire d’une marque communautaire cesse d’être représenté, l’examinateur l’invite à désigner un représentant. Si le titulaire ne se soumet pas à cette invitation, toutes ses déclarations au cours de la procédure sont ignorées, et sa requête est examinée à la lumière des éléments de preuve dont dispose l’Office. La marque communautaire ne sera toutefois pas annulée simplement parce que le titulaire de cette marque cesse d’être représenté après l’enregistrement.
3.3 Désignation d’un représentant lorsque celle-ci n’est pas obligatoire
Lorsqu’une partie à la procédure devant l’Office n’est pas tenue d’être représentée, elle peut toutefois désigner, à tout moment, un représentant au sens de l’article 92 ou 93 du RMC. Dans ce cas, le paragraphe 3.4 s’applique, ainsi que les conditions régissant la présentation d’un pouvoir (voir le paragraphe 5 ci-après).
Lorsqu’un représentant a été désigné, l’Office communique exclusivement avec lui (voir le paragraphe 4 ci-après).
3.4 Désignation d’un représentant
3.4.1 Désignation explicite
Normalement, le représentant est désigné sur le formulaire officiel de l’Office au moment de l’ouverture de la procédure, par exemple le formulaire de demande ou le formulaire d’opposition. Plusieurs représentants (jusqu’à un maximum de deux) peuvent être désignés en cochant la case correspondante («pluralité de représentants») et en fournissant, pour chaque représentant supplémentaire, les informations requises.
Un représentant peut également être désigné par une communication ultérieure, qui doit être signée soit par la partie à la procédure, soit par son représentant (autodésignation). La désignation doit être sans équivoque.
Une communication relative à une procédure particulière (procédure d’enregistrement ou d’opposition, par exemple), accompagnée d’un pouvoir signé par la partie à la procédure, implique la désignation d’un représentant. Cela vaut également pour les pouvoirs généraux présentés de la même manière. Pour plus d’informations sur les pouvoirs généraux, voir le paragraphe 5.2 ci-après.
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3.4.2 Désignation implicite
Les demandes, requêtes, etc. déposées au nom des parties par un représentant (ci- après, le «nouveau» représentant) autre que celui mentionné dans notre registre (ci- après, l’«ancien» représentant) sont acceptées dans un premier temps.
L’Office envoie ensuite un courrier au «nouveau» représentant pour l’inviter à confirmer sa désignation dans un délai d’un mois. Dans ce courrier, le représentant sera averti qu’à défaut de répondre dans le délai imparti, l’Office présumera qu’il n’a pas été désigné en qualité de représentant.
Si le «nouveau» représentant confirme sa désignation, la demande est prise en considération et l’Office envoie toutes les communications ultérieures à ce «nouveau» représentant.
Si le «nouveau» représentant ne répond pas dans un délai d’un mois ou confirme qu’il n’a pas été désigné comme «nouveau» représentant, la procédure se poursuit avec l’«ancien» représentant. La demande et la réponse du «nouveau» représentant ne seront pas prises en compte et seront transmises à l’«ancien» représentant seulement à titre d’information.
De manière plus spécifique, lorsque la demande conduit à la clôture de la procédure (retrait/limitation), le «nouveau» représentant doit confirmer sa désignation à ce titre pour que la clôture de la procédure ou la limitation puisse être acceptée. En tout état de cause, la procédure n’est pas suspendue.
3.4.3 Groupements de représentants
Règle 76, paragraphe 9, du REMC
Il est possible de désigner un groupement de représentants (cabinets d’avocats, de représentants professionnels ou cabinets mixtes, par exemple) au lieu de désigner individuellement chaque représentant exerçant au sein de ce groupement.
Dans ce cas, les renseignements appropriés doivent être fournis, en indiquant uniquement le nom du groupement de représentants sans ajouter le nom de chaque représentant qui le constitue. L’expérience a montré que, souvent, les renseignements fournis portaient à confusion. Dans ce cas, l’Office interprète, dans la mesure du possible, ces indications comme la désignation accompagnée d’un pouvoir d’un groupement de représentants mais, s’il y a lieu, met en garde le représentant concerné pour l’avenir.
La désignation d’un groupement de représentants s’étend automatiquement à tout représentant professionnel qui devient membre dudit groupement après la désignation initiale. À l’inverse, tout représentant qui quitte le groupement cesse automatiquement d’être mandaté. Il n’est ni nécessaire ni recommandé de communiquer à l’Office les noms des représentants qui constituent le groupement. Il est néanmoins vivement recommandé de notifier à l’Office tout changement et toute information concernant les représentants qui quittent le groupement. L’Office se réserve le droit de vérifier si un représentant travaille effectivement au sein du groupement si cette vérification s’impose en raison des circonstances.
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Article 93, paragraphe 1, du RMC et règle 79 du REMC
La désignation d’un groupement de représentants ne permet pas de déroger à la règle générale selon laquelle seuls les représentants professionnels au sens de l’article 93, paragraphe 1, du RMC peuvent agir légalement au nom de tiers devant l’Office. Ainsi, toute demande, requête ou communication doit être signée par une personne physique qui dispose du droit de représentation. Le représentant doit indiquer son nom sous sa signature. Il peut également indiquer son numéro d’identification personnel, si celui-ci lui a été communiqué par l’Office, même si l’obtention de ce numéro n’est pas nécessaire, dans la mesure où celui du groupement prévaut.
3.4.4 Numéros d’identification
Sur tous les formulaires et communications adressés à l’Office, les coordonnées (adresse, numéro de téléphone, etc.) du représentant peuvent et doivent de préférence être remplacées par son nom et le numéro d’identification attribué par l’Office. L’Office attribuera ces numéros d’identification non seulement aux mandataires agréés qui figurent sur la liste tenue par ses soins (voir le paragraphe 2.2 ci-dessus), mais aussi aux avocats et aux groupements de représentants. En outre, lorsque les représentants ou les groupements de représentants utilisent plusieurs adresses, un numéro d’identification sera attribué pour chaque adresse.
Le numéro d’identification peut être trouvé en consultant les dossiers du représentant concerné sur notre site internet: www.oami.europa.eu.
4 Communication avec les représentants
Règle 77 du REMC
Toute notification ou autre communication adressée par l’Office à un représentant dûment agréé a le même effet que si elle était adressée à la personne représentée. De même, toute communication adressée à l’Office par un représentant dûment agréé a le même effet que si elle émanait de la personne représentée (décision du 24 novembre 2011, R 1729/2010-1 «WENDY’S OLD FASHIONED HAMBURGERS», paragraphe 21).
Règle 1, paragraphe 1, point e), Règle 67, paragraphe 2, et Règle 76, paragraphe 8, du REMC
Une partie à la procédure devant l’Office peut désigner plusieurs représentants, auquel cas chaque représentant peut agir soit conjointement soit séparément, sauf disposition contraire prévue par le pouvoir déposé auprès de l’Office. L’Office ne communique toutefois qu’avec le premier représentant cité dans la demande, à l’exception des cas suivants:
- lorsque le demandeur indique une adresse différente de celle du domicile élu conformément à la règle 1, paragraphe 1, point e);
- lorsque le représentant supplémentaire est désigné pour une procédure collatérale spéciale (comme l’inspection publique ou la procédure d’opposition), auquel cas l’Office procède en conséquence.
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Règle 75, paragraphe 1, du REMC
Lorsqu’il y a plus d’un demandeur de marque communautaire, opposant ou autre partie à la procédure devant l’Office, le représentant désigné par le demandeur, etc. cité en premier lieu dans la demande est réputé être le représentant commun de l’ensemble de ces personnes. Si la première personne citée n’a pas désigné de représentant et que l’une des autres personnes est tenue d’en désigner un et qu’elle l’a fait, ce représentant est considéré comme le représentant commun de l’ensemble de ces personnes.
Lorsque l’un des cotitulaires est tenu d’être représenté devant l’Office, mais n’a pas désigné de représentant professionnel, l’Office communiquera avec la personne domiciliée au sein de l’UE qui est citée en premier lieu dans la demande.
Articles 92 et 93 du RMC et règle 67 du REMC
Lorsqu’un représentant au sens de l’article 92 ou 93 du RMC a été désigné, l’Office communique exclusivement avec lui.
5. Pouvoirs
Article 92, paragraphe 3, et article 93, paragraphe 1, du RMC et règle 76 du REMC
En principe, les représentants professionnels ne doivent pas déposer de pouvoir pour agir devant l’Office. Cependant, tout représentant professionnel (avocat ou mandataire agréé auprès de l’OHMI figurant sur la liste, y compris un groupement de représentants) agissant devant l’Office doit déposer un pouvoir qui sera versé au dossier si l’Office le demande expressément ou, dans le cas de procédures impliquant plusieurs parties, si l’autre partie en fait la demande expresse.
Dans ce cas, l’Office invite le représentant à déposer le pouvoir dans un délai déterminé (voir le Manuel Partie A, Section 1, Moyens de transmission, délais). Le courrier adressé au représentant l’avertit qu’en l’absence de réponse dans le délai imparti, l’Office présumera qu’il n’a pas été désigné en tant que représentant et la procédure se poursuivra directement avec la partie représentée. Lorsque la représentation est obligatoire, la partie représentée est invitée à désigner un nouveau représentant, et les dispositions du paragraphe 3.2 ci-dessus s’appliquent. Les actes accomplis par le représentant, à l’exception du dépôt de la demande, sont réputés non avenus si la partie représentée ne les confirme pas dans le délai spécifié par l’Office.
Les employés agissant au nom de personnes physiques ou morales doivent déposer un pouvoir signé qui sera versé au dossier.
Le pouvoir doit être signé par la partie à la procédure. Dans le cas de personnes morales, il doit être signé par une personne habilitée à agir au nom de cette personne morale, conformément à la législation nationale en vigueur. L’Office ne vérifie pas cette habilitation.
De simples photocopies de l’original signé peuvent être produites, y compris par télécopie. Les documents originaux sont versés au dossier et ne peuvent par conséquent pas être renvoyés à la personne qui les a soumis.
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Les pouvoirs peuvent être déposés sous la forme de pouvoirs individuels ou de pouvoirs généraux.
5.1 Pouvoirs individuels
Règle 76, paragraphe 1, et règle 83, paragraphe 1, point h), du REMC
Des pouvoirs individuels peuvent être établis au moyen du formulaire fourni par l’Office en vertu de la règle 83, paragraphe 1, point h), du REMC. Ils doivent indiquer la procédure à laquelle ils se rapportent (par exemple, «concernant la demande de marque communautaire n° 12345»). Le pouvoir s’étend à tous les actes accomplis pendant la durée de validité de l’enregistrement de marque concerné. Plusieurs procédures peuvent être mentionnées.
Le pouvoir individuel, présenté sur le formulaire fourni par l’Office ou sur un formulaire établi par le représentant lui-même, peut comporter des limitations quant à son étendue.
5.2 Pouvoirs généraux
Règle 76, paragraphe 1, et règle 83, paragraphe 1, point h), du REMC
Un pouvoir général autorise le représentant, le groupement de représentants ou l’employé, à effectuer tous les actes dans le cadre de toutes les procédures devant l’Office, y compris, sans s’y limiter, le dépôt d’une demande de marque communautaire, le suivi de la procédure y afférente, la formation d’oppositions et le dépôt de demandes en déchéance ou en nullité, ainsi que de toutes les procédures relatives à des dessins ou modèles communautaires enregistrés et des marques internationales. Le pouvoir doit être présenté sur le formulaire fourni par l’Office, ou sur un formulaire portant les mêmes indications. Le pouvoir doit couvrir toutes les procédures devant l’Office et ne peut contenir aucune restriction. Par exemple, lorsque le pouvoir se réfère au «dépôt de demandes de marques communautaires, au suivi de la procédure y afférente et à la défense de ces demandes», il n’est pas recevable car il n’autorise pas à former des oppositions ni à déposer des requêtes en déchéance ou en nullité. Lorsqu’un pouvoir contient de telles restrictions, il est traité comme un pouvoir individuel.
5.2.1 Enregistrement des pouvoirs généraux
Depuis avril 2002, et conformément à la communication n° 2/03 du président de l’Office du 10 février 2003, l’Office n’attribue plus de numéro d’identification aux pouvoirs et ne notifie plus d’aucune manière les représentants du traitement interne des pouvoirs déposés à l’Office. Toutefois, la cessation de l'attribution de ces numéros d'autorisation n'affecte pas l’émission des numéros d'identification attribués aux représentants inscrits dans la base de données de représentants.
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5.3 Conséquences du non-dépôt d’un pouvoir demandé expressément par l’Office
a) Si la représentation n’est pas obligatoire, la procédure se poursuit avec la personne représentée.
b) Si la représentation est obligatoire, les dispositions prévues au paragraphe 3.2 ci- dessus s’appliquent.
6 Retrait d’un représentant ou d’un pouvoir
Un retrait ou un changement de représentant peut être demandé par la personne représentée, l’ancien représentant ou le nouveau représentant.
6.1 Action engagée par la personne représentée
Règle 79 du REMC
La personne représentée peut, à tout moment, révoquer un représentant ou lui retirer un pouvoir, en adressant à l’Office une communication écrite et signée. Le retrait d’un pouvoir implique la révocation du représentant concerné.
Règle 76, paragraphe 6, du REMC
Lorsque la personne représentée notifie à son représentant qu’elle met fin à sa mission sans en informer l’Office, cette décision n’a aucun effet dans la procédure devant l’Office tant qu’elle ne lui est pas communiquée. Lorsque la partie à la procédure est tenue d’être représentée, les dispositions prévues au paragraphe 3.2 ci-dessus s’appliquent.
6.2 Démission du représentant
Le représentant peut, à tout moment, adresser une communication signée à l’Office lui annonçant sa décision de démissionner de sa fonction de représentation. S’il déclare que sa mission sera désormais remplie par un autre représentant, l’Office enregistre la modification et communique par la suite avec le nouveau représentant. Lorsque la personne représentée est tenue de l’être, les dispositions prévues au paragraphe 3.2 ci-dessus s’appliquent.
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7 Décès ou incapacité juridique de la partie représentée ou de son représentant
7.1 Décès ou incapacité juridique de la partie représentée
Règle 76, paragraphe 7, du REMC
Sauf disposition contraire prévue par le pouvoir, en cas de décès ou d’incapacité juridique de la personne représentée, la procédure se poursuit avec son représentant.
Règle 73, paragraphe 1, point a), du REMC
Selon la procédure, le représentant doit déposer une demande d’enregistrement d’un transfert au profit de l’ayant cause. Il peut cependant demander l’interruption de la procédure. Pour plus d’informations sur l’interruption de la procédure d’opposition en cas de décès ou d’incapacité juridique, voir la partie C, section 1, Questions de procédure.
En cas de procédure d’insolvabilité, le liquidateur judiciaire désigné se voit octroyer le pouvoir d’agir au nom de la personne en faillite et peut ou, lorsque la représentation est obligatoire, doit désigner un nouveau représentant, ou confirmer la désignation du représentant actuel.
Pour plus d’informations sur la procédure d’insolvabilité, voir la partie E, Inscriptions au registre, section 3, chapitre 5, Insolvabilité.
7.2 Décès ou incapacité juridique du représentant
Règle 73, paragraphe 1, point c), et règle 73, paragraphe 3, points a) et b), du REMC
En cas de décès ou d’incapacité juridique d’un représentant, la procédure devant l’Office est interrompue. Si l’Office n’a pas été informé de la désignation d’un nouveau représentant dans un délai de trois mois après cette interruption, il prend les mesures suivantes:
- si la représentation n’est pas obligatoire, il informe la partie qui a autorisé que la procédure reprend désormais avec lui;
- si la représentation est obligatoire, il informe la partie qui a autorisé des conséquences juridiques qui s’appliqueront, selon la nature des procédures concernées (par exemple, sa demande sera réputée retirée, ou l’opposition sera rejetée) si un nouveau représentant n’est pas désigné dans les deux mois suivant la date de notification de cette communication. (décision du 28 septembre 2007, R 0048/2004-4 «PORTICO», paragraphes 13 et 15)
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Annexe 1
PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Autriche Rechtsanwalt Les avocats sont pleinement habilités.
Patentanwalt Les notaires peuvent représenter des tiers devant le service central autrichien de la propriété industrielle en raison de leur qualification professionnelle spéciale. Par conséquent, les notaires peuvent demander à figurer sur la liste des représentants professionnels.
Belgique Avocat, Advocaat, Rechtsanwalt
Les avocats sont pleinement habilités. Une personne ne peut cependant pas assumer simultanément les fonctions d’avocat et de représentant professionnel.
En néerlandais: Merkengemachtigde En français: Conseil en marques / Conseil en propriété industrielle En allemand: Patentanwalt
Relève du Traité sur le droit des marques au Benelux (article 4, paragraphe 1). Toute personne ayant une adresse sur le territoire du Benelux peut représenter des clients en matière de PI. L’habilitation n’est pas subordonnée à la possession d’une qualification professionnelle spéciale. Les personnes demandant leur inscription sur la liste doivent avoir exercé à titre habituel en qualité de représentants professionnels devant un service central de la propriété industrielle d’un État membre pendant cinq ans au moins.
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Bulgarie Адвокат / Практикуващ Право Advokat / Praktikuvasht Pravo
Les avocats ne sont pas habilités.
Spetsialist po targovski marki / Spetsialist po dizayni Специалист по търговски марки / Специалист по дизайни
Une qualification professionnelle spéciale est requise. L’Office bulgare des brevets est en mesure de certifier qu’une personne exerce en qualité de représentant depuis cinq ans.
Croatie Odvjetnik Les avocats sont pleinement habilités.
Zastupnik Za Žigove Une qualification professionnelle spéciale est requise. On entend par «représentant agréé» la personne qui a réussi l’examen pour les représentants en marques devant l’Office croate.
République tchèque
Advokát Les avocats sont pleinement habilités.
Patentový zástupce La République tchèque propose un examen en deux parties. Les personnes qui ont réussi la partie B (marques et appellations d’origine) peuvent exercer en qualité de représentants dans ce domaine et, par conséquent, figurer sur la liste visée à l’article 93 du RMC. Les conseils en brevets, qui ont réussi les deux parties de l’examen, sont habilités à représenter les demandeurs dans toutes les procédures devant l’Office.
Chypre Δικηγόρος Dikigoros
SEULS les avocats sont habilités.
Sans objet Sans objet
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Danemark Advokat Les avocats sont pleinement habilités.
Varemaerkefuldmaegtig L’habilitation n’est pas subordonnée à la possession d’une qualification professionnelle spéciale. Les personnes demandant leur inscription sur la liste doivent avoir exercé à titre habituel en qualité de représentants professionnels devant un service central de la propriété industrielle d’un État membre pendant cinq ans au moins.
Estonie Jurist, Advokaat Les avocats ne sont pas habilités sauf s’ils possèdent en même temps la qualification d’agent de la PI.
Patendivolinik L’examen est constitué de deux parties indépendantes: les brevets et les modèles d’utilité, d’une part, et les marques, les dessins ou modèles et les indications géographiques, d’autre part. Les deux types de représentants portent le titre de «patendivolinik». Les personnes qui ont uniquement réussi la partie brevets de l’examen ne peuvent pas être inscrites sur la liste visée à l’article 93 du RMC. L’inscription sur la liste est ouverte aux personnes ayant réussi la partie marques, dessins ou modèles industriels et indications géographiques.
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Finlande Asianajaja, Advokat Les avocats sont pleinement habilités.
En finnois: Tavaramerkkiasiamies En suédois: Varumaerkesombud
L’habilitation n’est pas subordonnée à la possession d’une qualification professionnelle spéciale. Les personnes demandant leur inscription sur la liste doivent avoir exercé à titre habituel en qualité de représentants professionnels devant un service central de la propriété industrielle d’un État membre pendant cinq ans au moins.
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
France Avocat Les avocats sont habilités. Une personne ne peut cependant pas assumer simultanément les fonctions d’avocat et de représentant professionnel.
Conseil en propriété industrielle, marques et modèles ou juriste.
L’INPI tient deux listes différentes: La Liste des conseils en propriété industrielle et la Liste des personnes qualifiées en propriété industrielle.
Seules les personnes figurant sur la Liste des conseils en propriété industrielle sont habilitées à représenter des tiers devant l’Office français des brevets. Par conséquent, seules ces personnes peuvent figurer sur la liste des représentés professionnels agréés auprès de l’OHMI. Ces personnes figurent sur le certificat en bloc. Un «conseil en PI» est une personne qui travaille pour un groupement (cabinet). Une «personne qualifiée en PI» est une personne qui travaille pour une société privée (au sein du département des marques, par exemple). Ces personnes passent automatiquement d’une liste à l’autre en France. Dans la mesure où la «personne qualifiée» a obtenu les mêmes qualifications professionnelles que les «conseils», elle est habilitée à demander son inscription sur notre liste. Elle devra toutefois fournir un certificat individuel signé par le Directeur des affaires juridiques et internationales.
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Allemagne Rechtsanwalt Les avocats sont pleinement habilités.
Patentanwalt / Patentassessor
Un «Patentassessor» est une personne qui travaille sous contrat pour un employeur. En cas de démission ou de non-renouvellement du contrat, il est supprimé de la liste allemande des «Patentanwälte». Dans la mesure où le «Patentassesor» a acquis les mêmes qualifications que le «Patentanwälte», il peut continuer à figurer sur la liste des représentants professionnels auprès de l’OHMI.
Grèce Δικηγόρος - Dikigoros
SEULS les avocats sont habilités.
Sans objet Sans objet
Hongrie Ügyvéd Les conseillers juridiques ne sont pas autorisés à agir en qualité d’avocats dans les procédures en matière de propriété industrielle. Par conséquent, ils ne peuvent pas demander à figurer sur la liste des représentants professionnels agréés auprès de l’OHMI.
Szabadalmi ügyvivő Une qualification professionnelle spéciale est requise pour devenir conseil en PI. Les conseils en brevets sont habilités à représenter les demandeurs dans toutes les procédures devant l’Office. Les notaires ne sont pas autorisés à agir en qualité d’avocats dans les procédures en matière de propriété industrielle. Ils peuvent par conséquent demander à figurer sur la liste des représentants professionnels agréés auprès de l’OHMI.
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Irlande Barrister, Solicitor Les avocats sont pleinement habilités.
Trade Mark Agent La personne doit être inscrite au Register of TM Agents.
Italie Avvocato Les avocats sont pleinement habilités.
Consulenti abilitati / Consulenti in Proprietà Industriale
La personne doit être inscrite au registre des «Consulenti in Proprietà Industriale» («Albo») tenu par le barreau («Consiglio dell’Ordine») et le registre communiqué à l’Office italien des marques et des brevets («UIBM»).
Lettonie Advokāts Les avocats peuvent uniquement représenter des clients ayant leur domicile permanent dans l’Union européenne. Les clients qui ont leur domicile permanent en dehors de l’UE doivent se faire représenter par un représentant professionnel.
Patentu pilnvarotais / Preču zīmju aģents / Profesionâls patentpilnvarotais
Il existe un examen en matière de marques. Les clients qui ont leur domicile permanent en dehors de l’UE doivent se faire représenter par un représentant professionnel. Les notaires ne peuvent pas agir de droit en qualité de représentants.
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Lituanie Advokatas Les avocats peuvent uniquement représenter des clients ayant leur domicile permanent dans l’Union européenne. Les clients qui ont leur domicile permanent en dehors de l’UE doivent se faire représenter par un représentant professionnel.
Patentinis patikėtinis Les clients qui ont leur domicile permanent en dehors de l’UE doivent se faire représenter par un représentant professionnel. Les notaires ne peuvent pas agir de droit en qualité de représentants.
Luxembourg Avocat / Rechtsanwalt
Les avocats sont pleinement habilités. Une personne ne peut cependant pas assumer simultanément les fonctions d’avocat et de représentant professionnel.
En français: Conseil en marques / Conseil en propriété industrielle En allemand: Patentanwalt
Relève du Traité sur le droit des marques du Benelux (article 4 , paragraphe 1). Toute personne utilisant une adresse sur le territoire du Benelux peut représenter des clients en matière de PI. L’habilitation n’est pas subordonnée à la possession d’une qualification professionnelle spéciale. Les personnes demandant leur inscription sur la liste doivent avoir exercé à titre habituel en qualité de représentants professionnels devant un service central de la propriété industrielle d’un État membre pendant cinq ans au moins.
Représentation professionnelle
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Malte Avukat, Prokuratur Legali
Les avocats sont pleinement habilités.
Toute personne ayant une formation juridique, y compris les notaires, peut exercer en qualité d’agent de marques. Aucune preuve écrite de la qualification des avocats agissant en qualité d’agents de marques n’est requise.
Pologne Adwokat, radca prawny
Les avocats ne sont pas pleinement habilités. L’avocat peut uniquement agir en qualité de représentant dans les procédures d’opposition et d’annulation (de nullité)
Rzecznik Patentowy Le représentant doit figurer sur la liste des conseils en brevets tenue par l’Office polonais des brevets. En Pologne, un conseil en marques doit être désigné pour toutes les procédures autres que d’opposition ou d’annulation. Les conseils en marques doivent avoir réussi les examens appropriés.
Portugal Avogado Les avocats sont pleinement habilités.
Agente Oficial da Propriedade Industrial
5 années d’expérience ou des qualifications spéciales. Un notaire n’est pas un avocat et peut, par conséquent, demander à être inscrit sur la liste.
Roumanie Avocat Les avocats ne sont pas pleinement habilités.
Consillier în proprietate industrialǎ
Trois listes sont tenues en Roumanie. Les représentants sont tenus de posséder des qualifications spéciales ou d’avoir cinq années d’expérience et d’être membre d’une chambre nationale. Une qualification professionnelle spéciale est requise pour devenir représentant professionnel.
Représentation professionnelle
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Slovaquie Advokát, Komerčný Pravnik
Les avocats sont pleinement habilités.
Patentový zástupca En Slovaquie, les avocats («advokáts») répertoriés auprès de l’Association du barreau slovaque peuvent exercer en qualité de représentants devant l’Office slovaque de la propriété industrielle.
Slovénie Odvetniki Les avocats sont pleinement habilités.
Patentni zastopnik Les avocats qui ne sont pas inscrits au registre slovène en qualité d’agents de brevets/marques ne sont pas autorisés à représenter des parties devant l’office. Les notaires ne sont pas habilités de droit.
Espagne Abogado Les avocats sont pleinement habilités.
Agente Oficial de la Propiedad Industrial
L’inscription sur la liste est subordonnée à la réussite d’un examen.
Suède Advokat Les avocats sont pleinement habilités.
Varumaerkesombud L’habilitation n’est pas subordonnée à la possession d’une qualification professionnelle spéciale. Les personnes demandant leur inscription sur la liste doivent avoir exercé à titre habituel en qualité de représentants professionnels devant un service central de la propriété industrielle d’un État membre pendant cinq ans au moins.
Représentation professionnelle
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PAYS Terme utilisé au plan national pour désigner un avocat
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Terme utilisé au plan national pour désigner la qualification spéciale – Mandataire en matière de brevets/marques/dessins ou modèles (les représentants professionnels agréés auprès de l’OHMI)
Habilitation / Règles spécifiques de la représentation de clients en matière de marques, dessins ou modèles
Pays-Bas Advocaat Les avocats sont pleinement habilités Une personne ne peut cependant pas assumer simultanément les fonctions d’avocat et de représentant professionnel.
Merkengemachtigde Relève du Traité sur le droit des marques du Benelux (article 4, paragraphe 1). Toute personne utilisant une adresse sur le territoire du Benelux peut représenter des clients en matière de PI. L’habilitation n’est pas subordonnée à la possession d’une qualification professionnelle spéciale. Les personnes demandant leur inscription sur la liste doivent avoir exercé à titre habituel en qualité de représentants professionnels devant un service central de la propriété industrielle d’un État membre pendant cinq ans au moins.
Royaume- Uni
Advocate, Barrister, Solicitor
Les avocats sont pleinement habilités.
Registered Trade Mark Agent Sur examen.
Représentation professionnelle
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Annexe 2
La liste suivante répertorie les pays qui possèdent un titre pour les personnes habilitées à agir uniquement en qualité de représentants en matière de dessins ou modèles. Si un pays ne figure pas sur la liste, cela signifie que l’habilitation couvre également les marques et que, par conséquent, cette personne ne figurera pas sur la liste spéciale pour les dessins ou modèles.
PAYS Mandataire en matière de dessins ou modèles
Belgique Modellengemachtigde, Conseil en modèles
République tchèque Patentový zástupce (même dénomination que l’agent de marques)
Danemark Varemaerkefuldmaegtig Estonie Patendivolinik Finlande Tavaramerkkiasiamies,
Varumaerkesombud Irlande Registered Patent Agent Italie Consulente in brevetti Lettonie Patentpilnvarotais
dizainparaugu lietas Luxembourg Conseil en Propriété
Industrielle Roumanie Consilier de proprietate
industriala Suède Varumaerkesombud Pays-Bas Modellengemachtigde Royaume-Uni Registered Patent Agent
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE B
EXAMEN
SECTION 2
FORMALITÉS
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Table des matières
1 Introduction................................................................................................ 5
2 Dépôt des demandes................................................................................. 5 2.1 Demandeurs.............................................................................................. 5 2.2 Où peut-on déposer une demande de marque communautaire?..........5
3 Les taxes .................................................................................................... 5 3.1 Taxes en général ...................................................................................... 6 3.2 Irrégularité liée à la taxe de base............................................................. 6 3.3 Irrégularité liée à la taxe par classe......................................................... 6 3.4 Remboursement des taxes en cas de retrait ..........................................7
4 Date de dépôt............................................................................................. 7 4.1 Exigences relatives à la date de dépôt.................................................... 7 4.2 Demandes déposées par voie électronique............................................8 4.3 Demandes déposées auprès d’offices nationaux (office de la propriété
intellectuelle d’un État membre ou Office Benelux)............................... 8 4.4 Demandes parvenant directement à l’OHMI ...........................................8 4.5 Liste des produits et services..................................................................9
5 Signature .................................................................................................... 9
6 Langues / Traductions .............................................................................. 9 6.1 Première et deuxième langues .............................................................. 10 6.2 La langue de correspondance ............................................................... 10 6.3 Langue de référence pour les traductions............................................ 11 6.4 Traduction d’éléments multilingues...................................................... 11 6.5 Limitation des produits et services....................................................... 12
7 Titulaire, représentant et adresse de correspondance ........................ 13 7.1 Demandeur.............................................................................................. 13 7.2 Représentant........................................................................................... 14 7.3 Changement de nom / d’adresse........................................................... 14 7.4 Transfert de propriété ............................................................................ 14
8 Type de marque ....................................................................................... 15 8.1 Marques individuelles ............................................................................ 15 8.2 Marques collectives................................................................................ 15
8.2.1 Caractère des marques collectives .............................................................. 15 8.2.2 Les demandeurs de marques collectives ..................................................... 15
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8.2.3 Documents à produire .................................................................................. 16 8.2.4 Examen des formalités relatives aux marques collectives........................... 16
8.2.4.1 Le règlement d’usage n’est pas présenté..................................................16 8.2.4.2 Le règlement d’usage est présenté mais comporte des irrégularités ........16
8.2.5 Modification du type de marque (de collective à individuelle) ...................... 16
9 Catégorie de la marque ........................................................................... 17 9.1 Marques verbales ................................................................................... 18 9.2 Marques figuratives................................................................................ 18 9.3 Marques tridimensionnelles .................................................................. 20 9.4 Marques sonores.................................................................................... 23
9.4.1 Fichier sonore électronique .......................................................................... 23 9.4.2 Notations musicales ..................................................................................... 23 9.4.3 Sonagrammes .............................................................................................. 23
9.5 Couleur(s) en tant que telle(s) ............................................................... 24 9.6 Hologrammes.......................................................................................... 26 9.7 Marques olfactives ................................................................................. 27 9.8 Autres marques ...................................................................................... 27
9.8.1 Marques animées (mouvement)................................................................... 27 9.8.2 Marques de position ..................................................................................... 28 9.8.3 Marques de repérage ................................................................................... 31
9.9 Correction de la catégorie de la marque............................................... 32 9.9.1 Règles générales.......................................................................................... 32 9.9.2 Exemples d’irrégularités récurrentes en matière de catégories de
marques........................................................................................................ 32 9.9.2.1 Marque verbales........................................................................................32 9.9.2.2 Marques figuratives ...................................................................................33
10 Marques de série ..................................................................................... 34 10.1 Représentations figuratives multiples .................................................. 35
11 Indication de couleur............................................................................... 36
12 Description de la marque........................................................................ 38
13 Déclaration de renonciation ................................................................... 43
14 Priorité (de convention) .......................................................................... 44 14.1 Principe du premier dépôt ..................................................................... 46 14.2 Triple identité .......................................................................................... 47
14.2.1 Identité des marques .................................................................................... 47 14.2.2 Identité des produits et services ................................................................... 48 14.2.3 Identité du titulaire ........................................................................................ 48
14.3 Non-respect des conditions en matière de priorité.............................. 48 14.4 Non-fourniture des documents de priorité ........................................... 48
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14.5 Langue de la demande antérieure ......................................................... 49 14.6 Vérification de la date de priorité après modification de la date de
dépôt ....................................................................................................... 49 14.7 Traitement des irrégularités liées à l’examen de la priorité................. 49 14.8 Exemples de revendications de priorité ............................................... 50
14.8.1 Premier dépôt ............................................................................................... 50 14.8.2 Comparaison des marques .......................................................................... 50 14.8.3 Comparaison des produits et services ......................................................... 55 14.8.4 Revendications de priorité fondées sur des marques de série .................... 56 14.8.5 Revendiquer la priorité de marques tridimensionnelles ou «autres» ........... 56 14.8.6 Revendications de priorité portant sur des marques collectives .................. 57
15 Priorité d’exposition................................................................................ 57
16 Ancienneté ............................................................................................... 58 16.1 Information harmonisée sur l’ancienneté ............................................. 59 16.2 Examen de l’ancienneté ......................................................................... 59 16.3 Identité des marques.............................................................................. 61 16.4 Produits et services................................................................................ 61 16.5 Traitement des irrégularités liées à l’examen de l’ancienneté ............ 61 16.6 Exemples de revendications d’ancienneté ........................................... 62
17 Transformation ........................................................................................ 62
18 Modification de la demande de marque communautaire ..................... 63 18.1 Modification de la représentation de la marque ................................... 63
19 Transformation ........................................................................................ 65
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1 Introduction
Toute demande de marque communautaire (MC) doit satisfaire à certaines formalités. Les présentes Directives ont pour objet de définir la pratique de l’Office en ce qui concerne les formalités.
2 Dépôt des demandes
2.1 Demandeurs
Article 5 du RMC
Toute personne physique ou morale, y compris les entités de droit public, peut déposer une demande de marque communautaire, sans considération de sa nationalité ou de son domicile.
2.2 Où peut-on déposer une demande de marque communautaire?
Article 25, paragraphe 1, du RMC Règle 82 du REMC Décisions nº EX-05-3 et nº EX-11-3 du président de l’Office
Le demandeur peut déposer la demande de marque communautaire directement auprès de l’OHMI, auprès du service central de la propriété industrielle d’un État membre ou auprès de l’Office Benelux de la propriété intellectuelle.
Les demandes de marques communautaires peuvent être transmises à l’OHMI par voie électronique (dépôt électronique), par télécopieur, par courrier postal, par service de messagerie ou par dépôt en mains propres à la réception de l’Office.
3 Les taxes
Articles 2, 7 et 8 du RTMC Article 27 du RMC Règle 4 et Règle 9, paragraphe 5, du REMC Décision nº EX-96-1, modifiée en 1996, en 2003 et en 2006; décision nº EX-11-3 du président de l’Office
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3.1 Taxes en général
Pour le dépôt d’une demande de marque communautaire, les taxes suivantes sont applicables:
Marque Taxe de base jusqu’à 3 classes Taxe par classe additionnelle
Déposée par voie électronique 900 EUR 150 EUR
Déposée sous format papier 1 050 EUR 150 EUR
Collective 1 800 EUR 300 EUR
La taxe doit être acquittée en euros. Les paiements effectués dans d’autres devises ne sont pas valables et entraînent la perte de droits. Le dépôt d’une marque collective par voie électronique n’ouvre pas droit à une réduction de la taxe.
Pour de plus amples informations sur les taxes, veuillez vous reporter aux Directives, partie A, Dispositions générales, section 3, Paiement des taxes, frais et tarifs.
3.2 Irrégularité liée à la taxe de base
Si la taxe de base n’est pas acquittée dans un délai d’un mois à compter de la date de réception de la demande par l’Office, la date de dépôt provisoire est perdue (voir ci-dessous au paragraphe 4, Date de dépôt).
Toutefois, la date de dépôt peut être maintenue si le demandeur apporte la preuve que le paiement a été effectué auprès d’une banque ou qu’un ordre de virement a été donné dans un État membre dans le délai d’un mois, et s’il s’acquitte d’une surtaxe de dix pour cent.
Cette surtaxe n’est cependant pas due si le demandeur apporte la preuve que le paiement a été initié plus de dix jours avant l’expiration du délai d’un mois.
3.3 Irrégularité liée à la taxe par classe
Lorsque la demande porte sur plus de trois classes de produits et/ou services, une taxe par classe additionnelle est due pour chaque classe supplémentaire.
Lorsque les taxes acquittées ou le montant couvert par le compte courant sont inférieurs à la somme totale des taxes dues pour les classes sélectionnées dans le formulaire de demande, une notification d’irrégularité est adressée au demandeur, lui accordant un délai de deux mois pour effectuer le paiement. Si le paiement n’est pas reçu dans le délai imparti, la demande est réputée retirée pour les classes non couvertes par la taxe acquittée. En l’absence d’autres critères permettant de déterminer quelles classes sont censées être couvertes par le montant payé, l’Office prendra les classes dans l’ordre de la classification (en commençant par la classe la plus basse), et la demande sera réputée retirée à l’égard des classes pour lesquelles les taxes par classe n’ont pas été acquittées (dans leur intégralité).
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Lorsque des taxes par classe additionnelle sont dues à la suite de la rectification d’une irrégularité de classification, une notification d’irrégularité est adressée au demandeur, lui accordant un délai de deux mois pour effectuer le paiement. Si le paiement n’est pas reçu dans le délai imparti, la demande est réputée retirée pour les classes résultant de la reclassification non couvertes par les taxes effectivement acquittées. En l’absence d’autres critères permettant de déterminer quelles classes sont censées être couvertes par le montant payé, l’Office prendra les classes dans l’ordre de la classification (en commençant par la classe la plus basse) et la demande sera réputée retirée à l’égard des classes pour lesquelles les taxes par classe n’ont pas été acquittées (dans leur intégralité).
3.4 Remboursement des taxes en cas de retrait
.
En cas de retrait de la demande de marque communautaire, la taxe de dépôt et les taxes par classe ne sont remboursées que dans certaines circonstances.
Pour plus d’informations à ce sujet, voir les Directives, partie A, Dispositions générales, section 3, Paiement des taxes, frais et tarifs.
4 Date de dépôt
Article 25, paragraphe 3, et articles 26 et 27 du RMC Règle 9, paragraphe 1, du REMC
4.1 Exigences relatives à la date de dépôt
Lorsqu’une demande parvient à l’Office par un moyen autre que le dépôt électronique, une date de dépôt provisoire est accordée, et l’Office délivre immédiatement un accusé de réception avec cette date de dépôt provisoire. La date de dépôt est accordée au bout d’un mois et après paiement de la taxe, pour autant que la demande satisfasse aux exigences suivantes:
la demande est une demande d’enregistrement d’une marque communautaire; la demande comporte des informations permettant d’identifier le demandeur; la demande comporte une représentation de la marque; la demande comporte une liste des produits et/ou services.
Si l’une des conditions susvisées n’est pas remplie, une notification d’irrégularité est adressée au demandeur l’invitant à fournir l’élément manquant dans un délai de deux mois à compter de l’envoi de la notification d’irrégularité. Ce délai ne peut être prorogé. S’il n’est pas remédié à l’irrégularité constatée, la demande de marque communautaire est «réputée non déposée» et toutes les taxes déjà acquittées sont remboursées et le dossier clôturé. Si les informations manquantes sont produites dans le délai fixé dans la notification d’irrégularité, la date de dépôt correspond à la date à laquelle toutes les informations obligatoires ont été fournies, y compris le paiement.
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Dans certains cas, le demandeur dépose plus d’une représentation de la marque (voir à cet égard le paragraphe 9.3 ci-dessous, Marques tridimensionnelles, ainsi que le paragraphe 10, Marques de série). Dans la mesure où la demande comporte au moins une représentation de la marque, le dépôt de plusieurs représentations ne doit pas être considéré comme une irrégularité en ce qui concerne la date de dépôt. En revanche, le demandeur doit indiquer laquelle des représentations déposées doit être retenue comme représentation de la demande de marque communautaire; à cette fin, l’Office adresse une notification d’irrégularité au demandeur, l’invitant à spécifier la représentation correcte dans un délai de deux mois.
4.2 Demandes déposées par voie électronique
Pour les demandes de marques communautaires déposées par voie électronique, le système délivre immédiatement un accusé de réception de dépôt automatique, qui apparaît sur l’écran de l’ordinateur à partir duquel la demande a été transmise. Cet accusé de réception contient la date de dépôt provisoire et il est conseillé au demandeur de l’enregistrer ou de l’imprimer, étant donné que l’Office n’envoie d’ordinaire pas d’accusé de réception supplémentaire.
4.3 Demandes déposées auprès d’offices nationaux (office de la propriété intellectuelle d’un État membre ou Office Benelux)
Si une demande de marque communautaire est déposée auprès du service central de la propriété industrielle d’un État membre ou auprès de l’Office Benelux de la propriété intellectuelle, elle produira les mêmes effets que si elle avait été déposée auprès de l’OHMI le même jour, pour autant qu’elle parvienne à l’OHMI dans les deux mois qui suivent la date de dépôt auprès de l’office national.
Si la demande de marque communautaire ne parvient pas à l’OHMI dans un délai de deux mois, elle est réputée avoir été déposée à la date à laquelle elle parvient à l’OHMI.
4.4 Demandes parvenant directement à l’OHMI
Si un demandeur dépose une demande de marque communautaire auprès de l’OHMI, la date de dépôt correspond à la date de réception, à condition que la demande soit complète.
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4.5 Liste des produits et services
Article 26 et article 43, paragraphe 2, du RMC
La présence d’une liste des produits et services est exigée pour l’octroi d’une date de dépôt. Il est possible de faire référence, dans le champ concerné du formulaire de demande de marque communautaire, à une marque communautaire antérieure afin d’indiquer la liste des produits et services
L’étendue de la protection définie par la liste originale des produits et services ne peut pas être élargie. Si un demandeur souhaite protéger des produits ou services supplémentaires après le dépôt, il doit déposer une nouvelle demande. Pour de plus amples informations sur la classification des produits et services, veuillez vous reporter aux Directives, partie B, Examen, section 3, Classification.
5 Signature
Règle 80, paragraphe 3, et règle 82, paragraphe 3, du REMC
Les formulaires de demande transmis par télécopieur, par courrier postal, par service de messagerie ou par dépôt en personne doivent être signés directement sur le formulaire ou dans une lettre jointe en annexe. La signature peut être celle du demandeur ou de son représentant. Si une demande transmise à l’Office n’est pas signée, l’Office invite la partie concernée à remédier à l’irrégularité dans un délai de deux mois. S’il n’est pas remédié à l’irrégularité constatée dans le délai imparti, la demande est rejetée.
Lorsque la demande est déposée par voie électronique, l’indication du nom de l’expéditeur vaut signature.
6 Langues / Traductions
Article 119, article 120 et article 43, paragraphe 2, du RMC Communication nº 4/04 du président de l’Office
Une demande de marque communautaire peut être déposée dans l’une des langues officielles de l’Union européenne. Le demandeur doit également indiquer une deuxième langue dans le formulaire de demande, qui doit être l’une des cinq langues de l’Office, à savoir l’anglais, le français, l’allemand, l’italien ou l’espagnol.
Il est possible d’utiliser une version linguistique du formulaire de demande différente de la langue choisie comme première langue. Toutefois, le formulaire de demande doit être rempli dans cette première langue, y compris la liste des produits et services, l’indication de la (des) couleur(s), la description de la marque et la déclaration de renonciation, le cas échéant.
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6.1 Première et deuxième langues
Toutes les informations figurant dans le formulaire de demande doivent être indiquées dans la première langue, faute de quoi une notification d’irrégularité sera envoyée au demandeur. S’il n’est pas remédié à l’irrégularité constatée dans un délai de deux mois, la demande est rejetée.
La deuxième langue sert de langue potentielle pour les éventuelles procédures d’opposition et d’annulation. La deuxième langue doit être différente de la langue sélectionnée comme première langue. Le choix de la première et de la deuxième langue ne peut en aucun cas être modifié une fois la demande déposée.
Lors d’un dépôt, le demandeur peut choisir de fournir une traduction dans la deuxième langue de la liste des produits et des services et, le cas échéant, de toute description de marque, déclaration de renonciation et indication de couleur. Lorsque le demandeur fournit une telle traduction de sa propre initiative, il lui appartient de veiller à ce que à ce que la traduction corresponde à la première langue, ce qui ne sera pas vérifié par l’Office. Il est très important que le demandeur s’assure de la précision de la traduction, étant donné que celle-ci peut être utilisée comme base pour la traduction de la demande dans toutes les autres langues de l’Union européenne (voir paragraphe 6.3 «Langue de référence pour les traductions» ci-dessous).
6.2 La langue de correspondance
La langue de correspondance est la langue utilisée pour la correspondance entre l’Office et le demandeur dans le cadre de la procédure d’examen, jusqu’à l’enregistrement de la marque. Si la langue sélectionnée comme première langue par le demandeur est l’une des cinq langues de l’Office, elle est utilisée comme langue de correspondance.
Le demandeur ne peut indiquer qu’il souhaite que la langue de correspondance soit la deuxième langue que si la langue sélectionnée comme première langue n’est pas une des cinq langues de l’Office. Il peut formuler cette requête en cochant la case respective sur le formulaire de demande ou il peut le signaler ultérieurement, soit explicitement, par l’envoi d’une demande, soit implicitement, par l’envoi d’une communication à l’Office dans la deuxième langue. Il ne sera toutefois pas accédé à cette demande si l’Office a déjà émis une notification d’irrégularité ou une lettre d’objection dans la première langue.
Si le demandeur sélectionne l’une des cinq langues de l’Office comme première langue, mais indique ensuite que la deuxième langue doit être utilisée comme langue de correspondance, l’Office changera la langue de correspondance au profit de la première langue et en informera le demandeur.
Exemple
Première langue sélectionnée Deuxième languesélectionnée Langue de correspondance
sélectionnée
Français Anglais Anglais
La langue de correspondance sera le français.
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Pour de plus amples informations sur les langues, veuillez vous reporter aux Directives, partie A, Dispositions générales, section 4, Langue de la procédure.
6.3 Langue de référence pour les traductions
La liste des produits et services est traduite dans les langues officielles de l’UE. La langue source des traductions est définie comme la langue de référence. Si la première langue de la demande est l’une des cinq langues de l’Office, elle sera toujours la langue de référence.
Si la première langue de la demande n’est pas l’une des cinq langues de l’Office et que le demandeur a fourni une traduction des produits et services dans la deuxième langue, la langue de référence est la deuxième langue. Si aucune traduction n’est produite, la langue de référence est la première langue.
6.4 Traduction d’éléments multilingues
Les éléments multilingues contiennent des informations sur la demande qui, en principe, doivent être traduites. Ces éléments sont la description de la marque, l’indication de la (des) couleur(s) et la déclaration de renonciation.
Si une traduction des produits et services est fournie dans la deuxième langue, l’Office vérifiera que tous les éléments multilingues (description de la marque, indication de la ou des couleurs, déclaration de renonciation) ont également été traduits. La précision de la traduction ne sera toutefois pas contrôlée par l’Office. Si le demandeur n’a fourni qu’une traduction partielle, une notification d’irrégularité sera adressée au demandeur, demandant que des traductions supplémentaires soient fournies dans un délai de deux mois à compter de la notification de l’irrégularité. Si le demandeur ne transmet pas les traductions complémentaires demandées, il ne sera tenu aucun compte des traductions déjà fournies par le demandeur et l’Office poursuivra le traitement de la demande comme s’il n’avait reçu aucune traduction. La traduction de couleurs simples est ajoutée par l’Office.
Avant de faire traduire la demande, l’Office s’assure que les informations contenues dans les éléments multilingues sont correctes et acceptables. Les détails sont présentés ci-dessous dans les paragraphes relatifs aux indications de couleur, aux descriptions de marques et aux déclarations de renonciation (paragraphes 11, 12 et 13 respectivement). En outre, avant de faire traduire une demande, les «éléments non traduisibles» sont identifiés en tant que tels en les mettant entre guillemets (" "), selon une règle de formatage fixée en accord avec le Centre de traduction des organes de l’Union européenne (CdT).
Les éléments suivants ne doivent pas être traduits et sont à mettre entre guillemets:
1. description de la marque: lorsque la description de marque acceptable se réfère à un élément verbal de la marque, cet élément ne doit pas être traduit:
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Description de la marque Marque
MC 10 003 317
Le mot "Rishta" dans une police stylisée sur un fond en forme de diamant avec un effet d’ombre et les mots "Premium Quality" dans une police plus petite sur un bloc rectangulaire situé au-dessus du mot "Rishta" et en dessous du point supérieur de la forme en diamant.
(Pour plus d’informations sur l’examen des descriptions de marques, voir le paragraphe 12 ci-dessous.)
2. indication de la (des) couleur(s): lorsque l’indication de la (des) couleur(s) comporte une référence à un système de codification international (tel que «Pantone»), elle doit être identifiée par des guillemets indiquant qu’elle n’est pas à traduire:
Indication de couleur Marque
MC 10 171 452
Blå ("Pantone 3115"), Grå ("Cool Grey 9").
(Pour plus d’informations sur l’examen des indications de couleurs, voir le paragraphe 11 ci-dessous.)
3. déclaration de renonciation: s’il est renoncé à un élément verbal de la marque, l’élément en question doit être identifié par des guillemets indiquant qu’il n’est pas à traduire:
Déclaration de renonciation Marque
"socks" DOODAH SOCKS
(Pour plus d’informations sur l’examen des déclarations de renonciation, voir le paragraphe 13 ci-dessous.)
6.5 Limitation des produits et services
Règle 95, point a), du REMC
Si la première langue de la demande de marque communautaire est l’une des cinq langues de l’Office, une limitation de la procédure d’examen ne peut être acceptée que dans la première langue de la demande.
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Dans le cas où la première langue de la demande ne serait pas l’une des cinq langues de l’Office, une limitation de la procédure d’examen ne peut être acceptée que dans la deuxième langue, pour autant que celle-ci soit définie comme langue de correspondance.
Exemple de demande de limitation acceptable
1ère langue NL 2e langue EN
Une limitation transmise à l’Office en anglais serait acceptée à condition que l’anglais ait été défini comme langue de correspondance de la demande.
Exemple de demande de limitation inacceptable
1ère langue IT 2e langue EN
Une limitation transmise à l’Office en anglais ne serait pas acceptée car, dans ce cas, l’italien est l’une des cinq langues de l’Office et c’est donc la seule langue dans laquelle une limitation sera acceptée.
7 Titulaire, représentant et adresse de correspondance
7.1 Demandeur
Articles 3, 5 et 92 du RMC Règle 1, paragraphe 1, point b), règles 26 et 76 du REMC
Toute personne physique ou morale, y compris les entités de droit public (comme une université, par exemple), peut être titulaire d’une marque communautaire. Les dépôts effectués au nom d’une personne morale en cours de constitution sont acceptés.
Dans une demande de marque communautaire, le demandeur doit indiquer son nom, son adresse et sa nationalité, ainsi que l’État sur le territoire duquel il a son domicile, son siège ou un établissement. Dans le cas d’entreprises américaines, l’Office recommande vivement d’indiquer l’État de constitution, le cas échéant, afin de lui permettre de distinguer clairement différents titulaires dans sa base de données. Les personnes physiques doivent être désignées par leurs nom et prénom(s). Les noms des personnes morales doivent être indiqués en entier et seule leur forme juridique peut être abrégée sous l’abréviation d’usage, par exemple PLC ou S.A. Si la forme juridique n’est pas précisée ou est incorrecte, une notification d’irrégularité est adressée au demandeur, lui demandant de fournir ces informations. Si la forme juridique manquante ou correcte n’est pas communiquée, la demande est rejetée.
L’adresse doit comporter, si possible, le nom de la rue, le numéro, la ville ou la province, le code postal et le pays. Il est préférable que le demandeur n’indique qu’une seule adresse, mais lorsque plusieurs adresses sont mentionnées, seule l’adresse figurant en première position est enregistrée comme étant l’adresse pour la correspondance, sauf si le demandeur indique spécifiquement une autre adresse à cet effet.
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Lorsque le demandeur s’est vu attribuer, dans le cadre d’une affaire précédente, un numéro d’identification par l’Office, il lui suffit d’indiquer ce numéro, accompagné du nom du demandeur.
Pour de plus amples informations sur la communication avec l’Office, veuillez vous reporter aux Directives, partie A, Dispositions générales, section 1, Moyens de communication, Délais.
7.2 Représentant
Si le demandeur a son domicile, son siège ou un établissement commercial ou industriel effectif et sérieux dans l’UE, il n’est pas tenu de désigner un représentant.
Si le demandeur n’a ni domicile, ni siège, ni établissement commercial ou industriel effectif et sérieux dans l’UE, il doit, quelle que soit sa nationalité, désigner un représentant qualifié pour agir en son nom dans toute procédure, à l’exception du dépôt de la demande de marque communautaire et du paiement de la taxe pour la demande. Tout représentant au sens de l’article 93 du RMC, qui dépose une demande auprès de l’OHMI, est enregistré dans la base de données des représentants et se voit attribuer un numéro d’identification. Si le représentant dispose déjà d’un tel numéro, il lui suffit de l’indiquer, accompagné de son nom.
Pour de plus amples informations sur la représentation, veuillez vous reporter aux Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
7.3 Changement de nom / d’adresse
Le nom et l’adresse du demandeur peuvent être modifiés. Une modification du nom du demandeur est un changement qui n’affecte pas l’identité du demandeur, tandis qu’un transfert implique une modification de l’identité du demandeur.
7.4 Transfert de propriété
Article 17, paragraphe 5, et articles 24 et 87 du RMC Règle 31, paragraphe 8, et Règle 84, paragraphe 3, point g), du REMC
Les enregistrements et les demandes de marques communautaires peuvent être transférés par le titulaire/demandeur précédent à un nouveau titulaire/demandeur, principalement par voie de cession ou de succession légale. Le transfert peut être limité à certains des produits et/ou services pour lesquels la marque est enregistrée ou demandée (transfert partiel). Sur demande, les transferts de marques communautaires enregistrées sont inscrits au registre et les demandes de marque communautaire sont consignées dans les dossiers.
Pour de plus amples informations sur l’inscription des transferts de propriété, voir les Directives, partie E, Inscriptions au Registre, section 3, La marque communautaire comme objet de propriété, chapitre 1, Transfert.
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8 Type de marque
Le règlement sur la marque communautaire établit une distinction entre deux types de marques: les marques individuelles et les marques collectives.
8.1 Marques individuelles
Article 5 du RMC
Toute personne physique ou morale, ou toute personne assimilée à celle-ci aux termes de la législation nationale qui lui est applicable, y compris les entités de droit public, peut être titulaire d’une marque communautaire individuelle, sans considération de sa nationalité.
8.2 Marques collectives
Articles 66 à 68 du RMC Règles 3 et 43 du REMC
8.2.1 Caractère des marques collectives
Une marque collective est un type de marque spécifique qui indique que les produits ou services portant la marque en question proviennent de membres d’une association plutôt que d’un seul commerçant. Une marque «collective» n’implique ni qu’elle appartienne à plusieurs personnes (codemandeurs/cotitulaires) ni qu’elle désigne ou couvre plus d’un pays.
Les marques collectives peuvent être utilisées pour faire la publicité de produits caractéristiques d’une région particulière; elles peuvent aussi être utilisées avec la marque individuelle du fabricant d’un produit donné. Cela permet aux membres d’une association de différencier leurs propres produits de ceux de leurs concurrents.
Pour plus d’informations sur les conditions concrètes liées aux marques communautaires collectives, veuillez vous reporter aux Directives, partie B, Examen, section 4, Motifs absolus de refus et Marques communautaires collectives.
8.2.2 Les demandeurs de marques collectives
Peuvent déposer des marques communautaires collectives les associations de fabricants, de producteurs, de prestataires de services ou de commerçants qui, aux termes de la législation qui leur est applicable, ont la capacité, en leur propre nom, d’être titulaires de droits et d’obligations de toute nature, de passer des contrats ou d’accomplir d’autres actes juridiques et d’ester en justice, de même que les personnes morales relevant du droit public. Deux critères essentiellement doivent être satisfaits. Premièrement, le demandeur doit être une association ou un organisme public et, deuxièmement, il doit constituer une entité à part entière.
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Pour de plus amples informations sur les conditions concrètes liées aux marques communautaires collectives, veuillez vous reporter aux Directives, partie B, Examen, section 4, Motifs absolus de refus et Marques communautaires collectives.
8.2.3 Documents à produire
En plus des informations à produire pour une demande de marque individuelle, le demandeur d’une marque communautaire collective doit présenter un règlement d’usage de la marque. Ce règlement doit comporter les renseignements suivants:
1. le nom du demandeur et son adresse professionnelle; 2. l’objet de l’association ou l’objet pour lequel la personne morale de droit public a
été constituée; 3. les organismes habilités à représenter l’association ou ladite personne morale; 4. les conditions d’affiliation; 5. les personnes autorisées à faire usage de la marque; 6. le cas échéant, les conditions d’usage de la marque, y compris les sanctions; 7. si la marque désigne la provenance géographique des produits ou des services,
l’autorisation permettant à toute personne dont les produits ou services proviennent de la zone géographique concernée de devenir membre de l’association.
8.2.4 Examen des formalités relatives aux marques collectives
8.2.4.1 Le règlement d’usage n’est pas présenté
Si le règlement n’est pas présenté avec la demande, une notification d’irrégularité est adressée au demandeur, fixant un délai de deux mois pour la présentation du règlement.
Si le règlement n’est pas présenté dans ce délai de deux mois, la demande est rejetée.
8.2.4.2 Le règlement d’usage est présenté mais comporte des irrégularités
Si le règlement est présenté mais ne spécifie pas les informations requises au titre du paragraphe 8.2.3 ci-dessus, une notification d’irrégularité est adressée au demandeur, lui accordant un délai de deux mois pour fournir les informations manquantes.
S’il n’est pas remédié à l’irrégularité constatée dans ce délai de deux mois, la demande est rejetée.
8.2.5 Modification du type de marque (de collective à individuelle)
Si une personne physique a déposé une demande de marque collective par erreur, c’est-à-dire qu’elle a indiqué/sélectionné le type de marque «collective» de façon erronée sur le formulaire de demande, elle peut convertir la marque collective en marque individuelle, les marques collectives ne pouvant être accordées à des personnes morales. La surtaxe devra également être remboursée.
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Lorsqu’une personne morale affirme avoir déposé une demande de marque collective par erreur, la modification devra également être autorisée et la surtaxe remboursée. En revanche, le dépôt d’une marque collective n’est pas considéré comme une erreur manifeste et la demande de modification est rejetée lorsqu’il existe des indications que le demandeur avait l’intention de déposer ce type de marque, notamment dans les cas suivants:
la représentation de la marque comporte les mots «marque collective» ou le nom du demandeur indique qu’il s’agit d’une association ou le règlement d’usage de la marque collective est présenté.
9 Catégorie de la marque
Articles 4 et 26, article 7, paragraphe 1, point a), du RMC Règle 3 du REMC
La subdivision des marques en catégories remplit plusieurs fonctions. Premièrement, elle sert à établir la condition légale de la marque à représenter; deuxièmement, elle peut aider l’Office à comprendre ce que le demandeur chercher à enregistrer; enfin, elle facilite les recherches dans la base de données de l’OHMI.
Une marque peut être constituée de tout signe susceptible d’une représentation graphique. Le formulaire de demande doit obligatoirement comporter une représentation de la marque pour pouvoir être déposé. La marque doit être représentée graphiquement et cette représentation ne peut être remplacée par une description de la marque. Si le demandeur ne fournit pas de représentation graphique de sa marque, une notification d’irrégularité lui est adressée et aucune date de dépôt n’est inscrite (voir ci-dessus au paragraphe 4, Date de dépôt).
Lorsque la demande comporte une représentation de la marque sans préciser la catégorie de marque souhaitée, l’Office accorde la catégorie appropriée en fonction de la représentation produite et de l’éventuelle description de la marque, et il en informe le demandeur par écrit en fixant un délai de deux mois pour la présentation d’observations.
Lorsque demandeur a sélectionné un type de marque qui ne correspond ni à la représentation de la marque ni à toute description de marque fournie, la catégorie de la marque sera corrigée suivant les modalités précisées ci-dessous au paragraphe 9.9, Correction de la catégorie de la marque.
Les exemples de catégories de marques dans ces directives ne sont donnés que dans le contexte des questions de formalité sans jamais préjuger du résultat de la procédure d’examen.
Les éléments verbaux se composent de lettres de l’alphabet de toute langue officielle de l’UE et de signes du clavier. Lorsqu’une marque, autre qu’une marque verbale, contient tout élément verbal de ce type, visible dans la représentation, celui-ci doit être inclus dans le champ respectif. Ceci permet de rechercher la marque dans la base de données et constitue également la base du contrôle de la langue pour les marques qui sont exécutées dans toutes les langues officielles de l’UE.
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9.1 Marques verbales
Une marque verbale est une marque dactylographiée comportant des lettres (en minuscules ou en majuscules), des mots (en lettres minuscules ou majuscules), des chiffres, des symboles typographiques ou des signes de ponctuation occupant une seule ligne. L’Office accepte l’alphabet de n’importe quelle langue officielle de l’UE comme marque verbale. Une marque composée de texte occupant plus d’une ligne n’est pas considérée comme une marque verbale, ce type de marque relevant de la catégorie des marques figuratives.
Exemples de marques verbales acceptables
MC 6 892 351 europadruck24
MC 6 892 806 TS 840
MC 6 907 539 4 you
MC 2 221 497 ESSENTIALFLOSS
MC 0 631 457 DON’T DREAM IT, DRIVE IT
MC 1 587 450 ?WHAT IF!
MC 8 355 521 ΕΙΔ ΕΛΛΗΝΙΚΟ ΙΝΣΤΙΤΟΥΤΟ ΔΙΑΤΡΟΦΗΣ (alphabet grec)
MC 8 296 832 Долината на тракийските царе (alphabet cyrillique)
9.2 Marques figuratives
Une marque figurative est une marque composée:
d’éléments exclusivement figuratifs; d’une combinaison d’éléments verbaux, figuratifs ou autres éléments graphiques; d’éléments verbaux représentés dans des polices stylisées; d’éléments verbaux en couleur; d’éléments verbaux occupant plus d’une ligne; de lettres d’un alphabet qui n’est pas un alphabet de l’Union européenne; de signes qui ne peuvent pas être reproduits par un clavier; de combinaisons des éléments précédents.
Les marques illustrant un modèle sont des marques «figuratives» selon la pratique de l’Office.
Exemples de marques figuratives
MC 1 414 366
Élément purement graphique sans couleur
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Exemples de marques figuratives
MC 9 685 256
Élément purement graphique en couleur
MC 4 705 414
Combinaison d’éléments graphiques et de texte dans une police standard, sans couleur
MC 9 687 336
Combinaison de police stylisée et d’éléments figuratifs, sans couleur
MC 4 731 725
Combinaison de police stylisée et d’éléments figuratifs en couleur
MC 9 696 543
Élément verbal dans une police stylisée sans couleur
MC 2 992 105
Éléments verbaux dans une police stylisée sans couleur
MC 9 679 358
Éléments verbaux dans différentes polices en couleur
MC 9 368 457
Éléments verbaux uniquement occupant plus d’une ligne
MC 9 355 918
Slogan dans deux polices différentes, lettres de tailles différentes occupant plus
d’une ligne et en couleur
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Exemples de marques figuratives
MC 9 681 917
Élément verbal dans un alphabet qui n’est pas un alphabet de l’Union européenne (chinois)
MC 0 015 602
MC 7 190 929
9.3 Marques tridimensionnelles
Article 43, paragraphe 2, du RMC Règle 3, paragraphe 4, du REMC Communication nº 2/98 du président de l’Office
Une marque tridimensionnelle est une marque constituée d’une forme à trois dimensions (qui peut être un récipient, un emballage ou le produit lui-même). La représentation photographique ou graphique peut contenir jusqu’à six perspectives de la même forme. Dans le cas de demandes déposées par voie électronique, celles-ci doivent être transmises en pièce jointe en un seul document (au format JPEG). Dans le cas de demandes déposées sous format papier, elles doivent être transmises sur une seule feuille A4. Il est possible de déposer un maximum de six perspectives de la marque, mais une seule vue de la forme est suffisante dès lors que la forme à protéger peut être établie à partir de cette vue unique.
Dans certains cas, le demandeur dépose différentes vues d’un objet tridimensionnel sur plusieurs feuilles de papier (par exemple, une page par image/vue). Dans de tels cas, il convient de soulever une irrégularité en accordant au demandeur un délai de deux mois pour indiquer laquelle des représentations déposées doit être utilisée comme représentation de la demande de marque communautaire.
Les demandeurs sollicitant l’enregistrement d’une marque tridimensionnelle doivent en faire mention dans la demande. Si aucune catégorie de marque n’est indiquée et que seule une vue de l’objet a été produite, et si la description de la marque (lorsqu’elle existe) n’indique pas que la marque déposée est tridimensionnelle, l’Office la considèrera comme une marque figurative.
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Exemple
Aucune catégorie de marque n’a été sélectionnée pour ce signe et aucune description de marque n’a été produite. L’Office considérera donc la marque comme une marque figurative.
Exemples de représentations de marques tridimensionnelles acceptables
MC 4 883 096
Quatre dessins différents du même objet
MC 4 787 693
Six photographies du même objet à partir de différentes perspectives, avec du texte
MC 30 957
Deux photographies en couleur montrant des perspectives différentes du même objet
MC 8 532 475
Six vues en couleur montrant six perspectives différentes du même objet
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Exemples de marques qui ne sont pas acceptables en tant que marques tridimensionnelles
MC 6 910 021
Cinq vues ne montrant pas le même objet
MC 7 469 661
Aucun texte ne peut être ajouté à la représentation de la marque (texte sous la photo de la bouteille)
MC 9 739 731
La première et la troisième bouteille montrent deux perspectives différentes de la même bouteille avec une capsule grise. La deuxième bouteille possède une capsule bleue et constitue donc un objet différent de celui représenté sur la première et la troisième bouteille. La quatrième image est complètement différente puisqu’elle montre deux capsules de bouteille et une étiquette. Sur les quatre perspectives, seules la première et la troisième sont des vues du même objet.
Lorsque des vues de différents objets représentés sur une seule feuille A4 ou dans un seul fichier JPEG sont déposées pour une demande de marque communautaire tridimensionnelle, il ne peut être remédié à l’irrégularité constatée car la suppression d’un ou de plusieurs de ces objets différents entraînerait une altération substantielle de la représentation de la marque (voir ci-dessous au paragraphe 18, Modification de la demande de marque communautaire). Dans ce cas, la demande doit être rejetée au motif que la représentation n’illustre pas une forme tridimensionnelle unique.
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9.4 Marques sonores
Article 4 du RMC; décision nº EX-05-3 du président de l’Office
Une marque sonore doit être représentée graphiquement au moyen des méthodes normalisées de reproduction graphique des sons, telles qu’une notation musicale. Une description verbale du son ne suffit pas (voir la décision du 27 septembre 2007, «TARZAN YELL», R 708/2006-4). Les paroles d’une chanson, accompagnées de notations musicales et du tempo, sont acceptables. Un sonagramme seul n’est pas une représentation graphique acceptable d’une marque sonore s’il n’est pas accompagné d’un fichier électronique contenant le son. Lorsque le son demandé ne peut être représenté par une notation musicale conventionnelle, par exemple le rugissement d’un lion, un sonagramme accompagné d’un fichier sonore est le seul moyen de représenter la marque.
9.4.1 Fichier sonore électronique
L’adjonction d’un fichier sonore au format MP3 est facultative lorsqu’une notation musicale est produite, mais uniquement possible pour le dépôt électronique. L’Office n’accepte pas le dépôt d’un fichier sonore électronique seul, dans la mesure où une représentation graphique est requise. Lorsqu’une demande n’inclut pas de représentation graphique de la marque, une irrégularité concernant la date de dépôt sera constatée (pour informations sur les dates de dépôt, voir le paragraphe 4 des présentes Directives).
Le fichier sonore doit être au format MP3 et la taille du fichier ne doit pas dépasser deux mégaoctets. Les conditions fixées par l’Office ne permettent pas le son en streaming ou en boucle. Toute autre annexe ou toutes autres annexes qui ne remplissent pas ces critères sont réputées ne pas avoir été déposées.
9.4.2 Notations musicales
Le demandeur peut déposer une notation musicale seule. Ce dépôt satisfait à l’exigence de représentation graphique de la marque. Dans ce cas, un fichier sonore électronique peut être joint, mais cela n’est pas obligatoire.
9.4.3 Sonagrammes
Le demandeur ne peut pas déposer un sonagramme seul (voir la décision du 27 septembre 2007, «TARZAN YELL», R 708/2006-4). Dans ce cas, un fichier sonore électronique est obligatoire, car l’Office et les tiers ne peuvent pas déduire le son du seul sonagramme. Les couleurs éventuellement utilisées dans un sonagramme ne font pas partie de la marque dans la mesure où le demandeur dépose une marque sonore. Dès lors, aucune indication de couleur ne doit être enregistrée, et si une telle indication est fournie, elle sera supprimée par l’Office.
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Exemples de marques sonores acceptables
MC 8 116 337
Sonagramme accompagné d’un fichier sonore
MC 9 199 134
Sonagramme accompagné d’un fichier sonore
MC 1 637 859
Notation musicale
MC 6 596 258
Notation musicale comprenant des instructions musicales
9.5 Couleur(s) en tant que telle(s)
La mention «Couleur(s) en tant que telle(s)» signifie que la protection par une marque est recherchée pour une ou plusieurs couleurs, indépendamment de leur forme ou configuration spécifique éventuelle. La protection porte sur la nuance de la (des) couleur(s) et, dans le cas de différentes couleurs, leur proportion est également protégée. La représentation d’une marque composée d’une ou de plusieurs couleurs en tant que telles doit consister en une représentation de la ou des couleurs sans contour. Lorsqu’il existe plusieurs couleurs, la proportion occupée par chaque couleur doit être précisée dans le champ «Description de la marque». À défaut, l’Office adresse une notification d’irrégularité au demandeur et lui accordera un délai de deux mois pour fournir les informations.
Si la représentation contient d’autres éléments, tels que des éléments verbaux ou des images, il s’agit non pas d’une marque constituée d’une ou de plusieurs couleurs en tant que telles, mais d’une marque figurative. Pour plus d’informations sur la correction du type de marque, voir le paragraphe 9.9 des présentes Directives.
Au moment de demander une marque composée d’une couleur en tant que telle, il ne suffit pas de fournir un simple échantillon de la couleur en soi; la ou les couleurs faisant
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l’objet de la marque doivent être décrites en mots dans le champ «Indication de couleur». En outre, il est vivement recommandé de fournir également les codes de couleurs répondant à la norme internationale (voir l’arrêt du 6 mai 2003, C-104/01, «Libertel», points 31 à 38). Pour en savoir plus sur l’indication de la couleur, voir le paragraphe 11 des présentes Directives.
Une demande de marque constituée d’une ou de plusieurs couleurs en tant que telles peut être représentée en montrant la ou les couleurs telles qu’elles seront appliquées à quelque chose, comme le montre l’exemple ci-dessous (voir également arrêt du 12 novembre 2013, T-245/12, «Dégradé de verts», points 38 et 39). Dans de tels cas, une description de la marque est requise afin d’en clarifier la nature.
Exemples de marques acceptables constituées d’une ou de plusieurs couleurs en tant que telles
MC 962 076
Indication de couleur: Brun
MC 31 336
Indication de couleur: Lilas/violet
Description: Lilas/violet, une couleur comme illustré dans la représentation. Les valeurs (coordonnées spécifiques dans l’espace chromatique) de cette marque sont: L => 53,58 +/- 08; A => 15,78 +/- 05; B => 31,04 +/- 05. La marque peut se situer dans le Pantone’s Process Book entre les tons portant les numéros E 176-4 et E 176-3.
MC 8 298 499
Indication de couleur: Vert Pantone 368 C, anthracite Pantone 425 C, orange Pantone 021 C.
Description: La marque comprend les couleurs verte: Pantone 368 C; anthracite: Pantone 425 C; orange: Pantone 021 C, tel qu’illustré; les couleurs sont appliquées sur une grande partie de la surface externe de la station-service dans le rapport vert 60 %, anthracite 30 % et orange 10 %, pour une impression générale d’une station-service de couleur verte et anthracite (le vert étant la couleur dominante) avec quelques petites touches oranges.
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Exemples de marques acceptables constituées d’une ou de plusieurs couleurs en tant que telles
MC 4 381 471
Indication de couleur: Bleu (Pantone 2747 C) et argenté (Pantone 877 C).
Description: Les couleurs bleu (Pantone 2747 C) et argenté (Pantone 877 C) juxtaposées comme le montre la représentation de la marque, sont revendiquées. La proportion des couleurs est d’environ 50 %-50 %.
MC 2 346 542
Indication de couleur:
RAL 9018 NCS S 5040G5OY + RAL 9018 1: 4 NCS S 5040G5OY + RAL 9018 2: 3 NCS S 5040G50Y + RAL 9018 3: 2 NCS S 504050Y + RAL 9018 4: 1
NCS S 5040G50Y.
DMC 9 869 256
Indication de couleur: Bleu RGB 46-122-184
Description: la marque se compose de la couleur bleue, définie en tant que couleur RGB: 46-122-184, telle qu’elle est appliquée à un joint dans un capuchon de soupape de décharge telle que représentée dans l’illustration jointe à la demande.
9.6 Hologrammes
Les hologrammes sont particulièrement difficiles à représenter graphiquement. En effet, une représentation sur papier ne permet pas à l’image de «changer» comme elle le ferait naturellement sur du papier holographique. Toutefois, avec une description claire et des vues suffisantes de la marque, il est possible de représenter graphiquement un hologramme. Ainsi, lorsqu’une demande d’enregistrement est introduite pour un hologramme, il est possible de déposer plusieurs représentations de la marque, pour autant que toutes les différentes vues soient représentées sur une seule feuille A4 pour les dépôts sous format papier ou dans un seul fichier JPEG pour les dépôts électroniques.
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9.7 Marques olfactives
À l’heure actuelle, les marques olfactives ne sont pas acceptables. En effet, une représentation graphique doit être claire, précise, complète par elle-même, facilement accessible, intelligible, durable et objective (voir l’arrêt du 12 décembre 2002, «Sieckmann», C-273/00). Comme pour toutes les autres catégories de marques, la description de la marque ne peut se substituer à la représentation graphique. La description d’une odeur, quoique graphique, n’est ni claire, ni précise, ni objective. Par conséquent, aucune date de dépôt ne peut être attribuée étant donné que la marque ne peut être représentée graphiquement. De telles demandes (voir également la décision du 4 août 2003, «The taste of artificial strawberry flavour», R 120/2001-2) ne sont pas rejetées mais sont réputées ne pas avoir été déposées.
9.8 Autres marques
Les autres marques doivent comporter une indication, dans la description de la marque, de ce qui est entendu par «autres». Les «autres» marques comprennent notamment les marques animées (marques de mouvement), les marques de position et les marques de repérage (lignes ou fils colorés apposés sur certains produits).
9.8.1 Marques animées (mouvement)
Le nombre de représentations de la marque est pratiquement illimité dès lors qu’elles sont toutes regroupées sur une seule feuille A4 pour les dépôts papier ou dans un seul document JPEG pour les dépôts électroniques. La représentation de la marque doit être accompagnée d’une description expliquant l’animation.
Les représentations et la description de la marque doivent clairement expliquer le mouvement à protéger. Lorsque le mouvement ne peut être perçu (par exemple si les représentations ne sont pas déposées dans la bonne séquence) ou que la description de la marque ne correspond pas à la séquence des représentations, l’Office adresse une notification d’irrégularité au demandeur et lui accorde un délai de deux mois pour clarifier les représentations et/ou la description. S’il n’est pas remédié à l’irrégularité constatée dans le délai imparti, la demande est rejetée.
Lorsque les représentations incluent une ou plusieurs couleurs, la ou les couleurs doivent être indiquées en lettres.
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Exemples de marques animées (mouvement) acceptables
MC 5 338 629
Description: La marque consiste en la représentation d’une séquence animée composée de deux segments s’évasant qui se rejoignent dans la partie supérieure droite de la marque. Au cours de la séquence d’animation, un objet géométrique monte le long du premier segment et ensuite redescend le long du second, tandis que des cordes individuelles à l’intérieur de chaque segment deviennent progressivement plus claires. Le pointillage dans la marque sert uniquement à créer un effet d’ombre. La séquence animée complète dure entre une et deux secondes.
Représentations: Représentation de la marque en noir et blanc et nuances de gris uniquement; aucune indication de couleur.
MC 9 742 974
Description: La marque est constituée d’une image en mouvement composée d’une brosse à dents se déplaçant vers une tomate, s’appuyant sur la tomate sans en percer la peau, puis s’éloignant de la tomate.
Représentations
Exemple de marque animée (mouvement) inacceptable
MC 7 227 218
Description: La marque se compose d’une marque constituée d’une image en mouvement consistant en une séquence animée illustrant une série d’écrans vidéo rectangulaires de tailles différentes, contenant ou non des images visibles, qui volent vers l’intérieur à la façon d’une tornade, comme s’ils allaient de la position du spectateur vers le centre de l’écran, où ils s’unissent pour former un mot.
Dans cette marque, le mouvement ne peut être perçu à partir des images; la description ne change rien à ce constat.
9.8.2 Marques de position
Une marque de position est un signe positionné sur une partie particulière d’un produit dans une taille constante ou dans une proportion particulière par rapport au produit. Le signe doit être représenté graphiquement. Étant donné que le demandeur vise à protéger le placement ou la «position» de la marque, le dépôt d’une description de la
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marque précisant son positionnement est une formalité obligatoire. La description de la marque doit également faire mention du fait qu’il s’agit d’une «marque de position» et, lorsqu’une représentation en couleur est déposée, la ou les couleurs doivent être indiquées en lettres.
Dès lors qu’une marque de position couvre des produits pour lesquels le positionnement est clair et d’autres produits pour lesquels le positionnement ne serait pas clair, une notification d’irrégularité de forme doit être adressée au demandeur en ce qui concerne les produits sur lesquels la marque ne pouvait pas être (clairement) positionnée selon les modalités spécifiées dans la description de la marque. Le demandeur se voit accorder un délai de deux mois pour corriger sa demande. Si la demande n’est pas limitée aux produits pour lesquels le positionnement est clair, elle doit être rejetée pour les produits et/ou services pour lesquels le positionnement est douteux/impossible.
Exemples de marques de position acceptables
MC 4 717 914
Indication de couleur: Rouge
Description: Bande rouge de 2 mm de large courant le long du côté de la partie montante de la chaussure et des œillets.
MC 3 799 574
Indication de couleur: Vert (Pantone 347 C)
Description: Anneau vert, qui est positionné à la base du raccord électrique du socle de l’ampoule.
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Exemples de marques de position acceptables
MC 9 045 907
Indication de couleur: Incarnat, noir et gris
Description: La marque consiste en une combinaison des couleurs rouge, noire et grise appliquée sur la surface extérieure d’un tracteur, à savoir le rouge pour le capot, le toit et les passages de roues, le gris clair et le gris foncé pour une bande horizontale sur le capot, et le noir sur la grille avant du capot, le châssis et les garnitures verticales, tels que représentés dans l’illustration jointe à la demande.
MC 6 900 898
Description: Dessin de deux courbes qui se croisent en un point inséré dans une poche; la marque consiste en une couture décorative constituée du dessin de deux courbes qui se croisent en un point inséré dans une poche; l’une des courbes est caractérisée par une forme en arc dessinée d’un trait fin, tandis que la seconde courbe est caractérisée par une forme sinusoïdale dessinée d’un trait épais; les lignes interrompues de façon irrégulière représentent le périmètre de la poche, que le demandeur ne revendique pas, et qui sert uniquement à indiquer la position de la marque sur la poche.
MC 8 586 489
Description: La marque est une marque de position. Elle se compose de deux lignes parallèles se trouvant sur la surface extérieure de la partie supérieure d’une chaussure. La première ligne va du milieu du bord de la semelle d’une chaussure et part en arrière vers le cou-de-pied. La deuxième ligne est parallèle à la première et se prolonge en une courbe vers l’arrière le long du contrefort jusqu’au talon et termine au bord de la semelle de la chaussure. Les lignes en pointillés marquent la position de la marque et ne font pas partie de la marque.
Les marques de position ne sont pas acceptables si la description montre que la position peut varier, par exemple: «La marque consiste en [description de l’élément] appliqué à l’extérieur des produits». La position de la marque doit être clairement définie et ressortir de façon évidente de la représentation et de la description.
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Exemples de marques de position / descriptions inacceptables
MC 8 682 213
Description: La protection de la marque est revendiquée pour une bande positionnée sur le boîtier d’un système de fonçage par percussion (également appelé fusée pneumatique), la bande étant représentée dans la vue générale isométrique du système de fonçage par percussion sous la forme d’une bande noire circulaire qui est séparée des autres parties du boîtier par le motif visible dans la vue additionnelle, laquelle montre un détail agrandi (semi-circulaire) de cette bande en vue latérale du système de fonçage par percussion, le motif étant composé d’une multitude de rainures circulaires; la bande est positionnée sur une section du boîtier qui, vue du point conique du système de fonçage par percussion, est égale au deuxième quart de la longueur totale du système de fonçage par percussion; d’autres formes visibles dans la représentation et/ou les agencements ne font pas partie de la marque.
La représentation et la description ne définissent pas clairement en quoi consiste le signe et la façon dont il doit être placé sur les produits:
(La représentation ne permet pas de déterminer clairement à partir de quelle perspective un détail semi-circulaire devrait être visible.)
MC 8 316 184
Description: La marque est une marque de position dans laquelle un anneau en cuivre étroit est positionné et visible entre deux couches métalliques sur le bord supérieur du corps d’une casserole ou d’une poêle.
Signe défini au regard de produits spécifiques – le signe est opposable pour d’autres produits si le positionnement sur ces autres produits n’est pas clair.
(Signe opposable pour des «ustensiles de cuisine»; en effet, leur forme peut varier et le positionnement ne serait clair que pour une casserole ou une poêle.)
9.8.3 Marques de repérage
Les marques de repérage sont des lignes ou des fils colorés apposés sur certains produits. Ces marques sont populaires dans l’industrie textile. Les lignes colorées sur des tuyaux ou des câbles sont un autre exemple de marque de repérage. La description de la marque doit indiquer que la marque est une «marque de repérage» et toutes les couleurs doivent être indiquées en lettres.
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Exemples de marques de repérage acceptables
MC 7 332 315
Description: La marque est caractérisée par des tubes, tuyaux ou profils extrudés; de minces lignes transversales noires apposées à distance égale des côtés extérieurs des tubes, tuyaux ou profils extrudés traversent deux bandes parallèles longitudinales rouges s’étendant dans le sens de la longueur des tubes, tuyaux ou profils extrudés.
MC 3 001 203
Indication de couleur: Or sur fond clair
Description: Bande dorée incorporée dans une bande de fonctionnement claire, en particulier bande de plomb, pour voilages, rideaux, nappes de même que des produits similaires en tant que signe distinctif.
9.9 Correction de la catégorie de la marque
9.9.1 Règles générales
Lorsque l’indication de la catégorie de la marque figurant dans la demande est clairement erronée ou lorsqu’il existe une contradiction manifeste entre la catégorie de marque sélectionnée et la représentation, y compris toute description de la marque, l’Office corrige la catégorie de la marque et en informe le demandeur en fixant un délai de deux mois pour la présentation d’observations. En l’absence de réponse, la correction effectuée par l’Office est considérée comme acceptée par le demandeur. En cas de désaccord du demandeur avec la modification, l’Office rétablira l’indication initiale de la catégorie de la marque. Toutefois, il se peut que la demande soit rejetée par la suite, étant donné que la nature de la marque n’est pas claire.
9.9.2 Exemples d’irrégularités récurrentes en matière de catégories de marques
9.9.2.1 Marque verbales
Lorsque la catégorie de marque choisie est «marque verbale» et que la marque est en réalité une marque «figurative», comme dans les exemples visés au paragraphe 9.2 ci-dessus (représentation sur plusieurs lignes, polices stylisées, etc.), l’Office corrige la catégorie de la marque et met à jour l’image figurative dans le système. L’Office adresse une lettre au demandeur l’informant de la modification et lui accordant un délai de deux mois pour la présentation d’observations. Si le demandeur ne répond pas dans le délai imparti, il est réputé avoir accepté la modification. S’il présente des
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observations soulevant des objections contre la modification et que l’Office est en désaccord avec ces observations, la marque est reclassée dans la catégorie «verbale» et la demande est rejetée.
9.9.2.2 Marques figuratives
Si aucune catégorie de marque n’a été indiquée et que la marque est clairement figurative, comme dans les exemples exposés ci-dessus, la catégorie de marque est enregistrée par l’Office et une lettre explicative est adressée au demandeur.
Parfois, des marques «figuratives» en couleur sont déposées, à tort, en tant que «marques de couleur». En outre, les différences de typologie entre les diverses marques au sein des États membres de l’UE peuvent conduire à une irrégularité liée à la catégorie de la marque, en particulier en ce qui concerne les marques associant un élément verbal et un élément figuratif, qui sont souvent classées à tort dans la catégorie des «autres marques» plutôt que dans celle des «marques figuratives». Dans ces cas, l’Office classe la marque dans la catégorie des marques «figuratives» et en informe le demandeur en fixant un délai de deux mois pour la présentation d’observations.
Exemple 1
Une marque figurative demandée en tant que marque de couleur en tant que telle.
L’Office modifiera la catégorie de la marque de «de couleur en tant que telle» à «figurative» et enverra une lettre confirmant la modification. En cas de désaccord du demandeur, ce dernier peut présenter des observations. En cas de désaccord de l’Office avec les observations, celui-ci rétablit l’indication initiale de la catégorie de la marque, mais la demande sera ensuite rejetée. Si, toutefois, le demandeur ne répond pas dans le délai imparti, le changement de catégorie de la marque est considéré comme accepté et la demande est autorisée.
Exemple 2
Les marques suivantes sont demandées dans la catégorie «autres marques»:
MC 9 328 121
MC 9 323 346
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Lorsque le demandeur a choisi la catégorie «autre marque» au lieu de cocher la catégorie «figurative» et qu’il a ajouté, dans le champ réservé aux explications de l’«autre marque», des termes comme «text and logo», «marque semi-figurative», «marca mixta», «Wort-Bild-Marke», ou encore «colour per se» (parce que sa marque contient des éléments en couleur), alors que la marque demandée est clairement une marque figurative telle que définie ci-dessus, l’Office change la catégorie de la marque d’autre à figurative et adresse une lettre au demandeur, l’informant de cette modification et lui accordant un délai de deux mois pour présenter des observations. Si le demandeur ne répond pas dans ce délai de deux mois, le changement de catégorie de la marque est considéré comme accepté et la demande est autorisée. Si le demandeur présente des observations soulevant des objections contre la modification et que l’Office est en désaccord avec ces observations, l’Office rétablit l’indication initiale de la catégorie de la marque, mais la demande sera ensuite rejetée.
Exemple 3
Dans certains cas, les marques sont déposées, par exemple, en tant que marques «figuratives», mais la représentation et/ou la description de la marque démontrent qu’il s’agit en fait d’une marque tridimensionnelle.
Demande de marque communautaire 10 318 897
Catégorie de marque choisie: Figurative
Description: La marque consiste en une forme d’étagère pour les produits. Les extrémités de l’étagère présentent une forme elliptique. Le bord avant de l’étagère présente une forme fuselée. La portion de la marque représentée en pointillés ne fait pas partie de la marque et sert uniquement à montrer le positionnement ou le placement de la marque.
Dans ce cas, la description de la marque, qui fait référence à «une forme d’étagère», est en contradiction avec la catégorie «figurative» de la marque. Par conséquent, le demandeur a été invité à ranger la marque dans la catégorie des marques «tridimensionnelles» ou à supprimer la description de la marque.
10 Marques de série
Dans toutes les demandes, la protection ne peut être sollicitée que pour une seule marque, quel que soit le type ou la catégorie de marque demandé. Contrairement à certains systèmes nationaux, les règlements sur la marque communautaire ne permettent pas les marques de série. Lorsque différentes versions d’une même marque sont demandées, il convient de déposer une demande de marque communautaire séparée pour chacune de ces versions.
Exemple 1
Une marque verbale déposée en tant que «BRIGITTE brigitte Brigitte» ne sera pas «interprétée» comme «le mot "Brigitte", écrit en lettres majuscules ou minuscules, ou
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en écriture "standard"»; elle sera perçue comme une marque verbale contenant le nom féminin «Brigitte» trois fois.
Exemple 2
Une marque verbale déposée en tant que «Línea Directa / Direct Line / Ligne Directe» ne sera pas «interprétée» comme «le terme "direct line", en espagnol, en anglais ou en français»; elle sera perçue comme une marque verbale contenant les trois versions linguistiques dans la séquence demandée. Aucune notification d’irrégularité ne sera adressée et aucune modification de la marque ne sera acceptée.
10.1 Représentations figuratives multiples
Dans une demande déposée par voie électronique, la reproduction de la marque doit être téléchargée sous la forme d’un seul fichier JPEG. Lorsque le formulaire de demande papier est utilisé, la reproduction de la marque doit être jointe sur une seule feuille A4.
La feuille A4 ou le fichier JPEG ne doivent contenir que la seule représentation de la marque telle qu’elle a été demandée et ne doit comporter aucun texte supplémentaire.
Lorsqu’une demande présentée sous format papier contient plusieurs feuilles A4 montrant des marques différentes, quoique très similaires, l’Office adresse une notification d’irrégularité au demandeur l’invitant à choisir une marque parmi les différentes variations produites. Si le demandeur souhaite également protéger les autres variations, il doit déposer une nouvelle demande pour chacune des autres marques qu’il souhaite enregistrer. En l’absence de réponse à la notification d’irrégularité dans le délai imparti, la demande est rejetée.
Lorsqu’une demande déposée par voie électronique ou sous format papier contient un fichier JPEG ou une feuille A4 montrant ce qui peut apparaître comme plusieurs représentations de la marque, la combinaison globale de toutes ces variations, telles qu’elles apparaissent sur ladite page, est considérée comme la marque pour laquelle la protection est sollicitée. La modification de la représentation de la marque n’est pas autorisée.
MC 8 975 286
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Dans la mesure où le document JPEG joint à la demande susvisée contenait toutes les images ci-dessus sur une seule page, l’ensemble des variations de logos, de couleurs et de textes est considéré comme une seule et même marque.
11 Indication de couleur
Règle 3, paragraphe 5, et règle 80 du REMC
Les marques verbales et les marques sonores ne peuvent pas être en couleur. En effet, même si un sonagramme est représenté en couleur, ce sont le ou les mots et le ou les sons qui sont protégés.
Les hologrammes tridimensionnels, figuratifs et autres marques peuvent être demandés en couleur ou sans couleur.
Lorsque l’enregistrement demandé est en couleur, une représentation en couleur de la marque doit être jointe à la demande et les couleurs utilisées doivent être indiquées en lettres. Un code de couleur international tel que le numéro Pantone peut être ajouté à l’indication de couleur, même si celui-ci ne peut pas remplacer l’indication en lettres (par exemple vert, bleu, rouge).
Lorsqu’une représentation en couleur est produite, l’Office considère que le demandeur revendique implicitement la couleur et la demande est donc considérée comme une demande d’enregistrement d’une marque en couleur. Il n’est pas possible de transformer la demande en une marque en noir et blanc (voir la décision du 25 août 2010, «Form von Prüfköpfen (3D MARKE)», R 1270/2010-4). La seule alternative pour le demandeur est de déposer une nouvelle demande contenant une représentation de la marque en noir et blanc.
Si, dans une demande de marque en couleur, les couleurs gris, noir et blanc sont utilisées à d’autres fins que le contraste ou la délimitation, elles doivent également être revendiquées.
Les expressions comme «multicolore», «de différentes couleurs», «dans toutes les combinaisons possibles» ou «dans n’importe quelle proportion» ne sont pas acceptables (voir la décision du 25 août 2010, «Form von Prüfköpfen (3D MARKE)», R 1270/2010-4).
Lorsque l’indication de la ou des couleurs est omise, l’Office propose la ou les couleurs au demandeur, fixant un délai de deux mois pour la réponse. Si aucune réponse ne parvient à l’Office avant l’expiration de ce délai, l’insertion de la ou des couleurs indiquées par l’Office est réputée avoir été acceptée. En cas de désaccord du demandeur avec l’insertion des couleurs, l’Office supprime l’indication. Toutefois, dans ce cas, si le demandeur n’indique pas les couleurs acceptables, la demande est rejetée.
S’il n’est pas possible d’établir la ou les couleurs, l’Office invite le demandeur à fournir les couleurs. Si le demandeur ne produit pas une indication de couleur acceptable dans le délai de deux mois, la demande est rejetée (règle 9, paragraphe 4, et règle 3, paragraphe 5, du REMC).
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Si la demande contient une revendication de couleur mais qu’aucune représentation de la marque en couleur n’a été fournie, il existe une incohérence formelle entre la marque en noir et blanc demandée et la ou les couleurs revendiquées. Toute indication de couleur sera corrigée par l’Office (c’est-à-dire transformée en noir, blanc et/ou gris) et le demandeur en sera informé.
La seule exception à cette règle est lorsque la demande est déposée par télécopieur, auquel cas le demandeur peut (de sa propre initiative) transmettre une représentation en couleur par la poste dans un délai d’un mois suivant l’envoi de la demande. Ce délai d’un mois ne peut être prorogé. Lorsque la représentation en couleur parvient à l’Office dans ce délai, la représentation initiale en noir et blanc est remplacée par la nouvelle représentation en couleur. Si le demandeur ne transmet pas la représentation de la marque en couleur, l’Office ne la demandera pas. Si aucune représentation en couleur n’est présentée dans le délai d’un mois, l’indication de couleur éventuelle sera corrigée et transformée en noir, blanc et/ou gris (selon le cas) et le demandeur en sera informé. La revendication de couleur ne doit pas être supprimée puisque le demandeur a fourni une revendication de couleur qui a été corrigée par l’Office.
Le noir, le gris et le blanc sont considérés comme des «couleurs». L’indication de couleur effectuée par le demandeur («noir et blanc» ou «noir, gris et blanc», etc.) est soumise aux mêmes règles que les autres indications de couleurs mentionnées ci-dessus.
Lorsque la représentation de la marque est déposée par un autre moyen que la télécopie et en noir et blanc – y compris en gris –, elle ne peut pas être transformée en marque en couleur, même si la marque en noir et blanc a été déposée avec une revendication de couleur, une indication de couleur et/ou une description faisant référence à des couleurs.
Il convient de souligner que les indications telles que «transparent», «sans couleur» ou «incolore» ne sont pas des indications de couleurs et ne seront donc pas retenues. Lorsque la représentation d’une marque montre, par exemple, un objet «incolore» en verre ou en un matériel similaire sur un fond coloré, il convient d’expliquer dans la description de la marque que l’objet en question est incolore et qu’il est représenté sur un fond coloré ne faisant pas partie de la marque. Un objet transparent peut tout de même être en couleur, comme une bouteille de vin ordinaire par exemple, qui est souvent verte et généralement transparente. Lorsque le demandeur considère la «transparence» comme une caractéristique importante de sa marque, il doit ajouter une description de la marque à cet effet.
Exemples d’indications de couleurs
MC 10 275 519
Aucune indication de couleur
Aucune indication de couleur n’est requise. Toutefois, les couleurs blanc et noir peuvent être revendiquées par le demandeur si elles doivent être considérées comme une caractéristique de la marque.
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Exemples d’indications de couleurs
MC 8 401 572
Indication de couleur: Crème, bleu, orange, brun, rouge, rose, jaune, noir, vert, marron
Le noir doit être indiqué étant donné que la demande porte sur une marque en couleur et que le noir n’est pas seulement utilisé pour contraster et délimiter, c’est-à-dire que le noir est également utilisé pour la queue, l’œil, le nez et les oreilles.
MC 10 456 762
Aucune indication de couleur
Aucune indication de couleur n’est requise. Toutefois, les couleurs noir, blanc et gris peuvent être revendiquées si elles doivent être considérées comme une caractéristique de la marque.
MC 9 732 793
Indication de couleur: Rouge, orange, jaune, vert menthe, vert marin, bleu, violet, rose
Le noir doit être revendiqué dans cette demande puisqu’il s’agit d’une marque en couleur et que le noir est utilisé à d’autres fins que le contraste ou la délimitation, à savoir pour les lettres.
MC 10 336 493
Indication de couleur: Violet, bleu, jaune, blanc, orange, rouge et noir
Bien que le noir soit revendiqué, l’Office accepterait l’indication de couleur sans le noir, celui-ci servant uniquement à délimiter - autour des mots «POP-UP!».
Si l’indication de couleur comprend des informations qui ne sont pas pertinentes pour ce champ mais qui ont un rapport avec un autre champ de la demande, l’Office déplace le texte concerné vers le champ pertinent et en informe le demandeur. C’est le cas notamment lorsque l’indication de couleur comprend une description de la marque, une déclaration de renonciation ou une liste des produits et services.
12 Description de la marque
Règle 3, paragraphe 3, du REMC
Une description de la marque est obligatoire pour les demandes de marques communautaires classées dans la catégorie «autres marques». En effet, il est nécessaire de fournir une explication de ce que signifie la notion d’«autre» pour clarifier l’étendue de la protection (c’est-à-dire définir la nature de ce qui doit être protégé). Si la description est incomplète ou n’est pas assez claire, une irrégularité est soulevée. S’il n’est pas remédié à l’irrégularité constatée, la marque est rejetée.
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De même, lorsque des combinaisons de couleurs en tant que telles sont demandées, la spécification de la proportion des couleurs doit être précisée. Les marques verbales ne peuvent pas comporter de description de la marque; si la demande comporte une description, celle-ci sera supprimée par l’Office et le demandeur en sera informé. Aucun délai ne sera fixé pour la présentation d’observations, une description de la marque n’étant pas prévue pour les marques verbales.
Pour ce qui concerne les autres catégories de marques, une description de la marque n’est pas obligatoire mais elle peut être utile car elle peut aider l’Office à déterminer la nature de la marque ou à clarifier la représentation. Si la description ne correspond pas à la représentation de la marque, le demandeur est invité à la supprimer ou à la modifier. La représentation ne peut être modifiée de façon à correspondre à la description de la marque.
Lorsque la demande de marque communautaire est destinée à servir de base pour une demande internationale, le demandeur doit envisager d’inclure une description de la marque dans sa demande de marque communautaire. En effet, la production d’une description est une formalité obligatoire dans certains pays. Pour de plus amples informations, voir les Directives, partie M, Marques internationales.
La description de la marque ne peut servir qu’à décrire ce que l’on voit lorsque l’on regarde la représentation de la marque, ou ce que l’on entend lorsque l’on écoute une marque sonore. Elle ne doit pas contenir d’interprétation de ce que signifie une certaine combinaison de lettres ou d’éléments graphiques, ou de ce que le créateur avait à l’esprit, ni comporter d’indication du fait que la marque ne sera utilisée que dans certains États membres, etc. De même, il n’est pas possible d’affirmer dans la description que la marque peut contenir, par exemple, les couleurs bleu et vert ou rouge et jaune; la description doit indiquer soit «bleu; vert», soit «rouge; jaune» – à savoir ce que l’on voit dans la représentation en couleur de la marque.
La représentation de la marque et la description éventuelle doivent être suffisantes pour permettre à l’Office de voir et de comprendre ce que le demandeur souhaite enregistrer.
Lorsqu’une marque comporte ou consiste en des lettres d’un alphabet qui n’est pas un alphabet de l’Union européenne et que le demandeur fournit une translittération ou une traduction accompagnée d’une translittération du terme contenu dans la description de la marque, la demande est réputée acceptable.
Lorsque la description de la marque est supprimée, le demandeur en est informé. La représentation de la marque ne peut en aucun cas être modifiée de façon à correspondre à la description de la marque.
Lorsque la description de la marque ne correspond pas à la représentation de la marque, l’Office soulève une irrégularité et le demandeur dispose d’un délai de deux mois pour y remédier. S’il n’est pas remédié à l’irrégularité constatée:
1. l’Office rejette la demande de marque communautaire pour les «combinaisons de couleurs en tant que telles» et les «autres» marques qui requièrent une description de la marque pour expliquer l’étendue de la protection;
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2. dans tous les autres cas, la description n’étant pas obligatoire, l’Office la supprime.
Lorsque la description de la marque comporte des informations qui ne constituent pas une description pertinente et que ces mêmes informations n’ont aucun rapport avec les autres champs du formulaire de demande (par exemple, le texte interprète la signification/le symbolisme de la marque ou indique dans quels États membres la marque sera utilisée), l’Office supprime la description de la marque et en informe le demandeur, sans toutefois fixer de délai pour la présentation d’observations.
Lorsque la description de la marque comporte des informations qui ne constituent pas une description pertinente et que ces mêmes informations ont un rapport avec un autre champ de la demande, l’Office déplace le texte concerné vers le champ pertinent et en informe le demandeur sans fixer de délai pour les observations.
Ainsi, par exemple, lorsque des couleurs sont mentionnées dans le champ de la description de la marque, elles sont valables en tant qu’indication de couleur et seront donc saisies dans le champ relatif à l’indication des couleurs. Lorsque des produits et des services sont mentionnés dans le champ «description de la marque» plutôt que dans le champ «produits et services», l’Office les supprime de la description de la marque, et si les produits et services ne sont pas déjà couverts dans la spécification, l’Office informe le demandeur qu’il peut ajouter les produits et services.
Ce principe s’applique mutatis mutandis dans tous les cas où des informations nécessaires sur la marque ne sont pas saisies dans le champ approprié de la demande.
La description de la marque peut être modifiée ou ajoutée après le dépôt de la marque, afin de décrire plus clairement le contenu de la marque, par exemple le mouvement représenté. Cependant, une telle modification ne doit pas altérer de façon substantielle la nature de la marque. Il est impossible de modifier la description après l’enregistrement de la marque.
Exemples de descriptions de la marque acceptées
MC 1 915 248
Type de marque: Figurative
Description: Marque consistant en le mot «ALBALUNA» en caractères spéciaux, dans lequel la lettre «L» est superposée au profil d’un croissant de lune.
MC 2 023 950
Type de marque: Figurative
Description: La marque est constituée du mot «AIA» de couleur rouge, en caractères majuscules stylisés avec la lettre I surmontée d’un cercle de couleur rouge, insérée dans un ovale blanc délimité par un cadre rectangulaire vert, le tout profilé par un bord de couleur dorée.
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Exemples de descriptions de la marque acceptées
MC 8 837 502
Type de marque: Autres (position)
Description: La marque de position est composée d’un logo, constitué d’un rectangle à un coin arrondi avec bordure claire sur le pourtour et des 2 lettres "PP" l’une à côté de l’autre en couleur claire devant un fond foncé, sachant que le logo est affiché sur un écran pendant la diffusion d’une émission télévisée ou d’un autre programme dans le coin droit en haut de l’écran.
MC 6 453 104
Type de marque: Tridimensionnelle
Description: Marque tridimensionnelle consistant en une forme de bouteille dont le corps plus étroit à la base s’élargit au milieu. Ladite bouteille présente une décoration particulière à spirale composée d’une ligne en pointillés de couleur or, interrompue par des petits papillons dorés; à la fin de la ligne, sur la partie avant, apparaissent deux formes de papillons, une grande et une plus petite, de couleur rouge avec double profil noir et or. En dessous de ces deux formes apparaît l’inscription "BELLAGIO" en caractères majuscules de couleur blanche avec profil rouge; plus bas encore en couleur or apparaît l’inscription "The Beautiful Life". La bouteille est bouchée par une capsule de couleur rouge bordeaux sur laquelle sont alignés quelques petits papillons dorés.
MC 1 027 747
Type de marque: Autre (position)
Description: Bande rouge disposée dans la direction longitudinale d’une chaussure qui recouvre en partie la zone postérieure de la semelle et, en partie, la zone postérieure de la chaussure. Les modelures éventuelles reconnaissables sur la semelle ou sur la partie postérieure de la chaussure et/ou les caractéristiques de réalisation ne font pas partie de la marque.
MC 7 332 315
Type de marque: Autre (marque de repérage)
Description: La marque est caractérisée par des tubes, tuyaux ou profils extrudés; de minces lignes transversales noires apposées à distance égale des côtés extérieurs des tubes, tuyaux ou profils extrudés traversent deux bandes parallèles longitudinales rouges s’étendant dans le sens de la longueur des tubes, tuyaux ou profils extrudés.
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Exemples de descriptions de la marque acceptées
MC 2 818 334
Type de marque: Autre (mouvement)
Description: Deux mains forment un "T" dans lequel, du point de vue du spectateur, la main droite, tendue à plat avec les doigts pointant vers le haut (de sorte que seul le bord étroit de la main est visible), se déplace du coin supérieur gauche de l’image vers le centre, tandis que la main gauche, également tendue à plat avec les doigts pointant vers le haut et vus de côté, se déplace du coin supérieur droit de l’image vers le centre; les deux mains se rejoignent ensuite au centre de l’image, les doigts pointant vers le haut de la main droite touchant la surface de la main gauche approximativement au centre; le spectateur voit donc une vue latérale de la main gauche descendante venant s’appuyer sur les doigts de la main droite ascendante; du fait de ce mouvement, le spectateur peut alors reconnaître la lettre "T".
MC 5 090 055
Type de marque: Sonore
Description: La marque consiste en le cri de TARZAN, le personnage de fiction, le cri est composé de cinq phases distinctes, à savoir un son tenu, suivi d’une ululation, suivie d’un son tenu, mais à une fréquence supérieure, suivi d’une ululation, suivie d’un son tenu à une fréquence identique à celle du premier son tenu, et elle est représentée comme suit, la représentation du haut étant un graphe, établi au cours du cri, retraçant l’enveloppe normalisée de la forme et l’amplitude de l’onde, tandis que la représentation du bas est un spectrogramme normalisé du cri et consiste en la description tridimensionnelle du contenu de la fréquence (couleurs telles que représentées) en fonction de la fréquence (axe des ordonnées) tout au long de la durée du cri (axes des abscisses), la marque étant également reproduite dans le fichier électronique joint qui contient le son.
Type de marque: Figurative
Description: La marque consiste en trois formes bleues et en trois formes rouges dans des directions opposées.
Exemple d’une description de marque qui ne serait pas acceptée
Type de marque: Figurative
Description de la marque: La marque consiste en deux mains saisissant l’air.
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13 Déclaration de renonciation
Article 37 du RMC Règle 1, paragraphe 3, du REMC
Une déclaration de renonciation est une déclaration du demandeur selon laquelle il n’invoquera pas de droit exclusif sur un élément de la représentation de la marque dépourvu de caractère distinctif.
Le demandeur ne peut pas renoncer à l’utilisation de sa marque sur un produit ou un service particulier figurant dans la spécification. Si le demandeur souhaite réduire l’étendue des produits et services protégés par la demande de marque communautaire, il doit demander une limitation de la liste des produits et services.
En règle générale, il n’est pas nécessaire d’effectuer une déclaration de renonciation pour les éléments qui désignent le type, la qualité, la quantité, la valeur ou l’origine géographique des produits ou services. De même, il n’est pas nécessaire d’effectuer une déclaration de renonciation pour des mots ordinaires qui seraient communs à de nombreuses marques (le, de, etc.) ou pour d’autres éléments dépourvus de caractère distinctif (bords, formes usuelles de récipients, etc.). Lorsqu’une marque consiste en une combinaison d’éléments qui, manifestement, sont chacun dépourvus de caractère distinctif, il n’est pas nécessaire d’effectuer une déclaration de renonciation pour chacun des éléments séparément. Par exemple, si la marque d’une revue est «Alicante Local and International News», les éléments individuels qui la composent ne doivent pas faire l’objet d’une déclaration de renonciation.
Le champ «renonciation» n’est pas un champ obligatoire du formulaire de demande. L’Office insère le libellé demandé en tant que déclaration de renonciation, tandis qu’aucune information supplémentaire demandée ne sera ajoutée dans ce champ.
Exemple d’une déclaration de renonciation acceptable
Marque
DOODAH SOCKS
Produits
Classe 25
Déclaration de renonciation
"socks"
Exemples de déclarations de renonciation inacceptables
Marque
DOODAH SOCKS
Produits et services
Classes 1 à 45
Déclaration de renonciation
La marque ne sera pas utilisée en Allemagne.
Il ne s’agit pas d’une déclaration de renonciation. Le texte sera supprimé.
Marque
DOODAH SOCKS
Produits
Chaussettes comprises dans la classe 25.
Déclaration de renonciation
Le demandeur renonce à invoquer tout usage de la marque
pour des chaussettes pour hommes.
Il ne s’agit pas d’une déclaration de renonciation, mais bien d’une limitation des produits. Le texte sera supprimé.
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Exemples de déclarations de renonciation inacceptables
Marque
Gelamondo
Produits compris dans la classe 30: Crèmes glacées;
produits à base de crème glacée; boissons à base de crème glacée; gâteaux à base de crème glacée;
mélanges de crèmes glacées; mélanges de glaces instantanées;
glace; agents liants pour glace.
Déclaration de renonciation
Softeis (glace à l’italienne)
Il ne s’agit pas d’une déclaration de renonciation. Le texte sera supprimé.
Des déclarations de renonciation peuvent être ajoutées à la demande de marque à un stade ultérieur, le cas échéant (par exemple si la demande fait l’objet d’une opposition et que les parties se mettent d’accord sur une déclaration de renonciation afin de parvenir à un accord à l’amiable).
Pour de plus amples informations sur les déclarations de renonciation, consultez les Directives, partie C, Opposition, section 2, Identité et risque de confusion, chapitre 4, Caractère distinctif.
Si la déclaration de renonciation est opposable pour des raisons de formalités, une notification d’irrégularité est adressée au demandeur afin qu’il remédie à l’irrégularité constatée. S’il n’est pas remédié à l’irrégularité, la déclaration de renonciation est supprimée.
14 Priorité (de convention)
Articles 29 et 31 du RMC Règles 6 et 9 du REMC Décision nº EX-03-5 et décision nº EX-05-05 du président de l’Office
Par l’effet du droit de priorité, la date de priorité est considérée comme celle du dépôt de la demande de marque communautaire aux fins de la détermination de l’antériorité des droits.
Les principes de priorité ont été énoncés pour la première fois dans la convention de Paris pour la protection de la propriété industrielle du 20 mars 1883. Cette convention a été révisée plusieurs fois, modifiée pour la dernière fois en 1979 et ratifiée par de nombreux États contractants. L’article 4 de la convention – concernant les marques – correspond à l’article 29 du RMC.
La «priorité de convention» est un droit limité dans le temps qui est déclenché par le premier dépôt d’une marque. Elle peut être revendiquée dans les six mois qui suivent le premier dépôt, pour autant que le pays du premier dépôt soit partie à la convention de Paris ou à l’accord instituant l’OMC ou à un accord de réciprocité (cf. règle 101 du REMC – constatations de la Commission en matière de réciprocité).
Les États et autres territoires mentionnés ci-dessous ne sont parties à aucune des conventions pertinentes et ne bénéficient pas de la réciprocité de traitement. Par
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conséquent, les revendications de priorité fondées sur des dépôts effectués dans ces pays sont refusées.
États indépendants (non parties à la CP, à l’accord instituant l’OMC ou à un accord de réciprocité):
Afghanistan (AF) Aruba (AW) Cap-Vert (CV) Îles Cook (CK) Érythrée (ER) Éthiopie (ET) Kiribati (KI) Îles Marshall (MH) Micronésie (États fédérés de) (FM) Nauru (NR) Palau (PW) Somalie (SO) Tuvalu (TV).
Autres territoires (non parties à la CP, à l’accord instituant l’OMC ou à un accord de réciprocité):
Abkhazie Samoa américaines (AS) Anguilla (AI)
Bermudes (BM) Îles Caïmans (KY) Îles Falkland (FK) Guernesey (île anglo-normande) (GC) Île de Man (IM) Jersey (île anglo-normande) (JE) Montserrat (MS) Îles Pitcairn (PN) Sainte-Hélène (SH) Somalie (SO) Îles Turks-et-Caïcos (TC) Îles Vierges britanniques (VG).
Une revendication de priorité d’une marque communautaire antérieure est acceptable dès lors que la marque communautaire en question s’est vu accorder une date de dépôt. Une revendication de priorité d’un enregistrement international n’est pas acceptable. En effet, le principe du premier dépôt s’applique (article 29, paragraphe 4, du RMC – voir le paragraphe 14.1 ci-dessous) et la revendication de priorité ne peut être fondée que sur la marque de base pertinente.
Le demandeur peut revendiquer la priorité d’une ou de plusieurs demandes de marques antérieures. Il peut s’agir d’une demande de marque nationale (ou Benelux) déposée dans ou pour un État partie à la convention de Paris, un État partie à l’accord ADPIC, un État pour lequel la Commission a confirmé la réciprocité de traitement, ou
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d’une demande de marque communautaire. Voir le paragraphe 14.1 «Principe du premier dépôt» pour plus d’informations sur les demandes revendiquant la priorité de plusieurs demandes antérieures.
Est reconnu comme donnant naissance au droit de priorité tout dépôt qui a la valeur d’un dépôt national régulier en vertu de la législation nationale qui lui est applicable. On entend par «dépôt national régulier» un dépôt qui permet d’établir la date à laquelle la demande a été déposée dans le pays concerné, quelle que soit l’issue de la demande.
Le droit de priorité revendiqué doit toujours être une demande antérieure et ne peut pas porter la même date que la demande de marque communautaire.
Les revendications de priorité peuvent être effectuées dans la demande de marque communautaire ou postérieurement au dépôt de la demande, auquel cas le demandeur doit produire, dans un délai de deux mois à compter de la date de dépôt, une déclaration de priorité indiquant la date et le pays de dépôt de la demande antérieure.
La revendication peut être implicite de sorte que la production des documents de priorité (dans le délai de deux mois) est réputée constituer une déclaration de priorité. L’Office accepte des accusés de réception de dépôt mentionnant simplement le pays et la date de la demande antérieure .
Si la marque concernée est un logo en couleur, la présentation de photocopies en couleur du dépôt antérieur est obligatoire.
Dans les trois mois qui suivent la réception de la déclaration de priorité par l’OHMI, le demandeur doit fournir à l’Office le ou les numéros de dossier de la ou des demandes antérieures.
La priorité est accordée si les conditions suivantes sont remplies:
1. la marque visée par la demande antérieure et celle indiquée dans la demande de marque communautaire sont identiques;
2. les produits ou les services sont identiques à ceux de la demande antérieure ou sont contenus dans ces derniers (il suffit qu’un seul produit ou service soit identique);
3. le titulaire est le même dans chaque cas; 4. un délai de six mois au minimum doit s’écouler entre la date de dépôt de la MC et
la date de la demande antérieure; 5. la priorité doit être revendiquée avec la demande ou dans les 2 mois qui suivent
la date de dépôt.
Il est possible de revendiquer à la fois la priorité et l’ancienneté en invoquant le même enregistrement/la même demande antérieur(e), pour autant que le premier dépôt ait été enregistré dans les délais impartis.
14.1 Principe du premier dépôt
La demande antérieure doit constituer un premier dépôt. L’Office vérifie donc sur l’attestation qu’aucune revendication de priorité n’a été effectuée sur la demande antérieure et qu’aucune revendication d’ancienneté n’a été effectuée pour la demande de marque communautaire pour une marque ayant une date de dépôt antérieure à
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celle de la marque prioritaire. L’Office vérifie également que la demande de marque communautaire a bien été déposée dans un délai de six mois à compter de la date de dépôt de la demande antérieure.
Lorsque la priorité de plusieurs demandes antérieures est revendiquée, les produits et/ou services couverts par chacune de ces demandes doivent être différents afin de satisfaire au principe du premier dépôt. Des exemples sont donnés au paragraphe 14.8.1 ci-dessous.
14.2 Triple identité
L’Office vérifie que la demande de marque communautaire et les documents de priorité contiennent la même marque, portent sur le même demandeur et ont au moins un produit ou service en commun.
14.2.1 Identité des marques
L’Office et plusieurs offices des marques de l’Union européenne sont convenus d’une pratique commune dans le cadre du réseau européen des marques, dessins et modèles concernant l’identité des marques déposées en noir et blanc et/ou en nuances de gris par comparaison avec celles qui sont déposées en couleur. Les offices pensent que la note sur la pratique commune reflète la jurisprudence actuelle selon laquelle, aux fins de l’évaluation de la priorité, une marque déposée en noir et blanc et/ou en nuances de gris ne saurait être identique à la même marque déposée en couleur, dans la mesure où les différences au niveau des couleurs ou des nuances de gris sont si insignifiantes qu’elles passeraient inaperçues aux yeux du consommateur ordinaire (voir l’arrêt du 19 janvier 2012, T-103/11, «justing», point 24, l’arrêt du 20 février 2013, T-318/11, «Medinet», et l’arrêt du 9 avril 2014, T-623/11, «Sobieraj (MILANOWEK CREAM FUDGE)». Une différence insignifiante entre deux marques est une différence qu’un consommateur raisonnablement attentif ne percevrait qu’à l’examen côte à côte des marques.
Le principe décrit ci-dessus s’applique à tous les cas où les marques sont comparées aux fins des revendications de priorité. Par rapport aux marques verbales, la marque pour laquelle une demande est introduite sera généralement considérée comme identique à la marque antérieure s’il n’y a qu’une différence mineure eu égard à la typographie ou lorsqu’une marque est en lettres majuscules et l’autre en lettres minuscules. En outre, une différence de ponctuation ou l’ajout d’une espace séparant deux mots n’empêchera pas les marques d’avoir une identité (voir la décision du 9 octobre 2012, R 797/2012-2, «Water Jel» et la décision du 15 juillet 1998, R 10/1998-2, «THINKPAD»).
L’Office vérifie également la catégorie de marque de la demande antérieure. En effet, une catégorie de marque différente peut signifier que la demande de marque communautaire est différente de la marque antérieure. Ainsi, par exemple, une marque figurative n’est pas identique à une marque tridimensionnelle ou à une marque de position. Cependant, une marque verbale peut être considérée comme identique à une marque figurative si une police standard est utilisée dans la marque figurative (voir les exemples ci-dessous au paragraphe 14.8.2).
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Lors de l’évaluation des marques, l’Office examine également toute indication de couleur figurant dans la demande antérieure.
14.2.2 Identité des produits et services
L’Office vérifie qu’il existe au moins un produit ou service identique sur les listes couvertes par le premier dépôt et la demande de marque communautaire. L’examen ne s’étend pas à l’ensemble des produits et services inclus dans les listes et n’est pas limité aux seuls numéros de classe.
14.2.3 Identité du titulaire
La priorité peut être revendiquée par le demandeur de la première demande ou par son ayant droit. Dans ce cas, la cession du droit de priorité doit intervenir avant la date de dépôt de la demande de marque communautaire et les documents à cet effet doivent être produits. Le droit de priorité en tant que tel peut être cédé indépendamment du fait que la première demande soit ou non cédée dans son ensemble. La priorité peut donc être acceptée même si les titulaires de la demande de marque communautaire et du droit antérieur sont différents, à condition toutefois de produire des preuves de la cession du droit de priorité; dans ce cas, la date d’exécution de la cession doit être antérieure à la date de dépôt de la demande de marque communautaire.
Les sociétés filiales ou associées du demandeur ne sont pas considérées comme identiques au demandeur de la marque communautaire.
Lorsque le demandeur de la première demande déclare avoir changé de nom depuis le premier dépôt et dépose la demande de marque communautaire sous son nouveau nom, le demandeur est considéré comme étant la même personne.
Pour de plus amples informations sur la distinction entre un changement de nom et un transfert, voir les Directives, partie E, Inscriptions au Registre, section 3, La marque communautaire comme objet de propriété, chapitre 1, Transfert.
14.3 Non-respect des conditions en matière de priorité
Lorsque la revendication de priorité ne satisfait pas aux conditions susmentionnées, le demandeur est invité à remédier à l’irrégularité constatée ou à présenter des observations dans un délai de deux mois. S’il n’est pas remédié à l’irrégularité constatée dans ce délai, l’Office informe le demandeur de la perte de son droit de priorité et de la possibilité de demander une décision en la matière (pour de plus amples renseignements, voir le paragraphe 14.7 ci-dessous, Traitement des irrégularités liées à l’examen de la priorité).
14.4 Non-fourniture des documents de priorité
Si les documents de priorité ne sont pas produits avec la demande, l’Office consulte le site internet de l’office national pour vérifier si les informations pertinentes sont disponibles en ligne. Si les informations nécessaires pour accorder la revendication de priorité ne sont pas consultables en ligne, l’Office adresse une lettre au demandeur lui
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demandant de fournir ces informations. Le demandeur se voit accorder un délai de deux mois pour remédier à l’irrégularité constatée; en règle générale, ce délai n’est pas prorogé. Généralement, la notification d’irrégularité est adressée avant l’expiration du délai accordé initialement pour produire les documents de priorité (trois mois à compter de la date de réception de la revendication de priorité). Dans ce cas, le délai de deux mois pour remédier à l’irrégularité est calculé à partir de la date d’expiration du délai initial prévu pour la production des documents de priorité. Conformément à la décision nº EX-03-5, il n’est pas nécessaire de produire des copies certifiées conformes. De simples accusés de réception de dépôt ne comportant pas toutes les informations nécessaires à l’examen de la revendication de priorité (ne contenant par exemple que les numéros de classe des produits et des services de la demande antérieure et non la version complète indiquant tous les produits et services) ne sont pas acceptables.
14.5 Langue de la demande antérieure
Si la langue de la demande antérieure n’est pas une des langues officielles de l’UE, l’Office invite le demandeur à déposer une traduction dans un délai de trois mois. Le délai de dépôt de la traduction peut être prorogé à la requête du demandeur. La prorogation ne peut cependant excéder deux mois.
14.6 Vérification de la date de priorité après modification de la date de dépôt
En cas de modification de la date de dépôt de la demande de marque communautaire, l’Office doit vérifier que la nouvelle date de dépôt est toujours comprise dans les six mois qui suivent la revendication de priorité.
14.7 Traitement des irrégularités liées à l’examen de la priorité
Si la première demande n’est pas identique à la demande de marque communautaire, si le numéro de dépôt du premier dépôt n’est pas indiqué, si la priorité est revendiquée tardivement (c’est-à-dire après la période de six mois ou plus de deux mois après le dépôt de la demande de marque communautaire), ou si les documents de priorité ne sont pas acceptables (c’est-à-dire qu’ils ne satisfont pas aux exigences relatives au pays du premier dépôt et à la triple identité), une notification d’irrégularité est adressée au demandeur, lequel se voit accorder un délai de deux mois pour présenter des observations ou remédier à l’irrégularité constatée.
Si une traduction est requise, l’Office en informe le demandeur en lui adressant une notification d’irrégularité et en fixant un délai de trois mois.
Si le demandeur ne répond pas ou ne remédie pas aux irrégularités constatées dans le délai imparti, l’Office informe le demandeur de la perte de son droit et fixe un délai de deux mois pendant lequel le demandeur peut demander une décision formelle susceptible de recours en la matière.
Si le demandeur demande formellement une décision dans le délai imparti, l’Office rend une décision formelle sur la perte du droit.
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Si la priorité est revendiquée plus de deux mois après la date de dépôt de la demande de marque communautaire ou si la demande de marque communautaire est déposée après la période de priorité de six mois, le demandeur en est informé et se voit accorder un délai pour présenter ses observations. En l’absence de réponse du demandeur et s’il n’est pas remédié aux irrégularités constatées, l’Office informe le demandeur de la perte de son droit de priorité et de la possibilité de demander une décision formelle (c’est-à-dire susceptible de recours) sur la perte du droit de priorité.
14.8 Exemples de revendications de priorité
14.8.1 Premier dépôt
Dans l’exemple suivant, la priorité ne peut être revendiquée sur un premier dépôt en Somalie. En effet, la Somalie n’est pas partie à la convention de Paris, à l’accord instituant l’OMC ou à un accord de réciprocité confirmé par la Commission de l’UE. Par conséquent, c’est le premier dépôt en Italie qui est retenu pour la revendication de priorité, l’autre dépôt ne pouvant être pris en considération.
Premier dépôt Pays Produits/services MC déposée Produits/services
Le 5 avril Somalie Voitures, T-shirts Voitures, T-shirts
Le 7 juillet Italie Voitures, T-shirts Le 2 octobre Voitures, T-shirts
Dans l’exemple suivant, les deux demandes de marques antérieures ont été déposées pour exactement les mêmes produits. La revendication de priorité fondée sur la demande grecque doit être rejetée car la marque a été demandée antérieurement en Espagne; dès lors, la demande grecque n’est plus un premier dépôt.
Premier dépôt Pays Produits/services MC déposée Produits/services
Le 6 avril Espagne Fromage, vin Fromage, vin
Le 7 avril Grèce Fromage, vin Le 4 octobre Fromage, vin
14.8.2 Comparaison des marques
Exemples de revendications de priorité acceptables
Demande de marque communautaire (marque verbale)
EVAL
Revendication de priorité (marque verbale)
EVAL
Demande de marque communautaire (marque verbale)
Luna
Revendication de priorité (marque verbale)
Luna
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Exemples de revendications de priorité acceptables
Demande de marque communautaire (marque figurative)
Revendication de priorité (marque figurative)
Demande de marque communautaire (marque figurative)
Revendication de priorité (marque figurative)
Demande de marque communautaire (marque figurative)
Revendication de priorité (marque figurative)
Demande de marque communautaire (marque figurative) Revendication de priorité (marque figurative)
Demande de marque communautaire (marque figurative)
Revendication de priorité (marque figurative)
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Exemples de revendications de priorité inacceptables
Demande de marque communautaire (couleur en tant que telle) Revendication de priorité (couleur en tant que telle)
Demande de marque communautaire (marque verbale)
Chocolate Dream
Revendication de priorité (marque verbale)
Chocalate Dream
Demande de marque communautaire (marque figurative)
Revendication de priorité (marque figurative)
Demande de marque communautaire (marque figurative) Revendication de priorité (marque figurative)
Demande de marque communautaire (marque figurative) Revendication de priorité (marque figurative)
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Exemples de revendications de priorité inacceptables
Demande de marque communautaire (marque figurative) Revendication de priorité (marque figurative)
Demande de marque communautaire (marque figurative) Revendication de priorité (marque figurative)
Autres exemples de marques verbales
Première marque Demande de marquecommunautaire identique non identique
Marque verbale
Percy & Reed
Marque verbale
Percy + Reed X
Marque verbale
Percy & Reed
Marque verbale
Percy and Reed X
Marque verbale
Percy & Reed
Marque verbale
Percy & Reed X
Marque verbale
Percy & Reed
Marque verbale
Percy & REED X
Marque verbale
Percy & Reed
Marque verbale
PERCY & REED X
Marque verbale
Percy & Reed
Marque verbale
Percy & Reed X
Marque verbale
POPEYE
Marque verbale
POPeye X
Marque verbale
POPEYE
Marque verbale
PopEye X
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Autres exemples de marques verbales
Première marque Demande de marquecommunautaire identique non identique
Marque verbale
POPEYE
Marque verbale
POP-EYE X
Marque verbale:
POPEYE
Marque verbale:
POP EYE X
Marque verbale
POPEYE®
Marque verbale
POPEYE X*
Marque verbale
POPEYE
Marque verbale
POPEYE!? X
Marque verbale
POPEYE
Marque verbale
POPEYE· X
* Les symboles ™ et ® ne sont pas considérés comme faisant partie de la marque.
Exemples d’identité entre des signes figuratifs par rapport à des marques verbales
Première marque Demande de marquecommunautaire identique non identique
Marque verbale
Percy & Reed
Marque figurative
Percy & Reed
(marque figurative dans une police de caractères
standard)
X
Marque verbale
Percy & Reed
Marque figurative
Percy &
Reed
(mots occupant plusieurs lignes)
X
Marque verbale
Percy & Reed
Marque figurative
Percy & Reed
(revendication de couleur)
X
Autres exemples de marques figuratives
Première marque Demande de marquecommunautaire identique non identique
X
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Autres exemples de marques figuratives
Première marque Demande de marquecommunautaire identique non identique
X
®
X*
* Les symboles ™ et ® ne sont pas considérés comme faisant partie de la marque.
14.8.3 Comparaison des produits et services
Le premier exemple ci-dessous illustre la situation la plus usuelle: la demande antérieure correspond entièrement à la demande de marque communautaire.
Premier dépôt Pays P&S MC déposée P&S de la MC
Le 5 avril Royaume-Uni Chapeaux,chaussures Le 1 er octobre Chapeaux,chaussures
Dans l’exemple suivant, les deux revendications de priorité peuvent être acceptées puisque le numéro de demande XY 1234 est le premier dépôt pour des «voitures» et que le numéro de demande XY 1235 est le premier dépôt pour des «avions».
Premier dépôt Pays Demande JP nº P&S MC déposée P&S de la MC
Le 5 avril Japon XY 1234 Voitures
Le 5 avril Japon XY 1235 Avions Le 2 octobre Voitures,avions
Dans l’exemple suivant, la revendication de priorité concerne des «chapeaux» et des «chaussures» qui sont communs au premier dépôt et à la demande de marque communautaire. Aucune priorité ne sera valable en ce qui concerne les «sacs».
Premier dépôt Pays P&S MC déposée P&S de la MC
Le 5 avril États-Unis Voitures,
chapeaux, chaussures
Le 1er octobre Chapeaux,chaussures, sacs
Dans le dernier exemple, la priorité est revendiquée pour les premiers dépôts en France, au Canada et en Chine. La demande de marque communautaire a été déposée dans les six mois suivant chaque premier dépôt et les revendications de priorité seront acceptées, même si, en ce qui concerne les «chapeaux», la demande
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canadienne ne constitue pas un premier dépôt (les «chapeaux» apparaissent en effet dans la demande française déposée antérieurement). Après comparaison des dates et des listes de produits et services des trois priorités, les revendications de priorité seront acceptées.
Premier dépôt Pays P&S MC déposée P&S de la MC
Le 5 avril France Chapeaux,chaussures
Le 6 avril Canada Voitures,chapeaux, bière Le 5 octobre
Le 7 avril Chine Vin, services detélécommunication
Chapeaux, chaussures,
voitures, bière, vin, services de
télécommunication
14.8.4 Revendications de priorité fondées sur des marques de série
On entend par «marques de série» (ou «série de marques») plusieurs marques qui se ressemblent dans leurs éléments essentiels et qui ne diffèrent qu’en ce qui concerne des éléments dépourvus de caractère distinctif. Si le règlement sur la marque communautaire interdit le dépôt de marques de série, certains offices nationaux (comme le Royaume-Uni, l’Australie, etc.) l’autorisent. Une série de marques déposée dans une même demande peut contenir de nombreuses marques très similaires. Lorsque le premier dépôt consiste en une série de marques, deux ou plus de deux représentations légèrement différentes des marques sont visibles. La revendication de priorité est acceptable en ce qui concerne la reproduction qui est identique à celle montrant la marque demandée en tant que marque communautaire.
Exemples de revendications de priorité fondées sur des marques de série
Premier dépôt Marque communautaire Revendication de prioritéacceptable
Série de marques
Oui
Série de marques
Café@Home CAFÉ@HOME Café@Home
CAFÉ@HOME
CAFÉ@HOME Oui
14.8.5 Revendiquer la priorité de marques tridimensionnelles ou «autres»
Certains offices nationaux de la propriété intellectuelle n’autorisent pas le dépôt de plus de quatre représentations dans le cas de marques tridimensionnelles ou autres.
Si une demande de marque communautaire revendique la priorité d’un tel premier dépôt et que six (ou plus dans le cas des «autres» marques)
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représentations/perspectives de la marque sont déposées avec la demande de marque communautaire, les marques en question seront tout de même considérées comme identiques dès lors que les présentations du premier dépôt coïncident avec une partie de ce qui a été transmis pour la demande de marque communautaire et que l’objet est incontestablement identique.
14.8.6 Revendications de priorité portant sur des marques collectives
La priorité peut être revendiquée sur une marque collective lors du dépôt d’une demande de marque communautaire individuelle et vice versa.
15 Priorité d’exposition
Article 33 du RMC; Règle 7 du REMC
La priorité d’exposition consiste à revendiquer comme date de priorité de la demande de marque communautaire la date à laquelle les produits ou services couverts par la demande de marque communautaire ont été présentés au cours d’une exposition officiellement reconnue sous la marque telle qu’elle a été déposée. Le demandeur peut revendiquer la priorité d’exposition dans les six mois qui suivent la première présentation. Les preuves de l’exposition doivent être déposées.
Tout comme la «priorité de convention», la priorité d’exposition peut être revendiquée soit dans la demande, soit postérieurement au dépôt de la demande de marque communautaire. Lorsque le demandeur souhaite revendiquer une priorité d’exposition postérieurement au dépôt de la demande, la déclaration de priorité, mentionnant le nom de l’exposition et la date de première présentation des produits ou services, doit être fournie dans un délai de deux mois à compter de la date de dépôt.
Dans les trois mois qui suivent la réception de la déclaration de priorité, le demandeur doit fournir à l’Office une attestation délivrée au cours de l’exposition par l’autorité compétente. Cette attestation doit établir que la marque a été effectivement utilisée pour les produits ou services, mentionner la date d’ouverture de l’exposition ainsi que la date de la première utilisation publique si celle-ci ne coïncide pas avec la date d’ouverture de l’exposition. L’attestation doit être accompagnée d’une description de l’usage effectif de la marque, dûment attestée par l’autorité susvisée.
La priorité peut uniquement être accordée lorsque la demande de marque communautaire est déposée dans les six mois qui suivent la première présentation lors d’une exposition reconnue, c’est-à-dire une exposition mondiale au sens de la convention du 22 novembre 1928. Ces expositions sont très rares et l’article 33 ne confère pas de protection dans le cas d’une présentation dans d’autres expositions nationales. La liste des expositions est consultable sur le site internet du Bureau international des expositions de Paris: http://www.bie-paris.org/site/en/.
En ce qui concerne la triple identité de la marque, le demandeur ainsi que la liste des produits et services, les mêmes critères s’appliquent que pour la «priorité de convention» visée au paragraphe 14 ci-dessus.
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Si l’Office ne soulève pas d’objection, la revendication de priorité est inscrite au dossier et apparaît dans la base de données en ligne. Aucune confirmation expresse n’est adressée au demandeur.
La revendication peut être implicite. Lorsque la demande ne comporte aucune indication concernant la revendication, la production des documents de priorité d’exposition (dans le délai de deux mois) est réputée constituer une déclaration de priorité.
16 Ancienneté
Article 34 du RMC Règle 8, Règle 28 et Règle 96, paragraphe 2, du REMC Communication nº 2/00, décision nº EX-03-5 et décision nº EX-05-05 du président de l’Office
Le titulaire d’une marque antérieure enregistrée dans un État membre, y compris une marque enregistrée sur le territoire du Benelux, ou d’une marque antérieure qui a fait l’objet d’un enregistrement international ayant effet dans un État membre, qui dépose une demande de marque identique destinée à être enregistrée en tant que marque communautaire pour des produits ou services identiques à ceux pour lesquels la marque antérieure a été enregistrée ou contenus dans ceux-ci, peut se prévaloir pour la marque communautaire de l’ancienneté de la marque antérieure en ce qui concerne l’État membre dans lequel ou pour lequel elle a été enregistrée.
Le seul effet de l’ancienneté est que, dans le cas où le titulaire de la marque communautaire renonce à la marque antérieure ou la laisse s’éteindre, il est réputé continuer à bénéficier des mêmes droits que ceux qu’il aurait eus si la marque antérieure avait continué à être enregistrée.
Ainsi, la demande de marque communautaire représente une consolidation des enregistrements nationaux antérieurs. Lorsque le demandeur se prévaut de l’ancienneté d’une ou de plusieurs marques nationales enregistrées antérieurement, et que la revendication d’ancienneté est acceptée, il peut décider de ne pas renouveler les enregistrements nationaux antérieurs tout en restant dans la même position que si la marque antérieure avait continué à être enregistrée dans les États membres dans lesquels les marques antérieures ont été enregistrées.
L’ancienneté visée à l’article 34 du RMC doit être revendiquée avec la demande ou dans un délai de deux mois à compter de la date de dépôt de la demande de marque communautaire. Les documents à l’appui de la revendication doivent être produits dans les trois mois qui suivent la revendication. La revendication de l’ancienneté peut être implicite. Si le demandeur transmet uniquement les documents relatifs aux enregistrements antérieurs dans un délai de deux mois à compter de la date de dépôt de la demande de marque communautaire, l’Office considère ces documents comme une revendication d’ancienneté concernant les enregistrements antérieurs en question.
L’ancienneté peut être revendiquée non seulement pour des enregistrements nationaux antérieurs, mais aussi pour un enregistrement international produisant ses effets dans un pays de l’UE. Toutefois, aucune revendication d’ancienneté n’est possible pour un enregistrement de marque communautaire antérieur ou pour des
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enregistrements locaux, même si le territoire fait partie de l’Union européenne (comme Gibraltar).
16.1 Information harmonisée sur l’ancienneté
Afin de pouvoir gérer correctement les anciennetés, toutes les anciennetés inscrites dans le système doivent avoir le même format que celui qui est utilisé dans les bases de données des offices nationaux.
Afin d’améliorer l’harmonisation entre l’OHMI et les offices de PI participants, une liste du format requis pour les anciennetés a été dressée. Cette liste fournit une description du format ou des formats utilisés dans chacun des offices nationaux, dans la mesure où ceux-ci ont été désignés.
Par conséquent, lors de la vérification de l’ancienneté, l’Office doit vérifier si le format de l’ancienneté correspond bien au format utilisé au niveau national.
16.2 Examen de l’ancienneté
Une revendication valable comporte:
1. l’État membre ou les États membres de l’UE dans ou pour lesquels la marque antérieure dont l’ancienneté a été revendiquée est enregistrée;
2. la date de dépôt de l’enregistrement pertinent; 3. le numéro de l’enregistrement pertinent; 4. les produits ou services pour lesquels la marque antérieure est enregistrée.
Conforment à la décision no EX-05-5 du 1er juin 2005, le titulaire n’est pas tenu de déposer une copie de l’enregistrement si les informations requises sont disponibles sur le site internet des offices nationaux respectifs. Si la copie de l’enregistrement n’est pas présentée, l’Office recherche tout d’abord les informations nécessaires sur le site internet correspondant et, seulement si celles-ci ne sont pas disponibles, le titulaire est invité, par une lettre de notification d’irrégularité, à fournir une copie dudit enregistrement. Conformément à l’article 3 de la décision no EX-03-5, la copie de l’enregistrement pertinent doit se composer d’une copie (une simple photocopie suffit) du certificat d’enregistrement et/ou de renouvellement, d’un extrait du registre ou du journal officiel publié par l’office national pertinent ou d’un extrait ou d’une impression d’une base de données officielle. Les extraits et impressions de bases de données privées ne sont pas acceptés. Parmi les extraits qui ne sont pas acceptés, on peut citer notamment DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK ou COMPUMARK, SAEGIS.
L’ancienneté peut uniquement être revendiquée pour un enregistrement antérieur et non pour une demande antérieure.
L’Office doit s’assurer, d’une part, que la marque antérieure était enregistrée au moment du dépôt de la demande de marque communautaire, et, d’autre part, que l’enregistrement antérieur ne s’était pas éteint au moment du dépôt de la revendication (pour la durée de protection des marques nationales, voir les Directives, partie C, Opposition, section 1, Questions de procédure). Si l’enregistrement antérieur s’était éteint au moment du dépôt de la revendication, l’ancienneté ne peut pas être
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revendiquée, même si la législation nationale pertinente en matière de marques prévoit un délai de grâce de six mois pour le renouvellement. Bien que certaines législations nationales prévoient un délai de grâce, si le renouvellement n’est pas acquitté, la marque est réputée ne pas être enregistrée à compter de la date à laquelle elle devait être renouvelée. Dès lors, la revendication n’est pas acceptable, à moins que le demandeur ne prouve qu’il ait renouvelé le ou les enregistrements antérieurs.
L'ancienneté revendiquée pour la marque communautaire s'éteint lorsque le titulaire de la marque antérieure dont l'ancienneté a été revendiquée est déclaré déchu de ses droits ou lorsque cette marque est déclarée nulle ou lorsqu'il y est renoncé avant la date d’enregistrement de la marque communautaire (article 34, paragraphe 3, du RMC).
Dans le contexte d’un élargissement de l’UE, les points suivants doivent être pris en considération. Lorsqu’une marque nationale d’un nouvel État membre, ou un enregistrement international produisant ses effets dans ce nouvel État membre, a été enregistrée avant que la revendication d’ancienneté ne soit effectuée, l’ancienneté peut être revendiquée même si la date de priorité, de dépôt ou d’enregistrement de la marque communautaire à laquelle se rapporte la revendication d’ancienneté est antérieure à la date de priorité, de dépôt ou d’enregistrement de la marque nationale/l’enregistrement international produisant ses effets dans le nouvel État membre concerné. En effet, la marque communautaire en cause ne produit ses effets dans le nouvel État membre qu’à compter de la date d’adhésion. La marque nationale/l’enregistrement international produisant ses effets dans le nouvel État membre pour lequel l’ancienneté est revendiquée est donc «antérieur(e)» à la marque communautaire au sens de l’article 35 du RMC, pour autant que la marque nationale/l’enregistrement international produisant ses effets dans le nouvel État membre bénéficie d’une date de priorité, de dépôt ou d’enregistrement antérieure à la date d’adhésion.
Exemples de revendications d’ancienneté acceptables pour de nouveaux États membres
Marque communautaire Date de dépôt
Pays de la revendication d’ancienneté
Date de dépôt du droit antérieur
2 094 860 TESTOCAPS 20.2.2001 Chypre 28.2.2001
2 417 723 PEGINTRON 19.10.2001 Hongrie 8.11.2001
352 039 REDIPEN 2.4.1996 Bulgarie 30.4.1996
7 037 307 HydroTac 17.7.2008 Croatie 13.10.2009
Explication: En tout état de cause, même si la date de dépôt de la demande de marque communautaire est antérieure à la date de dépôt de la marque pour laquelle l’ancienneté est revendiquée, étant donné que tous les pays concernés ont adhéré à l’Union européenne après la date de dépôt de la demande de marque communautaire (c’est-à-dire le 1er mai 2004 pour Chypre et la Hongrie, et le 1er janvier 2007 pour la Bulgarie et la Roumanie), et que c’est à compter de cette date que la demande de marque communautaire jouit d’une protection dans ces États membres, l’ancienneté peut être revendiquée pour toutes les marques nationales déposées avant la date d’adhésion.
Si la revendication d’ancienneté est recevable, l’Office l’accepte et – une fois que la demande de marque communautaire a été enregistrée – en informe le ou les services
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centraux de la propriété industrielle du ou des États membres concernés (règle 8, paragraphe 3, du REMC).
L’ancienneté peut également être revendiquée après l’enregistrement de la marque communautaire aux termes de l’article 35. Pour de plus amples renseignements, voir les Directives, partie E, Inscriptions au Registre, Section 1, Modification d’un enregistrement.
16.3 Identité des marques
L’examen des revendications d’ancienneté est limité aux exigences formelles et à l’identité des marques (voir la Communication du président no 2/00 du 25 février 2000).
En ce qui concerne l’exigence de triple identité (même titulaire, même marque, mêmes produits et services), il appartient au demandeur de s’assurer que ces exigences sont satisfaites. Cependant, l’examen de l’Office portera uniquement sur l’identité des marques.
La comparaison de la représentation des marques à des fins de revendication d’ancienneté est identique à la procédure de comparaison pour les revendications de priorité présentée ci-dessus au paragraphe 14.2.1..
16.4 Produits et services
Les demandeurs peuvent revendiquer l’ancienneté pour une partie des produits et des services du ou des enregistrements antérieurs. En pratique, la revendication d’ancienneté est valable dès lors qu’il y a chevauchement entre les produits et les services visés dans la demande de marque communautaire et ceux couverts par l’enregistrement invoqué. Le demandeur n’est pas tenu de spécifier ces produits et services et peut simplement revendiquer «l’ancienneté pour tous les produits couverts par la marque antérieure dans la mesure où ils figurent également dans la demande de marque communautaire» (revendication générique d’ancienneté).
16.5 Traitement des irrégularités liées à l’examen de l’ancienneté
Si la revendication n’est pas valable, si l’enregistrement antérieur n’est pas identique à la demande de marque communautaire, si l’ancienneté est revendiquée tardivement (c’est-à-dire après le délai de deux mois à compter du dépôt de la demande de marque communautaire), ou si les documents d’ancienneté ne sont pas acceptables et que les informations pertinentes ne sont pas consultables en ligne, l’Office adresse une notification d’irrégularité au demandeur.
S’il n’est pas remédié aux irrégularités constatées dans le délai imparti par l’Office, le demandeur est informé par écrit de la perte de son droit. Dans le même temps, le demandeur est informé qu’il peut demander une décision formelle dans les deux mois qui suivent la notification.
Si le demandeur demande formellement une décision dans le délai imparti, l’Office rend une décision formelle sur le rejet de la revendication d’ancienneté.
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16.6 Exemples de revendications d’ancienneté
Exemple d’une revendication d’ancienneté acceptable
Demande de marque communautaire (marque verbale)
CELOTAPE
Revendication d’ancienneté (marque verbale)
Celotape
Demande de marque communautaire (marque verbale)
Daisys Gingerbread
Revendication d’ancienneté (marque verbale)
Daisy’s Gingerbread
Exemples de revendications d’ancienneté inacceptables
Demande de marque communautaire: 9 817 735 (marque figurative)
Revendication d’ancienneté (marque figurative)
Demande de marque communautaire (marque verbale)
Great changes in education PLC
Revendication d’ancienneté (marque verbale)
Grate changes in education PLC
Demande de marque communautaire 8 786 485 (marque figurative)
Revendication d’ancienneté (marque figurative)
Pour d’autres exemples de revendications d’ancienneté acceptables et inacceptables, voir le paragraphe 14.8.2 ci-dessus.
17 Transformation
La transformation est un mécanisme légal instauré par le protocole de Madrid pour atténuer les conséquences de la période de dépendance de cinq ans entre l’enregistrement international et la marque de base. Dans le cas où l’enregistrement international désignant l’UE est annulé à la demande de l’office d’origine en ce qui concerne la totalité ou une partie des produits et services, le titulaire de l’enregistrement international peut déposer une demande de marque communautaire pour l’enregistrement de la même marque en ce qui concerne les produits et les
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services qui ont été annulés. Cette demande sera traitée comme si elle avait été déposée à la date de désignation de l’UE dans l’enregistrement international et bénéficiera de la même priorité, le cas échéant. Pour de plus amples renseignements concernant la transformation, voir les Directives, partie M, Marques internationales.
18 Modification de la demande de marque communautaire
Articles 43 et 44 du RMC Règle 3 et Règle 13, point a), du REMC
Le demandeur peut à tout moment retirer sa demande de marque communautaire ou limiter la liste des produits et services qu’elle désigne. Les autres modifications ont pour seul objet de corriger certaines erreurs.
Toute modification demandée le jour même du dépôt de la demande de marque communautaire est acceptée.
Cette partie des Directives porte uniquement sur la pratique de l’Office concernant la modification de la représentation de la marque. Pour de plus amples renseignements sur le retrait ou les limitations, voir les Directives, partie B, Examen, section 1, Procédure.
18.1 Modification de la représentation de la marque
La pratique de l’Office concernant la modification de la représentation de la marque est très stricte. Les deux conditions requises pour autoriser une modification de la marque, une fois celle-ci déposée, sont cumulatives:
l’erreur doit être manifeste ET la modification ne doit pas altérer de façon substantielle la marque telle qu’elle a
été déposée.
Même si la modification n’est pas substantielle, l’Office n’acceptera pas la modification dès lors que l’erreur n’est pas manifeste.
Dans les cas où le positionnement souhaité de la marque n’est pas évident, la représentation de la marque doit indiquer la position correcte en ajoutant le mot «haut» sur la reproduction du signe. Lorsque la demande est déposée par voie électronique, le positionnement inhabituel peut être indiqué dans la description de la marque.
Lorsque le positionnement souhaité de la marque n’est pas évident (par exemple, si une marque contenant un élément verbal est déposée dans une position verticale) et qu’il n’y a pas d’indication du positionnement visé dans la demande, le demandeur est autorisé à modifier la position de la marque à sa requête. En effet, le positionnement inhabituel de la marque est considéré comme une erreur manifeste.
Si une revendication de priorité ou d’ancienneté est déposée en même temps que la demande de marque communautaire, une erreur manifeste peut être prouvée en comparant la marque «correcte» figurant dans la revendication avec la marque indiquée dans la demande de marque communautaire. Toutefois, si la revendication de
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priorité ou d’ancienneté est déposée après la demande de marque communautaire, aucune preuve de ces revendications ne peut être prise en considération.
Si l’erreur est manifeste, la marque doit ensuite être examinée selon le critère suivant, qui consiste à déterminer si la modification demandée altère de façon substantielle la marque telle qu’elle a été déposée.
Exemple de modification acceptable
MC 546 010
Marque déposée en tant que «TOPFLOW»
Modification proposée
«TOP FLOW»
Dans le formulaire de demande, le demandeur a revendiqué la priorité de la marque «TOP FLOW»; il était donc évident qu’une erreur typographique avait été commise. La modification n’a pas été considérée comme constituant une altération substantielle de la marque, étant donné que l’ajout d’un espace entre les mots «TOP» et «FLOW» n’altère pas la signification et la prononciation de la marque et que l’impact visuel de la modification est faible (décision du 5 août 2002, «TOP FLOW», R 851/1999-2).
Exemples de modifications inacceptables
MC 321 109
Marque déposée en tant que «RANIER»
Modification proposée
«RAINIER»
Cette modification ne sera pas autorisée car la correction montre l’ajout d’une autre lettre «I» qui modifierait de façon substantielle la marque telle qu’elle a été déposée. «RANIER» et «RAINIER» sont deux mots différents.
MC 6 013 668
Marque déposée en tant que «ELECTROLITIC BOLUS»
Modification proposée
«ELECTROLITYC BOLUS»
Cette modification ne sera pas autorisée car l’orthographe anglaise correcte de ce mot est «ELECTROLYTIC». En conséquence, la marque telle qu’elle a été déposée contenait 1 lettre erronée, alors que la proposition de modification contiendrait 2 lettres erronées. Cette modification altérerait la marque de façon substantielle et est donc inacceptable.
Dans le cas des éléments figuratifs, seuls les éléments d’importance mineure peuvent être modifiés. Ces modifications font l’objet d’un examen au cas par cas. Le fait de donner un «nouvel aspect» à une marque figurative (pratique courante dans l’industrie qui consiste à adapter de temps en temps l’apparence d’une marque figurative aux tendances actuelles en matière de design et de mode) n’est pas autorisé.
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MC 6 538 524
MC telle qu’elle a été déposée Modification proposée
Le demandeur a déposé une revendication de priorité avec la demande de marque communautaire qui montrait que le premier dépôt consistait en la représentation unique de la marque. En outre, la demande de marque communautaire contenait une description de la marque qui décrivait la représentation unique, et non les deux images qui avaient été déposées. Dès lors, l’erreur a été considérée comme manifeste. La demande de modification a cependant été rejetée, car la modification altérerait de façon substantielle la marque par rapport à celle qui était déposée.
Indépendamment des exemples et des principes susmentionnés, toute altération de la marque qui serait admissible après l’enregistrement est également admissible au regard d’une demande de marque communautaire.
En ce qui concerne les altérations d’une marque communautaire enregistrée, veuillez vous reporter aux Directives, partie E, Inscriptions au Registre, section 1, Modification d’un enregistrement.
19 Transformation
Article 112, paragraphe 1, et article 113, paragraphe 1, du RMC Règle 44, paragraphe 1, point f), du REMC
Le demandeur ou le titulaire d’une marque communautaire peut demander la transformation de sa demande ou de sa marque communautaire enregistrée. Pour de plus amples informations sur la transformation, voir les Directives, partie E, section 2, Transformation.
Motifs absolus de refus
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE B
EXAMEN
SECTION 4
MOTIFS ABSOLUS DE REFUS
Motifs absolus de refus
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Table des matières
1 Principes généraux ................................................................................... 4 1.1 Objection motivée ...................................................................................... 4 1.2 Dialogue avec le demandeur .....................................................................4 1.3 Critères européens..................................................................................... 5 1.4 Critères non pertinents .............................................................................. 6
1.4.1 Terme non utilisé ............................................................................................ 6 1.4.2 Impératif de disponibilité................................................................................. 6 1.4.3 Monopole de fait ............................................................................................. 6 1.4.4 Double signification ........................................................................................ 7
1.5 Portée des objections sur les produits et services..................................7 1.6 Opportunité de l’objection .........................................................................8 1.7 Déclarations de renonciation.....................................................................8 1.8 Lien entre plusieurs motifs de refus ......................................................... 9
2 Motifs absolus (article 7 du RMC) ............................................................ 9 2.1 Article 7, paragraphe 1, point a), du RMC................................................. 9
2.1.1 Remarques générales .................................................................................... 9 2.1.2 Exemples de demandes de marques refusées ou acceptées en vertu de
l’article 7, paragraphe 1, point a) .................................................................. 11 2.1.3 Lien avec d’autres dispositions du RMC ...................................................... 14
2.2 Caractère distinctif [article 7, paragraphe 1, point b), du RMC] ............ 14 2.2.1 Remarques générales .................................................................................. 14 2.2.2 Éléments verbaux......................................................................................... 15 2.2.3 Titres de livres .............................................................................................. 17 2.2.4 Couleurs ....................................................................................................... 17 2.2.5 Lettres uniques ............................................................................................. 19 2.2.6 Slogans: apprécier le caractère distinctif...................................................... 21 2.2.7 Éléments figuratifs simples........................................................................... 24 2.2.8 Éléments figuratifs ordinaires ....................................................................... 25 2.2.9 Symboles typographiques ............................................................................ 26 2.2.10 Pictogrammes............................................................................................... 27 2.2.11 Étiquettes courantes/non distinctives ........................................................... 28 2.2.12 Marques tridimensionnelles.......................................................................... 29 2.2.13 Marques de motif .......................................................................................... 35 2.2.14 Marques de position ..................................................................................... 38
2.3 Caractère descriptif [article 7, paragraphe 1, point c), du RMC] ........... 39 2.3.1 Remarques générales .................................................................................. 39 2.3.2 Marques verbales ......................................................................................... 43 2.3.3 Marques figuratives ...................................................................................... 60 2.3.4 Seuil figuratif ................................................................................................. 61
2.4 Signes ou indications usuels [article 7, paragraphe 1, point d), du RMC].......................................................................................................... 71
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2.4.1 Remarques générales .................................................................................. 71 2.4.2 Moment où un terme devient usuel .............................................................. 72 2.4.3 Appréciation des termes usuels ................................................................... 72 2.4.4 Applicabilité de l’article 7, paragraphe 1, point d), du RMC en rapport
avec les noms de variétés végétales ........................................................... 73
2.5 Formes qui remplissent une fonction essentiellement technique, qui donnent une valeur esthétique substantielle aux produits ou qui résultent de la nature des produits [article 7, paragraphe 1, point e), du RMC] .................................................................................................... 73 2.5.1 Remarques générales .................................................................................. 73 2.5.2 Forme imposée par la nature du produit ...................................................... 75 2.5.3 Forme du produit nécessaire à l’obtention d’un résultat technique.............. 76 2.5.4 Forme qui donne une valeur substantielle au produit .................................. 80
2.6 Caractère distinctif acquis....................................................................... 83 2.6.1 Introduction ................................................................................................... 83 2.6.2 Demande ...................................................................................................... 83 2.6.3 Moment auquel doivent se rapporter les éléments de preuve ..................... 83 2.6.4 Consommateur ............................................................................................. 84 2.6.5 Produits et services ...................................................................................... 85 2.6.6 Aspects territoriaux....................................................................................... 85 2.6.7 Ce qui doit être prouvé ................................................................................. 88 2.6.8 Les éléments de preuve et leur appréciation ............................................... 88 2.6.9 Conséquences du caractère distinctif acquis ............................................... 94
Motifs absolus de refus
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1 Principes généraux
1.1 Objection motivée
Lorsque l’examinateur estime qu’il existe un motif absolu de refus, il doit émettre une objection motivée dans laquelle il indique chacun des motifs de refus identifiés et donne une argumentation claire et précise pour chaque motif séparément. La fragmentation ou la communication par étapes des objections sont à éviter. En d’autres termes, chacun des motifs de refus doit être associé à une motivation propre. Dans de nombreux cas, certains motifs de refus, par exemple, le caractère distinctif et le caractère descriptif, se chevauchent. Mais même dans ce cas, les motifs doivent être motivés séparément. Par exemple, lorsqu’il s’avère qu’une marque verbale a un contenu sémantique qui la rend contestable en vertu de l’article 7, paragraphe 1, points b) et c), du RMC, la notification des motifs de refus doit traiter de chacun de ces motifs dans des paragraphes séparés. Dans ce cas, il faut mentionner clairement si l’absence de caractère distinctif résulte de considérations identiques ou différentes de celles qui ont amené à considérer la marque comme descriptive.
Pour qu’une marque communautaire soit refusée, il suffit que l’un des motifs mentionnés à l’article 7 du RMC existe dans une partie de l’Union européenne. Toutefois, il est recommandé aux examinateurs d’indiquer, à ce stade, tous les motifs de refus applicables.
Parfois, certains arguments exposés par le demandeur ou une limitation (retrait partiel) de la liste des produits et services entraînent l’application d’autres motifs de refus. Il est rappelé aux examinateurs que si le rejet de la demande de marque communautaire repose sur de nouveaux motifs de refus ou de nouveaux arguments, la partie concernée doit avoir la possibilité de présenter ses observations à cet égard.
1.2 Dialogue avec le demandeur
Durant la procédure d’examen, l’examinateur doit privilégier le dialogue avec le demandeur.
À tous les stades de la procédure, l’examinateur doit veiller à tenir compte des observations présentées par le demandeur et, parallèlement, examiner, de sa propre initiative, les nouveaux faits ou arguments qui plaident en faveur de l’acceptation de la marque, sachant que la demande ne peut être refusée que si, au moment de prendre sa décision, l’examinateur est convaincu du bien-fondé de l’objection.
Si le demandeur n’a présenté aucune observation et si l’examinateur n’a, de sa propre initiative, identifié aucun motif susceptible de modifier son opinion, la demande est rejetée au moyen d’une notification reprenant la ou les notification(s) d’objection initiale(s), déclarant la demande rejetée et indiquant la possibilité de former un recours. Limiter la décision finale à un refus pour les «motifs exposés dans l’objection» n’est pas acceptable.
Si le demandeur conteste les motifs exposés dans la notification initiale, la notification du refus doit d’abord réitérer la motivation initiale puis répondre aux arguments du demandeur. Si l’examinateur est amené à présenter de nouveaux faits ou arguments pour étayer une décision de refus, il doit donner au demandeur la possibilité de présenter ses observations sur ces nouveaux faits et arguments avant de prendre sa décision finale.
Motifs absolus de refus
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Lorsque le demandeur tente de surmonter l’objection en limitant la liste des produits et services, il se peut que cette limitation donne lieu à nouveau motif de refus (par exemple, un caractère trompeur venant s’ajouter au caractère descriptif). Dans ce cas, l’examinateur doit émettre une nouvelle notification d’objection, de manière à donner au demandeur la possibilité de présenter ses observations sur tous les motifs de refus jugés pertinents.
Une spécification de produits ou services limitée par la condition que les produits ou services ne présentent pas une caractéristique déterminée (voir arrêt du 12/02/2004, C-363/99, «Postkantoor», point 114), par exemple, par rapport à la marque «Théâtre», une liste qui spécifie «livres, à l’exception des livres concernant le théâtre», ne doit pas être acceptée. Par contre, les limitations formulées d’une manière positive peuvent normalement être acceptées telles que «livres de chimie».
En ce qui concerne la preuve d’un caractère distinctif acquis par la marque (article 7, paragraphe 3, du RMC), le demandeur peut revendiquer que sa marque a acquis un caractère distinctif par l’usage et présenter des preuves de l’usage pertinentes. Le demandeur doit envoyer lesdites preuves après avoir reçu la notification d’objection et avant que l’examinateur prenne une décision définitive. À cet égard, le demandeur peut présenter une demande de prorogation de délai après la notification d’objection conformément à la règle 71 du REMC. Si l’examinateur a l’intention d’accepter la marque sur la base de l’article 7, paragraphe 3, du RMC, aucune notification de refus ne doit être envoyée. Si, en dépit des preuves de l’usage présentées, l’examinateur décide que la demande de marque communautaire (MC) tombe encore sous le coup des dispositions de l’article 7, paragraphe 1, du RMC, car les preuves ne sont pas convaincantes, la notification de refus doit mentionner la possibilité de former un recours devant les chambres. La notification doit également exposer les arguments pour lesquels la marque tombe sous le coup des motifs énoncés à l’article 7, paragraphe 1, du RMC et communiquer séparément les raisons pour lesquelles la revendication du caractère distinctif acquis n’est pas accueillie.
1.3 Critères européens
L’article 7, paragraphe 1, du RMC est une disposition européenne et doit être interprété sur la base d’une norme européenne commune. Il serait incorrect d’appliquer des critères différents en matière de caractère distinctif sur la base de traditions nationales différentes ou d’appliquer des normes différentes - plus indulgentes ou plus strictes - en matière d’atteinte à l’ordre public et aux bonnes mœurs selon le pays concerné.
Toutefois, l’article 7, paragraphe 2, du RMC exclut l’enregistrement d’une marque dès lors qu’un motif de refus s’applique, ne fût-ce que dans une partie de l’Union européenne.
Cela signifie que pour refuser un enregistrement, il est suffisant que la marque soit descriptive ou dépourvue de caractère distinctif dans l’une des langues officielles de l’Union européenne. En ce qui concerne d’autres langues, une objection sera soulevée si la marque tombe sous le coup des motifs énoncés à l’article 7, paragraphe 1, du RMC dans une langue comprise par une partie significative du public concerné dans au moins une partie de l’Union européenne (voir ci-dessous, le point 2.3.1.2 Le critère de référence, et arrêt du 13/09/2012, T-72/11, «Espetec», points 35 et 36).
Motifs absolus de refus
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Lorsque l’objection ne repose pas sur le contenu sémantique d’un terme, le motif de refus concerne normalement l’Union européenne dans son ensemble. Cependant, la perception du signe par le public pertinent, la pratique commerciale ainsi que l’utilisation des produits et services revendiqués peuvent varier dans certaines parties de l’Union européenne.
1.4 Critères non pertinents
Il est fréquent que les demandeurs exposent des arguments qui ont déjà été déclarés sans pertinence par les tribunaux. De tels arguments doivent par conséquent être rejetés en citant les extraits correspondants des arrêts en question.
1.4.1 Terme non utilisé
Le fait qu’une utilisation descriptive du terme demandé ne puisse être établie avec certitude est sans pertinence. L’examen de l’applicabilité de l’article 7, paragraphe 1, point c), du RMC repose sur des pronostics (supposant une utilisation de la marque par rapport aux produits ou aux services revendiqués). Il ressort clairement du libellé de l’article 7, paragraphe 1, point c), du RMC qu’il est suffisant que la marque «puisse servir» à désigner les caractéristiques des produits et des services (voir arrêt du 23/10/2003, C-191/01, «Doublemint», point 33).
1.4.2 Impératif de disponibilité
Il est fréquemment invoqué que les autres opérateurs n’ont pas besoin du terme faisant l’objet de la demande, qu’ils peuvent utiliser des indications plus directes et plus simples ou qu’ils ont à leur disposition des synonymes pour décrire les caractéristiques des produits. Il convient de rejeter tous ces arguments comme étant non pertinents.
Bien qu’il y ait un intérêt général sous-jacent à l’article 7, paragraphe 1, point c), du RMC à refuser l’enregistrement de termes descriptifs en tant que marques de manière à ce qu’ils restent librement disponibles pour tous les concurrents, il n’est pas nécessaire que l’Office démontre une nécessité actuelle ou future ou un intérêt concret des tiers à utiliser le terme descriptif sollicité (kein konkretes Freihaltebedürfnis) (voir arrêt du 04/05/1999, C-108/97, «Chiemsee», point 35; arrêt du 12/02/ 2004, C-363/99, «Postkantoor», point 61).
L’argument de l’existence de synonymes ou d’autres manières encore plus habituelles d’exprimer la signification descriptive d’un signe est dès lors dénué de pertinence (voir arrêt du 12/02/ 2004, C-265/00, «Biomild», point 42).
1.4.3 Monopole de fait
Le fait que le demandeur soit le seul opérateur à proposer les produits et les services pour lesquels la marque est descriptive est sans pertinence pour l’application de l’article 7, paragraphe 1, point c), du RMC. Toutefois, dans ce cas, le demandeur pourra invoquer avec plus de chances de succès le caractère distinctif acquis par l’usage.
Motifs absolus de refus
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1.4.4 Double signification
Il convient de rejeter l’argument, fréquemment avancé par les demandeurs, selon lequel les termes demandés ont plusieurs significations dont l’une n’est pas descriptive des produits/services: le fait qu’une seule des significations possibles du terme soit descriptive au regard des produits et services pertinents suffit pour refuser un enregistrement en vertu de l’article 7, paragraphe 1, point c), du RMC (voir arrêt du 23/10/2003, C-191/01, «Doublemint», point 32; confirmé par arrêt du 12/02/2004, C-363/99, «Postkantoor», point 97).
Puisque l’examen doit se concentrer sur les produits/services couverts par la demande, les arguments concernant d’autres significations possibles du ou des mot(s) composant la marque demandée (qui ne concernent pas les produits/services visés) sont sans pertinence. De même, lorsque la marque demandée est une marque verbale complexe, l’examen doit porter sur la signification, le cas échéant, du signe apprécié dans son ensemble, et non sur les significations éventuelles de ses différents éléments examinés séparément (voir arrêt du 08/06/2005, T-315/03, «Rockbass», point 56).
1.5 Portée des objections sur les produits et services
Pratiquement tous les motifs absolus de refus, et notamment les plus pertinents (absence de caractère distinctif, caractère descriptif, caractère générique et caractère trompeur) doivent être appréciés par rapport aux produits et services concrètement revendiqués. Si une objection est soulevée, l’examinateur doit mentionner spécifiquement le ou les motif(s) de refus applicable(s) à la marque concernée, par rapport à chaque produit ou service revendiqué. Il suffit qu’un motif de refus s’applique à une seule catégorie homogène de produits et/ou services. Par «catégorie homogène», on entend un groupe de produits et/ou services qui présentent entre eux un lien suffisamment direct et concret (voir arrêt du 02/04/2009, T-118/06, «ULTIMATE FIGHTING CHAMPIONSHIP», point 28). Lorsque le ou les même(s) motif(s) de refus est (sont) opposé(s) pour une catégorie ou un groupe de produits ou de services, il est possible de se limiter à une motivation globale pour tous les produits ou services concernés (voir arrêt du 15/02/2007, C-239/05, «Kitchen company», point 38).
Une objection fondée sur le caractère descriptif s’applique non seulement aux produits et services pour lesquels le ou les terme(s) composant la marque demandée est (sont) directement descriptif(s), mais également à la catégorie plus large qui contient (potentiellement du moins) une sous-catégorie identifiable ou des produits/services spécifiques pour lesquels la marque demandée est directement descriptive. En l’absence d’une limitation adéquate par le demandeur, une objection fondée sur le caractère descriptif porte nécessairement sur la catégorie plus large en tant que telle. Par exemple, le terme «EuroHealth» doit être refusé pour l’ensemble des services de la catégorie «assurances», et non uniquement pour les services d’assurance maladie (voir arrêt du 07/06/2001, T-359/99, «EuroHealth», point 33).
Une objection doit également être formulée pour les produits et services qui sont directement liés à ceux auxquels se rapporte la signification descriptive. En outre, si la signification descriptive apparaît pour une activité impliquant l’utilisation de plusieurs produits ou services mentionnés séparément dans la spécification, l’objection vaut pour tous ces produits et services (voir arrêt du 20/03/2002, T-355/00, «TELE AID», concernant plusieurs produits et services combinés à ou utilisés dans un service d’aide à distance aux automobilistes).
Motifs absolus de refus
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Il est possible de revendiquer des produits et services comme étant des produits ou des services auxiliaires, en ce sens qu’ils sont destinés à être utilisés avec les produits ou services principaux, ou à rendre l’utilisation de ces derniers plus aisée. C’est typiquement le cas des documents et manuels d’instructions joints aux produits ou insérés dans leur emballage, de la publicité ou des services de réparation. Dans ces cas-là, les produits auxiliaires sont par définition destinés à être utilisés et vendus avec le produit principal (par exemple: véhicules et manuels d’instructions). Il en résulte que si la demande de MC est considérée comme étant descriptive des produits principaux, logiquement elle le sera aussi par rapport aux produits auxiliaires qui sont si étroitement reliés.
1.6 Opportunité de l’objection
Les objections doivent être soulevées le plus tôt possible et de la manière la plus complète possible. Toutefois, dans de rares cas, l’Office rouvrira d’office une procédure d’examen s’il s’avère que l’acceptation de la marque était clairement une erreur ou si, selon une nouvelle jurisprudence, les mêmes conclusions s’appliquent à une marque acceptée antérieurement (voir arrêt du 08/07/2004, T-289/02, «Telepharmacy Solutions»). Dans le cas des demandes de MC, ce peut être le cas à n’importe quel moment préalable à l’enregistrement, et donc même après la publication. Dans le cas d’enregistrements internationaux (EI) désignant l’UE, cela peut être le cas tant que le délai d’opposition (six mois après nouvelle publication) n’est pas ouvert (voir la règle 112, paragraphe 5, du REMC) et toute déclaration de statut provisoire envoyée antérieurement serait révoquée. L’Office peut également rouvrir la procédure d’examen à la suite de la présentation d’observations par des tiers (voir l’article 40 du RMC).
1.7 Déclarations de renonciation
L’article 37, paragraphe 2, du RMC prévoit la possibilité que l’examinateur demande, comme condition à l’enregistrement, qu’un élément d’une marque dépourvue de caractère distinctif fasse l’objet d’une déclaration de renonciation. Dans la pratique, les examinateurs n’auront en général pas recours à cette disposition. Si une marque est considérée comme n’étant ni exclusivement descriptive ni dépourvue de caractère distinctif, elle sera généralement acceptée sans déclaration de renonciation. En règle générale, une telle déclaration ne contribuera pas à surmonter une objection fondée sur des motifs absolus.
Lorsqu’une marque consiste en une combinaison d’éléments qui sont tous manifestement dépourvus de caractère distinctif, aucune déclaration de renonciation n’est nécessaire pour les éléments individuels. Par exemple, si la marque d’une revue est «Alicante Local and International News», il n’est pas nécessaire que les éléments individuels qui la composent fassent l’objet d’une déclaration de renonciation.
Si la déclaration du demandeur ne surmonte pas les motifs de refus de l’enregistrement ou si le demandeur n’accepte pas la condition imposée, la demande doit être rejetée dans toute la mesure requise.
Lorsque le demandeur a joint une déclaration de renonciation concernant un élément non distinctif à sa demande, cette déclaration doit être conservée, même si l’examinateur ne la juge pas utile. L’examinateur doit refuser les déclarations de renonciation concernant des éléments distinctifs étant donné qu’elles pourraient créer des doutes sur l’étendue de la protection de la marque.
Motifs absolus de refus
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1.8 Lien entre plusieurs motifs de refus
Une objection et toute décision de refus ultérieure doivent mentionner tous les motifs de refus pertinents. Chacun des motifs de refus doit être motivé séparément. En particulier, pour éviter toute confusion quant au fondement du refus sur l’article 7, paragraphe 1, point b), du RMC ou sur l’article 7, paragraphe 1, point c), du RMC, ou sur les deux, il convient de présenter chacun de ces motifs de refus sous un intitulé séparé. Si le demandeur modifie la liste des produits et services de sorte qu’un nouveau motif de refus devient pertinent, il y a lieu de soulever une objection fondée sur ce nouveau motif. C’est le cas, par exemple, lorsque le demandeur limite la liste des produits et des services revendiqués d’une manière telle que la marque acquiert un caractère trompeur. Si plusieurs motifs de refus sont invoqués, le demandeur doit les surmonter tous, étant donné qu’une décision de refus peut se fonder sur un seul motif de refus (voir arrêt du 19/09/2002, C-104/00 P, «Companyline», point 28).
Les points suivants des présentes directives abordent chaque sous-section distincte de l’article 7, paragraphe 1, du RMC par ordre alphabétique, commençant à l’article 7, paragraphe 1, point a), du RMC et terminant à l’article 7, paragraphe 1, point k). Ils sont suivis d’une section concernant le caractère distinctif acquis en vertu de l’article 7, paragraphe 3, du RMC, et d’un dernier point traitant des marques collectives.
2 Motifs absolus (article 7 du RMC)
2.1 Article 7, paragraphe 1, point a), du RMC
2.1.1 Remarques générales
L’article 7, paragraphe 1, point a), du RMC reflète l’obligation de l’OHMI de refuser les signes qui ne sont pas conformes à l’article 4 du RMC. Aux termes dudit article, peuvent constituer des marques communautaires tous les signes susceptibles d’une représentation graphique, notamment les mots, y compris les noms de personnes, les dessins, les lettres, les chiffres, la forme du produit ou de son conditionnement, à condition que de tels signes soient propres à distinguer les produits ou les services d’une entreprise de ceux d’autres entreprises. Il en résulte que, pour être susceptible de constituer une marque au sens de l’article 4 du RMC, l’objet d’une demande doit remplir trois conditions: a) il doit constituer un signe, b) il doit être susceptible d’une représentation graphique, c) il doit être propre à distinguer les produits ou les services d’une entreprise de ceux d’autres entreprises (voir arrêt du 25/01/2007, C-321/03, «Boîtier collecteur transparent», point 28).
a) Signe
En vertu de l’article 4 du RMC, peuvent constituer des marques tous les signes, sous réserve de certaines conditions. Si les exemples concrets énumérés dans cette disposition sont tous des signes bidimensionnels ou tridimensionnels susceptibles d’être perçus visuellement, la liste n’en est pas pour autant exhaustive. Par conséquent, l’objet dudit article ne se limite pas à des signes susceptibles d’être perçus visuellement.
Motifs absolus de refus
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Par ailleurs, afin de ne pas vider l’article 4 du RMC de sa substance, cette disposition ne peut être interprétée d’une manière aussi vaste qu’elle permette pour autant à tout objet indéterminé de prétendre au statut de signe. Ainsi, les idées et concepts abstraits ou les caractéristiques générales de produits ne sont pas suffisamment spécifiques pour pouvoir prétendre au statut de signes, car ils pourraient s’appliquer à un éventail de manifestations différentes (T-7/09, «Spannfutter», point 25). C’est la raison pour laquelle la Cour a rejeté, par exemple, une demande de «boîtier collecteur transparent faisant partie de la surface externe d’un aspirateur», au motif que l’objet de la demande n’était pas un type particulier de boîtier collecteur mais, de manière générale et abstraite, toutes les formes imaginables d’un boîtier collecteur susceptible de revêtir une multitude d’aspects différents (voir arrêt du 25/01/2007, C-321/03, «Boîtier collecteur transparent», points 35 et 37).
b) Représentation graphique
Un signe qui n’est pas susceptible de représentation graphique ne pourra pas être enregistré en tant que marque communautaire en vertu de l’article 7, paragraphe 1, point a), du RMC.
L’exigence de la représentation graphique vise à définir la marque en elle-même afin de déterminer l’étendue précise de la protection accordée par la marque enregistrée à son propriétaire. La jurisprudence a clairement établi qu’une représentation graphique au sens de l’article 2 de la directive sur la marque communautaire (DMC) - qui correspond à l’article 4 du RMC - doit permettre au signe de pouvoir être représenté visuellement, en particulier au moyen de figures, de lignes ou de caractères, et que la représentation est claire, précise, complète par elle-même, facilement accessible, intelligible, durable et objective (voir arrêt du 12/12/2002, C-273/00, «Sieckmann», points 46 à 55, et arrêt du 06/05/2003, C-104/01, «Libertel», points 28 et 29). L’exigence d’«objectivité» signifie que le signe doit pouvoir être perçu sans ambiguïté et de manière constante dans le temps afin de fonctionner comme une garantie d’indication d’origine. La représentation a précisément pour objet d’écarter tout élément de subjectivité dans le processus d’identification et de perception du signe. Par conséquent, le moyen de la représentation graphique doit être non équivoque et objectif.
c) Caractère distinctif
L’article 4 du RMC se réfère à la capacité abstraite d’un signe à distinguer les produits d’une entreprise de ceux d’autres entreprises. Contrairement à l’article 7, paragraphe 1, point b), du RMC, qui concerne le caractère distinctif réel d’une marque à l’égard de produits ou services précis, l’article 4 du RMC traite uniquement de la capacité théorique d’un signe de servir d’indication d’origine, indépendamment des produits ou services. Ce n’est que dans des circonstances très exceptionnelles qu’il est envisageable qu’un signe ne possède pas ne serait-ce que la capacité abstraite de distinguer les produits ou services d’une entreprise de ceux d’autres entreprises. Dans la pratique, un signe qui serait dépourvu de tout caractère distinctif abstrait se verrait de toute façon entaché d’irrégularité lors de l’examen des formalités et ne ferait pas l’objet d’un examen au fond au titre de l’article 7, paragraphe 1, point a), du RMC.
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2.1.2 Exemples de demandes de marques refusées ou acceptées en vertu de l’article 7, paragraphe 1, point a)
La liste d’exemples ci-dessous n’est pas exhaustive. D’autres exemples et orientations en matière d’enregistrement en vertu de l’article 4 du RMC sont repris dans les directives, partie B, Examen, section 2, Formalités, chapitre 9.4 - 9.8 Catégorie de la marque.
2.1.2.1 Odeurs/marques olfactives
Pour les marques olfactives, il n’existe actuellement aucun moyen de les représenter graphiquement de manière satisfaisante En ce qui concerne une formule chimique, peu de personnes reconnaîtraient l’odeur en question dans une telle formule. En outre, le dépôt d’un échantillon d’une odeur ne constitue pas une représentation graphique au sens de l’article 4 du RMC, étant donné qu’un échantillon olfactif n’est pas suffisamment stable ou durable. En d’autres termes, les exigences de la représentation graphique d’une marque olfactive ne sont pas remplies par une formule chimique, par une description au moyen de mots écrits, par le dépôt d’un échantillon d’une odeur ou par la combinaison de ces éléments (voir arrêt du 12/12/2002, C-273/00, «Sieckmann», points 69 à 73).
Il n’existe pas à l’heure actuelle une classification internationale d’odeurs généralement admise qui permettrait, à l’instar des codes internationaux de couleur ou de l’écriture musicale, l’identification objective et précise d’un signe olfactif grâce à l’attribution d’une dénomination ou d’un code précis et propres à chaque odeur (voir arrêt du 27/10/2005, T-305/04, «Odeur de fraise mûre», point 34). Si, comme il résulte de l’arrêt Sieckmann, une description ne saurait représenter graphiquement des signes olfactifs susceptibles de faire l’objet d’une multitude de descriptions, il ne peut cependant pas être exclu que, dans l’avenir, un signe olfactif puisse éventuellement faire l’objet d’une description remplissant toutes les conditions de l’article 4 du RMC, tel qu’interprété par la jurisprudence (voir arrêt du 27/10/2005, T-305/04, «Odeur de fraise mûre», point 28).
Dans l’affaire précitée, ni la représentation graphique (d’une fraise rouge) ni la description verbale («odeur de fraise mûre») n’étaient considérées comme remplissant les conditions fixées. L’odeur de fraise varie d’une variété à l’autre. Par conséquent, la description «odeur de fraise mûre», pouvant se référer à plusieurs variétés et, partant, à plusieurs odeurs distinctes, n’a été jugée ni univoque ni précise et n’a pas permis d’écarter tout élément de subjectivité dans le processus d’identification et de perception du signe revendiqué. De même, l’image d’une fraise ne représente que le fruit qui émet une odeur prétendument identique au signe olfactif en cause, et non l’odeur revendiquée, et elle ne constitue donc pas une représentation graphique du signe olfactif.
2.1.2.2 Marques gustatives
Les arguments mentionnés au point 2.1.2.1 ci-dessus s’appliquent de la même manière aux marques gustatives (voir la décision du 04/08/2003, R 120/2001-2, «The taste of artificial strawberry flavour»).
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2.1.2.3 Marques sonores
Si une marque sonore consiste en de la musique, l’Office acceptera la portée musicale traditionnelle comme représentation graphique du son demandé (conformément aux critères cités dans arrêt du 27/11/2003, C-283/01, «Shield Mark»). Lorsque la marque consiste en un son non musical, une simple description du son ne suffit pas (R 708/2006-4, «Tarzan Yell»). Dans ces cas, une représentation graphique sous forme d’oscillogramme ou de sonogramme sera acceptable si elle est accompagnée du fichier sonore correspondant déposé par voie électronique (e-filing) (voir la décision du président EX-05-3 du 10 octobre 2005).
Exemples de marques sonores acceptables
MC nº 9 199 134
Sonagramme accompagné d’un fichier sonore
MC nº 1 637 859
Portée musicale
2.1.2.4 Marques de mouvement
Les marques de mouvement doivent également satisfaire à l’exigence de la représentation graphique. La représentation de la marque doit s’accompagner d’une description expliquant clairement le mouvement pour lequel la protection est demandée. Dans sa décision du 23/09/2010, R 443/2010-2, «Red liquid flowing in sequence of stills», la deuxième chambre de recours a déclaré que lorsqu’un signe est défini par une représentation graphique et une représentation textuelle, si l’on veut que la représentation soit, entre autres, claire, précise, intelligible et objective, la description doit coïncider avec ce que l’on peut voir dans la représentation graphique. Dans cette affaire, l’examinateur estimait que les images fournies dans la représentation, associées à la description, ne décrivaient pas clairement le mouvement, étant donné en particulier que la progression du mouvement entre les différentes images n’était pas suffisamment claire:
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Toutefois, la deuxième chambre a estimé à cet égard que la représentation graphique et la description verbale étaient parfaitement compatibles et complémentaires. Le demandeur avait fourni un nombre suffisant d’images pour représenter clairement l’évolution du mouvement, ainsi qu’une description textuelle précise et détaillée de la progression, ne laissant donc aucun doute sur le concept de la marque de mouvement. Selon les critères fixés par la deuxième chambre, l’enregistrement d’une marque de mouvement ne peut être refusé en vertu de l’article 7, paragraphe 1, point a), du RMC que lorsqu’une «personne raisonnablement attentive doit déployer des efforts intellectuels particulièrement élevés afin de comprendre en quoi consiste la marque».
Aucune limite n’a été fixée et le nombre d’images dépend du mouvement concerné tant qu’elles remplissent les exigences de formalités. En ce qui concerne la description de la marque, sa teneur doit être précise et adaptée à la cohérence et à la complexité du mouvement afin de décrire le signe de manière adéquate et efficace.
Exemple de marque de mouvement acceptable
MC nº 5 338 629
Description: La marque consiste en la représentation d’une séquence animée composée de deux segments s’évasant qui se rejoignent dans la partie supérieure droite de la marque. Au cours de la séquence d’animation, un objet géométrique monte le long du premier segment et ensuite redescend le long du second, tandis que des cordes individuelles à l’intérieur de chaque segment deviennent progressivement plus claires. Le pointillage dans la marque sert uniquement à créer un effet d’ombre. La séquence animée complète dure entre une et deux secondes.
Représentations: Représentation de la marque en noir et blanc et nuances de gris uniquement; pas d’indication de couleur.
2.1.2.5 Combinaison informe de deux couleurs ou plus «sous toute représentation»
En vertu des arrêts «Sieckmann» et «Libertel», la combinaison informe de deux couleurs ou plus «sous toute représentation» ne satisfait pas aux exigences de clarté et de constance d’une représentation graphique, qui sont des conditions pour remplir le rôle d’une marque (voir également la décision du 27/07/2004, R 730/2001-4, «JAUNE/BLEU/ROUGE»).
La simple juxtaposition de deux ou plusieurs couleurs sans forme ni contour ou la mention de deux ou plusieurs couleurs «sous toutes les formes imaginables» ne présentent pas les caractères de précision et de constance exigés par l’article 4 du RMC (voir arrêt du 24/06/2004, C-49/02, «Couleurs bleu et jaune», point 34).
En outre, ces représentations admettraient de nombreuses combinaisons différentes, ce qui ne permettrait pas aux consommateurs de percevoir et de mémoriser une combinaison particulière et, partant, de répéter avec certitude un achat, ni aux autorités compétentes et aux opérateurs économiques de connaître l’étendue de la protection accordée au propriétaire de la marque. En conséquence, une représentation graphique de deux ou plusieurs couleurs qui sont désignées de manière abstraite et sans contour doit comporter un agencement systématique associant les couleurs concernées de manière prédéterminée et constante (voir arrêt du 14/06/2012, T-293/10, «Sept carrés de couleurs différentes», point 50)
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2.1.2.6 Descriptions ambiguës et contradictoires non cohérentes avec la nature du signe
Une description ambiguë et contradictoire n’est pas acceptable. En outre, la description doit être cohérente avec la nature du signe. Dans son arrêt du 14/06/2012 dans l’affaire T-293/10 («Sept carrés de couleurs différentes»), le Tribunal de première instance (ci-après le «Tribunal») a estimé que la description de la marque («Six surfaces géométriquement agencées en trois paires de surfaces parallèles, chaque paire étant située perpendiculairement par rapport aux deux autres, le tout étant caractérisé par le fait que: i) les surfaces adjacentes ont des couleurs différentes, et ii) chaque surface a une structure en grille formée par des bords noirs divisant la surface en neuf segments égaux») était trop difficile à comprendre:
Un signe ainsi défini n’est pas une marque de couleur en tant que telle mais une marque tridimensionnelle, ou figurative, qui correspond à l’apparence extérieure d’un objet déterminé avec une forme particulière, à savoir un cube quadrillé avec une disposition spécifique des couleurs. Même si la description avait été claire et facilement intelligible - ce qui n’était pas le cas -, elle n’en resterait pas moins empreinte d’une contradiction inhérente en ce qui concerne la nature véritable du signe en cause (points 64 et 66).
2.1.3 Lien avec d’autres dispositions du RMC
Lorsque la marque est contestable en vertu de l’article 7, paragraphe 1, point a), du RMC, aucun autre examen relatif aux autres motifs de refus possibles, comme l’article 7, paragraphe 1, point b) ou c), du RMC, n’est nécessaire.
L’article 7, paragraphe 3, du RMC prévoit que le caractère distinctif d’une marque acquis par l’usage qui en a été fait ne permet pas de surmonter les motifs absolus de refus visés à l’article 7, paragraphe 1, point a), du RMC.
2.2 Caractère distinctif [article 7, paragraphe 1, point b), du RMC]
2.2.1 Remarques générales
Selon une jurisprudence constante, le caractère distinctif d’une marque au sens de l’article 7, paragraphe 1, point b), du RMC, signifie que le signe permet d’identifier le produit et/ou service pour lequel l’enregistrement est demandé comme provenant d’une entreprise déterminée et donc de distinguer ce produit de ceux d’autres entreprises (voir arrêt du 29/04/2001, affaires jointes C-468/01 P à C-472/01 P, point 32; arrêt du 21/10/2004, C-64/02 P, point 42; arrêt du 08/05/2008, C-304/06 P, point 66; et «Audi/OHMI», point 33). Selon une jurisprudence constante, ce caractère distinctif doit être apprécié, d’une part, par rapport aux produits ou aux services pour lesquels l’enregistrement est demandé et, d’autre part, par rapport à la perception que le public pertinent en a (voir arrêt du 29/04/2001, affaires jointes C-468/01 P à C-472/01 P, point 33; arrêt du 08/05/2008, C-304/06 P, point 67; et «Audi/OHMI», point 34); arrêt du 14/06/2012, T-293/10, «Sept carrés de couleurs différentes»; arrêt du 12/07/2012, C-311/11 P, «Wir machen das Besondere einfach», point 23).
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S’il est généralement accepté qu’un degré minimal de caractère distinctif suffit, il faut également tenir compte du fait que, pour posséder un caractère distinctif en tant que marque communautaire, la marque doit être distinctive au regard de l’Union européenne dans son ensemble.
Selon la jurisprudence des tribunaux européens, une marque verbale qui est descriptive des caractéristiques de produits ou de services aux fins de l’article 7, paragraphe 1, point c), du RMC, est, de ce fait, nécessairement dépourvue de caractère distinctif au regard de ces mêmes produits ou services aux fins de l’article 7, paragraphe 1, point b), du même règlement (voir arrêt du 12/06/2007, T-190/05, «Twist & Pour», point 39).
Dans le même ordre d’idées, si un terme donné pouvait ne pas être clairement descriptif des produits et services concernés, au point que ne s’appliquerait pas une objection sur la base de l’article 7, paragraphe 1, point c), du RMC, il pourrait encore être contesté en vertu de l’article 7, paragraphe 1, point b), du RMC au motif qu’il sera perçu par le public pertinent comme un indicateur de la nature des produits et/ou services concernés et non comme une indication de leur origine. C’était le cas du terme «MEDI», qui a été considéré comme ne donnant au public pertinent que des informations sur la finalité médicale ou thérapeutique des produits ou sur leur appartenance générale au domaine médical (voir arrêt du 12/07/2012, T-470/09, «medi», point 22).
Une objection en vertu de l’article 7, paragraphe 1, point b), du RMC s’applique également aux cas où la structure lexicale utilisée, même si elle n’est pas correcte d’un point de vue grammatical, peut être considérée comme habituelle dans le langage publicitaire et le contexte commercial en cause. C’était le cas de la combinaison «ECO PRO», où l’élément laudatif «PRO» est placé après l’élément descriptif «ECO», combinaison qui serait perçue par le public pertinent comme une indication de ce que les produits désignés sont destinés aux «professionnels de l’écologie» ou «favorables à l’écologie» (voir arrêt du 25/04/2013, T-145/12, «ECO PRO», points 29 à 32).
2.2.2 Éléments verbaux
Les mots ne sont pas distinctifs et ne peuvent conférer de caractère distinctif à un signe complexe si leur usage est si fréquent qu’ils ont perdu toute capacité à distinguer les produits et services. Les termes suivants, individuellement ou combinés à d’autres éléments non enregistrables, tombent sous le coup de cette disposition.
Les termes qui dénotent simplement une qualité ou une fonction positive ou attractive des produits et services doivent être refusés, qu’ils soient demandés seuls ou combinés à des termes descriptifs:
ECO dénotant «écologique» (voir arrêt du 24/04/2012, T-328/11, «EcoPerfect», point 25, et arrêt du 15/01/2013, T-625/11, «ecoDoor», point 21);
MEDI se référant à «médical» (voir arrêt du 12/07/2012, T-470/09, «medi»);
MULTI se réfère à «nombreux, beaucoup, plus d’un» (voir la décision du 21/07/1999, R 99/1999-1, «MULTI 2 ‘n 1’»; la décision du 17/11/2005, R 904/2004-2, «MULTI»)
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MINI dénotant «très petit» ou «petit» (voir la décision du 17/12/1999, R 62/1999-2, «MINIRISC»);
Premium/PREMIUM se référant à la «meilleure qualité» (voir arrêt du 22/05/2012, T-60/11, points 46 à 49, 56 et 58; et arrêt du 17/01/2013, affaires jointes T-582/11 et T-583/11, «PREMIUM L», «PREMIUM XL», point 26);
PLUS dénotant «supérieur, extra, de qualité supérieure, excellent en son genre» (voir la décision du 15/12/1999, R 329/1999-1, «PLATINUM PLUS»);
ULTRA1 dénotant «extrêmement» (voir la décision du 09/12/2002, R 333/2002-1, «ULTRAFLEX»);
UNIVERSAL se référant à des produits qui conviennent à un usage général ou universel (voir arrêt du 02/05/2012, T-435/11, «UniversalPHOLED», points 22 et 28).
Les suffixes de domaines de premier niveau, par exemple, «.com», indiquent uniquement l’endroit où l’on peut accéder à l’information sur l’internet et ne peuvent dès lors rendre enregistrable une marque qui est descriptive ou contestable pour d’autres motifs. Donc, «www.books.com» est une marque tout aussi contestable que le terme «books» seul pour désigner des produits de l’imprimerie. Le Tribunal l’a confirmé dans son arrêt du 21/11/2012 (T-338/11, «photos.com», point 22), dans lequel il a déclaré que l’élément «.com» est un élément technique et générique dont l’utilisation est nécessaire dans la structure normale de l’adresse d’un site internet à caractère commercial. En outre, cet élément peut également servir à indiquer que les produits et les services visés par la demande de marque peuvent être obtenus ou consultés en ligne ou sont liés à l’internet. Dès lors, il y a lieu de considérer que l’élément en question est également dépourvu de caractère distinctif par rapport aux produits et aux services concernés.
Les abréviations de la forme juridique d’une société (par exemple Ltd., GmbH) ne peuvent ajouter de caractère distinctif à un signe.
Les termes qui indiquent que les produits et services sont fournis par un groupe de personnes, par exemple, «company», «people» (pour désigner des établissements) ou «Club», ne sont pas non plus enregistrables. Ainsi, «Kitchen Company» ne peut être admis à l’enregistrement pour désigner des cuisines. La situation est différente si le signe, dans son ensemble, ne fait pas simplement référence aux produits et services de manière abstraite mais produit l’impression globale d’une entité distincte, identifiable. Exemples: «Royal Society for the Prevention of Cruelty to Animals», «International Trade Mark Association» seraient tous des signes acceptables à l’enregistrement.
Les noms de personnes physiques sont distinctifs, quelle que soit la fréquence du nom, et même s’il s’agit de prénoms et de noms extrêmement courants tels que Smith ou García (voir arrêt du 16/09/2004, C-404/02, «Nichols», points 26 et 30). Cela vaut également pour les noms de personnalités, y compris de chefs d’État.
1 Modifié le 23/06/2010
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2.2.3 Titres de livres
Les marques constituées exclusivement du titre d’un livre ou d’une histoire célèbre peuvent ne pas être distinctives au sens de l’article 7, paragraphe 1, point b), du RMC par rapport aux produits et services qui pourraient avoir cette histoire comme sujet. La raison invoquée est que certaines histoires (ou leur titre) sont si anciennes et si connues qu’elles sont «entrées dans le langage» et ne peuvent avoir d’autre signification que celle d’une histoire particulière.
Par exemple, «Peter Pan», «Cendrillon» ou «L’Iliade» peuvent parfaitement être des marques distinctives de (par exemple) peintures, vêtements ou crayons. Toutefois, ces éléments ne peuvent jouer un rôle distinctif par rapport à des livres ou des films (par exemple) car les consommateurs penseront simplement que ces produits se réfèrent à l’histoire de Peter Pan ou de Cendrillon, qui est la seule signification des termes concernés.
Des objections ne doivent être formulées que lorsque le titre en question est suffisamment célèbre pour que le consommateur pertinent le connaisse réellement bien et lorsque la marque peut être perçue dans le contexte des produits/services comme signifiant essentiellement un titre de livre ou d’histoire célèbre. Une conclusion d’absence de caractère distinctif à cet égard sera plus probable s’il peut être prouvé qu’il y a eu un grand nombre de versions publiées de l’histoire et/ou de nombreuses adaptations à la télévision, au théâtre et au cinéma, touchant un large public.
Selon la nature de la marque en question, une objection peut être soulevée pour des produits de l’imprimerie, des films, des enregistrements, des pièces de théâtre et des émissions (cette liste n’est pas exhaustive).
2.2.4 Couleurs
La présente section concerne les couleurs seules ou les combinaisons de couleurs en tant que telles («couleur en tant que telle»).
Lorsque la demande porte sur des couleurs ou des combinaisons de couleurs en tant que telles, la bonne pratique d’examen consiste à déterminer si elles sont distinctives lorsqu’elles sont appliquées aux produits ou à leur emballage, ou lorsqu’elles sont utilisées en rapport avec la prestation des services. Constitue un motif suffisant aux fins d’un refus le fait que la marque soit dépourvue de caractère distinctif dans l’une de ces situations. S’agissant des combinaisons de couleurs, l’examen du caractère distinctif repose sur la présomption que la combinaison de couleurs, telle que déposée, apparaît sur les produits ou sur leur emballage, ou dans du matériel publicitaire ou promotionnel en relation avec les services.
2.2.4.1 Couleurs seules
Comme l’a confirmé la Cour, les consommateurs n’ont pas pour habitude de présumer l’origine des produits en se basant sur leur couleur ou sur celle de leur emballage, en l’absence de tout élément graphique ou textuel, parce qu’une couleur en elle-même n’est pas, dans les usages commerciaux actuels, en principe utilisée comme moyen d’identification (voir arrêt du 06/05/2003, C-104/01, «Libertel»). La propriété inhérente de distinguer les produits d’une certaine entreprise fait normalement défaut à une couleur (point 65). En conséquence, une couleur seule est dépourvue de caractère
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distinctif par rapport à tous les produits et services, sauf dans des circonstances très spécifiques.
De telles circonstances très spécifiques exigent du demandeur qu’il démontre que la marque est absolument inhabituelle ou frappante par rapport à ces produits spécifiques. Ces cas sont extrêmement rares, par exemple dans le cas de la couleur noire pour le lait. Pour refuser la marque, il n’est pas nécessaire que l’un des facteurs énumérés au point 2.2.4.2 ci-dessous soit présent, mais si tel est le cas, il convient de l’utiliser comme argument supplémentaire à l’appui du refus. Lorsqu’il apparaît que la couleur seule est communément utilisée dans les secteurs concernés et/ou remplit une fonction décorative ou fonctionnelle, elle doit être refusée. Selon la Cour, l’intérêt public est un obstacle à la monopolisation d’une couleur seule, même si le domaine d’intérêt concerné relève d’un marché pertinent très spécifique (voir arrêt du 13/09/2010, T-97/08, «Nuance de la couleur orange», points 44 à 47).
2.2.4.2 Combinaisons de couleurs
Lorsqu’une combinaison de couleurs en tant que telles est demandée, la représentation graphique telle que déposée doit délimiter ces couleurs dans l’espace afin de déterminer la portée du droit revendiqué (What you see is what you get - ce que l’on voit est ce que l’on obtient). La représentation graphique doit clairement indiquer la proportion et la position des différentes couleurs, et donc comporter un agencement systématique associant les couleurs concernées de manière prédéterminée et constante (voir arrêt du 24/06/2004, C-49/02, «Couleur bleu et jaune», point 33; et arrêt du 14/06/2012, T-293/10, «Sept carrés de couleurs différentes», point 50).
Par exemple, une marque constituée d’une petite bande de couleur jaune au-dessus d’une large bande rouge est différente d’une marque dans laquelle les couleurs rouge et jaune sont présentées dans des proportions égales, avec le rouge du côté gauche. Une revendication abstraite, notamment de deux couleurs «dans toutes les combinaisons possibles» ou «dans toutes les proportions possibles», n’est pas admise et donne lieu à une objection en vertu de l’article 7, paragraphe 1, point a), du RMC (voir la décision du 27/07/2004, R 730/2001-4, «GELB/BLAU/ROT», paragraphe 34). Par contre, l’indication de la manière dont la combinaison de couleurs apparaîtra sur le produit n’est pas requise car c’est l’objet de l’enregistrement qui importe et non la façon dont il est ou peut être utilisé sur le produit.
Dans le cas d’une combinaison de couleurs, un refus ne peut se fonder que sur des faits ou arguments précis et, lorsque ces arguments spécifiques à l’appui du refus ne sont pas établis, la marque doit être acceptée. Si l’une des deux couleurs est la couleur habituelle ou naturelle du produit, autrement dit une couleur est ajoutée à la couleur habituelle ou naturelle du produit, une objection est émise de la même manière que s’il n’y avait qu’une couleur. Exemples: le gris est la couleur habituelle des poignées des outils de jardinage et le blanc est la couleur naturelle des tablettes de détergent. Dès lors, le cas d’une tablette de détergent blanche comportant une autre couche de couleur rouge doit être examiné comme une demande caractérisée par l’ajout d’une couleur.
Les situations dans lesquelles une combinaison de deux couleurs doit néanmoins être refusée sont notamment les suivantes:
dans de nombreux cas, une couleur est simplement un élément décoratif des produits ou répond à la demande du consommateur (exemples: les couleurs de véhicules ou de T-shirts), quel que soit le nombre de couleurs concernées;
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une couleur peut constituer la nature des produits (exemple: les teintures);
une couleur peut être techniquement fonctionnelle (exemples: la couleur rouge pour des extincteurs d’incendie, l’utilisation de différentes couleurs pour des fils électriques);
une couleur peut être habituelle ou générique (exemples: le rouge pour des extincteurs d’incendie, le jaune pour des services postaux);
une couleur peut indiquer une caractéristique particulière des produits, par exemple, un goût (jaune pour le citron, rose pour la fraise);
l’existence sur le marché de la combinaison de couleurs demandée est démontrée et en particulier son utilisation par plusieurs concurrents (exemple: il a déjà été démontré que la combinaison des couleurs rouge et jaune est utilisée par diverses entreprises sur des boîtes de bière ou de boisson non alcoolisée).
Dans tous ces cas, la marque demandée doit être contestée, mais après une analyse approfondie des produits et services concernés et de la situation sur le marché.
Il n’y a pas lieu d’appliquer à l’appréciation du caractère distinctif d’une marque de couleur désignant des services des critères différents de ceux applicables aux marques de couleur désignant des produits (comme l’a rappelé le Tribunal dans son arrêt du 12/11/2010, T-404/09, «Combinaison horizontale des couleurs gris et rouge»). Dans cette affaire, il a été considéré que la combinaison de couleurs demandée ne présentait pas d’écart perceptible, pour le public pertinent, par rapport aux couleurs communément utilisées pour les services visés. Le Tribunal a conclu que la combinaison de couleurs demandée était donc très proche de la combinaison de blanc et de rouge utilisée sur les barrières ferroviaires et les panneaux routiers concernant les chemins de fer et que le signe demandé, pris dans son ensemble, serait perçu par le public pertinent comme un élément fonctionnel ou décoratif et non comme une indication de l’origine commerciale des services en cause.
Plus le nombre de couleurs est élevé, moins le caractère distinctif est probable compte tenu de la difficulté de mémoriser un grand nombre de couleurs et leur succession.
Pour les noms de couleurs, voir le point 2.3.2.9.
2.2.5 Lettres uniques2
2.2.5.1 Considérations générales
Dans son arrêt du 09/09/2010, C-265/09 P, «α», la Cour a estimé que, dans le cas de marques constituées de lettres uniques représentées en caractères standard sans altération graphique, il est nécessaire de procéder à une appréciation de l’aptitude du signe en cause à distinguer les différents produits ou services dans le cadre d’un examen concret envisageant ces produits ou ces services (point 39).
2 Pour lettres uniques sous l’article 7, paragraphe 1, point c, voir 2.3.2.8
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La Cour a déclaré qu’il y a lieu de rappeler que, selon l’article 4 du RMC, les lettres comptent parmi les catégories de signes qui peuvent constituer des marques communautaires à condition qu’elles soient propres à distinguer les produits ou les services d’une entreprise de ceux d’autres entreprises (point 28), et a souligné que l’enregistrement d’un signe en tant que marque n’est pas subordonné à la constatation d’un certain niveau de créativité ou d’imagination linguistique ou artistique de la part du demandeur.
Tout en reconnaissant qu’il est légitime de tenir compte des difficultés que pourraient comporter, du fait de leur nature même, certaines catégories de marques pour établir leur caractère distinctif et que l’établissement du caractère distinctif peut s’avérer plus difficile pour une marque consistant en une lettre unique que pour d’autres marques verbales (point 39), la Cour a clairement indiqué que ces circonstances ne justifient pas de fixer des critères spécifiques suppléant ou dérogeant à l’application du critère du caractère distinctif tel qu’interprété dans la jurisprudence (points 33 à 39).
En ce qui concerne la charge de la preuve, la Cour a déclaré que lors de l’examen de motifs absolus de refus d’enregistrement, l’Office est tenu, en vertu de l’article 76, paragraphe 1, du RMC, d’examiner d’office les faits pertinents qui pourraient l’amener à soulever une objection en vertu de l’article 7, paragraphe 1, du RMC, et que cette exigence ne saurait être ni relativisée ni invertie, au détriment du demandeur (points 55 à 58). Partant, il incombe à l’Office d’expliquer, par une argumentation motivée, pourquoi une marque consistant en une lettre unique représentée en caractères standard est dépourvue de caractère distinctif.
Il est donc nécessaire de procéder à un examen approfondi des circonstances factuelles spécifiques de l’affaire afin d’évaluer si une lettre unique donnée représentée en caractères standard peut servir de marque pour les produits/services visés. Cette nécessité d’examiner les faits signifie qu’il n’est pas possible de s’appuyer sur des hypothèses (par exemple, que les consommateurs ne sont généralement pas habitués à voir des marques consistant en une lettre unique).
En conséquence, lors de l’examen de marques consistant en une lettre unique, des arguments génériques non motivés comme ceux concernant la disponibilité des signes doivent être évités, vu le nombre limité de lettres. L’Office est tenu d’établir, sur la base d’une appréciation des faits, pourquoi la marque est contestable.
Il est donc clair que l’examen de marques constituées d’une lettre unique doit être minutieux et strict, et que chaque cas requiert un examen rigoureux pour déterminer si une lettre donnée peut être considérée comme ayant un caractère distinctif inhérent au regard des produits et/ou services concernés.
2.2.5.2 Exemples
Par exemple, dans des domaines techniques tels que ceux impliquant des ordinateurs, des machines, des moteurs et des outils, des lettres uniques sont davantage susceptibles d’être perçues comme des références techniques, de modèles ou de catalogues plutôt que des indications d’origine, bien que toute conclusion en ce sens doive découler d’une appréciation des faits.
En fonction du résultat de l’examen préalable, une marque composée d’une lettre unique représentée en caractères standard peut être contestable en vertu de l’article 7, paragraphe 1, point b), du RMC, au motif qu’elle est dépourvue de caractère distinctif inhérent pour les produits et/ou services concernés ou pour une partie de ceux-ci.
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Ce serait le cas, par exemple, d’une marque consistant en la lettre unique «C» pour des «jus de fruits», vu que la lettre «C» est communément utilisée pour désigner la vitamine C. Le public concerné ne la percevrait pas comme une indication de l’origine commerciale des produits en cause.
D’autres exemples d’absence de caractère distinctif sont à trouver dans des marques consistant en une lettre unique demandées pour des cubes (jouets), qui sont fréquemment utilisés pour enseigner aux enfants comment créer des mots en associant les lettres apparaissant sur les cubes, sans pour autant décrire le produit lui- même, ou en des lettres uniques demandées pour des services de loterie, secteur où les lettres sont souvent utilisées pour indiquer différentes séries de chiffres.
Si, dans les cas précités, il n’existe aucun lien descriptif direct entre les lettres et les produits/services, une marque consistant en une lettre unique serait dépourvue de caractère distinctif car les consommateurs sont davantage habitués, en ce qui concerne les cubes (jouets) et les loteries, à percevoir des lettres uniques comme ayant une connotation fonctionnelle ou utilitaire, plutôt que comme une indication de l’origine commerciale.
Par ailleurs, s’il ne peut être établi qu’une lettre unique donnée est dépourvue de caractère distinctif pour les produits et/ou services concernés, elle doit alors être acceptée, même si elle est représentée en caractères standard ou de manière assez rudimentaire.
Par exemple, la lettre a été acceptée pour les services «transport; emballage et entreposage de marchandises; organisation de voyages» compris dans la classe 39 et les «services de restauration (alimentation), hébergement temporaire» compris dans la classe 43 (voir la décision du 30/09/2010, R 1008/2010-2, paragraphes 12 à 21).
Pour d’autres exemples, voir le point 2.3.2.8 ci-dessous.
2.2.6 Slogans: apprécier le caractère distinctif
La Cour a estimé qu’il n’y a pas lieu d’appliquer aux slogans publicitaires des critères plus stricts que ceux applicables à d’autres types de signes lors de l’appréciation de leur caractère distinctif (voir arrêt du 12/07/2012, C-311/11 P, «Wir machen das Besondere einfach», et jurisprudence citée).
Les slogans publicitaires sont contestables en vertu de l’article 7, paragraphe 1, point b), du RMC lorsque le public pertinent les perçoit comme une simple formule promotionnelle. Cependant, ils doivent se voir reconnaître un caractère distinctif si, au- delà de leur fonction promotionnelle, ils sont perçus par le public pertinent comme une indication de l’origine commerciale des produits et des services visés.
La Cour a fourni les critères suivants qui devraient être utilisés pour apprécier le caractère distinctif d’un slogan (voir les arrêts du 21/01/2010, C-398/08 P, «Vorsprung durch Technik», point 47, et du 13/04/2011, T-523/09, «Wir machen das Besondere einfach», point 37).
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Un slogan publicitaire est susceptible de posséder un caractère distinctif lorsqu’il est perçu comme étant davantage qu’un simple message publicitaire vantant les qualités des produits ou services visés car il:
a plusieurs significations, et/ou constitue un jeu de mots, et/ou introduit des éléments de tension conceptuelle ou de surprise, de sorte qu’il peut
être perçu comme imaginatif, surprenant ou inattendu, et/ou possède une originalité ou prégnance particulière, et/ou déclenche chez le public pertinent un processus cognitif ou un effort
d’interprétation.
En plus des éléments ci-dessus, les caractéristiques suivantes d’un slogan peuvent conduire à une conclusion d’existence de caractère distinctif:
des structures syntaxiques inhabituelles; l’utilisation de dispositifs linguistiques et stylistiques comme l’allitération, la
métaphore, la rime, le paradoxe, etc.
Toutefois, l’utilisation de formes grammaticales peu orthodoxes doit être soigneusement évaluée car les slogans publicitaires sont souvent écrits sous une forme simplifiée, de manière à les rendre plus concis et plus percutants (voir, entre autres, arrêt du 24/01/2008, T-88/06, «SAFETY 1ST», point 40). Cela signifie que l’absence d’éléments grammaticaux tels que des articles définis ou des pronoms (LE, IL, etc.), des conjonctions (OU, ET, etc.) ou des prépositions (OU, POUR, etc.) peut ne pas toujours suffire pour conférer un caractère distinctif au slogan. Dans le cas de «SAFETY 1ST», le Tribunal a estimé que l’utilisation du terme anglais «1ST» au lieu de «FIRST» (premier) n’était pas suffisamment peu orthodoxe pour ajouter du caractère distinctif à la marque.
Un slogan dont la signification est vague ou impénétrable ou dont l’interprétation requiert de la part des consommateurs pertinents un effort intellectuel considérable est également susceptible de posséder un caractère distinctif étant donné que les consommateurs ne pourront pas établir un lien clair et direct avec les produits et services revendiqués.
Le fait que le public pertinent est spécialisé et que son degré d’attention est plus élevé que celui du consommateur moyen ne saurait avoir une influence déterminante sur les critères juridiques utilisés pour l’appréciation du caractère distinctif d’un signe. Comme l’a déclaré la Cour, «il ne s’ensuit pas nécessairement qu’un caractère distinctif plus faible du signe est suffisant lorsque le public pertinent est spécialisé» (voir arrêt du 12/07/12, C-311/11 P, «Wir machen das Besondere einfach», point 48).
Les exemples suivants illustrent certaines fonctions que peuvent remplir les slogans ainsi que les arguments qui peuvent étayer une objection en vertu de l’article 7, paragraphe 1, point b), du RMC.
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MC Fonction principale Affaire
MC nº 5 904 438 MORE THAN JUST A CARD
pour des services relevant de la classe 36 (services de cartes bancaires, de crédit et de
débit)
Déclaration de service à la clientèle R 1608/2007-4
Marque contestée en vertu de l’article 7, paragraphe 1, point b), du RMC.
Le slogan ne fait que transmettre des informations sur les produits et services visés par la demande. C’est le genre de langage qu’un anglophone utiliserait pour décrire une carte bancaire qui sort un peu de l’ordinaire. Le slogan transmet la notion que la carte présente des caractéristiques qui ne sautent pas aux yeux. Le fait que le slogan ne précise pas de quelles caractéristiques il s’agit, autrement dit, que la marque ne décrive pas un service ou une caractéristique spécifique de la «carte», ne rend pas la marque distinctive.
MC Fonction principale Affaire
MC nº 7 394 414 WE PUT YOU FIRST. AND KEEP YOU AHEAD
pour des services relevant de la classe 40 Déclaration de service à la clientèle -
Marque contestée en vertu de l’article 7, paragraphe 1, point b), du RMC.
La marque est un message promotionnel élogieux qui souligne les aspects positifs des services, à savoir qu’ils contribuent à donner la meilleure place dans le secteur et à maintenir cette position dans le futur.
MC Fonction principale Affaire
MC nº 6 173 249 SAVE OUR EARTH NOW
pour des services relevant des classes 3, 17, 18, 20, 22, 24, 25 et 28
Énoncé de valeurs ou slogan politique R 1198/2008-4
Marque contestée en vertu de l’article 7, paragraphe 1, point b), du RMC.
Le signe est un simple appel direct à agir et à contribuer au bien-être de la Terre en encourageant l’achat de produits écologiques. Contrairement à ce qu’affirme le requérant, selon lequel le mot «now» (maintenant) constitue un élément original étant donné que personne ne pensera qu’en achetant les produits visés, ils sauveront littéralement la Terre maintenant, le mot «now» est un mot émotionnel communément utilisé en marketing pour inciter les consommateurs à consommer, à obtenir ce qu’ils veulent sans attendre; c’est un appel à agir. Le consommateur pertinent reconnaîtra et percevra immédiatement le signe comme une expression promotionnelle élogieuse indiquant que les produits représentent une alternative écologique à d’autres produits du même genre, et non comme une indication de l’origine commerciale.
MC Fonction principale Affaire
MC nº 4 885 323 DRINK WATER, NOT SUGAR
pour des services relevant des classes 32 et 33 Exposé d’inspiration ou de motivation R 718/2007-2
Marque contestée en vertu de l’article 7, paragraphe 1, point b), du RMC.
La marque est un slogan ordinaire, qui transmet simplement l’idée que le consommateur boira de l’eau véritable plutôt qu’une boisson sucrée. La marque est dépourvue d’une signification secondaire ou cachée, ne comporte pas d’éléments fantaisistes et son message au consommateur est clair, direct et sans ambiguïté. C’est pourquoi il est peu probable qu’elle soit perçue comme une indication de l’origine commerciale. On peut voir facilement que la marque consiste simplement en un bon conseil, à savoir que, du point de vue de la santé, il vaut mieux boire de l’eau qui n’a pas été sucrée. Quelle meilleure manière de promouvoir ces produits que par une expression telle que DRINK WATER, NOT SUGAR (buvez de l’eau, pas du sucre) ? Les consommateurs marqueront leur approbation en lisant ce message, mais chercheront la marque ailleurs sur le produit.
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MC Fonction principale Affaire
VALORES DE FUTURO pour des services relevant de la classe 41 Énoncé de valeurs
Arrêt du 06/12/2013,
T-428/12
Marque contestée en vertu de l’article 7, paragraphe 1, point b), du RMC
Le public pertinent comprendra l’expression VALORES DE FUTURO comme un message élogieux dont le seul objectif est de mettre en exergue les aspects positifs des services en question.
Exemples de slogans acceptés:
DEFINING TOMORROW, TODAY, décision du 07/02/2012, R 1264/2011-2, MC nº 9 694 431, pour des produits et services relevant des classes 9, 10, 16, 35, 41, 44 et 45;
SITEINSIGHTS, décision de la chambre de recours du 08/11/2011, R 879/2011- 2, MC nº 9 284 597, pour des produits et services relevant des classes 9 et 42;
THE PHYSICIAN DRIVEN IMAGING SOLUTION, EI nº W01 096 100, pour des produits et services relevant des classes 9, 16 et 42;
UNMASKING THE SOCIAL NETWORK OF FRAUD, MC nº 10 477 941, pour des produits et services relevant des classes 9, 36 et 45.
Un slogan est contestable en vertu de l’article 7, paragraphe 1, point c), du RMC, s’il transmet immédiatement des informations sur l’espèce, la qualité, la destination ou d’autres caractéristiques des produits et services (voir le point 2.3.2.5 ci-après).
2.2.7 Éléments figuratifs simples
Des représentations géométriques simples telles que des cercles, des lignes, des rectangles ou des pentagones ordinaires ne peuvent transmettre de message mémorisable par les consommateurs, et ces derniers ne les considéreront donc pas comme une marque.
Ainsi qu’il a été établi par le Tribunal, un signe d’une simplicité excessive et constitué d’une figure géométrique de base, telle qu’un cercle, une ligne, un rectangle, ou un pentagone, n’est pas susceptible, en tant que tel, de transmettre un message (à savoir: sur l’origine commerciale des produits et services concernés) dont les consommateurs peuvent se souvenir, de sorte que ces derniers ne le considéreront pas comme une marque (voir l’arrêt du 12/09/2007,T-304/05, «représentation d’un pentagone», point 22).
Exemples de marques refusées
Signe P&S Argumentation Affaire
Classe 33
Le signe consiste simplement en un pentagone ordinaire, une figure géométrique simple. La forme géométrique, si elle se révèle être la forme de l’étiquette, sera perçue comme ayant un usage fonctionnel ou esthétique plutôt que comme une indication d’origine.
Arrêt du 12/09/2007, T-304/05,
«Pentagone»
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Signe P&S Argumentation Affaire
Classes 9, 14,16, 18, 21, 24, 25,
28, 35 à 39, 41 à 45
Le signe sera perçu comme une forme géométrique excessivement simple, en substance comme un parallélogramme. Pour remplir la fonction d’identification d’une marque, un parallélogramme doit comporter des éléments de nature à l’individualiser par rapport à d’autres représentations de parallélogrammes. Les deux caractéristiques du signe sont que le parallélogramme est légèrement incliné vers la droite et que sa base est légèrement arrondie et étirée vers la gauche. De telles nuances ne seront pas perçues par le consommateur pertinent.
Arrêt du 13/04/2011, T-159/10,
«Parallélogramme»
Classes 14, 18, 25
Le signe ne présente aucun élément facilement et immédiatement mémorisable par le public pertinent, attentif. Il sera exclusivement perçu comme un élément décoratif, qu’il s’agisse tant des produits relevant de la classe 14 que de ceux relevant des classes 18 et 25.
Arrêt du 29/09/2009, T-139/08,
«Représentation de la moitié d’un sourire de
smiley»
Classe 9
Le signe consiste en un triangle équilatéral simple. La configuration à l’envers et le bord rouge du triangle ne confèrent aucun caractère distinctif au signe. L’impact global du signe reste celui d’une forme géométrique simple incapable de transmettre à première vue un message de marque.
Enregistrement international
nº W01 091 415
Classes 3, 18, 24, 43 et
44
Le signe consiste simplement en une figure géométrique simple de couleur verte. Cette couleur est habituellement et largement utilisée dans la publicité et dans la commercialisation des produits et des services pour son pouvoir attractif, en dehors de tout message précis.
Arrêt du 09/12/2010, T-282/09, «Carré
convexe vert»
Exemple de marque acceptée
Signe P&S Argumentation Affaire
Classes 35 et 41
Le signe consiste en un dessin représentant des éléments triangulaires qui se chevauchent. L’impression globale créée est bien plus complexe que celle d’une forme géométrique simple.
MC nº 10 948 222
2.2.8 Éléments figuratifs ordinaires
La représentation suivante d’une feuille de vigne n’est pas distinctive pour le vin:
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De même, la représentation suivante d’une vache n’est pas distinctive pour les produits laitiers:
MC nº 11345998, pour des produits relevant des classes 29 (lait et produits laitiers, etc.) et 35.
Le signe ci-dessus a été refusé, étant donné que les représentations de vaches sont communément utilisées en rapport avec le lait et les produits laitiers. Le fait que l’objet de la marque consiste en une photo «aérienne» d’une vache ne suffit pas pour conférer un caractère distinctif au signe, étant donné que de légères modifications à un signe ordinaire ne rendent pas ce signe distinctif. Cela vaut également pour les produits connexes tels que le «chocolat au lait».
2.2.9 Symboles typographiques
Les symboles typographiques, tels que le point, la virgule, le point-virgule, les guillemets ou le point d’exclamation, ne seront pas considérés par le public comme une indication d’origine. Les consommateurs les percevront comme un signe visant à attirer leur attention mais pas comme une indication de l’origine commerciale. Un raisonnement similaire s’applique aux symboles communs de monnaie (comme €, £, $); en fonction des produits visés, ces signes ne feront qu’informer les consommateurs qu’un produit ou service spécifique est négocié dans cette devise.
Les marques suivantes ont été contestées:
Signe P&S Argumentation Affaire
Classes 14, 18 et 25
Le Tribunal a confirmé la conclusion de la chambre de recours selon laquelle la marque demandée est dépourvue du caractère distinctif nécessaire. Elle ne se compose que d’un signe de ponctuation ne présentant aucune autre caractéristique particulière qui sauterait aux yeux des consommateurs, et qui est un signe ordinaire communément utilisé dans le commerce ou la publicité. Vu son usage fréquent, le consommateur pertinent percevra le point d’exclamation comme un simple élément publicitaire élogieux ou comme quelque chose destiné à attirer son attention (voir arrêt du 30/09/2009, T-75/08, «!»).
MC nº 5 332 184
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Signe P&S Argumentation Affaire
Classes 29, 30, 31 et 32
Le signe demandé a été refusé car, dans le cas des produits revendiqués (aliments et boissons), les pourcentages sont particulièrement importants en rapport avec le prix. Par exemple, le signe de pourcentage indique clairement qu’il y a un rapport coûts/avantages favorable car le prix a été réduit d’un certain pourcentage par rapport au prix normal. Ce type de signe de pourcentage dans un cercle rouge est également communément utilisé en rapport avec les ventes au rabais, les offres spéciales, les liquidations de stocks ou les produits blancs bon marché etc. Le consommateur considérera le signe comme un simple pictogramme transmettant l’information que les produits revendiqués sont vendus à un prix réduit (voir la décision du 16/10/2008, R 998/2008-1, «Prozentzeichen»).
MC nº 5 649 256
2.2.10 Pictogrammes
Les pictogrammes sont des signes et symboles de base et sans ornements que l’on interprète comme ayant une valeur purement informative ou instructive en rapport avec les produits ou services concernés. Il s’agit, par exemple, de signes qui indiquent un mode d’utilisation (comme l’image d’un téléphone pour des services de livraison de pizzas) ou qui délivrent un message qui sera compris par tout le monde (comme un couteau et une fourchette pour la restauration).
Les pictogrammes couramment utilisés - par exemple, un «P» blanc sur fond bleu pour désigner une place de stationnement (ce signe est également contestable en vertu de l’article 7, paragraphe 1, point d), du RMC) ou le dessin d’une crème glacée pour signaler la vente de crème glacée à proximité - sont dépourvus de caractère distinctif en rapport avec les produits ou services pour lesquels ils sont utilisés.
Signe Argumentation Affaire
Vu le type de produits et services revendiqués, qui relèvent des classes 9, 35, 36, 38 et 42 (par exemple, distributeurs de billets, services bancaires), le public percevra le signe comme une indication pratique ou comme des flèches directionnelles indiquant l’endroit où la carte magnétique doit être insérée dans le distributeur. L’association des triangles aux autres éléments de la marque demandée signifie que le public concerné les percevra comme des flèches directionnelles. Les consommateurs sont quotidiennement confrontés à ce type d’indication pratique dans tous les types d’endroits, tels que les banques, supermarchés, gares, aéroports, parkings, cabines téléphoniques, etc. (points 37 à 42).
Arrêt du 02/07/2009, T-414/07, «Une main tenant une carte avec
trois triangles»
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Signe Argumentation Affaire
MC nº 9 894 528 pour des produits relevant
de la classe 9
Le signe a été refusé car il est identique à celui qui figure au cœur du symbole international de sécurité connu sous le nom de «symbole de haute tension» ou «attention, risque de décharge électrique». Il a été officiellement défini en tant que tel par l’ISO 3864 comme symbole standard de haute tension, où la représentation demandée figure dans un triangle qui indique que c’est un symbole de danger. Étant donné que ce signe coïncide essentiellement avec le signe international habituel pour indiquer un risque de haute tension, il a été refusé en vertu de l’article 7, paragraphe 1, point b), du RMC.
Décision du 21/09/2012,
R 2124/2011-5, «DEVICE OF
LIGHTNING BOLT (FIG. MARK)»
2.2.11 Étiquettes courantes/non distinctives
Un signe figuratif peut se composer de formes, dessins ou images qui seront perçus par le public pertinent comme des étiquettes non distinctives. Dans ces cas également, le motif du refus réside dans le fait que ces éléments figuratifs ne peuvent s’imprimer dans l’esprit du consommateur, étant donné qu’ils sont trop simples et/ou communément utilisés en rapport avec les produits/services revendiqués.
Voir les exemples suivants:
Signe Argumentation Affaire
MC nº 4 373 403, déposée sous forme de marque
tridimensionnelle pour des produits relevant de la classe 16 [étiquettes adhésives; étiquettes
adhésives à utiliser avec des étiqueteuses manuelles;
et étiquettes (non en matières textiles)]
La marque demandée est «dépourvue de caractère distinctif» et a été refusée en vertu de l’article 7, paragraphe 1, point b), du RMC, étant donné qu’elle est des plus banales et ordinaires dans le domaine des étiquettes adhésives. Le signe en dit long sur la nature des produits et très peu, voire rien du tout, sur l’identité du producteur (paragraphe 11).
Décision du 22/05/2006,
R 1146/2005-2
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Signe Argumentation Affaire
MC nº 9 715 319 pour des produits relevant des classes 6, 7, 8, 9 et 20
La marque a été refusée, car sa forme de base uniquement combinée à la couleur jaune vif ne permet pas au public professionnel et au grand public visés de distinguer les produits revendiqués comme provenant d’une entreprise particulière. Ici, la couleur jaune peut être perçue comme un élément décoratif, et un élément visant à attirer l’attention sur les produits, sans donner d’informations spécifiques ou transmettre de message précis concernant l’origine commerciale des produits. Par ailleurs, de manière générale, le jaune vif est communément utilisé de manière fonctionnelle pour un large éventail de produits, notamment pour augmenter la visibilité d’objets, pour mettre en relief ou avertir. Pour les raisons énoncées ci-dessus, les consommateurs pertinents ne reconnaîtront pas cette couleur comme une marque, mais la percevront dans sa fonction d’avertissement ou de décoration.
Décision du 15/01/2013,
R 444/2012-2, «DEVICE OF A LABEL IN COLOUR YELLOW
(FIG. MARK)»
De la même manière, les marques suivantes ont été rejetées.
MC nº 11 177 912 pour des produits relevant des classes 29,
30 et 31
MC nº 11 171 279 pour des produits relevant des classes 29,
30 et 31
MC nº 10 776 599 pour, entre autres, des produits relevant des
classes 32 et 33
Dans les trois affaires ci-dessus, la couleur et la forme des étiquettes sont assez courantes, à l’instar de la représentation stylisée des fruits dans la troisième. En outre, dans ce dernier cas, cet élément figuratif représente ou du moins fait fortement allusion aux ingrédients de certains des produits revendiqués, tels que, par exemple, des jus de fruits.
2.2.12 Marques tridimensionnelles
2.2.12.1 Remarques préliminaires
L’article 7, paragraphe 1, point b), du RMC ne fait pas de distinction entre différentes catégories de marques pour déterminer si une marque est propre à distinguer les produits ou les services d’une entreprise de ceux d’autres entreprises (voir arrêt du 05/03/2003, T-194/01, «Tablette ovoïde», point 44). En appliquant cette norme juridique uniforme à différentes marques et catégories de marques, il y a lieu d’établir une distinction en fonction de la perception du consommateur et des conditions du marché.
Pour des signes représentant la forme des produits eux-mêmes, il n’y a pas lieu d’appliquer des critères plus sévères que ceux appliqués à d’autres marques, mais il peut s’avérer plus difficile de conclure à l’existence d’un caractère distinctif, car ces
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marques ne seront pas forcément perçues par le public pertinent de la même manière qu’une marque verbale ou figurative (voir arrêt du 08/04/2002, C-136/02 P, «Maglite», point 30).
Les marques tridimensionnelles peuvent être regroupées en trois catégories:
formes sans rapport avec l’aspect des produits et services eux-mêmes; formes représentant la forme des produits eux-mêmes ou d’une partie de ceux-ci; forme de l’emballage ou du récipient.
2.2.12.2 Formes indépendantes de l’aspect des produits ou des services eux-mêmes
Les formes indépendantes de l’aspect des produits ou des services eux-mêmes (par exemple, le bonhomme Michelin) sont généralement distinctives.
2.2.12.3 Formes constituées par la forme des produits eux-mêmes ou par des formes ayant un rapport avec les produits et services
La jurisprudence développée pour les marques tridimensionnelles constituées par la représentation de la forme du produit lui-même est également pertinente pour les marques figuratives, constituées par des représentations bidimensionnelles du produit ou de ses éléments (voir arrêt du 14/09/2009, T-152/07, «Champs géométriques sur le cadran d’une montre»).
Pour les formes constituées par la forme ou par l’emballage des produits demandés, l’examen doit être effectué en trois étapes.
Étape 1: examen au titre de l’article 7, paragraphe 1, point e), du RMC
En principe, l’examinateur doit d’abord établir si l’un des motifs de refus prévus à l’article 7, paragraphe 1, point e), du RMC est applicable, étant donné que ces motifs ne peuvent être surmontés par la preuve du caractère distinctif acquis. En ce qui concerne cette première étape, voir également le point 2.5 (Formes qui remplissent une fonction essentiellement technique, qui donnent une valeur esthétique substantielle aux produits ou qui résultent de la nature des produits).
Étape 2: identifier les éléments de la marque tridimensionnelle
Au cours de la deuxième étape, l’examinateur doit vérifier si la représentation de la marque tridimensionnelle contient d’autres éléments - par exemple des mots ou des étiquettes - qui peuvent rendre la marque distinctive. En règle générale, tout élément distinctif en lui-même conférera un caractère distinctif à la marque tridimensionnelle tant qu’il peut être perçu dans le cadre de l’usage normal du produit. Des exemples typiques sont des marques verbales ou figuratives (ou une combinaison des deux) apparaissant sur la forme et clairement visibles, comme les étiquettes apposées sur des bouteilles. En conséquence, même la forme standard d’un produit est également susceptible d’enregistrement en tant que marque tridimensionnelle si une marque verbale/une étiquette distinctive figure sur cette forme.
Toutefois, le fait de combiner des éléments descriptifs ou non distinctifs à une forme ordinaire ne conférera pas de caractère distinctif à ladite forme (voir arrêt du 18/01/2013, T-137/12, «Vibrateur», points 34 à 36).
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Étape 3: examiner le critère du caractère distinctif de la forme elle-même
Enfin, il convient d’examiner le critère du caractère distinctif de la forme elle-même. Le test fondamental consiste à déterminer si la forme se différencie matériellement des formes de base, courantes ou attendues par le consommateur, d’une manière telle qu’elle permet à ce dernier d’identifier les produits uniquement par leur forme et de répéter l’expérience d’achat de ces produits si celle-ci s’est avérée positive. Les légumes surgelés en forme de crocodile constituent un exemple particulièrement pertinent à cet égard.
L’examen du caractère distinctif de marques tridimensionnelles constituées exclusivement de la forme des produits eux-mêmes repose sur les critères suivants:
Une forme est dépourvue de caractère distinctif lorsqu’il s’agit d’une forme de base (voir arrêt du 19/09/2001, T-30/00, «Tablette rectangulaire/rouge/blanc») ou d’une combinaison de formes de base (voir la décision du 13/04/2000, R 263/1999-3).
Pour être distinctive, la marque doit diverger de manière significative de la forme qu’attend le consommateur et de la norme ou des habitudes du secteur. Plus la forme se rapproche de la forme la plus probable que prendra le produit en cause, plus il est vraisemblable que ladite forme est dépourvue de caractère distinctif (voir arrêt du 08/04/2002, C-136/02 P, «Maglite», point 31).
Il n’est pas suffisant que la forme soit simplement une variante d’une forme habituelle ou d’une des formes rencontrées dans un secteur caractérisé par une énorme diversité de design (voir arrêt du 08/04/2002, C-136/02 P, «Maglite», point 32, et arrêt du 07/02/2002, T-88/00, «Maglite», point 37).
Les formes ou caractéristiques fonctionnelles d’une marque tridimensionnelle seront perçues comme telles par le consommateur. Par exemple, dans le cas de tablettes de détergent, les bords biseautés empêchent d’abîmer le linge et les couches de couleurs différentes représentent la présence de différents ingrédients actifs.
Alors que le public a l’habitude de percevoir des marques tridimensionnelles comme des signes identificateurs du produit, il n’en va pas nécessairement de même lorsque le signe tridimensionnel se confond avec l’aspect du produit lui-même. Il s’ensuit que l’appréciation du caractère distinctif ne saurait aboutir à un résultat différent dans le cas d’une marque tridimensionnelle constituée par la présentation du produit lui-même et dans le cas d’une marque figurative constituée par la représentation, fidèle à la réalité, du même produit (voir arrêt du 19/09/2001, T-30/00, «Tablette rectangulaire/rouge/blanc», point 49).
Vous trouverez ci-après une liste d’exemples de formes de produits demandés et leur analyse.
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Signe Argumentation Affaire
Les marques figuratives montrant une représentation graphique d’une reproduction naturaliste des produits eux-mêmes ne sont pas distinctives par rapport à ces produits. La représentation d’une tablette pour des «produits pour le linge et la vaisselle sous forme de tablettes» a été refusée. La forme, à savoir une tablette rectangulaire, est une forme de base et une des formes venant naturellement à l’esprit pour une tablette destinée au lave-linge ou au lave-vaisselle. Les coins légèrement arrondis de la tablette ne sont pas susceptibles d’être perçus par le consommateur comme une particularité de la forme en cause (voir arrêt du 19/09/2001, T-30/00, «Tablette rectangulaire/rouge/blanc», points 44 et 53). La même approche a été confirmée par plusieurs arrêts, notamment arrêt du 04/10/2007, C-144/06 P, «ablette».
Arrêt du 19/09/2001, T-30/00, «Tablette
rectangulaire/rouge/bla nc»
Cette forme a été refusée car elle est une simple variante d’une des formes habituelles de ce type de produits, à savoir des lampes de poche (point 32).
Arrêt du 08/04/2002, C-136/02 P, «Maglite»
Cette forme a été refusée car elle ne diverge pas de manière significative de la norme ou des habitudes du secteur. Si les produits dans ce secteur ont souvent une forme oblongue, diverses autres formes – sphériques ou rondes – existent sur le marché (point 29). L’ajout du petit élément verbal descriptif «fun factory» n’est pas apte à compenser l’absence de caractère distinctif de l’élément tridimensionnel (point 36).
Arrêt du 18/01/2013, T-137/12, «Vibrateur»
La Cour a confirmé le refus de ce signe tridimensionnel au motif qu’il ne divergeait pas de manière assez significative des formes et couleurs communément utilisées dans le secteur des confiseries et des produits en chocolat. Le fait qu’il soit combiné à des éléments figuratifs ne conduira pas à l’application des critères pour les marques bidimensionnelles. :
Arrêt du 06/09/2012, C-96/11 P, «Souris en
chocolat»
Cette marque tridimensionnelle, qui consiste en une poignée, demandée pour des produits relevant de la classe 8 (instruments actionnés manuellement destinés à l’agriculture, l’horticulture et la sylviculture, y compris sécateurs et cisailles; ciseaux actionnés manuellement), a été refusée.
Arrêt du 16/09/2009, T-391/07, «Poignée»
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Signe Argumentation Affaire
Le Tribunal a confirmé la jurisprudence concernant le caractère non distinctif des marques tridimensionnelles se présentant sous la forme d’un produit ou de son emballage. En dépit du creux complexe présent à la surface de la forme ovale de la MC demandée, cela ne peut être considéré comme une différence significative au regard des formes habituelles du secteur des confiseries disponibles sur le marché.
Arrêt du 12/12/2013, T-156/12
«Forme ovale»
Des critères semblables s’appliquent mutatis mutandis aux formes ayant un rapport avec les services, par exemple la représentation d’un lave-linge pour des services de blanchisserie.
2.2.12.4 Forme de l’emballage
Les mêmes critères s’appliquent lorsque la marque est constituée par la forme de la bouteille ou du récipient des produits. La forme demandée doit être matériellement différente d’une combinaison d’éléments de base ou courants et être frappante. En ce qui concerne les récipients, il importe également de tenir compte de l’éventuel caractère fonctionnel d’un élément donné. Attendu que, dans le domaine des récipients et des bouteilles, l’usage commercial est susceptible de varier pour différents types de produits, il est recommandé d’effectuer une recherche sur les formes existant sur le marché en choisissant une catégorie suffisamment large des produits concernés (autrement dit, pour apprécier le caractère distinctif d’un récipient à lait, il faut effectuer une recherche concernant les récipients pour boissons en général; voir, à cet égard, les conclusions de l’avocat général dans l’affaire C-173/04, «Standbeutel»).
Signe Argumentation Affaire
La forme demandée a été refusée car il a été estimé que du chocolat en forme de lapin avec un emballage doré était un phénomène fréquent sur le marché correspondant à l’industrie concernée. Après une analyse des éléments individuels, à savoir la forme d’un lapin, la feuille dorée et le ruban rouge avec clochette, il a été conclu que ceux-ci, considérés séparément ou ensemble, étaient dépourvus de caractère distinctif (points 44 à 47).
Arrêt du 24/05/2012, C-98/11 P, «Forme
d’un lapin en chocolat avec ruban rouge»
L’enregistrement de la marque en question, la représentation d’un emballage à tortillons servant d’emballages pour bonbons (et donc non le produit lui-même) a été refusé au motif qu’il s’agissait d’«une forme d’emballage de bonbons normale et traditionnelle» et que l’on trouvait «un grand nombre de bonbons ainsi emballés sur le marché» (point 56). Il en va de même de la couleur de l’emballage en question, à savoir le marron clair (caramel). Cette couleur n’a rien d’inhabituel en elle-même, et il n’est pas rare non plus de la voir utilisée pour des emballages de bonbons (point 56). Partant, le consommateur moyen percevrait la marque non pas comme étant, en elle-même, une indication de l’origine commerciale du produit, mais comme un emballage de bonbon, ni plus ni moins.
Arrêt du 10/11/2004, T-402/02, «Forme d’une papillote»
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Signe Argumentation Affaire
Le Tribunal a confirmé le refus de l’enregistrement de la forme demandée. Le col étiré et le corps aplati ne s’écartent pas de la forme habituelle d’une bouteille contenant les produits revendiqués, à savoir des produits alimentaires, y compris des jus, condiments et produits laitiers. En outre, ni la longueur du col et son diamètre ni la proportion entre la largeur et l’épaisseur de la bouteille ne se singularisent en aucune manière (point 50). Par ailleurs, si les creux latéraux de la bouteille pouvaient être considérés comme distinctifs, ce trait ne suffirait pas à lui seul à influencer l’impression d’ensemble produite par la forme demandée dans une mesure telle que cette dernière divergerait de manière significative de la norme ou des habitudes du secteur (point 53).
Arrêt du 15/03/2006, T-129/04, «Forme d’une bouteille en
plastique»
The Court confirmed the case law on non- distinctiveness of three-dimensional trade marks in the form of a product or its packaging. Even if the oval shape in the CTMA has a complex hollow on its surface, this cannot be considered as a significant difference to the shapes of confectionary available on the market.
Judgment of 12/12/2013, T-156/12
‘Oval shape’
Il est notoire que les bouteilles présentent généralement, à leur surface, des lignes et des plis. Le relief de la partie supérieure n’est pas suffi amment frappant t sera perçu comme un élément purement décoratif. Dans l’ensemble, la combinaison des éléments n’est pas suffisamment distinctive. Le ommateur moyen des pro uits compris dans la cla se 32 ne considérerait pas la forme com e un indicateur de l’origine des produits compris dans la classe 32.
Arrêt du 19/04/2013, T-347/10,
«Getränkeflasch »
Les formes suivantes ont été acceptées.
Décision de la chambre de recours du 04/08/1999, R 139/1999-1, «Granini bottle (Granini Flasche)»
Arrêt du 24/11/2004, T-393/02, «Forme d’un flacon blanc et transparent»
Le Tribunal a estimé que la bouteille ci-dessus était inhabituelle et propre à distinguer les produits en cause, à savoir produits de lavage et conteneurs en matières plastiques
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pour produits liquides, de ceux ayant une autre origine commerciale (point 47). Le Tribunal a souligné trois caractéristiques du récipient. Tout d’abord, le récipient en question est particulièrement anguleux et les angles, les arêtes et les surfaces le font ressembler à un cristal. Ensuite, le récipient donne une impression monolithique étant donné que le bouchon du récipient est intégré dans l’image d’ensemble. Enfin, le récipient est particulièrement plat, ce qui lui confère une apparence particulière et inhabituelle (point 40).
2.2.13 Marques de motif
Une marque figurative peut être considérée comme une marque de «motif» lorsqu’elle se compose d’une série d’éléments qui se répètent régulièrement.
Les marques de motif peuvent couvrir tous types de produits et services. Toutefois, dans la pratique, elles sont le plus fréquemment déposées en rapport avec des produits tels que du papier, des tissus, des vêtements, des articles de maroquinerie, des bijoux, du papier peint, des meubles, des carrelages, des pneus, des produits de construction, etc., autrement dit des produits qui comportent normalement des motifs. Dans ces cas, le motif n’est rien d’autre que l’apparence extérieure des produits. À cet égard, il convient de signaler que, si les motifs peuvent être représentés sous la forme d’étiquettes carrées/rectangulaires, ils doivent toutefois être examinés comme s’ils couvraient toute la surface des produits revendiqués.
Il faut également tenir compte du fait que lorsqu’une marque de motif revendique des produits tels que des boissons ou des substances liquides en général, autrement dit, des produits qui sont normalement distribués et vendus dans des récipients, l’examen du motif doit considérer que ce dernier couvre la surface extérieure du récipient/emballage lui-même.
Il s’ensuit que lors de l’appréciation du caractère distinctif de motifs, l’examinateur doit, en règle générale, utiliser les mêmes critères que ceux des marques tridimensionnelles correspondantes qui consistent en une représentation de l’apparence du produit lui- même (voir arrêt du 19/09/2012, T-329/10, «Motif à carreaux noir, gris, beige et rouge foncé»).
Concernant les services, les examinateurs doivent garder à l’esprit que les marques de motif seront utilisées en pratique sur des en-têtes et de la correspondance, des factures, des sites internet, des publicités, des enseignes de magasin, etc.
En principe, si un motif est ordinaire, traditionnel et/ou typique, il est dépourvu de caractère distinctif. Par ailleurs, les motifs qui consistent en des dessins de base/simples sont généralement dépourvus de caractère distinctif. La raison du refus est que ces motifs ne transmettent aucun «message» qui pourrait rendre le signe facilement mémorisable pour les consommateurs. Paradoxalement, cela vaut également pour les motifs constitués de dessins extraordinairement complexes. Dans ces cas, la complexité globale du motif ne permet pas de retenir des détails particuliers de ce motif (voir arrêt du 09/10/2002, T-36/01, «Surface d’une plaque de verre», point 28). En effet, dans de nombreux cas, le public ciblé percevra les motifs comme des éléments purement décoratifs.
À cet égard, il faut tenir compte du fait qu’en général, le consommateur moyen a tendance à ne pas analyser les choses. Une marque doit donc permettre au consommateur moyen des produits/services en cause, normalement informé et raisonnablement attentif et avisé, sans procéder à une analyse ou à une comparaison
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et sans faire preuve d’une attention particulière, de distinguer le produit concerné de ceux d’autres entreprises (voir arrêt du 12/02/2004, C-218/01, «Bouteille de Perwoll», point 53, et arrêt du 12/01/2006, C-173/04, «Sachets tenant debout», point 29).
Le fait que le motif peut également avoir d’autres fonctions et/ou effets est un argument supplémentaire pour conclure qu’il est dépourvu de caractère distinctif. Par contre, si un motif est fantaisiste, inhabituel et/ou arbitraire, s’il diverge de la norme ou des habitudes du secteur ou s’il est, de manière plus générale, apte à être facilement mémorisé par les consommateurs ciblés, il mérite généralement de bénéficier d’une protection en qualité de marque communautaire.
Comme le démontrent les éléments ci-dessus, le caractère distinctif des marques de motif doit généralement être apprécié par rapport à des produits. Cependant, une marque de motif considérée comme dépourvue de caractère distinctif pour les produits qu’elle désigne doit également être considérée comme dépourvue de caractère distinctif pour les services étroitement liés à ces produits. Par exemple, un motif de couture qui est dépourvu de caractère distinctif pour des articles d’habillement et des articles de maroquinerie doit être considéré comme également dépourvu de caractère distinctif pour les services de vente au détail concernant ces produits (voir par analogie la décision du 29/07/2010, R 868/2009-4, «A device of a pocket (fig. mark)»). Les mêmes considérations s’appliqueraient également, dans le cas d’un motif de tissu, pour des services tels que la fabrication de tissus.
Vous trouverez ci-après une liste non exhaustive d’exemples de marques de motif.
Signe Argumentation Affaire
MC nº 8 423 841, déposée comme marque figurative pour des produits relevant des classes 18, 24 et 25
Les critères applicables aux marques tridimensionnelles qui consistent en une représentation de l’apparence du produit lui- même le sont également aux marques figuratives correspondantes. En général, une marque consistant en un motif décoratif simple et courant est considérée comme dépourvue de tout élément susceptible d’attirer l’attention des consommateurs, et ne suffit pas à indiquer la provenance ou l’origine des produits ou services. Le motif ci-contre était un motif textile, et partant, était considéré comme couvrant l’apparence des produits eux-mêmes, étant donné que la marque était demandée pour des produits relevant des classes 18, 24 et 25.
Arrêt du 19/09/2012, T-326/10, «Motif à
carreaux gris clair, gris foncé, beige, rouge
foncé et brun», points 47 et 48
MC nº 8 423 501, déposée comme marque figurative pour des produits relevant des classes 18, 24 et 25
Dans cette affaire, à l’instar de l’affaire précédente, le Tribunal a confirmé le refus de la marque.
Arrêt du 19/09/2012, T-329/10, «Motif à carreaux noir, gris,
beige et rouge foncé»
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Signe Argumentation Affaire
MC nº 5 066 535, déposée comme marque figurative pour des produits relevant
de la classe 12
Lorsque la marque consiste en une représentation stylisée des produits ou services, le consommateur pertinent percevra à première vue la simple représentation d’une partie spécifique du produit ou de l’ensemble de celui-ci. Dans cette affaire portant sur une demande concernant des pneus, le consommateur pertinent percevrait la marque comme une simple représentation des rainures d’un pneu, et non comme une indication de la provenance ou de l’origine. Le motif est ordinaire et la marque ne peut remplir sa fonction d’indication d’origine.
MC nº 5 066 535 déposée en tant que
marque figurative pour des produits relevant
de la classe 12 (pneus)
MC nº 9 526 261, déposée comme marque figurative
La marque a été rejetée pour les classes 18 et 25. Elle a été acceptée pour la classe 16. Bien que le signe soit décrit comme une «série de lettres V stylisées», il sera plus probablement perçu par le public pertinent comme une série de coutures en zigzag ou comme un ensemble de formes géométriques de losange. En tout état de cause, le motif est assez simple et ordinaire et, partant, dépourvu de tout caractère distinctif.
MC nº 9 526 261, déposée comme marque figurative
(série de lettres «V» stylisées), pour des
produits relevant des classes 16, 18 et 25.
MC nº 9 589 219, déposée comme marque figurative pour des produits relevant
de la classe 9
Le signe, demandé pour des «plaques à plusieurs cupules qui peuvent être utilisées dans l’analyse chimique ou biologique utilisant l’électrochimioluminescence pour la recherche médicale, scientifique ou en laboratoire», a été refusé car il n’indique pas l’origine. La demande décrit la marque comme correspondant à un motif figurant en dessous des produits, et l’examinateur a eu raison de déclarer que, vu l’absence d’élément capable d’attirer l’attention du consommateur, ce dernier ne pourra le percevoir autrement que comme une simple décoration des produits.
Décision du 09/10/2012,
R 412/2012-2, «DEVICE OF FOUR
IDENTICALLY SIZED CIRCLES (FIG.
MARK)»
MC nº 6 900 898, pour des produits relevant des
classes 18 et 25
La marque ci-contre a été refusée car, dans le secteur de la mode, des motifs cousus sur des poches sont courants, et ce motif particulier ne comporte aucun élément capable d’attirer l’attention du consommateur ou de s’imprimer dans sa mémoire, susceptible de lui conférer un degré minimal de caractère distinctif pour permettre au consommateur de le percevoir autrement que comme une simple décoration.
Arrêt du 28/09/2010, T-388/09, points 19-27
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Signe Argumentation Affaire
MC nº 3 183 068, déposée comme marque figurative pour des produits relevant
des classes 19 et 21
La marque, qui devait être appliquée sur des surfaces en verre, a été refusée en vertu de l’article 7, paragraphe 1, point b), du RMC, au motif que le public pertinent n’a pas l’habitude de percevoir des motifs appliqués à des surfaces en verre comme une indication de l’origine commerciale du produit et que le signe est reconnaissable comme un élément fonctionnel propre à rendre le verre opaque. En outre, les caractères complexe et fantaisiste du motif ne suffisent pas pour établir son caractère distinctif, apparaissant plutôt comme étant dus à une finition esthétique ou décorative, et ils ne permettent ni de retenir des détails particuliers de ce motif, ni de l’appréhender sans percevoir en même temps les caractéristiques intrinsèques du produit.
Arrêt du 09/10/2002, T-36/01, «Surface d’une plaque de
verre», points 26-28
MC nº 10 144 848, déposée comme marque figurative pour des produits relevant des classes 3, 5, 6, 10, 11,
12, 16, 18, 20 et 21
La marque a été refusée au motif qu’elle est constituée d’éléments très simples et qu’il s’agit d’un signe de base et ordinaire dans son ensemble. Pour les produits revendiqués, comme des chiffons de nettoyage et des lingettes antiseptiques, le signe demandé peut représenter leur apparence au sens que le tissu utilisé peut présenter cette structure. Le signe consiste simplement en une répétition de carrés identiques qui ne présente aucun élément ou aucune variation notable, en particulier en termes de caractère fantaisiste ou concernant la manière dont ses éléments sont combinés, qui le distinguerait de la représentation habituelle d’un autre motif régulier composé d’un nombre différent de carrés. Ni la forme de chaque carré individuel ni la manière dont ils sont combinés ne sont des éléments immédiatement perceptibles qui peuvent attirer l’attention du consommateur moyen et le conduire à percevoir le signe comme un signe distinctif.
Décision du 14/11/2012,
R 2600/2011-1, «DEVICE OF A
BLACK AND WHITE PATTERN (FIG.
MARK)»
2.2.14 Marques de position
Les demandes de marques de position visent à protéger un signe qui consiste en des éléments (figuratifs, de couleur, etc.) positionnés sur une partie précise d’un produit et dans une proportion particulière par rapport à la taille du produit. La représentation de la marque demandée doit s’accompagner d’une description indiquant la nature exacte du droit visé.
Les facteurs à prendre en considération lors de l’examen de marques tridimensionnelles sont également pertinents pour les marques de position. En particulier, l’examinateur doit apprécier si le consommateur pertinent sera en mesure d’identifier un signe qui est différent de l’apparence normale des produits eux-mêmes. Une autre considération pertinente pour les marques de position consiste à déterminer si la position de la marque sur les produits est susceptible d’être perçue faisant partie du contexte de la marque.
Il convient de signaler que, même s’il est admis que le public pertinent peut être attentif aux différents détails esthétiques d’un produit, cela n’implique pas forcément qu’il les percevra comme une marque. Dans certains contextes, et vu les normes et habitudes
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de certains secteurs, une marque de position peut attirer l’attention comme un élément indépendant qui peut être distingué du produit lui-même et qui communique ainsi un message de marque.
Exemples d’évaluation de marques de position:
Signe Argumentation Affaire
Dans cette affaire, le Tribunal a maintenu une objection sur la base de l’article 7, paragraphe 1, point b), du RMC. La description de la marque précisait que «la marque consiste en la position de champs circulaire et rectangulaire sur le cadran d’une montre». Le Tribunal a estimé que la marque n’était pas indépendante ou ne pouvait pas se distinguer de la forme ou du dessin du produit lui-même, et que les éléments positionnés ne se différenciaient pas substantiellement d’autres dessins présents sur le marché.
Arrêt du 14/09/2009, T-152/07, «Champs géométriques sur le
cadran d’une montre»
Dans cette affaire concernant un article de bonneterie chaussante consistant en une bande orange couvrant la zone des orteils, le Tribunal a estimé que rien n’indiquait que la coloration de cette partie du produit serait normalement perçue comme ayant un caractère de marque. Au contraire, il a estimé que cette caractéristique serait susceptible d’être perçue comme un élément décoratif relevant des normes et des habitudes du secteur. L’objection sur la base de l’article 7, paragraphe 1, point b), du RMC a donc été maintenue.
Arrêt du 15/06/2010, T-547/08, «Coloration
orange de la pointe d’une chaussette»
Les boutons sont des éléments décoratifs communs d’animaux en peluche. Un bouton est une forme géométrique simple qui ne s’écarte pas de la norme ou des habitudes du secteur. Il n’est pas rare de fixer des insignes, boucles, rubans, anneaux ou broderies aux oreilles d’animaux en peluche. Le public pertinent percevra donc les deux signes demandés comme des éléments décoratifs et non comme une indication d’origine commerciale.
Arrêts du 16/01/2014 T-433/12 et T-434/12
2.3 Caractère descriptif [article 7, paragraphe 1, point c), du RMC]
2.3.1 Remarques générales
2.3.1.1 La notion de caractère descriptif
Un signe doit être refusé au motif qu’il est descriptif s’il a une signification qui est immédiatement perçue par le public pertinent comme fournissant des informations sur les produits et services demandés. C’est le cas lorsque le signe fournit des informations sur, entre autres, la quantité, la qualité, les caractéristiques, la destination, l’espèce et/ou la taille des produits ou services. Le rapport entre le signe et les produits et services doit être suffisamment direct et concret (voir arrêt du 20/07/2004, T-311/02, «LIMO», point 30; arrêt du 30/11/2004, T-173/03, «NURSERYROOM», point 20), et compris sans autre réflexion (voir arrêt du 26/10/2000, T-345/99, «TRUSTEDLINK», point 35). Si une marque est descriptive, elle est également non distinctive.
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L’article 7, paragraphe 1, point c), du RMC ne s’applique pas aux termes qui ne font que suggérer certaines caractéristiques des produits et/ou services ou qui n’y font qu’allusion. Ces termes sont parfois également considérés comme des références vagues ou indirectes aux produits et/ou services (voir arrêt du 31/01/2001, T-135/99, «CINE ACTION», point 29).
L’intérêt général sous-jacent à l’article 7, paragraphe 1, point c), du RMC est d’empêcher la création de droits exclusifs sur des termes purement descriptifs que d’autres commerçants pourraient souhaiter utiliser également. Toutefois, il n’est pas nécessaire que l’examinateur démontre l’existence d’une utilisation descriptive par le demandeur ou ses concurrents. En conséquence, le nombre de concurrents qui pourraient être affectés est totalement dénué de pertinence. Dès lors, si un terme est descriptif dans sa signification ordinaire et évidente, il est impossible de surmonter ce motif de refus en démontrant que le demandeur est le seul à produire, ou à être capable de produire, les produits en question.
2.3.1.2 Le critère de référence
Le critère de référence est la compréhension ordinaire du terme en cause par le public pertinent. Il peut être confirmé par des définitions tirées de dictionnaires, par des exemples d’utilisation descriptive du terme trouvés sur des sites internet, ou résulter de manière évidente de la compréhension ordinaire du terme.
Il n’est pas nécessaire, pour refuser une marque à l’enregistrement, que l’examinateur prouve que le terme fait l’objet d’entrées dans des dictionnaires. En particulier lorsqu’il s’agit d’un terme composé, les dictionnaires ne mentionnent pas toutes les combinaisons possibles. Ce qui importe est sa signification ordinaire et évidente. En outre, les termes qui sont utilisés dans une terminologie spécialisée pour désigner les caractéristiques pertinentes des produits et services sont à considérer comme descriptifs. Dans de tels cas, il n’est pas requis de prouver que la signification du terme est immédiatement apparente pour les consommateurs auxquels s’adressent les produits et services. Il suffit que le terme soit destiné à être utilisé, ou puisse être compris par une partir du public pertinent, comme une description des produits ou services revendiqués, ou comme une caractéristique des produits et services (voir arrêt du 17/09/2008, T-226/07, «PRANAHAUS», point 36).
En ce qui concerne le critère de référence les principes suivants s’appliquent au regard de l’utilisation dans la langue et dans les dictionnaires:
le signe doit être refusé lorsqu’il est descriptif dans l’une des langues officielles de l’Union européenne, quelle que soit la taille ou la population du pays concerné;
des vérifications linguistiques systématiques ne sont effectuées que dans les langues officielles de l’Union européenne. Toutefois, si des preuves convaincantes démontrent qu’un terme donné a une signification dans une langue autre que les langues officielles de l’Union et qu’il est compris par une grande partie du public pertinent dans au moins une partie de l’Union européenne, ce terme doit également être refusé en vertu de l’article 7, paragraphe 2, du RMC (voir arrêt du 13/09/2012, T-72/11, «Espetec», points 35- 36).
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Par exemple, le terme «hellim» est la traduction turque du mot «halloumi», qui est un fromage. Étant donné que le turc est une langue officielle à Chypre, c’est une langue qui est comprise et parlée par une partie de la population chypriote et, partant, le consommateur chypriote moyen peut comprendre que «hellim» est un terme descriptif pour le fromage (voir arrêt du 13/06/2012, T-534/10, «HELLIM/HALLOUMI»).
Les éléments de preuve peuvent provenir des connaissances individuelles de l’examinateur, d’observations de tiers ou de la documentation reprise dans des demandes d’annulation.
Une recherche sur l’internet constitue également un moyen valable de démontrer une signification descriptive, notamment lorsqu’il s’agit de nouveaux termes, de jargon technique ou de termes argotiques, mais il importe alors d’examiner soigneusement les éléments de preuve afin de déterminer si le terme est effectivement utilisé de manière descriptive. En effet, sur internet, la différence entre un usage descriptif et un usage de marque est souvent floue, et internet comporte en outre une grande quantité d’informations ou d’affirmations non structurées et non vérifiées.
L’objection doit clairement mentionner de quelle(s) langue(s) il s’agit, ce qui permettra l’application du motif de refus au moins pour l’État membre où cette langue est la langue officielle ou l’une des langues officielles, et exclut la transformation pour cet État membre (voir règle 45, point 4, du REMC).
L’article 7, paragraphe 1, point c), s’applique également aux translittérations. En particulier, les translittérations en caractères latins de mots grecs doivent être assimilées, aux fins de l’examen des motifs absolus de refus, aux mots écrits en caractères grecs, et inversement (voir arrêt du 16/12/2010, T-281/09, «Chroma», point 34), car les consommateurs d’expression grecque connaissent l’alphabet latin. Cela vaut également pour l’alphabet cyrillique, utilisé dans l’UE par les Bulgares, qui connaissent également les caractères latins.
2.3.1.3 Caractéristiques mentionnées à l’article 7, paragraphe 1, point c), du RMC
L’espèce des produits et services
Cela inclut les produits ou services eux-mêmes, c’est-à-dire leur type ou leur nature, par exemple, «banque» pour désigner des services financiers, «perlé» pour désigner des vins et des vins mousseux (voir arrêt du 01/02/2013, T-104/11, «Perle’») ou «Universaltelefonbuch» pour désigner un annuaire téléphonique universel (voir arrêt du 14/06/2001, affaires jointes T-357/99 et T-358/99, «Universaltelefonbuch»), ou les éléments constitutifs ou composants des produits (voir arrêt du 15/01/2013, T-625/11, «ecoDoor», point 26).
La qualité
Cela inclut aussi bien les termes élogieux, qu’ils fassent référence à la qualité supérieure des produits ou à la qualité inhérente des produits. Cela concerne des termes tels que «light», «extra», «fresh», «hyper light» utilisés pour désigner des produits qui peuvent être extrêmement légers (voir la décision du 27/06/2001, R 1215/003, «HYPERLITE»). En outre, des chiffres peuvent faire référence à la qualité d’un produit, comme «2000» pour la taille du moteur ou «75» pour sa puissance (en CV) du moteur.
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La quantité
Cela comprend les indications de la quantité dans laquelle les produits sont habituellement vendus, par exemple, «paquet de six» pour des bières, «un litre» pour des boissons, «100» (grammes) pour des barres de chocolat. Seules comptent les mesures de quantité pertinentes dans le commerce et non les mesures hypothétiquement possibles. Par exemple, «99.999» pour les bananes serait acceptable.
La destination
La destination est la fonction d’un produit ou d’un service, le résultat attendu de son utilisation ou, de manière plus générale, l’utilisation à laquelle le produit ou service est destiné, par exemple, «TRUSTEDLINK» pour des produits et services dans le secteur des TI visant à assurer une liaison sûre (de confiance) (voir arrêt du 26/10/2000, T-345/99, «Trustedlink»). Ont été refusées à l’enregistrement sur cette base les marques suivantes, entre autres: «THERAPY» pour des instruments de massage (voir la décision du 08/09/1999, R 144/99-3, «THERAPY») et «SLIM BELLY» pour des appareils de fitness, des activités sportives, des services médicaux et de soins de beauté (voir arrêt du 30/04/2013, T-61/12, «Slim Belly»). Cette objection s’applique également à des accessoires: un terme descriptif du type de produits décrit également la destination des accessoires de ces produits. Dès lors, la marque «New Born Baby» est contestable pour des accessoires pour poupées, de même que «Rockbass» pour des accessoires de guitares électriques (voir arrêt du 08/06/2005, T-315/03, «Rockbass» [recours C-301/05 P, tranché]).
La valeur
Cela comprend autant le prix (élevé ou bas) à payer que la valeur en termes de qualité. Cela concerne donc non seulement des termes comme «extra» ou «top», mais aussi des expressions telles que «cheap» ou «more for your money». Cela concerne également les termes indiquant, dans le langage courant, des produits supérieurs en qualité.
La provenance géographique
Voir le point 2.3.2.6 ci-dessous, sous Appréciation des termes géographiques.
L’époque de la production du produit ou de la prestation du service
Cela concerne des expressions indiquant le moment où les services sont fournis, soit expressément («evening news», «24 hours»), soit de manière usuelle («24/7»). Cela concerne également les signes indiquant le moment de production des produits, à condition que cette information revête une importance par rapport aux produits (ex.: vendange tardive, pour du vin). Le chiffre «1998» indiquant le millésime de production serait pertinent pour du vin, mais pas pour du chocolat.
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Autres caractéristiques
Cet élément couvre d’autres caractéristiques des produits ou services et montre que la liste d’éléments figurant à l’article 7, paragraphe 1, point c), du RMC n’est pas exhaustive. En principe, toute caractéristique des produits et services doit conduire à un refus en vertu de l’article 7, paragraphe 1, point c), du RMC. Le fait que les caractéristiques des produits ou services soient essentielles ou simplement accessoires en termes commerciaux ou qu’il existe des synonymes de ces caractéristiques est sans pertinence (voir arrêt du 12/02/2004, C-363/99, «Postkantoor», point 102, et arrêt du 24/04/2012, T-328/11, «EcoPerfect», point 41).
Exemples «d’autres caractéristiques»
L’objet contenu dans les produits ou services revendiqués (voir le point 2.3.2.7 ci- dessous, sous Produits ou services susceptibles de contenir un objet).
L’identification du consommateur ciblé: «children» ou «ellos» (voir arrêt du 27/02/2002, T-219/00, «ELLOS») pour des vêtements.
En outre, un terme peut être contesté en vertu de l’article 7, paragraphe 1, point c), lorsque la caractéristique que désigne le signe implique des appréciations subjectives (par exemple, le mot DELICIEUX pour des aliments) ou demande d’autres précisions.
Comme l’a déclaré l’avocat général Jacobs,
on peut immédiatement penser à bien d’autres exemples de caractéristiques générales, qui nécessiteraient éventuellement une définition. plus précise pour que le consommateur sache avec certitude à quoi on se réfère, mais qui n’en restent pas moins tout à fait clairement des caractéristiques du produit en question. Pour ne prendre qu’un exemple, qualifier un produit de «naturel» revient incontestablement à désigner l’une de ses caractéristiques, tout en laissant le consommateur dans une immense perplexité quant à la nature précise de cette caractéristique, à moins de fournir d’autres détails. En fait, il est relativement difficile de trouver des «indications pouvant servir pour désigner des caractéristiques» qui ne demandent pas d’autres précisions à un certain degré (caractères gras ajoutés).
(Voir, par exemple, les conclusions de l’avocat général Jacobs du 10/04/2003, C-191/01 P, «Doublemint», point 43).
2.3.2 Marques verbales
2.3.2.1 Marque composée d’un seul terme
Les termes descriptifs sont ceux qui consistent simplement en des informations sur les caractéristiques des produits et services. Cela signifie que les termes descriptifs ne peuvent remplir la fonction de marque. En conséquence, le motif de refus est d’application, qu’un terme soit ou non déjà utilisé par des concurrents de manière descriptive par rapport aux produits et services concernés.
En particulier, un mot est descriptif si, dans l’esprit du grand public (si les produits lui sont destinés) ou du public spécialisé (indépendamment du fait que ces produits puissent également s’adresser au grand public), la marque a une signification descriptive:
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le terme «RESTORE» est descriptif pour des appareils et instruments médicaux et chirurgicaux; stents; cathéters; guides d’insertion (voir arrêt du 17/01/2013, C-21/12 P, «Restore»);
«CONTINENTAL» est descriptif pour des «animaux vivants, à savoir chiens» et «garde et élevage de chiens, à savoir chiots et animaux d’élevage». En effet, le mot «Continental» désigne une race de bouledogues (voir arrêt du 17/04/2013, T-383/10, «Continental»).
En outre, comme indiqué précédemment, des objections doivent également être soulevées à l’encontre de termes qui décrivent des caractéristiques souhaitables des produits et services.
Toutefois, il importe de distinguer les termes élogieux qui décrivent, bien qu’en termes généraux, des caractéristiques souhaitables des produits et services (bon marché, pratique, de haute qualité, etc.), dont l’enregistrement est exclu, des termes élogieux au sens plus général, qui ne font pas spécifiquement référence aux produits et services eux-mêmes mais plutôt à des connotations positives vagues, à l’acheteur ou au fabricant des produits.
Marque non descriptive:
«Bravo», car on ne sait pas clairement qui dit «bravo» à qui, ni ce dont on fait l’éloge (voir arrêt du 04/10/2001, C-517/99).
2.3.2.2 Combinaisons de mots
En règle générale, la simple combinaison d’éléments dont chacun est descriptif de caractéristiques des produits ou des services eux-mêmes reste descriptive desdites caractéristiques. Le simple fait d’accoler de tels éléments sans y apporter de modification inhabituelle, notamment d’ordre syntaxique ou sémantique, ne peut produire qu’un signe descriptif. Toutefois, si, en raison du caractère inhabituel de la combinaison par rapport auxdits produits ou services, la combinaison crée une impression suffisamment éloignée de celle produite par la simple réunion des indications apportées par les éléments qui la composent, cette combinaison sera considérée comme primant sur la somme desdits éléments (voir arrêt du 12/02/2004, C-265/00, «BIOMILD», points 39 et 43). Les notions de «caractère inhabituel de la combinaison», d’«impression suffisamment éloignée» et de «prime sur la somme desdits éléments» doivent être interprétées comme signifiant que l’article 7, paragraphe 1, point c), du RMC ne s’applique pas lorsque la façon dont les deux éléments descriptifs sont combinés est en elle-même fantaisiste.
L’enregistrement a été refusé dans les affaires suivantes:
«BIOMILD» pour du yaourt qui est doux et biologique (voir arrêt du 12/02/2004, C-265/00);
«Companyline» pour des services relatifs aux assurances et aux affaires financières (voir arrêt du 19/09/2002, C-104/00 P);
«TRUSTEDLINK» pour des logiciels pour le commerce électronique, services de conseils aux entreprises, services d’intégration de logiciels et services de
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formation aux technologies et services de commerce électronique (voir arrêt du 26/10/2000, T-345/99);
«CINE COMEDY» pour la diffusion de programmes de radio et de télévision, la production, la projection et la location de films, et pour la cession, la transmission, la location et toute autre exploitation de droits sur des films (voir arrêt du 31/01/2001, T-136/99);
«TELE AID» pour des dispositifs électroniques pour la transmission vocale ou de données, services de réparation pour automobiles et dépannage, gestion d’un réseau de communications, services de remorquage et services d’un centre de calcul doté d’un système de localisation de véhicules (voir arrêt du 20/03/2002, T-355/00);
«QUICK-GRIP» pour des outils à main, colliers de serrage et leurs pièces (voir l’ordonnance du 27/05/2004, T-61/03);
«TWIST & POUR» pour des conteneurs en plastique à poignée, vendus en tant qu’éléments constitutifs d’un procédé de stockage et de versement de la peinture liquide (voir arrêt du 12/06/2007, T-190/05)
«CLEARWIFI» pour des services de télécommunication, à savoir fourniture d’accès haut débit à des réseaux informatiques et de communication (voir arrêt du 19/11/2009, T-399/08)
«STEAM GLIDE» pour des fers à repasser électriques, fers à repasser électriques plats, fers à repasser électriques pour le repassage de vêtements, pièces et accessoires pour tous les produits précités (voir arrêt du 16/01/2013, T-544/11).
«GREEN CARBON» pour du caoutchouc régénéré, à savoir matières carbonées recyclées, en l’occurrence matières remplies de caoutchouc, matières plastiques ou élastomères provenant de résidus carbonés issus de la pyrolyse et mélanges de caoutchouc, élastomères ou matières plastiques composés de ces matières de remplissage (voir arrêt du 11/04/2013, T-294/10).
De la même manière, les combinaisons du préfixe «EURO» avec des termes purement descriptifs doivent être refusées lorsque l’élément «EURO» renforce le caractère descriptif du signe dans son ensemble ou lorsqu’il existe un rapport raisonnable entre ce terme et les produits ou services concernés. Ce raisonnement est conforme à l’arrêt du 07/06/2001, T-359/99, «EuroHealth».
Le non-respect des règles grammaticales n’empêche pas une combinaison de mots d’être considérée comme une indication descriptive (voir arrêt du 16/12/2008, T-335/07, «Patentconsult», point 22).
Pour les combinaisons composées de substantifs et d’adjectifs, il y a lieu de vérifier si la signification de la combinaison change si ses éléments sont inversés. Par exemple, «Vacations direct» (marque refusée à l’enregistrement, voir la décision du 23/01/2001, R 33/00-3) équivaut à «direct vacations». Par contre, «BestPartner» n’est pas l’équivalent de «PartnerBest».
Le même raisonnement s’applique aux mots consistant en la combinaison d’un adjectif et d’un verbe. En conséquence, le mot «ULTRAPROTECT» doit être considéré comme
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descriptif pour des préparations hygiéniques et de stérilisation, bien qu’il consiste en la combinaison (incorrecte d’un point de vue grammatical) d’un adjectif (ULTRA) et d’un verbe (PROTECT), étant donné que sa signification reste clairement compréhensible (décision du 03/06/2013, R 1595/2012-1).
En outre, il faut également prendre en considération le fait que dans le monde de la publicité, les articles définis et les pronoms (LE, IL, etc.), les conjonctions (OU, ET, etc.) ou les prépositions (DE, POUR, etc.) sont souvent omis. Cela signifie que l’absence de ces éléments grammaticaux peut ne pas suffire pour rendre la marque distinctive.
Enfin, les combinaisons de mots issus de langues différentes peuvent encore être contestées, pour autant que les consommateurs pertinents comprennent les deux termes sans autre effort.
2.3.2.3 Fautes d’orthographe et omissions
Une faute d’orthographe ne change pas forcément le caractère descriptif d’un signe. Tout d’abord, les fautes d’orthographe peuvent découler de l’influence d’une autre langue ou de l’orthographe d’un mot provenant de régions situées en dehors de l’UE, comme l’anglais américain, découler du langage argotique ou être destinées à rendre le mot plus à la mode. Exemples de signes refusés:
«XTRA» (voir la décision du 27/05/1998, R 20/1997-1) «XPERT» (voir la décision du 27/07/1999, R 0230/1998-3) «EASI-CASH» (voir la décision du 20/11/1998, R 96/1998-1) «LITE» (voir arrêt du 27/02/2002, T-79/00) «RELY-ABLE» (voir arrêt du 30/04/2013, T-640/11).
En outre, les consommateurs comprendront, sans autre réflexion, le «@» comme la lettre A ou le «€» comme la lettre E. Les consommateurs anglophones remplaceront certains chiffres par des mots, par exemple «2» par «to», ou «4» par «for».
Par ailleurs, si la faute d’orthographe est fantaisiste et/ou frappante ou modifie le sens du mot (accepté: «MINUTE MAID», MC nº 2 091 262, au lieu de «Minute Made»), le signe est acceptable.
En règle générale, les fautes d’orthographe confèrent au signe un degré suffisant de caractère distinctif:
lorsqu’elles sont frappantes, surprenantes, inhabituelles, arbitraires et/ou;
lorsqu’elles peuvent modifier le sens de l’élément verbal ou lorsqu’elles requièrent que le consommateur déploie un effort intellectuel afin d’établir un lien immédiat et direct avec le terme auquel elles sont supposées faire référence.
Les marques suivantes ont été refusées.
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Signe Argumentation Affaire
ACTIVMOTION SENSOR
MC nº 10 282 614 pour des produits relevant de la
classe 7 (équipements pour le
nettoyage de piscines et de bains à remous, à savoir
balais, aspirateurs, et leurs pièces)
La marque se compose simplement de «ACTIV’», une orthographe clairement erronée du mot «ACTIVE», de «MOTION» et de «SENSOR». Combinés, les mots forment une combinaison qui est parfaitement compréhensible et simplement descriptive, et qui a donc été refusée.
Décision du 06/08/2012,
R 716/2012-4, «ACTIVMOTION
SENSOR», paragraphe 11
XTRAORDINARIO
Enregistrement international désignant l’UE nº 930 778, pour des produits relevant
de la classe 33 (tequila)
Le vocable ci-contre est un mot qui n’existe pas mais qui ressemble fortement à l’adjectif espagnol «extraordinario». Les consommateurs espagnols et portugais percevront le signe comme un mot mal orthographié signifiant «remarquable», «spécial», «formidable», «superbe» ou «merveilleux», ce qui, en soi, confère un caractère descriptif au signe.
Décision du 08/03/2012,
R 2297/2011-5, «Xtraordinario»,
paragraphes 11-12
Par contre, les marques suivantes ont été acceptées:
Signe Argumentation Affaire
LINQ
MC nº 1 419 415 pour des produits et services relevant
des classes 9 et 38
Ce mot est inventé, il n’existe dans aucun dictionnaire connu et il n’a pas été démontré qu’il s’agit d’une faute d’orthographe communément utilisée dans les cercles commerciaux qui présentent un intérêt pour le requérant. En outre, vu que le mot est court, la lettre finale Q sera remarquée comme un élément particulier, et l’orthographe fantaisiste est donc claire.
Décision du 04/02/2002, R 9/2001-
1, «LINQ», paragraphe 13
LIQID
MC nº 5 330 832, à l’origine, pour des produits relevant
des classes 3, 5 et 32
Dans cette marque verbale, la combinaison «QI» est très inhabituelle en anglais, étant donné que la lettre «Q» est normalement suivie d’un «U». La faute d’orthographe frappante que comporte le mot anglais «liquid» permettrait même à un consommateur pressé de remarquer la particularité du mot «LIQID». En outre, l’orthographe aurait un effet non seulement sur l’impression visuelle produite par le signe, mais également sur l’impression phonétique, étant donné que le signe demandé sera prononcé différemment du mot anglais «liquid».
Décision du 22/02/2008,
R 1769/2007-2, «LIQID»,
paragraphe 25
2.3.2.4 Abréviations et acronymes
Les abréviations de termes descriptifs ne sont descriptives en elles-mêmes que si elles ont été utilisées de cette manière et si le public pertinent (grand public ou public spécialisé) les reconnaît comme étant identiques à leur signification descriptive complète. Le simple fait qu’une abréviation soit dérivée d’un terme descriptif n’est pas suffisant.
Les signes suivants ont été refusés parce que leur signification descriptive pour le public pertinent pouvait être clairement démontrée:
SnTEM (voir arrêt du 12/01/2005, T-367/02 à T-369/02), TDI [voir arrêt du 03/12/2003, T-16/02 (recours C-82/04 P, tranché)] LIMO (voir arrêt du 20/07/2004, T-311/02)
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BioID (voir arrêt du 05/12/2002, T-91/01 (le recours C-37/03 P a rejeté l’arrêt du Tribunal et la décision de la 2e chambre de recours).
Il convient de souligner que les banques de données publiées sur internet, par exemple «Acronym Finder», sont à exploiter avec la plus grande prudence en tant que base de référence. Il est préférable de consulter des ouvrages de référence techniques ou la littérature scientifique, par exemple dans le domaine de l’informatique. Par ailleurs, l’utilisation d’une abréviation par plusieurs opérateurs dans le domaine concerné sur internet suffit à confirmer l’usage de l’abréviation dans la pratique.
Les signes consistant en un acronyme non descriptif en lui-même qui précède ou suit une combinaison de mots descriptive doivent être contestés au motif qu’ils sont descriptifs s’ils sont perçus par le public pertinent comme un simple mot combiné à une abréviation de cette combinaison de mots, par exemple «Multi Markets Fund MMF». La raison est que l’acronyme et la combinaison de mots, considérés ensemble, sont destinés à s’expliciter réciproquement et à attirer l’attention sur le fait qu’ils sont liés (voir arrêt du 15/03/2012, C-90/11 et C-91/11, «Natur-Aktien-Index / Multi Markets Fund», points 32 et 40). Cela vaut même lorsque l’acronyme ne reflète pas les simples «accessoires» de la combinaison de mots, tels que les articles, prépositions ou signes de ponctuation, comme le montrent les exemples suivants:
«NAI - Der Natur-Aktien-Index» «The Statistical Analysis Corporation – SAC»
Si la règle précitée s’applique à la plupart des cas, tous les cas de juxtaposition d’une combinaison de mots descriptive et d’une abréviation de ces mots ne seront pas considérés comme descriptifs dans leur ensemble. Ce sera le cas lorsque le public pertinent ne percevra pas immédiatement l’acronyme comme une abréviation de la combinaison de mots descriptive, mais plutôt comme un élément distinctif qui fera que le signe dans son ensemble prime sur la somme de ses éléments individuels, comme le démontre l’exemple suivant:
«The Organic Red Tomato Soup Company – ORTS».
2.3.2.5 Slogans
Un slogan est contestable en vertu de l’article 7, paragraphe 1, point c), du RMC lorsqu’il transmet immédiatement l’espèce, la qualité, la destination ou d’autres caractéristiques des produits ou services.
Les critères établis par la jurisprudence afin de déterminer si un slogan est descriptif ou non sont identiques à ceux appliqués dans le cas d’un signe verbal composé d’un seul élément (voir arrêt du 06/11/2007, T-28/06, «VOM URSPRUNG HER VOLLKOMMEN», point 21). Il est inapproprié d’appliquer aux slogans des critères plus stricts que ceux applicables à d’autres types de signes, en particulier compte tenu du fait que le terme «slogan» ne se réfère pas à une sous-catégorie spéciale de signes (voir arrêt du 12/07/2012, C-311/11 P, «WIR MACHEN DAS BESONDERE EINFACH», points 26 et 40).
Exemple de slogan descriptif
Une demande portant sur des produits relevant de la classe 9 (systèmes de navigation par satellite, etc.) pour «FIND YOUR WAY», (voir la décision du 18/07/2007, R 1184/2006-4) a été contestée en vertu de l’article 7, paragraphe 1,
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points b) et c), du RMC. L’expression «Find your way» par rapport aux produits revendiqués dans la classe 9 vise clairement à informer le consommateur pertinent que les produits du requérant aident les consommateurs à identifier des lieux géographiques afin de trouver leur chemin. Le message transmis par le signe demandé se réfère directement au fait que les consommateurs trouveront l’itinéraire pour se déplacer d’un endroit à un autre en utilisant les produits spécifiés.
«BUILT TO RESIST» ne peut avoir qu’une seule signification possible pour le papier, les produits en papier et les articles de bureau relevant de la classe 16, le cuir, les imitations de cuir, les articles de voyage non compris dans d’autres classes et la sellerie relevant de la classe 18 ainsi que les vêtements, les chaussures et la chapellerie relevant de la classe 25, à savoir que les produits sont faits pour durer et qu’ils sont alors solides et résistent à l’usure (voir arrêt du 16/09/2009, T-80/07, «BUILT TO RESIST», points 27 et 28).
2.3.2.6 Termes géographiques
Par terme géographique, il faut entendre tout nom existant d’un lieu, par exemple d’un pays, d’une région, d’une ville, d’un lac ou d’un cours d’eau (cette liste n’est pas exhaustive). Les formes adjectivales ne constituent pas, pour le public pertinent, un écart perceptible suffisant pour lui permettre de penser que le signe renvoie à une référence autre que le nom géographique (voir arrêt du 15/10/2003, T-295/01, «OLDENBURGER», point 39). Par exemple, «German» sera encore perçu comme une référence à l’Allemagne, et «French», à la France. Par ailleurs, des termes désuets comme «Ceylon», «Bombay» et «Burma» entrent dans cette catégorie s’ils sont toujours communément utilisés ou généralement compris par les consommateurs comme une indication d’origine.
Dans ce point, la notion de «terme géographique» recouvre toute indication géographique dans une demande de marque communautaire, tandis que les expressions «indication géographique protégée», «appellation protégée» ou «appellation d’origine» sont utilisées uniquement dans le cadre d’une législation propre à leur protection.
Si le signe contient d’autres éléments non descriptifs ou distinctifs, le caractère enregistrable de la combinaison (du signe dans son ensemble) doit être évalué de la même manière que dans les cas où des éléments descriptifs sont associés à des éléments distinctifs ou non descriptifs (voir ci-dessous le point 2.3.4 Seuil figuratif).
Les appellations d’origine et indications géographiques protégées par des règlements spécifiques de l’Union européenne sont couvertes par la section de l’Article 7, paragraphe 1, points j et k.
Appréciation des termes géographiques
Comme pour tous les autres termes descriptifs, il y a lieu d’évaluer si le terme géographique décrit des caractéristiques objectives des produits et services. Cet examen doit être effectué par rapport aux produits et services revendiqués et à la perception du public pertinent. Le caractère descriptif du terme géographique peut avoir trait:
au lieu de fabrication des produits;
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à l’objet d’un produit (par exemple, la ville ou la région traitée par un guide de voyage);
au lieu où sont fournis les services; au type de cuisine (pour les restaurants).
La première étape de l’appréciation du terme géographique consiste à déterminer si le terme est compris comme tel par le public pertinent. Dans la plupart des cas, cette compréhension sera établie en tenant compte d’un consommateur normalement informé ayant une culture générale suffisante sans être spécialiste en géographie.
La deuxième étape consiste à déterminer si le terme géographique demandé désigne un lieu qui présente actuellement, aux yeux du public pertinent, un lien avec les produits ou services revendiqués, ou si un lien sera raisonnablement établi dans l’avenir (voir arrêt du 04/05/1999, affaires jointes C-108/97 et C-109/97, «Chiemsee», point 31). En d’autres termes, le terme géographique ne doit pas être compris comme un terme simplement suggestif ou fantaisiste. Par exemple, le pôle Nord et le mont Blanc sont des termes géographiques couramment connus, mais dans le contexte de crèmes glacées ou de voitures de sport, ces termes ne seraient pas perçus comme étant des lieux de production possibles, mais comme des termes simplement suggestifs ou fantaisistes. Cela vaut également pour l’utilisation de noms de ville à la mode pour désigner des produits et services sans rapport avec le motif pour lequel la ville est connue («Hollywood» pour des gommes à mâcher) ou pour l’utilisation de noms de certains quartiers ou rues commerçantes célèbres («Champs Élysées» pour de l’eau en bouteille, «Manhattan» pour des tomates, «Denver»pour des équipements d’éclairage ou «Port Louis» pour des produits textiles).
En outre, certains termes géographiques peuvent être refusés du simple fait de leur renommée ou réputation étendue pour la qualité élevée des produits ou services concernés. Une appréciation détaillée du lien n’est pas nécessaire dans ce cas (voir arrêt du 15/12/2011, T-377/09, «Passionately Swiss», points 43 à 45). Par exemple, «Milano» devrait être refusé pour des vêtements, «Zurich» pour des services financiers et «Îles Canaries» pour des services touristiques.
Concernant le lien raisonnablement établi dans l’avenir, un refus au titre de l’article 7, paragraphe 1, point c), du RMC ne peut uniquement reposer sur l’argument selon lequel les produits ou services peuvent théoriquement être produits ou fournis dans le lieu désigné par le terme géographique (arrêt du 08/07/2009, T-226/08, «Alaska»).
Au contraire, il convient d’apprécier la connaissance plus ou moins grande qu’a le public pertinent du terme géographique ainsi que des caractéristiques du lieu désigné par celui-ci et de la catégorie de produits ou services concernée (voir arrêt du 04/05/1999, affaires jointes C-108/97 et C-109/97, «Chiemsee», points 32 et 37).
Une telle appréciation doit tenir compte en particulier de l’importance de la provenance géographique des produits en question ainsi que des habitudes commerciales en matière d’utilisation de noms géographiques pour indiquer l’origine des produits ou faire référence à certains critères qualitatifs et objectifs des produits.
Pour les produits agricoles ou les boissons (eau minérale, bière), les termes géographiques servent généralement à faire référence au lieu de production. Toutefois, cela peut ne pas être le cas dans tous les États membres et dépend de la taille du lieu ou de la zone géographique (voir arrêt du 15/10/2003, T-295/01, «OLDENBURGER»). Dans ce paragraphe, les termes géographiques mentionnés ne sont ni des indications géographiques protégées ni des appellations d’origine protégées.
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En ce qui concerne les produits textiles et les produits de soins pour le corps, il est utile d’établir s’il y a réellement production de ces produits et si ce fait est connu à l’échelle nationale ou internationale par le public pertinent. Néanmoins, cette exigence ne doit pas être confondue avec la renommée d’une indication géographique en tant que telle, et ne satisfait pas nécessairement à l’obligation de lien entre le terme géographique et les produits ou services concernés (voir arrêt du 15/10/2008, T-230/06, «PORT LOUIS», points 28 à 35).
En cas de doute, il est recommandé de consulter un ressortissant de l’État membre concerné.
Les principes précités s’appliquent également aux noms de pays.
Enfin, le seul fait qu’un terme géographique soit utilisé par un seul producteur ne suffit pas pour surmonter une objection, même s’il s’agit d’un argument important à prendre en considération dans le cadre de l’appréciation du caractère distinctif acquis.
: 2.3.2.7 Termes décrivant l’objet contenu dans les produits ou services
Lorsqu’un signe est exclusivement composé d’un mot qui décrit ce que peut être l’objet ou le contenu des produits ou services concernés, il doit être contesté en vertu de l’article 7, paragraphe 1, point c), du RMC. Les termes notoires et susceptibles d’être liés à une chose, à une activité ou à un produit particuliers par le public pertinent sont aptes à décrire l’objet.
La question essentielle consiste à savoir si le signe demandé peut être utilisé dans le commerce pour les produits ou services demandés de sorte qu’il soit inévitablement perçu par le public pertinent comme descriptif de l’objet des produits ou services revendiqués, et s’il doit dès lors être maintenu à la disposition d’autres opérateurs.
Par exemple, un nom très connu comme «Vivaldi» créera immédiatement un lien avec le célèbre compositeur, tout comme le terme «skis» par rapport au ski en tant que sport. Si la classe 16 (livres) est un excellent exemple de catégorie de produits qui contient l’objet ou le contenu, une objection formulée dans cette section peut l’être également à l’égard d’autres produits et services, comme les supports de données, les DVD, les CD-ROM ou les services éditoriaux. Aux fins de la présente section, les termes «objet» et «contenu» sont interchangeables.
Les noms de personnes célèbres (en particulier de musiciens ou de compositeurs) peuvent indiquer la catégorie de produits si, du fait de l’usage généralisé, du temps écoulé, de la date du décès ou de la popularisation, de la reconnaissance, d’une performance par de nombreux artistes ou d’une formation musicale, le public peut les percevoir comme génériques. Cela sera le cas, par exemple, pour «Vivaldi», dont la musique est jouée par des orchestres du monde entier, et le signe «Vivaldi» ne sera pas perçu comme indicateur de l’origine de la musique.
Les objections fondées sur les éléments précités:
ne s’appliqueront qu’aux produits (par exemple, livres) ou services (par exemple, éducation) qui contiennent un objet concernant d’autres choses, produits et/ou activités (par exemple, un livre d’histoire ou un cours d’histoire),
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lorsque le signe est exclusivement composé du mot identifiant cet objet (par exemple, «VEHICLES» ou «HISTORY»), et
seront formulées au cas par cas en appréciant de multiples facteurs (voir ci- dessous).
Produits et services qui peuvent contenir un objet
Dans la plupart des cas, les produits ou services qui peuvent consister en ou contenir un objet contestable sont les suivants:
Classe 9: Supports d’enregistrement magnétiques, logiciels, disques acoustiques, publications électroniques (téléchargeables)
○ Contestables:
— STATISTICAL ANALYSIS pour des logiciels — ROCK MUSIC pour CDs
Classe 16: Produits de l’imprimerie, photographies et matériel d’enseignement, pour autant qu’il contienne des produits de l’imprimerie
○ Contestables:
— HISTORY pour des livres; — PARIS pour des guides de voyage; — CAR pour des magazines; — ANIMALS pour des photographies. — TRANSCENDENTAL MEDITATION pour du matériel d’instruction et
d’enseignement.
Classe 28: Jeux de société
o Contestables:
- «MEMORY» (ordonnance de la Cour du 14/03/2011, C-369/10 P)
Classe 35: Salons commerciaux, publicité, services de vente au détail
○ Contestables:
— ELECTRONICA pour des salons commerciaux concernant des produits électroniques (voir arrêt du 05/12/2000, T-32/00, «Electronica», points 42 à 44)
— LIVE CONCERT pour des services publicitaires — CLOTHING pour des services de vente au détail
Classe 38: Télécommunications
○ Contestables:
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— NEWS pour des télécommunications; — MATH pour la fourniture de forums en ligne.
Classe 41: Éducation, formation, divertissement, publications électroniques (non téléchargeables)
○ Contestables:
— GERMAN pour des cours de langue; — HISTORY pour des services d’éducation; — COMEDY pour des programmes télévisés; — TRANSCENDENTAL MEDITATION pour des services d’éducation.
La liste des classes de Nice précitée n’est pas exhaustive, même si elle s’applique à la grande majorité des cas. En conséquence, les objections fondées sur un objet descriptif doivent être soulevées essentiellement dans le cadre des produits et services énumérés ci-dessus.
Si le signe demandé est un terme descriptif d’une caractéristique particulière des produits ou services, une désignation des produits ou services qui exclut cette caractéristique particulière décrite par le signe demandé n’évitera pas une objection fondée sur l’objet, car il est inacceptable qu’un demandeur revendique des produits ou services à la condition qu’ils ne présentent pas une caractéristique particulière (voir arrêt du 12/02/2004, C-363/99, «Postkantoor», points 114 à 116). Les exemples inventés suivants illustrent des désignations de produits ou services qui ne pourraient éviter une objection:
COMEDY pour la télédiffusion, à l’exception des programmes de comédie; PENGUINS (au pluriel !) pour des livres, à l’exception des livres sur les
pingouins; TECHNOLOGY pour des «classes, à l’exception de celles concernant les
ordinateurs et la technologie».
Se distinguent des exemples précités des revendications positives de produits ou services pour lesquelles il est impossible que le signe demandé décrive un objet ou contenu. Par exemple, les exemples inventés suivants ne seraient pas contestables, du moins en ce qui concerne des signes descriptifs d’un objet:
COMEDY pour la télédiffusion d’actualités économiques, politiques et technologiques;
PENGUIN pour des bandes dessinées sur des sujets relatifs au western, à l’époque médiévale ou à la Rome antique;
TECHNOLOGY pour des «classes concernant l’écriture créative de fiction».
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2.3.2.8 Lettres uniques et chiffres
Lettres uniques3
Considération générales
La Cour a déclaré que, lorsqu’il examine les motifs absolus de refus, l’Office est tenu, en vertu de l’article 76, paragraphe 1, du RMC, d’examiner, de sa propre initiative, les faits pertinents qui pourraient l’amener à soulever une objection en vertu de l’article 7, paragraphe 1, du RMC, et que cette exigence ne saurait être ni relativisée ni invertie, au détriment du demandeur de marque communautaire (points 55 à 58). Partant, il incombe à l’Office d’expliquer, par une argumentation motivée, les raisons pour lesquelles une marque consistant en une lettre unique représentée en caractères standard est descriptive.
En conséquence, lors de l’examen de marques constituées d’une lettre unique, des arguments génériques non motivés comme ceux concernant la disponibilité des signes devraient être évités, vu le nombre limité de lettres. De même, il est inapproprié de fonder une objection sur des arguments spéculatifs liés aux différentes significations que pourrait avoir un signe. L’Office se voit obligé d’établir, sur la base d’un examen des faits, pourquoi la marque demandée est contestable.
Il est donc clair que l’examen de marques constituées d’une lettre unique doit être minutieux et rigoureux, et que chaque cas requiert un examen méticuleux.
Exemples
Par exemple, dans des domaines techniques tels que ceux impliquant des ordinateurs, des machines, des moteurs et des outils, certaines lettres peuvent avoir une connotation descriptive si elles transmettent des informations suffisamment précises sur les produits et/ou services concernés.
La lettre «E» a également été considérée comme descriptive pour les «éoliennes et leurs pièces, générateurs, pales de rotor pour éoliennes, rotors pour éoliennes» (classe 7), les «circuits de commande pour éoliennes, convertisseurs de fréquence, instruments de mesure, de signalisation et de contrôle» (classe 9) ainsi que pour les «mâts d’éoliennes» (classe 19), étant donné qu’elle peut être perçue comme une référence à l’«énergie» ou à l’«électricité» (voir arrêt du 21/05/2008, T-329/06, «E», points 24 à 31, et la décision du 08/09/2006, R 394/2006-1, paragraphes 22 à 26).
Une objection peut être également se justifier à l’égard de produits et/ou de services destinés à un public plus général. Par exemple, les lettres «S», «M» ou «L» pour des vêtements sont contestables étant donné qu’elles sont utilisées pour décrire une taille de vêtements particulière, à savoir comme des abréviations de «Small», «Medium» ou «Large».
Par ailleurs, s’il ne peut être établi qu’une lettre unique donnée est descriptive pour les produits et/ou services concernés, et pour autant que la marque demandée ne soit pas susceptible d’être contestée au titre d’une autre disposition de l’article 7, paragraphe 1, du RMC, la demande doit être acceptée.
Voir le point 2.2.5.2 plus haut pour d’autres exemples.
3 Pour lettres uniques sous l’article 7, paragraphe 1, point b, voir 2.2.5
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Chiffres
Dans son arrêt du 10/03/2011, C-51/10 P, «1000», la Cour a estimé que les signes exclusivement composés de chiffres sans altération graphique peuvent être enregistrés en tant que marques (points 29 et 30).
La Cour a fait référence, par analogie, à son précédent arrêt du 09/09/2010, C-265/09 P, «α», concernant des lettres uniques (point 31) et a souligné que les marques composées de chiffres doivent être examinées spécifiquement par rapport aux produits et/ou services concernés (point 32).
Partant, un chiffre ne peut être enregistré comme marque communautaire que s’il est distinctif pour les produits et services couverts par la demande d’enregistrement (point 32) et s’il n’est pas purement descriptif ou autrement non distinctif par rapport auxdits produits et services.
Par exemple, la chambre de recours a confirmé le refus de la marque «15» demandée pour des «vêtements, chaussures, chapellerie» relevant de la classe 25, au motif que le chiffre «15» présentait un lien suffisamment direct et concret avec ces produits, puisqu’il contenait des informations évidentes et directes concernant la taille ou la pointure desdits produits. Elle a également confirmé le refus de ce signe pour des «bières», comprises dans la classe 32, étant donné qu’il ressortait de l’expérience pratique liée à la commercialisation des produits en cause, sur laquelle se basait l’examinatrice, qu’il existait sur le marché communautaire certaines bières très fortes ayant une teneur en alcool de 15 % vol. (voir la décision du 12/05/2009, R 72/2009-2, paragraphes 15 à 22).
Il est de notoriété publique que les chiffres sont souvent utilisés pour transmettre des informations pertinentes sur les produits et/ou services concernés. Par exemple, dans les scénarios suivants, une objection s’appliquerait au motif que le signe demandé est descriptif étant donné qu’il renvoie à:
la date de production des produits/de la prestation des services, lorsque ce facteur est pertinent pour les produits et/ou services concernés. Par exemple, 1996 ou 2000 pour des «vins» seraient contestables, étant donné que l’âge du vin est un facteur très pertinent en termes de choix d’achat;
la taille: 1600 pour des voitures, 185/65 pour des pneus, 10 pour des vêtements pour dames au Royaume-Uni, 32 pour des vêtements pour dames en France;
la quantité: 200 pour des cigarettes;
des codes téléphoniques: 0800 ou 0500 au Royaume-Uni, 800 en Italie, 902 en Espagne, etc.;
la période de la prestation des services: 24/7;
la puissance des produits: 115 pour des moteurs ou des voitures;
la teneur en alcool: 4,5 pour les lagers, 13 pour les vins;
le nombre de pièces: 1 000 pour des puzzles.
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En outre, lorsque le chiffre ne semble pas avoir de signification possible au regard des produits ou services concernés, il est acceptable, par exemple «77» pour des services financiers ou «333» pour des «vêtements».
2.3.2.9 Noms de couleurs
Un signe exclusivement composé du nom d’une couleur doit être contesté en vertu de l’article 7, paragraphe 1, point c), du RMC, lorsque la demande revendique des produits pour lesquels la couleur peut être raisonnablement perçue par le public comme une description de l’une de ses caractéristiques. Par exemple, le nom de couleur «BLUE» (BLEU) pour le fromage décrit un genre spécifique de fromage, la couleur «GREEN» (VERT), un genre particulier de thé. La couleur «BROWN» (BRUN) pour le sucre décrit la couleur et le type de sucre. Cela vaut essentiellement pour les couleurs courantes, par exemple les couleurs primaires ou «SILVER» (ARGENT) et «GOLD» (OR). Lorsque les produits revendiqués concernent des colorants (par exemple des peintures, encres, teintures, cosmétiques, etc.), le nom des couleurs peut décrire la couleur même des produits, et les signes exclusivement composés d’une couleur doivent être contestés en vertu de l’article 7, paragraphe 1, point c), du RMC. Dans ces cas, les noms de couleurs ne sont pas considérés comme des marques mais simplement comme des éléments décrivant la caractéristique principale des produits.
Les directives suivantes doivent s’appliquer en général:
lorsque la couleur est une caractéristique typique des produits et qu’elle est pertinente pour le choix du consommateur, comme pour des vêtements et des voitures, les noms de couleurs tels que «EMERALD» (ÉMERAUDE) ou «APRICOT» (ABRICOT, qui, bien qu’ils aient d’autres significations, sont perçus comme ayant une forte connotation en rapport avec certaines couleurs, et doivent être contestés;
des mots comme «SAPPHIRE» (SAPHIR) ou «FLAMINGO» (ROSE FLAMANT) n’ont pas de connotation de couleur suffisamment forte pour surmonter l’autre signification n’ayant pas de rapport avec la couleur, et ne doivent donc généralement pas être contestés s’ils ne sont pas susceptibles d’être perçus comme ayant une signification de couleur pour les produits ou services revendiqués.
Les couleurs associées à d’autres mots peuvent être enregistrables si le signe dans son ensemble est distinctif: «ICE COFFEE» (CAFÉ GLACÉ), «VANILLA ICE» (GLACE À LA VANILLE) et «MISTY BLUE» (BLEU VAPOREUX). Les combinaisons descriptives comme «DEEP BLUE» (BLEU FONCÉ) ne doivent pas être acceptées. Les mots du dictionnaire qui sont descriptifs mais flous et peu susceptibles d’être utilisés par des tiers peuvent être acceptés: «LUNA» (LUNE) (nom que les alchimistes donnent à l’argent) et «CARNELIAN» (CORNALINE) (nom alternatif pour CORNELIAN, une gemme de couleur rouge moins connue).
2.3.2.10 Noms de variétés végétales
Les noms de variétés végétales décrivent des variétés ou sous-espèces cultivées de plantes vivantes ou de semences agricoles. En tant que tels, ils ne seront pas perçus comme des marques.
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Cette section concerne uniquement les noms des variétés végétales qui sont utilisés dans le commerce mais qui ne sont pas simultanément enregistrés auprès de l’Office communautaire des variétés végétales conformément au règlement nº 2100/94. La procédure à suivre pour traiter les demandes de MC qui contiennent ou consistent en des noms de variétés végétales enregistrés est expliquée dans une autre section des Directives dans le cadre de l’article 7, paragraphe 1, point f), du RMC (voir point 2.6.1.2).
Les critères pour apprécier le caractère descriptif d’une marque pour des plantes ne diffèrent pas de ceux qui s’appliquent aux autres catégories de marques. Les dispositions de la réglementation sur les marques s’appliquent aux plantes de la même manière qu’elles s’appliquent à d’autres catégories de produits. Il s’ensuit que le nom d’une variété végétale doit être rejeté en vertu de l’article 7, paragraphe 1, point c), du RMC, à moins qu’il ait acquis un caractère distinctif selon les conditions prévues à l’article 7, paragraphe 3, du RMC.
Lorsque la MC demandée se compose d’une formulation concernant des plantes vivantes, des semences agricoles, des fruits frais, des légumes frais ou des formulations similaires, l’examinateur doit vérifier, par le biais d’une recherche sur Internet, si le terme qui compose la marque coïncide avec le nom d’une variété végétale spécifique déjà utilisé dans le commerce.
Si la recherché révèle que le terme en question est déjà utilisé dans le commerce, soit dans l’UE, soit dans une autre juridiction, alors l’examinateur doit soulever une objection en vertu de l’article 7, paragraphe 1, point c), du RMC en contestant que le terme en question décrit espèce des produits concernés.
En fonction des circonstances de l’affaire, et à condition que les preuves disponibles démontrent que le terme concerné a été utilisé à un tel point qu’il est devenu usuel dans le commerce dans l’UE, une objection en vertu de l’article 7, paragraphe 1, points c) et d), du RMC est alors requise (voir également point 2.4.4).
Par exemple, dans sa décision du 01/03/2012, R 1095/2011-5, «SHARBATI», la cinquième chambre de recours a confirmé le refus de la marque «SHARBATI» demandée pour les produits riz; farine et préparations faites de céréales, pain, pâtisserie et confiserie (classe 30), au motif qu’elle était descriptive de ces produits: Sharbati est une sorte de riz et une sorte de blé qui donne son nom à un certain type de farine, connu en Inde.
Même si la plupart des preuves fournies provenaient d’Inde, certaines se référaient au commerce d’exportation sur les marchés des produits de base. En conséquence, le fait qu’un mot donné soit le nom d’une variété de riz en Inde était déjà une forte indication que le produit serait distribué dans l’Union européenne.
Toutefois, la chambre a estimé qu’il n’y avait pas suffisamment de preuves démontrant que le terme «SHARBATI» était devenu générique dans l’Union européenne. Bien qu’il ait été démontré que le riz ou le blé Sharbati avait été proposé aux opérateurs de l’Union européenne, qu’il ait été effectivement importé dans l’Union européenne et qu’il n’ait pas d’autre nom précis, les preuves démontrant que, à la date de dépôt de la demande de MC, les produits étaient connus dans la mesure prévue à l’article 7, paragraphe 1, point d), du RMC, étaient insuffisantes.
Une objection doit également être formulée lorsque la marque demandée ne consiste qu’en une légère variation (à savoir des différences mineures qui n’altèrent pas la perception visuelle et phonétique du signe) du nom de variété végétale utilisé dans le
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commerce, conduisant ainsi les consommateurs à penser qu’ils sont confrontés au nom générique ou descriptif d’une variété végétale.
La décision du 03/12/2009, R 1743/2007-1, «VESUVIA», constitue un exemple pertinent à cet égard. La chambre a estimé que les preuves provenant des États-Unis et du Canada étaient suffisantes pour conclure que le nom «Vesuvius» d’une variété de roses pouvait devenir une indication descriptive dans l’Union européenne au sens de l’article 7, paragraphe 1, point c), du RMC et que la marque demandée «VESUVIA» s’en rapprochait. La chambre a justifié son refus par le fait que les roses sont généralement mentionnées au féminin.
Enfin, il convient de signaler qu’une objection doit être formulée non seulement pour des marques demandées qui sont identiques (ou qui présentent une légère variation par rapport) à un nom de variété végétale utilisé dans le commerce comme le nom générique d’une variété végétale, mais également pour tout produit et/ou service qui peut être directement lié au nom de variété végétale en question (tels que des services d’importation et exportation de la variété végétale en question).
2.3.2.11 Noms de banques et de journaux/magazines
Dans le domaine des banques, des journaux et des magazines, les consommateurs sont habitués à reconnaître des combinaisons descriptives de termes comme indications d’origine. Cela est dû à:
l’identification de l’entité concernée comme la seule ayant le droit d’utiliser la combinaison (voir, par exemple, «BANK OF ENGLAND» ou «BANCO DE ESPAÑA» ou autres noms de banques centrales); ou
une présence forte et de longue date sur le marché (par exemple, «IL GIORNALE» - le journal - en Italie); ou
le fait que la combinaison est encore susceptible d’identifier une entité spécifique (par exemple, «COSTA BLANCA NEWS» ou «BANCO DE ALICANTE»).
Dans ces cas, aucune objection ne devrait être soulevée. Cependant, les combinaisons descriptives telles que «ONLINEBANK», «E-BANK» ou «INTERNETNEWS» restent contestables étant donné qu’elles ne créent pas, à première vue du moins, l’impression d’une entité clairement identifiable.
2.3.2.12 Noms d’hôtels
Dans le secteur hôtelier, les noms d’hôtels consistent souvent en une combinaison du mot «HOTEL» et d’un terme géographique (à savoir le nom d’une île, d’une ville, d’un pays, etc.). Ils désignent généralement des établissements spécifiques qui n’ont aucun rapport avec le terme géographique utilisé, étant donné qu’ils ne se trouvent pas dans ce lieu spécifique. Par conséquent, vu ces habitudes commerciales, les consommateurs ne percevraient pas des expressions telles que «HOTEL BALI», «HOTEL BENIDORM» ou «HOTEL INGLATERRA» comme des indications descriptives (qui indiquent que les services sont fournis par un hôtel situé dans ce lieu spécifique) mais plutôt comme des indications d’origine. En effet, ces expressions ne
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sont pas équivalentes aux expressions, grammaticalement correctes «HOTEL IN BALI», «HOTEL DE BENIDORM» ou «HOTEL EN INGLATERRA», qui sont clairement contestables. Cela est d‘autant plus vrai lorsque le nom de l’hôtel se compose des noms de deux villes différentes (ou de deux termes géographiques en général), par exemple «HOTEL LONDRES SAN SEBASTIAN». En effet, dans ce cas, la présence des mots SAN SEBASTIAN (une ville du Nord de l’Espagne) indique clairement que «HOTEL LONDRES» doit être considéré comme une expression de fantaisie. Partant, aucune objection ne devrait être soulevée. Néanmoins, lorsque le terme géographique précède le mot «HOTEL», la situation peut changer en fonction des différentes langues. Par exemple, en anglais, l’expression «BALI HOTEL» serait considérée comme une expression purement indicative de n’importe quel hôtel situé sur l’île de Bali, et serait donc clairement contestable. En conséquence, chaque cas devrait être apprécié en fonction de ses caractéristiques propres. Enfin, les combinaisons descriptives comme «LEADING HOTELS» restent contestables étant donné qu’elles ne créent pas, à première vue du moins, l’impression d’une entité clairement identifiable.
2.3.2.13 Combinaisons de noms de pays/villes et d’un chiffre indiquant une année
Les marques consistant en la combinaison du nom d’un pays/d’une ville et d’un chiffre indiquant une année doivent être refusées en vertu de l’article 7, paragraphe 1, points b) et c), du RMC pour tous les produits et services revendiqués. Par exemple, la marque «GERMANY 2006» a été considérée comme une indication descriptive d’un large éventail de produits et services, depuis les films non exposés compris dans la classe 1 à l’entretien de véhicules compris dans la classe 37. En particulier, selon la décision du 21/07/2008 dans l’affaire R 1467/2005-1, cette marque:
est descriptive du type et de la teneur de ces services visant «de facto la préparation, l’organisation et la promotion d’un événement en Allemagne en 2006» (ibidem, paragraphe 29, se référant à l’organisation d’événements sportifs liés à, ou associés aux, championnats de football, etc.);
est descriptive de «la finalité et par conséquent, en partie, du niveau de qualité des produits ou services, au cours de ces compétitions en Allemagne au cours de l’année 2006, qui sont appropriés pour des compétitions au plus haut niveau ou ont été utilisés avec succès dans le cadre desdites compétitions» (ibidem, paragraphe 30, en référence à des instruments médicaux, des ballons de football, etc.);
qualifie les produits comme étant des souvenirs (ibidem, paragraphe 31, en référence à des produits tels qu’autocollants, confettis, pyjamas, etc.).
Concernant les souvenirs, la chambre a souligné que «le marchandisage et le co- marquage ne se limitent pas aux souvenirs “classiques”. Il est de notoriété publique qu’il y a une tendance visant à prospecter de nouveaux marchés en associant différents produits soit à la marque d’un autre événement populaire soit à d’autres noms, ces deux derniers étant sans rapport avec lesdits produits» (ibidem, paragraphe 34, en référence à des produits tels que lunettes, téléviseurs, papier hygiénique, etc., tous liés ou associés aux championnats de football).
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2.3.3 Marques figuratives
Les signes représentés dans des alphabets autres que le latin, le grec ou le cyrillique sont considérés, à des fins de formalités, comme des marques figuratives. Cela ne signifie toutefois pas que le contenu sémantique de ces signes ne doive pas être pris en considération aux fins de l’application de l’article 7, paragraphe 1, point c), du RMC.
Lorsqu’une marque figurative est composée exclusivement d’une forme naturelle de base qui ne diverge pas de manière significative d’une représentation fidèle à la réalité qui sert à indiquer l’espèce, la destination ou d’autres caractéristiques des produits ou services, elle doit être contestée en vertu de l’article 7, paragraphe 1, point c), du RMC au motif qu’elle est descriptive d’une caractéristique des produits ou services concernés.
Signe Affaire
Arrêt du 08/07/2010, T-385/08 «Représentation d’un chien»
Arrêt du 08/07/2010, T-386/08 «Représentation d’un cheval»
Dans ces affaires, le Tribunal a estimé que pour les produits relevant des classes 18 et 31, la représentation d’un chien ou d’un cheval, respectivement, servait à indiquer le type d’animal auquel les produits étaient destinés.
Dans la première affaire, le Tribunal a relevé que les produits compris dans la classe 18 avaient été créés spécialement pour des chiens, à savoir notamment des laisses, des colliers et d’autres accessoires destinés aux chiens, y compris des sacs. Il est de pratique courante que les représentations d’animaux, fidèles à la réalité ou stylisées, mais réalistes, servent à indiquer, pour des accessoires destinés aux animaux, la catégorie d’animaux concernée. Ainsi, pour les produits relevant de la classe 18, le public pertinent percevrait immédiatement et sans autre réflexion la représentation d’un chien comme indiquant que ces produits étaient spécialement destinés aux chiens. La représentation d’un chien désignait donc une des caractéristiques essentielles des produits concernés. Le signe demandé était donc descriptif (points 25 à 28).
Ces constatations s’appliquaient également aux produits relevant de la classe 31. Sachant que les aliments pour animaux domestiques comprennent des produits pour chiens, la marque demandée constituait une indication descriptive des produits en cause que le public pertinent percevrait immédiatement (point 29).
Dans la deuxième affaire, le Tribunal a estimé qu’en ce qui concerne les vêtements, la chapellerie et les ceintures, relevant de la classe 25, la représentation d’un cheval était descriptive de l’espèce ou de la destination des produits, à savoir qu’ils étaient particulièrement développés pour le sport équestre et adaptés à ce sport. Étant donné que public pertinent établirait immédiatement un rapport entre un cheval et l’équitation, le Tribunal a maintenu qu’il y avait un rapport direct et concret entre la représentation du cheval et les produits concernés (points 35 à 38).
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Par exemple, le signe ci-dessous a été considéré comme suffisamment stylisé pour diverger de manière significative d’une représentation fidèle à la réalité servant à indiquer l’espèce ou la destination des produits ou services et a donc été enregistré.
Signe MC nº Produits et services
MC nº 844 Classes 1, 3, 5, 6, 7, 8, 9, 11, 16, 17, 18, 19, 20, 21, 22, 26, 28, 31,
41 et 42
2.3.4 Seuil figuratif4
2.3.4.1 Remarques préliminaires
Les termes ou signes qui sont dépourvus de caractère distinctif, ou qui sont descriptifs ou génériques, peuvent ne pas faire l’objet d’un refus en vertu de l’article 7, paragraphe 1, point b), c) ou d), du RMC s’ils sont combinés à d’autres éléments qui confèrent un caractère distinctif au signe dans son ensemble. En d’autres termes, les refus fondés sur l’article 7, paragraphe 1, points b), c) et/ou d), du RMC peuvent ne pas s’appliquer aux signes consistant en un élément non distinctif, descriptif ou générique combiné à d’autre éléments qui confèrent au signe dans son ensemble un degré de caractère distinctif supérieur à un degré minimal.
Dans la pratique, cela signifie que l’une des principales questions à laquelle les examinateurs doivent répondre dans leur travail quotidien est si la marque est suffisamment figurative pour présenter le degré minimal de caractère distinctif nécessaire à l’enregistrement.
La présence d’éléments figuratifs peut conférer un caractère distinctif à un signe consistant en un élément verbal descriptif et/ou non distinctif de sorte que celui-ci puisse être enregistré en tant que MC. En conséquence, l’examinateur doit se demander si la stylisation et/ou les caractéristiques graphiques d’un signe sont suffisantes pour lui permettre de remplir une fonction de marque.
Aux fins du présent du document, l’expression «élément figuratif» inclut tout élément graphique/toute stylisation qui apparaît dans le signe, comme la police de caractères, la taille de la police, les couleurs et la position/l’agencement des mots/lettres. Elle englobe également les formes géométriques, les étiquettes, les motifs et les symboles, ainsi que toute combinaison des éléments précités.
En règle générale, lorsqu’un élément figuratif distinctif en lui-même est ajouté à un élément verbal descriptif et/ou non distinctif, la marque est enregistrable, pour autant que l’élément figuratif, du fait de sa taille et de sa position, soit clairement reconnaissable dans le signe.
4 N.B. Cette partie sera actualisée en fonction de l’évolution du 3e programme de convergence (PC3). Certains exemples qui ont déjà fait l’objet d’un accord dans ce PC3 ont déjà été intégrés au texte.
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Signe MC nº Produits et services
MC nº 11 418 605 Classe 24
Le signe ci-dessus a été contesté parce que la police de caractères n’est pas distinctive, car elle ne diverge pas de manière significative des polices communément utilisées dans le commerce, et parce que la représentation rouge au-dessus de la lettre «i» est difficilement reconnaissable.
Même lorsque l’élément figuratif remplit les conditions précitées, il est néanmoins nécessaire d’apprécier le signe dans son ensemble par rapport aux produits et services revendiqués.
Il faut tenir compte du fait que, quand l’élément verbal est descriptif/dépourvu de caractère distinctif, il doit être vérifié si l’élément figuratif est:
frappant et/ou surprenant et/ou inattendu et/ou inhabituel et/ou arbitraire;
propre à créer dans l’esprit des consommateurs un souvenir immédiat et durable du signe en détournant leur attention du message descriptif/non distinctif transmis par l’élément verbal;
de nature telle à nécessiter un effort d’interprétation de la part du public pertinent pour comprendre la signification de l’élément verbal.
Signe MC nº Produits et services
MC nº 11 595 601 Produits relevant de la classe 3
La marque demandée ci-dessus a été contestée car elle est clairement descriptive (et dépourvue de caractère distinctif) par rapport aux produits revendiqués compris dans la classe 3. Le contenu descriptif du terme outrepasse l’apparence figurative de la lettre «L», même si cette dernière, prise isolément, devait être considérée comme enregistrable pour les mêmes produits et services.
Enfin, le fait qu’un signe contienne des éléments figuratifs ne l’empêche pas d’être trompeur ou contraire à l’ordre public ou de tomber sous le coup d’autres motifs de refus, tels que ceux énoncés à l’article 7, paragraphe 1, points h), i), j) et k), du RMC.
2.3.4.2 Éléments verbaux stylisés
En règle générale, des éléments verbaux descriptifs ou non distinctifs apparaissant dans une police de caractères standard ou de base, avec ou sans effets de police tels que «gras» ou «italique», ne sont pas enregistrables. Plus une police de caractères est lisible et/ou fréquente, moins elle est distinctive. Cela vaut également pour les polices de caractères manuscrites: des polices manuscrites facilement lisibles et/ou fréquentes sont normalement dépourvues de caractère distinctif. En d’autres termes, pour ajouter du caractère distinctif à un signe, la stylisation de la police de caractères doit être telle qu’elle requiert des consommateurs qu’ils déploient une énergie intellectuelle pour comprendre la signification de l’élément verbal par rapport aux produits et services revendiqués.
Motifs absolus de refus
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Minuscules + majuscules
Signe MC nº Produits et services
CyberDOCS MC nº310 888 Classes 9 et 16
«L’utilisation de lettres majuscules dans la dernière syllabe de “CyberDOCS” ne renforce pas le caractère distinctif de la marque. L’Office traite à juste titre tout signe comme une marque verbale s’il est écrit en caractères standards, qu’il s’agisse de lettres majuscules ou minuscules. Une marque verbale descriptive ne cesse d’être descriptive simplement parce qu’elle est écrite en partie en minuscules et en partie en majuscules» (voir la décision R 133/1999-1, paragraphe 14).
Police de caractères standard + italique
Signe MC nº Produits et services
MC nº 4 651 683 Entre autres, produits relevantdes classes 1, 7 et 22.
Le signe ci-dessus a été refusé. Dans le cas présent, «Foam» est écrit dans une police standard et «plus» en italique simple. Comme aucune de ces formes n’est frappante ou extraordinaire en aucune manière, le public pertinent ne considérera pas les éléments visuels comme conférant au signe la fonction d’indication d’origine (voir la décision du 07/05/2008, R 655/2007-1, «Foamplus», paragraphe 16).
Police de caractères spéciale
Signe MC nº Produits et services
MC nº 5 456 207 Classes 12, 25 et 28
Le terme «Superleggera» signifie «super léger», et le Tribunal a confirmé le refus de la marque (voir arrêt du 19/05/2010, T-464/08, «Superleggera», points 32 à 34). Le Tribunal a observé que, si la police utilisée présente une certaine particularité, il n’en demeure pas moins que le style n’est susceptible ni de marquer immédiatement et durablement la mémoire du public pertinent, ni de distinguer les produits du demandeur de ceux d’autres fournisseurs sur le marché. En effet, s’agissant de la forme des lettres manuscrites, ces lettres sont usuelles dans le domaine commercial. Ainsi, ce style demeure largement normal aux yeux des consommateurs et, en l’espèce, du public pertinent. Concernant l’argument du demandeur selon lequel la lettre initiale majuscule «S» change la perception de l’expression «Superleggera», le Tribunal estime que l’utilisation d’une majuscule pour la première lettre n’a pas comme conséquence que l’expression ne sera pas perçue par le public comme fournissant des informations sur les produits en cause.
Signe Produits et services
Exemple tiré du PC3
Œuvres cinématographiques sur supports d’image ou autres
supports de données; produits de l’imprimerie; organisation d’événements de grande envergure; divertissement
La marque signifie Bollywood rend heureux
Couleur
Le simple «ajout» d’une couleur ou d’une combinaison de couleurs de base et/ou communément utilisée sur le marché ne suffit pas à rendre enregistrable un élément verbal descriptif et/ou non distinctif. Voir l’exemple suivant d’une marque qui a été refusée en dépit de l’ajout d’une couleur.
Motifs absolus de refus
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Signe MC nº Produits et services
MC nº 7 147 689 Produits et services relevant desclasses 9 et 38
Police de caractères, taille de la police ou agencement des mots et/ou lettres
La manière dont les éléments verbaux sont positionnés peut conférer un caractère distinctif au signe lorsque ce positionnement est apte à affecter la perception qu’a le consommateur de la signification des éléments verbaux. En d’autres termes, l’agencement peut être de nature à nécessiter des consommateurs qu’ils déploient une énergie intellectuelle pour percevoir le rapport entre les éléments verbaux et les produits et services revendiqués. En règle générale, le fait que les éléments verbaux soient agencés verticalement, à l’envers, sur une ou deux lignes ou plus, ne suffit pas à conférer au signe le degré minimal de caractère distinctif nécessaire à l’enregistrement.
Signe MC nº Produits et services
MC nº 8 294 233 Produits relevant de la classe 3
L’enregistrement de la marque ci-dessus pour des cosmétiques, produits de soins du corps et de beauté a été refusé, car la police de caractères est banale et la présentation, l’un au-dessus de l’autre, des deux éléments verbaux ne saurait être considérée comme étant inhabituelle. Le fait que la taille de la lettre «b» est plus grande que celles des autres lettres du mot «beauty» est à peine perceptible. Ces seuls faits ne sauraient conférer au signe demandé un caractère distinctif (voir arrêt du 11/07/2012, T-559/10, «Natural beauty», point 26).
Les marques suivantes sont considérées comme acceptables:
Signe MC nº Produits et services
MC nº 2 795 771 Produits et services relevant desclasses 9 et 38.
L’acronyme «DVB» signifie «Digital Video Broadcasting», une expression qui indique un type particulier de technologie de diffusion. Sans connaissance préalable de l’acronyme «DVB», le consommateur doit déployer une certaine énergie intellectuelle, et une certaine dose d’interprétation, pour deviner la signification du signe ci-dessus. Les lettres qui composent le signe ne sont pas clairement identifiables individuellement, étant donné que le signe pourrait être un DV3, un D13, un DVB voire un LV3 ou un LVB stylisé. En outre, la police de caractères ne diverge pas de manière significative des polices standard. Vu qu’il présente au moins un degré minimal de caractère distinctif, le signe ci-dessus peut donc remplir une fonction de marque (voir la décision du 09/10/2008, R 1641/2007-2, paragraphes 23 à 25).
Signe Produits et services
Exemple tiré du PC3 Parfumerie; services d’un styliste (mode);
vêtements
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2.3.4.3 Éléments verbaux combinés à d’autres éléments figuratifs
Éléments verbaux combinés à des formes ou dessins ordinaires
Les formes et dessins ordinaires comprennent les points, lignes, segments de ligne, cercles et polygones, tels que triangles, carrés, rectangles, parallélogrammes, pentagones, hexagones, etc. Il faut également tenir compte du fait qu’il existe des formes, figures et dessins qui, bien que n’étant pas «géométriques», sont encore trop simples/ordinaires pour conférer un caractère distinctif à un signe.
Les éléments verbaux descriptifs ou non distinctifs sont peu susceptibles d’être acceptables lorsqu’ils sont combinés à des formes/figures/dessins simples/ordinaires/de base, géométriques ou non, principalement pour les motifs suivants:
lorsque les consommateurs regardent une marque, l’élément verbal est généralement l’élément le plus susceptible d’être reconnu et facilement mémorisé;
ces formes/figures ne transmettent aucun «message» aux consommateurs et ne permettent donc pas de détourner leur attention de la signification descriptive/non distinctive de l’élément verbal.
L’utilisation d’une couleur de base et/ou communément utilisée sur le marché ne confère pas à la marque un degré suffisant de caractère distinctif.
Les marques suivantes sont considérées comme contestables:
Signe MC nº Produits et services
MC nº 6 039 119 Produits relevant de la classe 24
Signe Produits et services
Exemple tiré du PC3 Édition de livres et magazines
Signe Produits et services
Exemple tiré du PC3 Café
Par ailleurs, les formes, figures et dessins complexes peuvent conférer un caractère distinctif à un signe. En règle générale, plus les formes/figures/dessins sont complexes, plus ces éléments possèdent un caractère distinctif. Un exemple de signe
Motifs absolus de refus
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distinctif est donné ci-après (il est supposé que la forme géométrique n’est pas une représentation de l’emballage des produits).
Signe Produits et services
Exemple tiré du PC3 Café
Cependant, pour conclure à l’existence d’un degré suffisant de caractère distinctif, d’autres facteurs doivent également être pris en considération, par exemple:
la forme/la figure/le dessin ne doit pas consister en une combinaison non distinctive de formes/figures/dessins simples/ordinaires/de base, géométriques ou non. Dans ces cas, il est nécessaire d’apprécier correctement l’«impact visuel» de l’élément figuratif par rapport à celui de l’élément verbal;
la forme/la figure/le dessin ne doit pas consister en une étiquette courante/non distinctive;
la forme/la figure/le dessin ne doit pas faire l’objet d’une utilisation fréquente dans le commerce pour les produits et services revendiqués;
la forme/la figure/le dessin ne doit pas être un motif qui ne peut être facilement mémorisé par le public pertinent;
la forme/la figure/le dessin ne doit pas posséder de caractéristiques purement décoratives/fonctionnelles;
la forme/la figure/le dessin ne doit pas consister en une représentation bidimensionnelle descriptive/non distinctive des produits et/ou services (ou d’une partie de ces derniers) et ne doit pas renforcer le message descriptif et/ou promotionnel transmis par l’élément verbal;
la forme/la figure/le dessin ne doit pas consister en une représentation bidimensionnelle non distinctive du récipient/de l’emballage des produits revendiqués;
la forme/la figure/le dessin ne doit pas consister en une représentation non distinctive de l’apparence externe/la silhouette des produits ou d’une partie de ceux-ci;
la forme/la figure/le dessin ne doit pas consister en une représentation bidimensionnelle non distinctive du lieu/de l’espace/de l’endroit où les produits/services sont vendus/fournis/distribués/présentés.
Ces «caractéristiques» peuvent se chevaucher et être présentes simultanément dans le même signe.
Ci-après sont énumérés certains exemples d’éléments figuratifs entrant dans certaines des catégories précitées.
Motifs absolus de refus
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Éléments figuratifs consistant en une représentation descriptive/non distinctive des produits ou services ou d’une partie de ceux-ci
Dans certains cas, l’élément figuratif consiste en une représentation des produits ou services revendiqués (ou d’une partie de ceux-ci). En principe, la représentation est considérée comme descriptive et/ou dépourvue de caractère distinctif:
s’il s’agit d’une représentation «fidèle» ou «fidèle à la réalité» des produits et services;
s’il s’agit d’une représentation symbolique/stylisée, mais néanmoins réaliste, des produits et services.
Dans les deux cas, pour être contestable, la représentation des produits et/ou services ne doit pas diverger de manière significative de celles communément utilisées dans le commerce. Les signes ci-après sont considérés comme non distinctifs.
Signe Produits et services
Exemple tiré du PC3 Poisson
Signe Produits et services
Exemple tiré du PC3 Poisson
Éléments figuratifs qui renforcent le «message» descriptif et/ou promotionnel délivré par l’élément verbal.
L’élément figuratif est également considéré comme descriptif et/ou dépourvu de caractère distinctif lorsqu’il ne fait que renforcer le message descriptif et/ou promotionnel délivré par l’élément verbal.
Signe MC nº Produits et services
Enregistrement international désignant l’UE nº 1 131 046
Classes 36 (services de collecte de fonds de bienfaisance), 42 et
45.
L’élément figuratif ne fait que renforcer le message véhiculé par les éléments verbaux, à savoir vous pouvez faire un don en un seul clic.
Signe MC nº Produits et services
MC nº 1 088 576 Classe 29
«Fra Danmark» signifie «Du Danemark» en français. Le logo (quoique n’étant pas une imitation héraldique du drapeau danois) renforce clairement le message que les produits revendiqués sont originaires du Danemark. La décision a été confirmée par la chambre (voir la décision R 469/2013-1).
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Signe MC nº Produits et services
MC nº 10 909 109 Classes 5, 18, 21, 25, 28 et 31
«Hundesport» signifie «sport canin/sport pour chien»
Signe MC nº Produits et services
MC nº 9 117 219 Entre autres, café compris dansla classe 30
Le mot MOCA désigne une sorte de café dans certaines langues européennes, par exemple, en italien, en espagnol et en portugais. L’élément figuratif entre les lettres «MO» et «CA» se compose des couleurs du drapeau italien. S’il n’est pas contestable au titre de l’article 7, paragraphe 1, point h), du RMC, cet élément n’ajoute aucun caractère distinctif au signe, étant donné qu’il indique clairement aux consommateurs l’origine géographique/la destination des produits.
Éléments figuratifs communément utilisés dans le commerce en rapport avec les produits ou services
En règle générale, les éléments figuratifs qui sont communément utilisés dans le commerce en rapport avec les produits et/ou services revendiqués ne confèrent pas de caractère distinctif au signe dans son ensemble. Voir les marques suivantes:
Signe Marque nº Produits et services
Enregistrement international désignant l’UE nº 1 116 291
Produits et services relevant des classes 29, 30, 31 et 43
L’expression allemande «Einfach Gut!» dans la marque ci-dessus signifie «Simplement bon !» en français. Le cœur rouge est une forme communément utilisée sur le marché en rapport avec des produits et services, en particulier des aliments tels que les chocolats et les bonbons en général, et en particulier lors d’occasions spéciales comme la Saint-Valentin. Partant, l’enregistrement de la marque a été refusé.
Signe Affaire
Arrêt du 15/09/2005, C-37/03 P, «BioID»
La marque ci-dessus a été refusée pour les produits et services revendiqués compris dans les classes 9, 38 et 42, concernant la gestion de mots de passe et les éléments de sécurité pour les logiciels et les télécommunications. Le public pertinent comprendra le signe dans son ensemble comme signifiant «biometrical identification», qui est indiscernable des produits et services revendiqués et qui ne présente pas un caractère pouvant garantir à l’utilisateur final l’identité d’origine du produit ou du service désigné par la marque dans l’optique du public pertinent (point 70). En outre, l’absence de tout élément distinctif particulier, les caractères en police «Arial» commune ainsi que les caractères d’une épaisseur différente ne permettent pas à la marque demandée de remplir une fonction d’indicateur d’origine (point 71).
Motifs absolus de refus
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Éléments figuratifs consistant en des motifs
En règle générale, les motifs ne confèrent pas de caractère distinctif aux signes consistant en des éléments verbaux descriptifs/non distinctifs s’ils sont perçus par le public pertinent comme des éléments purement décoratifs. En effet, dans ces cas, ils ne transmettent pas de «message» qui pourrait rendre le signe facilement mémorisable pour les consommateurs.
Combinaisons d’éléments figuratifs non distinctifs et/ou ordinaires
En règle générale, les combinaisons d’éléments figuratifs ordinaires (géométriques ou non) ne confèrent pas de caractère distinctif à des signes consistant en des éléments verbaux si elles ne sont pas aptes à détourner l’attention du consommateur du message descriptif/non distinctif que ces derniers véhiculent. Dans ces cas, il est nécessaire d’apprécier correctement l’«impact visuel» de l’élément figuratif par rapport à celui de l’élément verbal.
Voir, par exemple, les marques suivantes rejetées:
Signe MC nº Produits et services
MC nº 11 439 932
Services relevant des classes 39 et 41 (y compris services d’un
club d’automobilistes) Demande retirée
Dans cette affaire, l’«éclair» n’est pas suffisant pour conférer un caractère distinctif à la marque. En effet, il n’attire pas l’attention, n’est pas remarquable ou mémorable et il ne domine pas les autres éléments verbaux et figuratifs. En outre, l’éclair (ainsi que les autres éléments figuratifs, à savoir les polices de caractères, les couleurs et l’étiquette) n’est pas en mesure de détourner l’attention des consommateurs du message clair descriptif/non distinctif que transmet l’expression «SUPERCAR EXPERIENCE».
Un raisonnement similaire s’applique, mutatis mutandis, à l’élément figuratif du signe suivant:
Signe MC nº Produits et services
MC nº 11 387 941 Classes 9, 35 et 41
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Par contre, les marques suivantes ont été considérées comme acceptables:
Signe MC nº Produits et services
MC nº 10 894 996 Produits et services relevant des
classes 12, 35 et 36 (marque enregistrée)
MC nº 10 834 299 Produits et services relevant des
classes 9, 38 et 42 (marque enregistrée)
Dans les deux cas, certains des éléments figuratifs (le signe devant le mot «SPECIALIZED» et les cinq rectangles agencés de manière circulaire et placés à droite du mot «ECO») ont un impact visuel indépendant, avec le même niveau d’influence sur l’impression globale produite par le signe en tant qu’élément verbal, et sont donc capables d’attirer l’attention du consommateur.
Éléments verbaux combinés à des étiquettes courantes/non distinctives
Dans certains cas, des éléments verbaux descriptifs et/ou non distinctifs sont combinés à des représentations qui, bien qu’elles ne soient pas des formes géométriques simples, consistent cependant en des étiquettes courantes/non distinctives. Ces étiquettes ne peuvent s’imprimer dans l’esprit du consommateur étant donné qu’elles sont trop simples et/ou qu’elles sont communément utilisées dans le commerce en rapport avec les produits/services revendiqués. Voir l’exemple ci-après.
Signe MC nº Produits et services
MC nº 116 434 Classe 32(marque refusée)
MC nº 1 166 164 Services relevant des classes 35,37 et 42
En ce qui concerne la perception, par le public pertinent, de la forme et de la couleur de l’étiquette, les étiquettes de prix en couleurs sont communément utilisées dans le commerce pour tout type de produits et de services. En conséquence, le fait que l’étiquette de la marque ci-dessus serait frappante pour le public n’affecte pas la signification des éléments verbaux dominants. En outre, la forme a tendance à renforcer le caractère promotionnel des éléments verbaux dans la perception du public pertinent (voir arrêt du 03/07/2003, T-122/01, «BEST BUY», points 33 à 37).
Dans ces cas également, l’ajout de couleurs «courantes» (ou une combinaison de ces couleurs) ne confère pas de caractère distinctif au signe. Cela est d’autant plus vrai lorsque la couleur revendiquée possède des fonctions autres qu’une fonction purement décorative.
Motifs absolus de refus
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Voir, par exemple, la marque suivante:
Signe MC nº Produits et services
MC nº 10 849 263 Services relevant des classes 35,
36, 38, 41, 42, 43, 44 et 45 (marque refusée)
Le fait que ce type d’étiquette soit normalement utilisé pour des produits (comme des liqueurs, du nougat, etc.) ne suffit pas pour conférer au signe un degré suffisant de caractère distinctif par rapport aux services.
2.4 Signes ou indications usuels [article 7, paragraphe 1, point d), du RMC]
2.4.1 Remarques générales
L’article 7, paragraphe 1, point d), du RMC exclut de l’enregistrement les signes qui sont composés exclusivement de mots ou d’indications devenus usuels dans le langage courant ou dans les habitudes loyales et constantes du commerceà un moment déterminé (voir le point 2.4.2 ci-dessous). Dans ce contexte, la nature usuelle du signe fait généralement référence à autre chose qu’aux propriétés ou caractéristiques des produits ou services eux-mêmes.
Bien qu’il existe un chevauchement évident des champs d’application respectifs de l’article 7, paragraphe 1, point c), et de l’article 7, paragraphe 1, point d), du RMC, l’exclusion de l’enregistrement des signes visés par cette dernière disposition n’est pas fondée sur la nature descriptive de ces signes, mais sur l’usage en vigueur dans les milieux du commerce dont relèvent les produits et les services pour lesquels la marque est demandée (voir arrêt du 04/10/2001, C-517/99, «Bravo», point 35).
En outre, des signes ou des indications qui sont devenus usuels dans le langage courant ou dans les habitudes loyales et constantes du commerce pour désigner les produits ou les services visés par ce signe ne sont pas propres à distinguer les produits ou les services d’une entreprise de ceux d’autres entreprises et ne remplissent donc pas la fonction essentielle d’une marque (voir arrêt du 16/03/2006, T-322/03, «WEISSE SEITEN», point 52).
Ce motif de refus s’applique également aux termes qui n’avaient initialement pas de signification ou qui possédaient une autre signification, par exemple, «weiße Seiten» (= «pages blanches»). Il englobe également certaines abréviations qui sont entrées dans le langage familier ou le jargon et sont donc devenues usuelles dans le commerce.
Par ailleurs, un refus fondé sur l’article 7, paragraphe 1, point d), du RMC porte également sur des éléments figuratifs qui sont des pictogrammes ou des indications similaires fréquemment utilisés, ou des éléments figuratifs qui sont devenus la désignation standard de produits et de services, par exemple, un «P» blanc sur fond bleu pour désigner des places de stationnement, le caducée pour désigner les
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pharmacies, ou la silhouette d’un couteau et d’une fourchette pour désigner des services de restauration.
Signe Argumentation Affaire
MC nº 9 894 528 pour des produits relevant de la
classe 9
«Le signe est identique au symbole international de sécurité connu sous le nom de “symbole de haute tension” ou “attention, risque de décharge électrique”. Il a été officiellement défini par la norme ISO 3864 en tant que symbole standard de haute tension, où le logo demandé figure dans un triangle, indiquant que c’est un symbole de danger. En conséquence, étant donné que ce signe coïncide dans son essence avec le signe international habituel pour indiquer un risque de haute tension, la chambre a estimé qu’il ne pouvait pas être enregistré comme marque communautaire en vertu de l’article 7, paragraphe 1, point d), du RMC» (paragraphe 20).
R 2124/2011-5
2.4.2 Moment où un terme devient usuel
Le caractère usuel doit être apprécié par rapport à la date de dépôt de la MC demandée (voir les arrêts du 05/03/2003, T-237/01, «BSS», point 46, et du 05/10/2004, C-192/03, points 39 à 40). La question de savoir si un terme ou un élément figuratif était considéré comme non descriptif ou comme distinctif bien avant cette date, ou à quelle date remonte son adoption, sera, dans la plupart des cas, sans pertinence, étant donné que cela ne prouve pas nécessairement que le signe en question n’était pas devenu usuel à la date de dépôt (voir arrêt du 05/03/2003, T-237/01, «BSS», point 47).
Dans certains cas, un signe demandé peut devenir usuel après la date de dépôt. Les changements de signification d’un signe qui font que celui-ci devient usuel après cette date ne conduisent pas à déclarer la nullité de la marque ex tunc en vertu de l’article 52, paragraphe 1, point a), du RMC, mais peuvent conduire à une déchéance de la marque avec effet ex nunc en vertu de l’article 51, paragraphe 1, point b), du RMC. Par exemple, l’enregistrement de la MC «STIMULATION» a été annulé au motif que ce terme était devenu usuel concernant les boissons énergétiques.
2.4.3 Appréciation des termes usuels
Le caractère usuel d’une marque doit être apprécié, d’une part, par rapport aux produits ou aux services visés par la marque, et d’autre part, par rapport à la perception qu’en a le public ciblé (voir arrêt du 07/06/2011, T-507/08, «16PF», point 53).
S’agissant du public ciblé, il convient de constater que le caractère usuel d’un signe s’apprécie en tenant compte de l’attente présumée d’un consommateur moyen du type de produit en cause qui est censé être normalement informé et raisonnablement attentif et avisé (voir arrêt du 16/03/2006, T-322/03, «Weisse Seiten», point 50).
Toutefois, dans l’hypothèse où des intermédiaires interviennent dans la distribution au consommateur ou à l’utilisateur final d’un produit, le public pertinent, dont le point de vue doit être pris en compte pour apprécier si ladite marque est devenue la désignation habituelle du produit en cause, est constitué, non seulement par l’ensemble des
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consommateurs et des utilisateurs finaux, mais aussi, en fonction des caractéristiques du marché concerné, par l’ensemble des professionnels qui interviennent dans la commercialisation de celui-ci (voir les arrêts du 29/04/2004, C-371/02, «Bostongurka», point 26, et du 06/03/2014, C-409/12, «Kornspitz», point 27).
Le Tribunal a estimé que l’article 7, paragraphe 1, point d), du RMC n’est pas applicable lorsque l’usage du signe sur le marché est limité à un seul opérateur (autre que le demandeur de marque communautaire) (voir arrêt du 07/06/2011, T-507/08, «16PF»). En d’autres termes, une marque ne sera pas considérée comme usuelle simplement parce qu’un concurrent du demandeur de la MC utilise également le signe en question. Pour démontrer le caractère usuel, l’examinateur doit apporter des preuves (généralement provenant d’internet) que le consommateur pertinent a été exposé à la marque dans un contexte autre que celui d’une marque et que, partant, il reconnaît son importance usuelle par rapport aux produits et services revendiqués.
Concernant le rapport avec les produits et services pour lesquels l’enregistrement est demandé, l’article 7, paragraphe 1, point d), du RMC ne s’applique pas lorsque la marque consiste en un terme élogieux plus général qui n’a pas de rapport usuel particulier avec les produits et services concernés (voir arrêt du 04/10/2001, C-517/99, «Bravo», points 27 et 31).
2.4.4 Applicabilité de l’article 7, paragraphe 1, point d), du RMC en rapport avec les noms de variétés végétales
La question du caractère générique peut se poser dans le cadre de l’examen de marques constituées exclusivement du nom d’une variété végétale qui n’est pas simultanément enregistrée par l’Office communautaire des variétés végétales conformément au règlement nº 2100/94. Dans le dernier cas, la marque serait contestable en vertu de l’article 7, paragraphe 1, point f), du RMC. En conséquence, si les preuves disponibles montrent qu’un nom de variété végétale donné est devenu usuel dans l’Union européenne comme la dénomination générique de la variété en question, les examinateurs - en plus de contester la marque demandée en vertu de l’article 7, paragraphe 1, points b) et c), du RMC, au motif que la marque demandée est descriptive - doivent également formuler une objection en vertu de l’article 7, paragraphe 1, point d), du RMC, au motif supplémentaire que la marque est constituée exclusivement d’un terme qui est devenu générique dans le secteur commercial pertinent dans l’Union européenne. Voir les points 2.3.2.10, et 2.6.1.2 Noms de variétés végétales.
2.5 Formes qui remplissent une fonction essentiellement technique, qui donnent une valeur esthétique substantielle aux produits ou qui résultent de la nature des produits [article 7, paragraphe 1, point e), du RMC]
2.5.1 Remarques générales
L’article 7, paragraphe 1, point e), du RMC exclut de l’enregistrement les signes constitués exclusivement i) par la forme imposée par la nature même du produit, ii) par la forme du produit nécessaire à l’obtention d’un résultat technique, ou iii) par la forme qui donne une valeur substantielle au produit.
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Le libellé de cette disposition laisse à penser qu’elle ne s’applique pas aux signes pour lesquels l’enregistrement est demandé à l’égard de services.
Il convient de garder à l’esprit qu’une objection en vertu de l’article 7, paragraphe 1, point e), du RMC n’est pas justifiée lorsque le signe demandé consiste en une forme combinée à un autre élément doté de caractère distinctif (éléments verbaux et/ou figuratifs), étant donné que le signe dans son ensemble n’est alors pas exclusivement constitué d’une forme.
L’article 7, paragraphe 1, point e), du RMC ne définit cependant pas les types de signes qui doivent être considérés comme des formes au sens de cette disposition. Il ne fait aucune distinction entre des formes tridimensionnelles, des formes bidimensionnelles ou encore des représentations bidimensionnelles d’une forme tridimensionnelle. Force est donc de constater que l’article 7, paragraphe 1, point e), du RMC peut donc s’appliquer à des marques reproduisant des formes, quelle que soit la dimension dans laquelle elles sont représentées (voir arrêt du 08/05/2012, T-331/10, «surface avec des pois noirs», point 24). En conséquence, l’applicabilité de l’article 7, paragraphe 1, point e), du RMC ne se limite pas à des formes tridimensionnelles.
À cet égard, il convient de souligner que, conformément à la jurisprudence constante, la classification d’une marque comme «figurative» n’exclut pas toujours l’applicabilité des motifs de refus prévus à l’article 7, paragraphe 1, point e), du RMC. La Cour et le Tribunal ont estimé que la jurisprudence développée au sujet des marques tridimensionnelles constituées par l’apparence du produit lui-même s’applique également aux marques «figuratives» constituées par des représentations bidimensionnelles des produits (voir arrêt du 22/06/2006, C-25/05 P, «emballage de bonbon», point 29; arrêt du 04/10/2007, C-144/06, «tablette», point 38).
L’article 7, paragraphe 3, du RMC précise clairement que les formes imposées par la nature des produits (qu’elles soient naturelles ou fabriquées), les formes essentiellement fonctionnelles ou les formes qui donnent une valeur substantielle au produit ne peuvent surmonter une objection en vertu de l’article 7, paragraphe 1, point e), du RMC, en démontrant qu’elles ont acquis un caractère distinctif. En conséquence, la protection au titre de marque est exclue lorsqu’une forme relève de l’article 7, paragraphe 1, point e), du RMC, que cette forme particulière puisse réellement être distinctive ou non sur le marché.
À ce sujet, il convient de signaler que la Cour, dans sa décision préjudicielle du 20/09/2007, C-371/06, «Benetton», concernant l’interprétation de l’article 3, paragraphe 1, point e), troisième tiret, de la première directive 89/104/CEE du Conseil (DM) [qui correspond à l’article 7, paragraphe 1, point e), du RMC], a estimé que la forme d’un produit qui donne une valeur substantielle à celui-ci ne peut constituer une marque en application de l’article 3, paragraphe 3, de la DM (qui correspond à l’article 7, paragraphe 3, du RMC), même lorsque, avant la demande d’enregistrement, elle a acquis une force attractive du fait de sa notoriété en tant que signe distinctif, à la suite de campagnes publicitaires présentant les caractéristiques spécifiques du produit en cause.
En outre, la Cour, dans sa décision préjudicielle du 08/04/2003, affaires jointes C-53/01, C-54/04 et C-55/01, «Linde», point 44, a déclaré que l’article 3, paragraphe 1, point e), de la directive étant un obstacle préliminaire susceptible d’empêcher qu’un signe constitué exclusivement par la forme d’un produit puisse être enregistré, il s’ensuit que, si un seul des critères mentionnés à cette disposition est rempli, un tel signe ne peut être enregistré en tant que marque.
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La Cour a également déclaré que, dans l’hypothèse où cet obstacle préliminaire aurait été écarté, il demeure nécessaire de vérifier si une forme tridimensionnelle d’un produit doit être refusée à l’enregistrement en vertu d’un ou de plusieurs des motifs de refus mentionnés à l’article 3, paragraphe 1, points b) à d) (affaires jointes C-53/01, C-54/04 et C-55/01, «Linde», point 45).
Si l’examen d’un signe au regard de l’article 7, paragraphe 1, point e), du RMC conduit à constater que l’un des critères mentionnés à cette disposition est rempli, il s’ensuit qu’il n’est plus nécessaire d’aborder la question de savoir si le signe a acquis un caractère distinctif par l’usage, étant donné qu’une objection en vertu de l’article 7, paragraphe 1, point e), du RMC ne peut être surmontée en invoquant l’article 7, paragraphe 3, du RMC (voir arrêt du 06/10/2011, T-508/08, «représentation d’un haut- parleur», point 44). Cela explique l’intérêt de procéder à un examen préalable du signe au regard de l’article 7, paragraphe 1, point e), du RMC dans l’hypothèse où une application de plusieurs des motifs absolus de refus prévus audit paragraphe 1 serait possible.
En conséquence, au nom d’une administration solide et efficace de la justice, et d’une économie de procédure, il est demandé aux examinateurs de formuler toutes les objections à l’enregistrement d’un signe en vertu de l’article 7, paragraphe 1, du RMC, y compris de l’article 7, paragraphe 1, point e), du RMC, dès qu’ils estiment qu’elles s’appliquent.
Ainsi, lorsque le signe demandé consiste en une forme susceptible d’être perçue par le public pertinent comme simplement fonctionnelle et comme une forme qui ne diverge pas de façon significative des normes du secteur, l’examinateur doit formuler une objection en vertu de l’article 7, paragraphe 1, point e) et de l’article 7, paragraphe 1, point b), du RMC, même si les preuves de l’absence de caractère distinctif sont plus fortes que celles concernant le caractère fonctionnel.
Toutefois, il se peut également que, suite à une objection initiale formulée uniquement en vertu de l’article 7, paragraphe 1, points b) et/ou c), du RMC, les preuves présentées par le demandeur montrent que toutes les caractéristiques essentielles de la forme en question remplissent une fonction technique ou que la forme donne une valeur substantielle aux produits. Dans ces cas, une autre objection en vertu de l’article 7, paragraphe 1, point e), sous ii) ou iii), doit être formulée, de sorte que le demandeur puisse présenter ses observations à ce sujet. Dans un tel scénario, le demandeur peut tenter de surmonter l’objection uniquement au moyen d’arguments, étant donné que les preuves du caractère distinctif acquis ne seront pas prises en considération dans le cadre d’une objection en vertu de l’article 7, paragraphe 1, point e), du RMC.
2.5.2 Forme imposée par la nature du produit
En vertu de l’article 7, paragraphe 1, point e), sous i), du RMC, sont refusés à l’enregistrement les signes constitués exclusivement par la forme imposée par la nature même du produit.
Ce motif de refus s’applique uniquement lorsque la marque demandée, qu’il s’agisse d’une marque bidimensionnelle ou tridimensionnelle, est constituée exclusivement de la seule forme naturelle possible du produit (qu’elle soit naturelle ou fabriquée), par exemple, la représentation réaliste ci-dessous d’une banane pour des bananes:
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Il convient toutefois de signaler que lorsqu’un produit donné peut se présenter sous différentes formes, il n’est pas approprié de formuler une objection en vertu de l’article 7, paragraphe 1, point e), sous i), du RMC, étant donné qu’il n’y a pas qu’une seule forme naturelle possible du produit. Par exemple, il est inapproprié d’appliquer ce motif de refus à la forme ci-dessous représentant la tête d’un rasoir électrique, dont la spécification concernait les «rasoirs électriques», étant donné que ces derniers ne doivent pas nécessairement être fabriqués selon cette configuration:
Toutefois, d’autres motifs de refus peuvent encore s’appliquer, tels que, dans le cas présent, une objection au titre l’article 7, paragraphe 1, point e), sous ii), du RMC, étant donné que les caractéristiques essentielles de la forme en question sont fonctionnelles (voir arrêt du 18/06/2002, C-299/99, «Philips»).
Dans tous les cas où la MC demandée est constituée exclusivement de la forme imposée par la nature même du produit, une objection peut également être formulée en vertu de l’article 7, paragraphe 1, point c), du RMC, au motif que la forme en question est descriptive de la nature du produit.
2.5.3 Forme du produit nécessaire à l’obtention d’un résultat technique
L’article 7, paragraphe 1, point e), sous ii), du RMC exclut de l’enregistrement les signes constitués exclusivement par la forme du produit nécessaire à l’obtention d’un résultat technique.
Concernant les formes essentiellement fonctionnelles, la Cour a prononcé deux arrêts principaux qui donnent des orientations concernant l’examen de marques constituées exclusivement de formes fonctionnelles (voir décision préjudicielle du 18/06/2002, C-299/99, «Philips», et arrêt du 14/09/2010, C-48/09 P, «Brique de Lego rouge»), interprétant, entre autres, l’article 3, paragraphe 1, de la DM, qui correspond à l’article 7, paragraphe 1, du RMC.
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Pour ce qui est du signe ci-dessus, la Cour a estimé qu’en ce qui concerne, en particulier, les signes constitués exclusivement par la forme du produit nécessaire à l’obtention d’un résultat technique, l’article 3, paragraphe 1, point e), sous ii), de la DM vise à refuser l’enregistrement des formes dont les caractéristiques essentielles répondent à une fonction technique, de sorte que l’exclusivité inhérente au droit de marque ferait obstacle à la possibilité pour les concurrents d’offrir un produit incorporant une telle fonction, ou du moins à leur libre choix de la solution technique qu’ils souhaitent adopter pour incorporer une telle fonction dans leur produit (voir arrêt du 18/06/2002, C-299/99, «Philips», point 79).
Il convient de noter que l’article 7, paragraphe 1, point e), sous ii), du RMC, en faisant référence aux signes constitués «exclusivement» par la forme du produit «nécessaire» à l’obtention d’un résultat technique, vise à assurer que seules les formes de produit qui ne font qu’incorporer une solution technique et dont l’enregistrement en tant que marque gênerait donc réellement l’utilisation de cette solution technique par d’autres entreprises soient refusées à l’enregistrement (voir arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», point 48).
Un signe est constitué «exclusivement» par la forme du produit nécessaire à l’obtention d’un résultat technique lorsque toutes les caractéristiques essentielles de la forme répondent à la fonction technique, la présence de caractéristiques non essentielles sans fonction technique étant, dans ce cadre, dépourvue de pertinence (voir arrêt du 14/06/2010, C-48/09 P, «Brique Lego rouge», point 51). Le fait qu’il puisse y avoir des formes alternatives, ayant d’autres dimensions ou un autre dessin, permettant d’obtenir le même résultat technique n’exclut pas, en soi, l’application de cette disposition (voir arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», points 53- 58).
Toutefois, l’article 7, paragraphe 1, point e), sous ii), ne peut- s’appliquer si la forme du produit incorpore un élément non fonctionnel majeur, tel qu’un élément ornemental ou fantaisiste qui joue un rôle important dans ladite forme (voir arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», point 52).
Par contre, la présence d’un ou de quelques éléments arbitraires mineurs dans un signe tridimensionnel dont tous les éléments essentiels sont dictés par la solution technique à laquelle ce signe donne expression est sans incidence sur la conclusion selon laquelle ledit signe est constitué exclusivement par la forme du produit nécessaire à l’obtention d’un résultat technique (voir arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», point 52).
Une application correcte de l’article 7, paragraphe 1, point e), sous ii) implique que les caractéristiques essentielles du signe tridimensionnel en cause soient dûment identifiées. L’expression «caractéristiques essentielles» doit être comprise comme visant les éléments les plus importants du signe (voir arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», points 68-69).
L’identification de ces caractéristiques essentielles doit être opérée au cas par cas. En outre, l’examinateur pourra fonder son appréciation directement sur l’impression générale produite par le signe ou procéder, dans un premier temps, à un examen successif de chacun des éléments constitutifs du signe en question (voir arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», point 70).
Contrairement à la situation visée par l’article 7, paragraphe 1, point b), du RMC, la perception présumée du signe par le consommateur moyen n’est pas un élément décisif dans le cadre de l’application du motif de refus énoncé à l’article 7,
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paragraphe 1, point e), sous ii), du RMC, mais peut, tout au plus, constituer un élément d’appréciation utile pour l’examinateur lorsque celui-ci identifie les caractéristiques essentielles du signe (voir arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», point 76).
Dès que les caractéristiques essentielles du signe sont identifiées, il y a lieu de vérifier si ces caractéristiques répondent toutes à la fonction technique du produit en cause (voir arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», point 72).
Lors de l’examen d’une demande de MC par rapport à l’article 7, paragraphe 1, point e), sous ii), il faut prêter attention à la signification de l’expression «résultat technique». Cette expression doit être interprétée au sens large et englobe des formes qui, par exemple:
correspondent à un autre article; donnent la plus grande force; utilisent le moins de matériaux; permettent un entreposage ou un transport pratiques.
L’une des affaires importantes concernant des formes essentiellement fonctionnelles portait sur la forme d’un bloc de construction dans un set de jouets de construction.
Dans cette affaire, à la suite d’un recours en annulation, deux instances de l’Office (la division d’annulation puis la grande chambre) ont déclaré la nullité de la MC nº 107029 pour le signe tridimensionnel ci-dessous en ce qui concerne les «jouets de construction» relevant de la classe 28:
Signe MC nº Produits et services
MC nº 107 029 Classe 28(jouets de construction)
En particulier, la grande chambre a estimé que les diverses caractéristiques de la brique Lego rouge remplissaient chacune des fonctions techniques particulières, à savoir i) les bosses [pastilles]: hauteur et diamètre pour la force d’accrochage; nombre pour la polyvalence de l’assemblage; disposition pour les configurations d’assemblage; ii) les protubérances secondaires: force d’accrochage, nombre pour la meilleure force d’accrochage dans toutes les positions; épaisseur de la paroi pour servir de ressort; iii) les côtés: reliés aux côtés d’autres briques pour obtenir un mur; iv) face creuse: pour s’emboîter dans les bosses et permettre l’assemblage afin d’obtenir la force d’accrochage et v) forme globale: forme d’une brique de construction; taille qu’un enfant peut tenir dans la main (voir la décision du 10/07/2006, R 856/2004-G, paragraphe 54).
Le Tribunal a rejeté le recours contre la décision précitée et a confirmé les conclusions de la grande chambre, au motif que cette dernière avait correctement appliqué l’article 7, paragraphe 1, point e), sous ii), du RMC (voir arrêt du 12/11/2008, T-270/06, «Brique Lego rouge»).
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Suite à un recours, la Cour, dans son arrêt du 14/09/2010, C-48/09 P, «Brique Lego rouge», a confirmé l’arrêt du Tribunal, affirmant que
«la solution incorporée dans la forme de produit examinée est celle qui est techniquement préférable pour la catégorie de produits concernée. Si le signe tridimensionnel constitué d’une telle forme était enregistré en tant que marque, il serait difficile pour les concurrents du titulaire de celle-ci de mettre sur le marché des formes de produit qui constituent de véritables alternatives, à savoir des formes qui ne soient pas similaires et qui soient néanmoins intéressantes d’un point de vue fonctionnel pour le consommateur» (point 60).
Il importe de signaler que la Cour a précisé que les caractéristiques essentielles d’une forme doivent être déterminées, aux fins de l’application de l’article 7, paragraphe 1, point e), sous ii), du RMC, de manière aussi objective que possible. Elle a ajouté que cette identification peut, selon le cas, et en particulier eu égard au degré de difficulté de celui-ci, s’effectuer par une simple analyse visuelle dudit signe ou, au contraire, s’appuyer sur un examen approfondi dans le cadre duquel sont pris en compte des éléments utiles à l’appréciation, tels que des enquêtes et des expertises, ou encore des données relatives à des droits de propriété intellectuelle conférés antérieurement en rapport avec le produit concerné (point 71).
Elle a par ailleurs estimé que
«la fonctionnalité technique des caractéristiques d’une forme peut être appréciée, notamment, en tenant compte de la documentation relative aux brevets antérieurs qui décrivent les éléments fonctionnels de la forme concernée» (point 85).
En conséquence, le fait que la forme concernée est, ou a été, revendiquée dans un brevet enregistré ou une demande de brevet constitue, à première vue, une preuve que les aspects de la forme identifiés comme fonctionnels dans la revendication de brevet sont nécessaires à l’obtention d’un résultat technique (les chambres de recours ont suivi cette approche, par exemple, dans leur décision du 17/10/2013 dans l’affaire R 42/2013-1).
Une affaire concernant la forme suivante demandée pour des «couteaux et manches de couteaux» donne un exemple de la manière d’identifier les caractéristiques essentielles d’une forme et d’évaluer si elles ont toutes une fonction technique:
Signe Affaire
Arrêt du 19/09/2012, T-164/11 «Manche de couteau»
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Dans ce cas, la forme demandée était décrite comme
[...] un manche de couteau légèrement courbé caractérisé par un petit angle de cinq à dix degrés entre la lame du couteau et l’axe longitudinal de la poignée en nacre, qui possède une section intermédiaire avec une section transversale extérieure un peu arrondie qui s’élargit vers une extrémité arrière effilée. Le manche comporte également une vis moletée dans l’enveloppe du couteau.
Le Tribunal a déclaré ce qui suit:
Ainsi qu’il ressort de ce brevet [sur lequel le demandeur en nullité s’appuie], l’effet technique de l’angle entre la lame du couteau et l’axe longitudinal de la poignée en nacre est de faciliter la découpe. La forme de la section intermédiaire revêt une importance particulière pour les longues découpes. Elle rend la découpe plus précise tout en permettant d’exercer une pression plus forte. Enfin, la vis moletée permet d’ouvrir l’enveloppe et de changer les lames du couteau sans utiliser d’autres outils tout en ne gênant pas la manipulation du couteau durant l’utilisation (point 30).
Il a conclu que les éléments les plus importants du signe, constituant les caractéristiques essentielles de celui-ci, sont tous exclusivement fonctionnels (point 33).
2.5.4 Forme qui donne une valeur substantielle au produit
En vertu de l’article 7, paragraphe 1, point e), sous iii), du RMC, les signes constitués exclusivement par la forme qui donne une valeur substantielle au produit ne peuvent être enregistrés ou, s’ils sont enregistrés, sont susceptibles d’être déclarés nuls.
Si la même forme peut, en principe, être protégée en tant que dessin ou modèle et en tant que marque, il convient de noter que l’article 7, paragraphe 1, point e), sous iii), du RMC refuse uniquement la protection de marque à des formes dans certains cas spécifiques, à savoir lorsque le signe est constitué exclusivement par la forme qui donne une valeur substantielle au produit.
Le concept de «valeur» doit être interprété, non seulement en termes commerciaux (économiques), mais aussi en termes d’«attractivité», à savoir la probabilité que les produits seront achetés principalement du fait de leur forme particulière. Il ne doit toutefois pas être interprété comme signifiant «renommée», étant donné que l’application de ce motif absolu de refus est exclusivement justifiée par l’effet sur la valeur qu’ajoute la forme aux produits et non par d’autres facteurs, comme la renommée de la marque verbale qui est également utilisée pour identifier les produits en question (voir à cet égard la décision du 16/01/2013 dans l’affaire R 2520/2011-5, paragraphe 19).
Comme l’a rappelé le Tribunal, l’objectif immédiat de l’interdiction d’enregistrer les formes qui confèrent une valeur substantielle aux produits est le même que dans le cas des formes purement fonctionnelles, à savoir d’éviter que le droit exclusif et permanent que confère une marque puisse servir à perpétuer d’autres droits que le législateur a voulu soumettre à des «délais de péremption» (voir arrêt du 06/10/2011, T-508/08, «Représentation d’un haut-parleur», point 65).
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À ce jour, la principale affaire importante relative aux formes qui confèrent une valeur substantielle aux produits concerne la représentation tridimensionnelle d’un haut- parleur telle que reproduite ci-dessous.
Signe Affaire Produits
Décision du 10/09/2008, R 497/2005-1
Arrêt du 06/10/2011, T-508/08,
«Représentation d’un haut- parleur»
En plus des haut-parleurs, autres appareils pour la réception, le traitement, la reproduction, le réglage ou la distribution de
signaux sonores compris dans la classe 9 ainsi que les meubles de
musique compris dans la classe 20.
Dans son arrêt du 06/10/2011, T-508/08, «Représentation d’un haut-parleur», le Tribunal a confirmé la conclusion de la chambre de recours selon laquelle le signe en question relevait du champ d’application de l’article 7, paragraphe 1, point e), sous iii), du RMC. Il s’agit, jusqu’à présent, du seul arrêt du juge de l’Union abordant le fond de la question des formes ornementales qui confèrent une valeur substantielle aux produits.
Le Tribunal a estimé que, pour des produits tels que ceux énumérés ci-dessus, le design était un élément qui serait très important dans le choix du consommateur, même si le consommateur prenait également en considération d’autres caractéristiques du produit en cause. Après avoir déclaré que la forme pour laquelle l’enregistrement était demandé témoignait d’un design très spécifique et qu’elle était un élément essentiel de la stratégie de marque de la requérante qui augmentait l’attractivité du produit en cause et, par conséquent sa valeur, le Tribunal a également signalé qu’il ressortait des éléments du dossier, à savoir des extraits de sites internet de distributeurs, de vente aux enchères ou de vente de produits d’occasion, que les caractéristiques esthétiques de cette forme étaient soulignées en premier et qu’une telle forme était perçue comme une sorte de sculpture pure, élancée et intemporelle pour la reproduction de musique, ce qui en faisait un argument de vente important (point 75). Le Tribunal a donc conclu que, indépendamment des autres caractéristiques du produit en cause, la forme pour laquelle l’enregistrement était demandé conférait une valeur substantielle auxdits produits.
Il ressort de l’arrêt précité qu’il importe de déterminer si la valeur esthétique d’une forme peut, en soi, déterminer la valeur commerciale du produit et le choix du consommateur dans une grande mesure. Le fait que la valeur globale du produit soit également affectée par d’autres facteurs, si la valeur donnée par la forme elle-même est substantielle, est sans pertinence.
Dans la pratique, ce motif de refus s’applique à presque tous les produits où la forme de l’objet concerné est le principal facteur, mais pas forcément le seul, qui détermine la décision d’achat. Cela sera par exemple le cas avec des objets d’art et des articles tels que des bijoux, des vases et d’autres objets achetés essentiellement du fait de la valeur esthétique liée à leur forme.
En outre, le fait que la forme puisse être plaisante ou attrayante ne suffit pas pour qu’elle soit exclue de l’enregistrement. Si tel était le cas, il serait virtuellement impossible d’imaginer une marque d’une forme, vu que, dans le monde moderne des
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affaires, aucun produit d’utilité industrielle n’a fait l’objet d’une étude, d’une recherche et d’un dessin industriel avant son éventuel lancement sur le marché [voir la décision du 03/05/2000, R 395/1999-3, «Buckle (Gancino quadrato singolo)», paragraphes 1 et 2 et 22 à 36].
Par exemple, la chambre a estimé que la forme ci-dessous ne donnait pas de valeur substantielle au produit.
Signe Affaire
Décision du 14/12/2010, R 486/2010-2 «Shape of a chair»
La chambre a estimé que, si la forme ci-dessus était esthétiquement agréable et présentait un certain attrait visuel, elle ne divergeait pas suffisamment des normes de présentation des chaises à la date de dépôt de la demande. Elle a également estimé que la chaise était également achetée pour servir de siège et être utilisée comme un meuble confortable de bureau à la maison ou sur le lieu de travail. Elle a distingué cette affaire de celle concernant le signe «haut-parleur» précité, signalant que les caractéristiques telles que le fait que son dossier soit courbé, apportant ainsi un support lombaire, et que les accoudoirs renforcent également son confort, à l’instar des quatre roulettes, étaient visibles sur la forme, contrairement aux caractéristiques techniques du haut-parleur dans l’autre affaire.
La chambre a estimé que le statut d’«icône de design» invoqué par le titulaire de la MC pour la chaise ci-dessus ne montrait pas automatiquement que la valeur du produit résidait essentiellement dans la forme en elle-même, mais qu’elle résultait plutôt du fait que la chaise était dotée d’un design solide, confortable et ergonomique, devenu célèbre grâce, en particulier, aux énormes efforts de commercialisation déployés au fil des ans.
La chambre a également observé que le titulaire de la MC n’avait pas affirmé que la valeur de la forme résidait dans son attrait visuel, et que le demandeur en nullité n’avait pas produit de preuves démontrant que les vendeurs faisaient la publicité de la chaise en question en se fondant principalement sur son aspect esthétique (paragraphes 21- 23).
Il est nécessaire d’adopter une approche au cas par cas dans le cadre de l’examen de ces marques. Dans la plupart des cas, un examen approprié ne sera possible que lorsque, au vu des informations et des documents fournis par le demandeur (ou un tiers), il existe des preuves que la valeur esthétique de la forme peut, en soi, déterminer la valeur commerciale du produit et le choix du consommateur dans une grande mesure. Cela a précisément été le cas dans les deux affaires précitées: dans l’affaire «haut-parleur», ce n’est qu’après un examen méticuleux des preuves produites
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par le demandeur que la chambre a contesté le signe pour ce motif; et dans la dernière affaire citée ci-dessus, les preuves avaient été fournies par le demandeur en nullité, mais se sont révélées insuffisantes.
2.6 Caractère distinctif acquis
2.6.1 Introduction
Conformément à l’article 7, paragraphe 3, du RMC, une marque peut toujours être enregistrée malgré le fait qu’elle ne satisfasse pas aux dispositions de l’article 7, paragraphe 1, point b), c) ou d), du RMC, si «la marque a acquis pour les produits ou services pour lesquels est demandé l’enregistrement un caractère distinctif après l’usage qui en a été fait».
L’article 7, paragraphe 3, du RMC constitue une exception à la règle établie par l’article 7, paragraphe 1, point b), c) ou d), du RMC, en vertu de laquelle sont refusées à l’enregistrement les marques qui sont intrinsèquement dépourvues de caractère distinctif, les marques descriptives et les marques qui sont composées exclusivement d’indications devenues usuelles dans le langage courant ou dans les habitudes loyales et constantes du commerce.
Le caractère distinctif acquis par l’usage signifie que, bien que le signe soit dépourvu ab initio d’un caractère distinctif intrinsèque en ce qui concerne les produits et services revendiqués, en raison de l’usage qui en a été fait sur le marché, le public pertinent en est venu à le percevoir comme identifiant les produits et services revendiqués dans la demande de marque communautaire comme provenant d’une entreprise déterminée. Dès lors, le signe est devenu apte à distinguer les produits et services de ceux d’autres entreprises car ils sont perçus comme provenant d’une entreprise particulière. De la sorte, un signe ne pouvant, à l’origine, être enregistré en vertu de l’article 7, paragraphe 1, point b), c) ou d), du RMC peut acquérir une nouvelle portée et sa signification, qui n’est plus seulement descriptive ou non distinctive, lui permet de surmonter les motifs absolus de refus d’enregistrement en tant que marque qui, dans le cas contraire, se seraient appliqués.
2.6.2 Demande
L’Office n’examinera le caractère distinctif acquis qu’à la suite d’une demande du demandeur de la marque communautaire, qui peut être déposée à tout moment pendant la procédure d’examen.
2.6.3 Moment auquel doivent se rapporter les éléments de preuve
Les éléments de preuve doivent établir que le caractère distinctif par l’usage a été acquis avant la date de dépôt de la demande de marque communautaire. Dans le cas d’un enregistrement international, la date pertinente est la date d’enregistrement par le Bureau international. Lorsque la priorité est revendiquée, la date pertinente est la date de priorité. Ci-après, toutes ces dates sont dénommées «date de dépôt».
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2.6.3.1 Procédure d’examen
Étant donné qu’une marque jouit d’une protection à compter de sa date de dépôt et que la date de dépôt détermine la priorité d’une marque par rapport à une autre, une marque doit être enregistrable à cette date. En conséquence, le demandeur doit prouver que le caractère distinctif a été acquis par l’usage de la marque avant la date de demande d’enregistrement (voir arrêt du 11/06/2009, C-542/07 P, «Pure Digital», points 49 et 51; et arrêt du 07/09/2006, C-108/05, «Europolis», point 22). Les preuves de l’usage fait de la marque après cette date ne doivent pas être automatiquement ignorées, dans la mesure où elles peuvent fournir des indications concernant la situation avant la date de la demande (voir arrêt du 28/10/2009, T-137/08, «Combinaison des couleurs verte et jaune», point 49).
2.6.3.2 Procédure d’annulation
Dans une procédure d’annulation, lorsque la marque communautaire a été enregistrée contrairement à l’article 7, paragraphe 1, point b), c) ou d), du RMC, elle ne peut toutefois plus être déclarée nulle si, par l’usage qui en a été fait, elle a acquis après son enregistrement un caractère distinctif pour les produits ou les services pour lesquels elle est enregistrée (article 52, paragraphe 2, du RMC).
L’objectif de cette norme est précisément de maintenir l’enregistrement de marques qui, en raison de l’usage qui en a été fait, ont, entre-temps, c’est-à-dire après leur enregistrement, acquis un caractère distinctif pour les produits ou services pour lesquels elles ont été enregistrées, malgré la circonstance que cet enregistrement, au moment où il est intervenu, était contraire à l’article 7 du RMC (voir arrêt du 14/12/2011, T-237/10, «Louis Vuitton», point 86, et arrêt du 15/10/2008, T-405/05, «Manpower», point 127).
2.6.4 Consommateur
Le caractère distinctif d’un signe, y compris celui acquis par l’usage qui en a été fait, doit être apprécié par rapport à la perception présumée d’un consommateur moyen de la catégorie des produits ou des services en cause, normalement informé et raisonnablement attentif et avisé. La définition du public pertinent est liée à l’examen des destinataires des produits concernés, car c’est par rapport à ceux-ci que la marque doit développer sa fonction essentielle. Ainsi, une telle définition doit être effectuée à la lumière de la fonction essentielle des marques, à savoir garantir au consommateur ou à l’utilisateur final l’identité d’origine du produit ou du service désigné par la marque, en lui permettant de distinguer sans confusion possible ce produit ou ce service de ceux qui ont une autre provenance (voir arrêt du 29/09/2010, T-378/07, «Combinaison des couleurs rouge, noire et grise pour un tracteur», points 33 et 38).
Le consommateur pertinent inclut dès lors non seulement les personnes qui ont réellement acheté les produits et services mais aussi toute personne potentiellement intéressée, au sens strict de futurs acheteurs (voir arrêt du 29/09/2010, T-378/07, «Combinaison des couleurs rouge, noire et grise pour un tracteur», points 41 et suivants).
Les futurs acheteurs sont définis par le produit ou service précis pour lequel l’enregistrement est demandé. Si les produits ou services revendiqués sont larges (par exemple, des sacs ou des montres), il importe peu que les produits réels proposés sous le signe soient des articles de luxe extrêmement coûteux – le public inclura tous
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les futurs acheteurs des produits revendiqués dans la demande de marque communautaire, y compris les articles non luxueux et moins chers si la revendication concerne la large catégorie.
2.6.5 Produits et services
Étant donné que l’une des principales fonctions d’une marque est de garantir la provenance des produits et des services, le caractère distinctif acquis doit être apprécié par rapport aux produits et services en cause. En conséquence, les éléments du demandeur doivent prouver l’existence d’un lien entre le signe et les produits et services pour lesquels le signe est demandé, établissant que les milieux intéressés ou à tout le moins une fraction significative de ceux-ci identifient grâce à la marque le produit comme provenant d’une entreprise déterminée (voir arrêt du 04/05/1999, C-108/97 et C-109/97, «Chiemsee», point 52, et arrêt du 19/05/2009, T-211/06, «Cybercrédit et al.», point 51).
2.6.6 Aspects territoriaux
Conformément à l’article 1er du RMC, une marque communautaire a un effet unitaire et produit les mêmes effets dans l’ensemble de l’Union européenne. L’article 7, paragraphe 2, du RMC dispose qu’une marque doit être refusée à l’enregistrement même si un motif absolu de refus n’existe que dans une partie de l’Union européenne.
Il s’ensuit logiquement que le caractère distinctif acquis doit être établi sur tout le territoire sur lequel la marque était dépourvue ab initio d’un tel caractère (voir arrêt du 22/06/2006, C-25/05 P, «Emballage de bonbon», points 83 et 86; et arrêt du 29/09/2010, T-378/07, «Combinaison des couleurs rouge, noire et grise pour un tracteur», point 30).
En effet, le caractère unitaire de la marque communautaire exige qu’un signe possède un caractère distinctif, intrinsèque ou acquis par l’usage, dans l’ensemble de l’Union (voir arrêt du 17/05/2011, T-7/10, «υγεία», point 40). Il serait paradoxal d’admettre, d’une part, en application de l’article 3, paragraphe 1, point b), de la directive sur les marques, qu’un État membre soit tenu de refuser l’enregistrement comme marque nationale d’un signe dépourvu de caractère distinctif sur son territoire et, d’autre part, que ce même État soit tenu de respecter une marque communautaire relative à ce même signe pour la seule raison que celui-ci aurait acquis un caractère distinctif sur le territoire d’un autre État membre (voir arrêt du 14/12/2011, T-237/10, «Louis Vuitton», point 100).
2.6.6.1 Dispositions spéciales concernant l’adhésion de nouveaux États membres
Conformément aux dispositions des traités d’adhésion à l’UE, une marque communautaire demandée avant la date d’adhésion d’un État membre donné ne peut être rejetée que pour des raisons qui existaient déjà avant la date d’adhésion. Dès lors, dans la procédure d’examen de l’Office, le caractère distinctif acquis ne doit être démontré qu’en ce qui concerne les États membres de l’UE au moment de la demande de marque communautaire, et non ceux qui ont adhéré à l’UE ultérieurement.
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2.6.6.2 Marques tridimensionnelles, couleurs en elles-mêmes et marques figuratives
Si l’objection existe dans toute l’Union européenne, comme c’est normalement le cas pour les marques tridimensionnelles, les couleurs en elles-mêmes et les marques figuratives consistant exclusivement en la représentation des produits en cause, le caractère distinctif acquis doit être prouvé dans l’ensemble de l’Union européenne. En ce qui concerne la possibilité d’extrapolation des éléments de preuve, voir le point 2.12.8.7 ci-dessous.
2.6.6.3 Zone linguistique
Lorsque la marque communautaire demandée est rejetée eu égard à sa signification dans une langue spécifique, le caractère acquis par l’usage doit être démontré au moins en ce qui concerne les États membres dans lesquels cette langue est une langue officielle.
Il convient de prendre des précautions particulières lorsqu’une langue est une langue officielle dans plus d’un État membre de l’UE. En l’espèce, lors du traitement d’une objection fondée sur des motifs absolus en raison de la signification des termes dans une certaine langue, le caractère distinctif acquis par l’usage doit être prouvé pour chaque État membre où cette langue est officielle (ainsi que pour tout autre État membre ou marché où elle sera comprise).
(a) Les exemples de langues qui sont des langues officielles dans plus d’un État membre de l’UE comprennent les langues suivantes:
Allemand
L’allemand est une langue officielle en Allemagne et en Autriche ainsi qu’au Luxembourg et en Belgique. Tout argument selon lequel le caractère distinctif acquis par l’usage permet au signe demandé de surmonter une objection fondée sur un motif absolu en raison de la signification des termes en langue allemande doit automatiquement être examiné pour tous ces pays.
Grec
Le grec est une langue officielle non seulement en Grèce mais aussi à Chypre. Tout argument selon lequel le caractère distinctif acquis par l’usage permet au signe demandé de surmonter une objection fondée sur un motif absolu en raison de la signification des termes en langue grecque doit automatiquement être examiné pour ces deux pays.
Anglais
L’anglais est une langue officielle au Royaume-Uni, en Irlande et à Malte. Tout argument selon lequel le caractère distinctif acquis par l’usage permet au signe demandé de surmonter une objection fondée sur un motif absolu en raison de la signification des termes en langue anglaise doit automatiquement être examiné pour tous ces pays.
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Français
Le français est une langue officielle non seulement en France mais aussi en Belgique et au Luxembourg. Tout argument selon lequel le caractère distinctif acquis par l’usage permet au signe demandé de surmonter une objection fondée sur un motif absolu en raison de la signification des termes en langue française doit automatiquement être examiné pour tous ces pays.
Néerlandais
Le néerlandais est une langue officielle non seulement aux Pays-Bas mais aussi en Belgique. Tout argument selon lequel le caractère distinctif acquis par l’usage permet au signe demandé de surmonter une objection fondée sur un motif absolu en raison de la signification des termes en langue néerlandaise doit automatiquement être examiné pour ces deux pays.
Suédois
Le suédois est une langue officielle non seulement en Suède mais aussi en Finlande. Tout argument selon lequel le caractère distinctif acquis par l’usage permet au signe demandé de surmonter une objection fondée sur un motif absolu en raison de la signification des termes en langue suédoise doit automatiquement être examiné pour ces deux pays.
(b) Compréhension de la langue d’un État membre dans les États membres dont elle n’est pas une langue officielle
Outre les États membres où la langue des termes d’un signe est une langue officielle de l’UE, il convient également d’examiner si une langue officielle de l’UE donnée est comprise dans d’autres États membres où elle n’est pas officielle. Il se peut en effet que, en fonction des produits et services revendiqués dans la demande de marque communautaire, le public pertinent dans cet État membre ait une compréhension élémentaire de la langue en question, ou que le public pertinent se compose de spécialistes qui comprennent certains termes techniques de la langue officielle d’un autre État membre de l’UE. Si tel est le cas, le caractère distinctif acquis doit être prouvé pour le public pertinent de ces autres États membres de l’UE, et pas seulement des États membres pour lesquels il s’agit de la langue officielle.
À titre d’exemple, le Tribunal a jugé qu’une partie très importante des consommateurs et des professionnels européens a une connaissance élémentaire de la langue anglaise (arrêt du 26/09/2012, T-301/09, «Citigate», point 41). En conséquence, en fonction du consommateur pertinent des produits et services en cause et selon que le signe se compose ou non d’un terme anglais élémentaire, le caractère distinctif acquis peut également devoir être apprécié en ce qui concerne d’autres États membres.
Passant du grand public à un public plus spécialisé pour les produits et services, le Tribunal a considéré que certains termes anglais dans le domaine médical (voir arrêt du 29/03/2012, T-242/11, «3D eXam», point 26), dans les domaines techniques (voir arrêt du 09/03/2012, T-172/10, «Base-seal», point 54) et dans les questions financières (voir arrêt du 26/09/2012, T-301/09, «Citigate», point 41) seront compris par les professionnels pertinents dans toute l’Union européenne étant donné que l’anglais est la langue professionnelle couramment utilisée dans ces domaines.
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Par ailleurs, étant donné que la compréhension des langues n’est pas strictement limitée par les frontières géographiques, il se peut que, pour des motifs historiques, culturels ou de marché transfrontalier, un certain vocabulaire (généralement élémentaire) d’une langue donnée puisse s’étendre et puisse être largement compris par le grand public d’autres États membres, notamment ceux ayant des frontières terrestres contigües. À titre d’exemple, l’allemand et le français sont couramment utilisés respectivement dans les régions italiennes du Trentin-Haut-Adige et du Val d’Aoste.
2.6.7 Ce qui doit être prouvé
La Cour de justice a fourni des orientations sur les conditions qui doivent donner lieu à une conclusion selon laquelle une marque a acquis un caractère distinctif par l’usage: «si l’autorité compétente estime qu’une fraction significative des milieux intéressés identifie grâce à la marque le produit comme provenant d’une entreprise déterminée, elle doit en tout état de cause en conclure que la condition exigée pour l’enregistrement de la marque est remplie» (voir arrêt du 04/05/1999, C-108/97 et C-109/97, «Chiemsee», points 45 et suivants).
En conséquence, les éléments de preuve doivent démontrer qu’une fraction significative du public pertinent pour les produits et services revendiqués dans le territoire pertinent perçoit la marque comme identifiant les produits ou services pertinents d’une entreprise spécifique; en d’autres termes, que l’usage de la marque a créé un lien dans l’esprit du public pertinent avec les produits ou services d’une entreprise spécifique, indépendamment du fait que les termes en cause soient dépourvus du caractère distinctif pour établir ce lien si cet usage n’avait pas eu lieu.
En ce qui concerne l’étendue de la pénétration du marché et la reconnaissance du public qu’une marque doit obtenir pour qu’il soit considéré qu’elle possède un caractère distinctif acquis par l’usage, en ce sens qu’elle est devenue apte à identifier les produits et services d’une entreprise par rapport à ceux d’autres entreprises pour le public pertinent, la jurisprudence ne prescrit pas de pourcentages fixes de reconnaissance du marché pour le public pertinent. Au lieu d’utiliser un pourcentage fixe dans un marché donné, les éléments de preuve doivent plutôt démontrer qu’une fraction significative du public perçoit la marque comme identifiant des produits ou services spécifiques.
Enfin, les éléments de preuve doivent se rapporter à chacun des produits et services revendiqués dans la demande de marque communautaire. Après une objection initiale fondée sur des motifs absolus au titre de l’article 7, paragraphe 1, point b), c) ou d), du RMC, seuls les produits et services revendiqués dans la demande pour lesquels le caractère distinctif acquis par l’usage a été prouvé seront enregistrables.
2.6.8 Les éléments de preuve et leur appréciation
En établissant le caractère distinctif acquis, le caractère probant des éléments suivants peut être pris en considération: la part de marché détenue par la marque, l’intensité, l’étendue géographique et la durée de l’usage de cette marque, l’importance des investissements faits par l’entreprise pour la promouvoir, la proportion des milieux intéressés qui identifie le produit comme provenant d’une entreprise déterminée grâce à la marque ainsi que les déclarations de chambres de commerce et d’industrie ou d’autres associations professionnelles (voir arrêt du 04/05/1999, C-108/97 et C-109/97,
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«Chiemsee», point 31; et arrêt du 29/09/2010, T-378/07, «Combinaison des couleurs rouge, noire et grise pour un tracteur», point 32).
L’Office n’est tenu d’examiner des faits susceptibles de conférer à la marque demandée un caractère distinctif acquis par l’usage, au sens de l’article 7, paragraphe 3, du RMC, que si le demandeur les a invoqués (voir arrêt du 12/12/2002, T-247/01, «Ecopy», point 47).
2.6.8.1 Le type d’éléments de preuve pouvant être soumis
Des exemples de preuve pouvant servir à indiquer certains ou l’ensemble des facteurs susmentionnés qui peuvent démontrer le caractère distinctif acquis incluent des éléments tels que des brochures de vente, des catalogues, des listes de prix, des factures, des rapports annuels, des chiffres d’affaires, des chiffres et rapports d’investissement dans la publicité, des publicités (coupures de presse, affiches, spots télévisés) accompagnés de preuves quant à leur intensité et leur portée, ainsi que des enquêtes auprès des clients et/ou des études de marché.
Les demandeurs doivent prendre grand soin de s’assurer que les éléments de preuve non seulement démontrent l’usage de la marque demandée mais sont aussi suffisants pour identifier les dates de cet usage et le territoire géographique spécifique de l’usage au sein de l’UE. Des éléments de preuve non datés seront normalement insuffisants pour démontrer que le caractère distinctif avait été acquis avant la date de dépôt, et des preuves de l’usage en dehors de l’UE ne peuvent démontrer la reconnaissance du marché requise du public pertinent dans l’UE. En outre, si les éléments de preuve mélangent des documents concernant des territoires de l’UE et extérieurs à l’UE, et ne permettent pas à l’Office d’identifier l’étendue spécifique de l’usage exclusivement dans l’UE, ils seront également dépourvus de valeur probante pour le public pertinent de l’UE.
L’article 78 du RMC contient une liste non exhaustive de moyens permettant de donner ou de fournir des éléments de preuve devant l’Office, qui peuvent servir d’orientations pour les demandeurs.
2.6.8.2 Appréciation des éléments de preuve dans leur ensemble
Étant donné que l’Office doit apprécier les éléments de preuve dans leur ensemble (R 0159/2005-4, «Metavit/MEXA-VIT C et al.», paragraphe 37), il n’est pas nécessaire que chacun des éléments de preuve soit à lui seul en mesure de prouver la question en litige. Cette preuve peut résulter d’une appréciation globale de tous les éléments de preuve soumis (voir arrêt du 07/06/2005, T-303/03, «Salvita», point 42; et la décision du 08/03/2006, R 0358/2004-4, «MediQi/MEDICE», paragraphe 34). Afin d’apprécier la valeur probante d’un document, il convient de prendre en considération sa vraisemblance, son origine, les circonstances de son élaboration, son destinataire, et de se demander s’il semble sensé et fiable (voir arrêt du 07/06/2005, T-303/03, «Salvita», point 42; et arrêt du 16/12/2008, T-86/07, «DEITECH» (marque figurative), points 46 et suivants).
2.6.8.3 Part de marché
La part de marché détenue par la marque est une indication qui peut être pertinente aux fins d’apprécier si cette marque a acquis un caractère distinctif par l’usage, dans la
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mesure où cette pénétration du marché pourrait permettre à l’Office de déduire que le public pertinent reconnaîtrait la marque comme identifiant les produits ou services d’une entreprise spécifique et donc distinguant ces produits ou services de ceux d’autres entreprises.
Le volume de publicité sur le marché pertinent pour les produits ou services revendiqués (tel que représenté par les frais de publicité engagés pour la promotion d’une marque) peut également être pertinent pour apprécier si la marque a acquis un caractère distinctif par l’usage (voir arrêt du 22/06/2006, C-25/05 P, «Emballage de bonbon», points 76 et suivants). Toutefois, de nombreuses tentatives visant à prouver le caractère distinctif acquis par l’usage échouent parce que les éléments de preuve du demandeur ne suffisent pas à prouver l’existence d’un lien entre la part de marché et la publicité, d’une part, et la perception du consommateur, d’autre part.
2.6.8.4 Sondages et enquêtes
Les sondages d’opinion concernant le niveau de reconnaissance de la marque par le public pertinent sur le marché concerné peuvent, s’ils sont réalisés de façon appropriée, constituer l’un des types de preuve les plus directs, étant donné qu’ils peuvent démontrer la perception réelle du public pertinent. Toutefois, il n’est pas aisé de formuler et mettre en œuvre correctement un sondage d’opinion afin qu’il soit perçu comme étant réellement neutre et représentatif. Il convient d’éviter les questions orientées, les échantillons non représentatifs du public et une publication indue des réponses qui peuvent saper la valeur probante de telles enquêtes.
Le Tribunal a considéré qu’il ne saurait être exclu a priori qu’une étude établie un certain temps avant ou après cette date puisse contenir des indications utiles, sachant toutefois que sa valeur probante est susceptible de varier en fonction de la proximité plus ou moins élevée de la période couverte avec la date de dépôt ou la date de priorité de la demande de marque en cause. De plus, sa valeur probante dépend de la méthode d’enquête employée (voir arrêt du 12/07/2006, T-277/04, «Vitacoat», points 38 et 39).
En conséquence, tous éléments de preuve fondés sur un sondage d’opinion doivent être appréciés attentivement. Il est important que les questions posées soient pertinentes et non orientées. Les critères pour la sélection du public interrogé doivent être appréciés avec soin. L’échantillon doit être indicatif de l’ensemble du public pertinent et, par conséquent, être sélectionné de façon aléatoire.
Les éléments de preuve provenant d’associations commerciales indépendantes, d’organisations de consommateurs et de concurrents doivent également se voir accorder de l’importance. Les éléments de preuve provenant de fournisseurs ou de distributeurs doivent, en général, se voir accorder moins de poids étant donné que leurs éléments de preuve sont moins susceptibles de provenir d’une perspective indépendante d’un tiers. À cet égard, le degré d’indépendance de ce dernier influencera le poids à accorder aux éléments de preuve par l’Office (voir arrêt du 28/10/2009, T-137/08, «Combinaison des couleurs verte et jaune»).
2.6.8.5 Chiffre d’affaires et publicité
Les informations concernant le chiffre d’affaires sont l’une des formes d’éléments de preuve les plus facilement disponibles pour les entreprises. Il en va de même des frais de publicité.
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Ces chiffres peuvent exercer un impact significatif sur l’appréciation des éléments de preuve mais, dans la grande majorité des cas, ne sont pas suffisants pour prouver à eux seuls la question du caractère distinctif acquis d’une marque par l’usage. En effet, les chiffres d’affaires/frais de publicité seuls, sans détails supplémentaires pour les corroborer, sont souvent trop généraux pour permettre de tirer des conclusions spécifiques quant à l’usage d’une marque particulière: il doit être possible d’identifier avec précision les chiffres d’affaires/frais de publicité et les éléments de preuve concernant la marque demandée, et les produits et services pertinents doivent également être identifiables.
Les produits et services sont souvent commercialisés sous plusieurs marques, ce qui ne permet pas de déterminer aisément la perception que le consommateur pertinent a de la seule marque demandée, et le chiffre d’affaires/les frais de publicité peuvent souvent inclure les ventes ou la promotion d’autres marques ou de formes significativement différentes de la marque en cause (par exemple, des marques figuratives au lieu de marques verbales, ou des éléments verbaux différents dans une marque figurative) ou sont souvent trop généraux pour permettre une identification des marchés spécifiques considérés. Par conséquent, un chiffre d’affaires ou des chiffres de publicité largement consolidés peuvent ne pas être suffisants pour prouver que le public pertinent perçoit la marque en cause comme une indication de l’origine ou non.
Lorsque des chiffres sont fournis pour le chiffre d’affaires ou la publicité, ces chiffres doivent se rapporter non seulement à la marque dont l’enregistrement est demandé mais aussi, plus spécifiquement, aux produits et services couverts par cette marque. Il est souhaitable que les chiffres d’affaires soient ventilés sur une base annuelle et marché par marché. La ou les périodes d’usage spécifiques (y compris les détails quant au moment où l’usage a débuté) doivent être indiquées par les éléments de preuve, afin que l’Office puisse avoir la conviction que les éléments prouvent que la marque a acquis un caractère distinctif avant la date de dépôt.
2.6.8.6 Preuve indirecte de l’usage
Les éléments de preuve peuvent inclure ou se composer d’enregistrements dans les États membres obtenus sur la base du caractère distinctif acquis.
La date à laquelle les éléments de preuve déposés au niveau national font référence sera généralement différente de la date de dépôt de la demande de marque communautaire. Ces enregistrements peuvent être pris en compte, bien qu’ils ne soient pas contraignants, lorsque l’examinateur est en mesure d’apprécier les éléments de preuve qui ont été présentés devant l’office national de la PI.
2.6.8.7 Extrapolation
Une autre question importante dans l’appréciation des éléments de preuve est de savoir si l’Office peut extrapoler à partir de preuves sélectives pour tirer des conclusions plus larges. Il s’agit de savoir dans quelle mesure les éléments de preuve démontrant le caractère distinctif acquis par l’usage dans certains États membres peuvent être utilisés pour faire des déductions en ce qui concerne la situation du marché dans d’autres États membres non couverts par ces éléments de preuve.
Une extrapolation de la sorte pour établir de plus larges inférences est particulièrement pertinente pour une Union européenne élargie comprenant de nombreux États
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membres, étant donné qu’il est très peu probable qu’une partie soit en mesure de fournir des éléments de preuve concernant l’ensemble de l’Union européenne mais aura plutôt tendance à se concentrer sur certaines régions.
Une extrapolation est possible lorsque le marché est homogène et si au moins certains éléments de preuve sont présentés. Les conditions du marché et les habitudes de consommation doivent être comparables. Par conséquent, il est particulièrement important que le demandeur présente des données concernant la taille du marché, sa propre part du marché et, si possible, de ses principaux concurrents, ainsi que ses dépenses de marketing. Ce n’est que si toutes les données sont comparables que l’Office peut extrapoler les résultats d’un territoire à un autre. Par exemple, si la marque communautaire est utilisée sur l’ensemble du territoire mais que les éléments de preuve ne se rapportent qu’à une partie de ce territoire, une inférence est possible si les circonstances sont comparables. Toutefois, si la marque communautaire n’est utilisée que dans une partie du territoire pertinent (et que les éléments de preuve en font mention), il sera généralement difficile d’extrapoler ces faits à d’autres parties du territoire.
2.6.8.8 Mode d’usage
Les éléments de preuve doivent présenter des exemples de la façon dont la marque est utilisée (brochures, emballage, échantillons des produits, etc.). Il convient de n’accorder aucun poids à l’usage d’une marque substantiellement différente.
Il arrive parfois que l’usage démontré soit celui d’un signe qui, tout en étant similaire à la marque demandée, est en soi distinctif. En l’espèce, les éléments de preuve doivent être ignorés. Le caractère distinctif acquis doit être démontré en ce qui concerne le signe demandé. Toutefois, conformément à l’article 15, paragraphe 1, point a), du RMC, des modifications mineures au signe n’altérant pas le caractère distinctif du signe peuvent être autorisées (voir la décision du 15/01/2010, «PLAYNOW», R 0735/2009-2; et la décision du 09/02/2010, «EUROFLORIST», R 1291/2009-2).
Il est possible de prouver le caractère distinctif d’un signe qui a été utilisé en combinaison avec d’autres marques (voir arrêt du 28/10/2009, T-137/08, «Combinaison des couleurs verte et jaune», point 27), à condition que le consommateur pertinent attribue la fonction d’identification au signe en cause (voir arrêt du 07/07/2005, C-353/03, «Have a break»; arrêt du 30/09/2009, T-75/08, «!» (marque figurative), point 43; et arrêt du 28/10/2009, T-137/08, «Combinaison des couleurs verte et jaune», point 46).
2.6.8.9 Durée de l’usage
Les éléments de preuve doivent indiquer quand l’usage a débuté et doivent également démontrer que l’usage a été continu ou indiquer les raisons en cas d’interruptions pendant la période de l’usage.
En règle générale, l’utilisation de longue date est susceptible d’être un élément de persuasion important lorsqu’il s’agit d’établir le caractère distinctif acquis. Plus les clients et les clients potentiels ont été exposés longtemps à la marque, plus ils sont susceptibles d’avoir établi un rapport entre la marque et une source particulière dans le commerce.
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Toutefois, considérant que la durée de l’usage n’est que l’un des facteurs à prendre en considération, il se peut que des exceptions à la règle précitée soient justifiées dans certains cas, en particulier lorsque d’autres facteurs qui sont capables de contrebalancer une durée d’usage courte sont à prendre en compte. Par exemple, lorsque les produits ou services font l’objet d’un lancement d’une vaste campagne publicitaire et/ou lorsque le signe demandé est une simple variante d’un signe déjà utilisé depuis longtemps, il se peut que le caractère distinctif acquis soit obtenu assez rapidement.
Cela pourrait par exemple être le cas lorsqu’une nouvelle version d’un système d’exploitation informatique bien implanté et utilisé à grande échelle est lancée sous un signe qui reproduit fondamentalement la structure et/ou le contenu de la marque utilisée dans des versions antérieures du produit. La marque de ce nouveau produit serait apte à obtenir un caractère distinctif acquis de grande envergure sur une période assez courte, pour la simple raison que tous les utilisateurs existants sauront immédiatement que le signe demandé est à rattacher à une mise à niveau de la version antérieure du produit.
Dans le même ordre d’idées, il est consubstantiel à certaines manifestations sportives de grande ampleur de se dérouler à intervalles réguliers de même qu’il est bien connu qu’elles génèrent un véritable enthousiasme auprès du public concerné. Des millions de personnes attendent impatiemment ces manifestations sportives, la date à laquelle elles sont censées avoir lieu étant connue avant l’annonce officielle du lieu où elles se dérouleront. Tout cela suscite un immense intérêt pour l’endroit où ces manifestations ont lieu ainsi que pour l’annonce y afférente. Il est donc raisonnable de supposer qu’une fois l’annonce faite de l’attribution d’un tournoi ou de jeux à une ville ou à un pays particulier, pratiquement tous les consommateurs pertinents ayant un intérêt pour le(s) sport(s) concerné(s) ou les professionnels du secteur sont susceptibles d’être informés desdites manifestations sportives de manière instantanée. Une marque utilisée pour une manifestation à venir peut donc ainsi acquérir rapidement, voire instantanément, un caractère distinctif, en particulier lorsque le signe reproduit la structure de marques utilisées antérieurement, le public percevant ainsi immédiatement la nouvelle manifestation comme la suite logique d’une série d’événements dont la réputation n’est plus à faire.
L’appréciation de cet éventuel caractère distinctif acquis de manière instantanée obéira aux critères généraux concernant, par exemple, le degré d’utilisation, le territoire, la date pertinente ou le public ciblé, au sujet desquels les normes générales sont applicables, et concernant aussi l’obligation pour le demandeur de fournir les preuves pertinentes. La seule particularité porte sur la durée de l’usage et la possibilité que, dans certaines circonstances, l’acquisition du caractère distinctif acquis puisse se produire très rapidement, voire instantanément. Comme pour toute autre revendication de caractère distinctif acquis, c’est au demandeur qu’il incombe de prouver que le public est en mesure de percevoir la marque en question comme un signe distinctif.
2.6.8.10 Preuves postérieures à la date de dépôt
Les éléments de preuve doivent démontrer que la marque avait acquis un caractère distinctif par l’usage avant la date de dépôt.
Toutefois, des éléments de preuve ne peuvent être rejetés au simple motif qu’ils sont postérieurs à la date de dépôt, étant donné qu’ils peuvent donner des indications sur la situation avant la date de dépôt. En conséquence, il convient d’apprécier ces éléments de preuve et de leur accorder l’importance adéquate.
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À titre d’exemple, une marque qui bénéficie d’une reconnaissance particulièrement pertinente sur le marché ou d’une solide part de marché pertinente quelques mois après la date de dépôt peut avoir également acquis un caractère distinctif à la date de dépôt.
2.6.9 Conséquences du caractère distinctif acquis
Une marque enregistrée conformément à l’article 7, paragraphe 3, du RMC bénéficie de la même protection que toute autre marque qui a été jugée intrinsèquement enregistrable lors de l’examen.
Si la demande de marque communautaire est acceptée sur la base de l’article 7, paragraphe 3, du RMC, cette information est publiée au Bulletin des marques communautaires, en utilisant le code INID 521.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 0
INTRODUCTION
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Table des matières
1 Présentation de la procédure d’opposition – différence entre les notions de « motifs absolus » et de « motifs relatifs » pour le rejet d’une demande de marque communautaire............................................ 3
2 Motifs de l’opposition................................................................................ 3
3 « Droits antérieurs » sur lesquels l’opposition doit se fonder .............. 4
4 Objectif de la procédure d’opposition et traitement le plus opportun d’une telle procédure ................................................................................ 5
ANNEXE ............................................................................................................ 7
Contenu et structure des décisions d’opposition ......................................... 7 1 Remarques générales ................................................................................7 2 Règles procédurales – recevabilité et justification ..................................9 3 Preuve d’usage...........................................................................................9 4 Article 8, paragraphe 1, point a), du RMC.................................................9 5 Article 8, paragraphe 1, point b), du RMC...............................................10
5.1 Comparaison des produits et services ......................................................... 10 5.2 Comparaison des signes .............................................................................. 10 5.3 Éléments distinctifs et dominants des marques ........................................... 11 5.4 Caractère distinctif de la marque antérieure ................................................ 11 5.5 Public pertinent – niveau d’attention ............................................................ 12 5.6 Appréciation globale, autres arguments et conclusion................................. 12
6 Article 8, paragraphe 3, du RMC..............................................................12 7 Article 8, paragraphe 4, du RMC..............................................................13
7.1 Utilisation dans la vie des affaires dont la portée n’est pas seulement locale ...................................................................................................................... 14
7.2 Droit en vertu de la législation nationale ...................................................... 14 7.3 Droit de l’opposant à l’égard de la marque contestée.................................. 14 7.4 Conformité avec le critère fixé par la législation nationale ........................... 14
8 Article 8, paragraphe 5, du RMC..............................................................15 8.1 Comparaison des signes .............................................................................. 15 8.2 Renommée de la marque antérieure............................................................ 15 8.3 Empiètement sur la renommée .................................................................... 16 8.4 Juste motif .................................................................................................... 16
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1 Présentation de la procédure d’opposition – différence entre les notions de « motifs absolus » et de « motifs relatifs » pour le rejet d’une demande de marque communautaire
L’opposition est une procédure qui se déroule devant l’OHMI lorsqu’un tiers demande à l’Office, sur la base de droits antérieurs qu’il détient, de rejeter une demande de marque communautaire ou un enregistrement international désignant l’UE.
Lorsqu’une opposition est formée à l’encontre d’un enregistrement international désignant l’UE, les références relatives aux demandes de marques communautaires contenues dans ces directives doivent être comprises comme couvrant ces enregistrements internationaux. Des directives spécifiques ont été rédigées pour les marques internationales qui contiennent des précisions concernant les oppositions.
Conformément au règlement (CE) n° 207/2009 du Conseil du 26 février 2009 sur la marque communautaire (« RMC »), l’opposition doit se fonder sur des droits détenus par l’opposant sur une marque antérieure ou sur une autre forme de signe commercial. Les motifs sur lesquels l’opposition peut être fondée, appelés « motifs relatifs de refus », et les dispositions correspondantes sont présentés à l’article 8 du RMC, qui porte ce titre. Contrairement aux motifs absolus de refus, qui sont examinés d’office par l’Office (et qui peuvent prendre en considération les observations de tiers sans pour autant que ceux-ci deviennent parties à la procédure), les motifs relatifs de refus interviennent dans le cadre de procédures inter partes qui trouvent leur origine dans un conflit probable avec des droits antérieurs. Ces objections pour motifs relatifs ne sont pas examinées d’office par l’Office. Il incombe dès lors au titulaire du droit antérieur de se montrer vigilant à l’égard des demandes de marques communautaires déposées par des tiers qui pourraient être incompatibles avec ces droits antérieurs, et de former une opposition aux marques en cause, le cas échéant.
Lorsqu’une opposition est formée dans les délais prescrits et que les taxes correspondantes sont payées, la procédure est gérée par le service spécialisé de l’Office (la division d’opposition) et comprend généralement un échange d’observations entre l’opposant et le demandeur (les « parties »). Après examen de ces observations, et si les parties ne parviennent pas à un accord, la division d’opposition décide (en vertu d’une « décision » pouvant faire l’objet d’un recours) de rejeter, en tout ou en partie, la demande contestée ou de rejeter l’opposition. Si l’opposition n’est pas fondée, elle est rejetée. Si la demande de marque communautaire n’est pas totalement rejetée et s’il n’existe aucune autre opposition pendante, il est procédé à l’enregistrement de la marque.
2 Motifs de l’opposition
Les motifs pour lesquels une opposition peut être formée sont précisés à l’article 8 du RMC.
L’article 8 du RMC permet aux titulaires de fonder leur opposition sur leurs droits antérieurs pour empêcher l’enregistrement de demandes de marques communautaires dans divers cas de figure, allant de l’identité absolue (c.-à-d. double) entre des produits et/ou services et des marques (article 8, paragraphe 1, point a), du RMC, lorsque le risque de confusion est présumé, et ne doit pas être prouvé) à la similitude (article 8, paragraphe 1, point b), du RMC, en vertu duquel il doit y avoir un risque de
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confusion) (voir les Directives, partie C, Opposition, section 2, Double identité et risque de confusion).
L’article 8, paragraphe 3, du RMC permet au titulaire d’une marque d’empêcher le dépôt non autorisé de sa marque par son agent ou son représentant (voir les Directives, partie C, Opposition, section 3, Marques déposées par un agent).
L’article 8, paragraphe 4, du RMC permet au titulaire d’une marque antérieure non enregistrée ou d’un autre signe utilisé dans la vie des affaires dont la portée n’est pas seulement locale d’empêcher l’enregistrement d’une marque communautaire plus récente lorsque le titulaire a le droit d’interdire l’utilisation de cette marque. Bien que le risque de confusion ne soit pas expressément mentionné dans cet article, l’application des législations pertinentes en vertu de l’article 8, paragraphe 4, du RMC exige souvent une analyse du risque de confusion (voir les Directives partie C, Opposition, section 4, Droits non enregistrés).
L’article 8, paragraphe 5, du RMC permet aux titulaires d’une marque antérieure enregistrée jouissant d’une renommée d’empêcher l’enregistrement d’une demande de marque communautaire plus récente qui empiéterait indûment sur la renommée de la marque antérieure. Le risque de confusion ne constitue pas une condition à l’application de cet article. En effet, l’article 8, paragraphe 5, du RMC protège de manière spécifique (mais non exclusive) les fonctions et les utilisations des marques qui sortent du champ d’application de la protection d’origine offerte par le risque de confusion et, à ce titre, vise davantage à protéger les efforts et les investissements financiers accrus consentis pour créer et promouvoir des marques en vue d’assurer leur renommée et de faciliter la pleine exploitation de la valeur des marques (voir les Directives, partie C, Opposition, section 5, Marques jouissant d’une renommée).
3 « Droits antérieurs » sur lesquels l’opposition doit se fonder
Une opposition doit se fonder sur au moins un droit antérieur détenu par l’opposant.
La notion de droits « antérieurs » au sens de l’article 8, paragraphes 1 et 5, du RMC est définie à l’article 8, paragraphe 2, du RMC, à savoir les droits dont la date de demande d’enregistrement est antérieure (pas les heures et les minutes, ainsi que confirmé par la Cour dans son arrêt du 22 mars 2012, C-190/10, « Génesis Seguros ») à celle de la demande de marque communautaire, y compris aux dates de la priorité invoquée, ou qui sont devenus notoirement connus dans un État membre avant le dépôt de la demande de marque communautaire ou, le cas échéant, la date de la priorité invoquée (voir les Directives, partie C, Opposition, section 1, Questions de procédure).
Ces droits comprennent essentiellement les marques enregistrées dans l’UE et les demandes de marques, ainsi que les marques « notoirement connues » au sens de l’article 6 bis de la convention de Paris (qui ne doivent pas être enregistrées). Pour obtenir une explication détaillée de ces marques « notoirement connues » au sens de l’article 8, paragraphe 2, point c), du RMC, et de la différence avec les marques jouissant d’une renommée dont il est question à l’article 8, point 5, voir les Directives, partie C, Opposition, section 5, Marques jouissant d’une renommée, paragraphe 2.1.2.
En vertu de l’article 8, paragraphe 3, du RMC, l’opposant doit prouver qu’il est le titulaire de la marque, dont il a acquis les droits quelque part dans le monde par un
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enregistrement ou par l’usage (pour autant que la législation du pays d’origine reconnaisse ce type de droit des marques), pour laquelle un de ses agents ou représentants a demandé l’enregistrement en son propre nom et sans son consentement.
L’article 8, paragraphe 4, du RMC, traite quant à lui des oppositions fondées sur une marque antérieure non enregistrée ou sur un autre signe utilisé dans la vie des affaires dont la portée n’est pas seulement locale, conformément aux dispositions de la législation de l’État membre de l’UE concerné. La notion de droits « antérieurs » au sens de l’article 8, paragraphe 4, concernant la date d’acquisition pertinente, est donc définie par la législation nationale en vigueur.
Divers motifs juridiques, basés sur différents droits antérieurs, peuvent être invoqués dans une même opposition ou dans le cadre de plusieurs oppositions à l’encontre de la même demande de marque communautaire.
La pratique au sein de l’OHMI repose sur les dispositions légales du RMC appliquées directement ou par analogie, ainsi que confirmé par la jurisprudence du Tribunal (arrêts du 16/9/2004, T-342/02, « MGM » et du 11/5/2006, T-194/05, « TeleTech »). À savoir :
• Oppositions multiples : la règle 21, paragraphes 2 et 3, du REMC autorise l’Office à examiner uniquement la ou les oppositions « les plus pertinentes », à suspendre les autres et à les considérer comme traitées le moment venu si la demande est rejetée sur la base de l’opposition choisie. Une définition de la notion d’opposition « la plus pertinente » est présentée ci-après.
• Plusieurs droits antérieurs dans une même opposition : le Tribunal a observé que le regroupement de plusieurs droits antérieurs dans une même opposition équivaut, d’un point de vue pratique, à la présentation de plusieurs oppositions, ce qui permet à l’Office de fonder le rejet de la demande sur le ou les droits « les plus pertinents ». Une définition de la notion de droit antérieur « le plus pertinent » est proposée ci-après.
• Plusieurs motifs juridiques dans la ou les oppositions : si l’opposition est accueillie dans sa totalité sur la base du ou des motifs juridiques « les plus pertinents » invoqués, il n’est pas nécessaire d’examiner les autres motifs juridiques. De même, si une des conditions requises d’un motif juridique n’est pas remplie, il n’est pas nécessaire d’examiner les autres conditions de la disposition en question. La notion de motif juridique « le plus pertinent » est définie ci-après.
4 Objectif de la procédure d’opposition et traitement le plus opportun d’une telle procédure
La Cour de justice a jugé que la finalité de la procédure d’opposition est de décider si la demande peut être enregistrée et non de régler de manière préalable des conflits possibles (par exemple, au niveau national à la suite de la transformation possible de la demande de marque communautaire) (arrêt du 11/5/2006, T-194/05, « TeleTech », points 25-27).
La Cour de justice a clairement confirmé que l’Office n’a aucune obligation d’examiner l’ensemble des oppositions, des droits ou des motifs juridiques antérieurs invoqués à l’encontre d’une même demande de marque communautaire, si l’un d’entre eux suffit
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pour rejeter cette demande. L’Office n’est pas non plus tenu de choisir le droit antérieur ayant la portée territoriale la plus étendue pour empêcher la transformation éventuelle dans le plus de territoires possibles (arrêts du 16/9/2004, T-342/02, « MGM » et du 11/5/2006, T-194/05, « TeleTech »).
Ce principe garantit un traitement plus approprié des oppositions. L’Office est libre de choisir la ou les oppositions, le ou les droits antérieurs et le ou les motifs juridiques « les plus pertinents » et de déterminer lequel il convient d’examiner en premier lieu à la lumière du principe de l’économie de procédure.
L’opposition « la plus pertinente » peut être généralement définie comme l’opposition qui permet à l’Office de refuser l’enregistrement de la demande de marque communautaire à l’origine de cette opposition dans la mesure la plus large possible et de la manière la plus simple.
Le droit antérieur « le plus pertinent » peut être généralement défini comme le signe le plus semblable (proche) couvrant la gamme de produits et services la plus large et/ou le droit couvrant les produits et services présentant le plus de similitudes.
Le motif juridique « le plus pertinent » peut être généralement défini comme le motif d’opposition qui permet à l’Office de refuser l’enregistrement de la demande de marque communautaire à l’origine de cette opposition dans la mesure la plus large possible et de la manière la plus simple.
En règle générale, l’article 8, paragraphe 1, point a), constitue, le cas échéant, le motif de rejet d’une demande de marque communautaire le plus simple en termes d’économie de procédure, puisque l’Office n’est pas tenu de procéder à une analyse des similitudes et des différences entre les signes ou les produits et/ou services, ni de constater l’existence d’un risque de confusion. À défaut, les circonstances factuelles de chaque opposition déterminent si l’article 8, paragraphe 1, point b), paragraphes 3, 4 ou 5 constituent les motifs « les plus pertinents » suivants (par exemple, si les produits et services du droit antérieur et de la demande de marque communautaire sont différents, l’article 8, paragraphe 1, point b) et l’article 8, paragraphe 3 ne pourront pas constituer une base d’opposition valide, le premier paragraphe exigeant au minimum une certaine similitude et le deuxième des produits et services étroitement liés ou commercialement équivalents).
Si le demandeur a réclamé des preuves de l’usage pour certains droits antérieurs, l’Office devra généralement déterminer si un droit antérieur non encore visé par l’obligation d’usage sont à même de soutenir pleinement l’opposition. Dans le cas contraire, d’autres droits antérieurs qui ne sont pas encore couverts par l’obligation d’usage seront examinés afin de déterminer si l’opposition peut être pleinement soutenue sur cette base cumulative. Dans ces cas-là, la demande de marque communautaire sera rejetée sans qu’il soit nécessaire de prendre en considération la preuve de l’usage. L’Office examinera les droits antérieurs pour lesquels une preuve de l’usage a été demandée uniquement si aucun droit antérieur de ce type n’est disponible.
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ANNEXE
Contenu et structure des décisions d’opposition
1 Remarques générales
Les décisions d’opposition respectent une structure harmonisée (modèle), qui est ajustée en fonction du contexte, de façon à assurer la cohérence logique de la décision concernée. L’utilisation du modèle signifie également que les décisions présentent toutes un format commun.
Les décisions d’opposition sont préparées dans un style formel et un langage correct. Le langage doit être correct tant en ce qui concerne l’orthographe que la grammaire, ainsi que d’un point de vue formel (par exemple, des phrases cohérentes et complètes, des références correctes à la marque, aux produits et services ou aux parties, pas de répétitions des paragraphes…). Les décisions sont envoyées à révision quand cette possibilité existe.
Les décisions d’opposition débutent par la présentation des coordonnées des parties : noms et adresses de l’opposant, du demandeur et, le cas échéant, de leurs représentants respectifs. La date de la décision est indiquée.
Ces données sont suivies du prononcé (« décision »), qui précise s’il est fait droit à l’opposition ou si celle-ci est rejetée ; le cas échéant, les produits et services pour lesquels il est (partiellement) fait droit à l’opposition (sauf si l’opposition est entièrement retenue et la demande de marque communautaire est rejetée dans son intégralité) ; les décisions relatives aux coûts ; et la fixation de ces coûts. La dernière partie de la décision fait également référence aux « coûts » et correspond à la fixation des coûts dans le prononcé. En outre, concernant les coûts, la décision comporte un paragraphe relatif à l’examen de la fixation des coûts (supprimé lorsque chacune des parties supporte ses propres coûts).
Suit la partie relative aux « Motifs » de la décision. Celle-ci débute par une « partie factuelle », qui identifie la marque contestée au moyen du numéro de la demande de marque communautaire, les produits et services contestés, les droits antérieurs et l’ensemble des motifs invoqués par l’opposant.
• Droits antérieurs : si une opposition est accueillie dans son intégralité sur la base d’un droit antérieur (et que plusieurs droits ont été invoqués), la décision précisera uniquement le droit antérieur en question (dans la partie factuelle). Lorsque l’opposition est rejetée en tout ou en partie, tous les droits antérieurs invoqués par l’opposant sont recensés dans la décision (dans la partie factuelle ou à la fin). Dans ce cas, le territoire (ou les territoires dans le cas d’enregistrements internationaux) et le numéro d’enregistrement sont indiqués et une reproduction du signe est incluse1.
• Marque contestée : en l’absence de comparaison des signes (si l’opposition n’est pas recevable ou justifiée, ou si elle est rejetée pour preuve de l’usage insuffisante ou différence des produits, par exemple), la marque contestée sera
1 Si un code à deux lettres est utilisé, il doit s’agir d’un des codes figurant dans le document https://www.wipo.int/standards/fr/pdf/03-03-01.pdf, à l’exception des marques communautaires, qui utilisent les abréviations CTM ou CTMA à la place de EM.
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reproduite dans la partie factuelle et sera accompagnée du numéro de demande de marque communautaire.
• Produits et services contestés : ceux-ci sont répertoriés dans la section consacrée à la comparaison des produits et services. Si la comparaison des produits et services est omise (parce que les signes sont différents, par exemple), la décision ne précisera généralement dans la partie factuelle que les classes auxquelles appartiennent les produits et services contestés.
L’Office présente ensuite les aspects procéduraux et fondamentaux de la décision dans l’ordre indiqué ci-dessous. Il peut toutefois changer l’ordre dans lequel les différents facteurs sont examinés s’il l’estime approprié en vertu des circonstances spécifiques à un cas donné.
Certains aspects procéduraux et fondamentaux (répertoriés ci-dessous) ne sont examinés dans le cadre des décisions de l’Office que dans la mesure où ils présentent un intérêt pour la décision à prendre. Dans certains cas également, il peut arriver que l’Office examine dans un premier temps un ou plusieurs droits antérieurs invoqués (généralement les signes qui présentent le plus de similitudes avec le signe contesté et/ou qui couvrent une gamme plus large de produits et/ou services identiques ou similaires), puis se penche sur les autres droits antérieurs uniquement dans la mesure strictement nécessaire.
Toutes les décisions d’opposition doivent comprendre une « conclusion » et/ou une « appréciation globale » [dans le cas de l’article 8, paragraphe 1, point b), du RMC], dans laquelle la conclusion de la décision est motivée de manière cohérente sur la base des arguments développés dans les précédentes sections de la décision.
La décision examinera également tout autre problème en suspens, tel que la pertinence d’autres droits contraires antérieurs, la nécessité d’examiner d’autres chefs de conclusions, par exemple au titre de l’article 8, paragraphes 3, 4 et 5, et d’autres points pertinents.
• Si une opposition est entièrement retenue sur la base de l’un des droits antérieurs, l’Office ne prendra pas de décision concernant les autres droits antérieurs. Une brève déclaration indiquant que ceux-ci ne seront pas examinés pour des raisons d’économie de procédure sera jointe.
• Lorsqu’une opposition est rejetée sur la base du droit antérieur jugé « le plus proche » du signe contesté, elle est généralement refusée en ce qui concerne les autres droits antérieurs et est accompagnée d’une déclaration générale. Celle-ci reprend les droits antérieurs en question dans les détails (numéro de marque, nom [représentation graphique] et produits et services concernés) et explique que ces droits sont considérés comme présentant une similitude encore moindre que le droit examiné ou, s’ils couvrent une liste de produits et services plus large que le droit examiné, précise pourquoi ces autres droits antérieurs ne donnent lieu à aucun risque de confusion.
• Enfin, la décision examinera les autres arguments pertinents des parties (en particulier les arguments non fondés de la partie qui succombe) ou les problèmes procéduraux pertinents (tels que les requêtes en restitutio in integrum, les extensions et suspensions demandées et vivement contestées par les parties ou les demandes de poursuite introduites et rejetées ou vivement contestées par les parties).
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2 Règles procédurales – recevabilité et justification
Pour que l’opposition soit jugée sur le fond, l’opposant doit respecter une série de conditions procédurales afin, notamment, de déterminer si le ou les droits antérieurs sur lesquels se fonde l’opposition sont (i) recevables et (ii) dûment justifiés2.
Une section traitant de ces problèmes ne sera incluse au début de la décision que lorsque jugé pertinent pour le résultat.
• En ce qui concerne la recevabilité : si l’opposition est entièrement accueillie sur la base de l’un des droits antérieurs jugé recevable, la recevabilité des autres droits antérieurs ne sera pas examinée. En revanche, si l’opposition est rejetée en tout ou en partie sur la base d’un droit recevable et justifié qui n’est pas le droit le plus pertinent, la recevabilité du droit le plus pertinent sera examinée.
• En ce qui concerne la justification : si l’opposition est accueillie sur la base de l’un des droits antérieurs dûment justifiés, la question de la justification des autres droits antérieurs ne sera pas examinée. Si l’opposition est rejetée en tout ou en partie sur la base d’un droit recevable et justifié qui n’est pas le droit le plus pertinent, la question de la justification du droit le plus pertinent sera examinée. Si l’opposition n’a pas été dûment justifiée, elle sera rejetée pour ce seul motif. Le risque de confusion ne sera pas examiné. En principe, il n’est pas nécessaire d’examiner la justification de l’un des deux droits antérieurs invoqués lorsqu’il est de toute façon conclu qu’il n’existe aucun risque de confusion entre les marques en cause.
3 Preuve d’usage
Si le demandeur demande une preuve de l’usage des droits antérieurs, l’Office déterminera également si, et dans quelle mesure, l’usage des marques antérieures a été prouvé, si cela s’avère pertinent pour la décision à prendre.3
4 Article 8, paragraphe 1, point a), du RMC
Ce motif ne peut être retenu qu’en cas de double identité, c’est-à-dire si les signes, mais aussi les produits et services, sont identiques.
L’examen de l’identité débute généralement par une comparaison des produits et/ou services pertinents, suivie d’une comparaison des signes. En cas de double identité, aucune évaluation du risque de confusion n’est requise. La décision de faire droit à l’opposition est automatique.
2 Voir Directives relatives à l’opposition, partie 1, Questions de procédure. 3 Des instructions complètes sur la preuve de l’usage sont disponibles dans le document Directives, partie C, Opposition, section 6, Preuve d’usage.
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Lorsque l’identité des produits et/ou services et/ou des signes ne peut être établie, l’opposition est rejetée au titre de l’article 8, paragraphe 1, point a), du RMC. L’examen se poursuit toutefois sur la base de l’article 8, paragraphe 1, point b), du RMC.4
5 Article 8, paragraphe 1, point b), du RMC
Les sections suivantes doivent en principe être examinées.
5.1 Comparaison des produits et services
La similitude des produits et/ou services est une condition sine qua non de l’existence d’un risque de confusion. À ce titre, l’examen du risque de confusion débute généralement par une comparaison des produits et/ou services pertinents.
Des instructions complètes sur la comparaison des produits et/ou services sont disponibles dans les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 2, Comparaison des produits et services.
La décision ne contiendra cependant pas de comparaison exhaustive des produits et services :
• lorsqu’il a été établi que les signes sont différents ;
• lorsque, dans certains cas, la division d’opposition décide, à des fins d’économie de procédure, de procéder à une vérification accélérée des produits et services en partant du principe que, puisqu’il y a identité ou similitude entre certains produits et/ou services pertinents, tous les produits et services sont identiques ou similaires. Cette procédure est généralement appliquée lorsque l’Office estime qu’aucun risque de confusion ne devrait être recensé, quand bien même le degré de similitude des produits et/ou services serait le plus élevé, compte tenu des autres facteurs. Cette vérification accélérée n’est bien sûr utilisée que si les droits des différentes parties n’en sont pas affectés.
En l’absence de similitude entre les produits et/ou services, l’examen du risque de confusion prend fin à ce stade.
L’examen se poursuit en revanche si un certain degré de similitude est détecté.
5.2 Comparaison des signes
Afin de conclure à l’existence d’un risque de confusion, il doit y avoir un certain degré de similitude entre les signes. Comme expliqué ci-dessus, la comparaison des signes implique une appréciation globale des caractéristiques visuelles, auditives et conceptuelles des signes en question. Si la comparaison à l’un de ces niveaux est impossible (comparaison phonétique d’une marque figurative, par exemple), ce niveau pourra être omis. En cas de similitude à au moins un de ces trois niveaux, les signes sont considérés comme similaires. L’appréciation globale du risque de confusion permet de déterminer si la similitude entre les signes est suffisante pour entraîner un
4 Voir Directives, partie C, Opposition, partie 2, Double identité et risque de confusion, chapitre 1, Principes généraux et méthodologie, paragraphe 1.2.1.1.
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risque de confusion. Des instructions complètes sur la comparaison des signes sont disponibles dans les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 3, Comparaison des signes.
La décision débute par la présentation du territoire concerné.
Une comparaison objective des signes est ensuite réalisée afin de mettre en lumière les similitudes et les différences visuelles, auditives et conceptuelles entre ces signes. L’importance des différents éléments de similitude ou de différence entre les signes n’est généralement pas prise en considération ni pondérée à ce stade (cette prise en considération/pondération intervient à un stade ultérieur de la décision). La comparaison objective établit l’existence d’au moins une preuve suffisante à première vue de risque de confusion en confirmant l’existence d’un certain degré de similitude entre les signes.
Cette comparaison objective des signes sert également de point de référence pour l’évaluation ultérieure par l’Office des éléments dominants et distinctifs des marques. Si l’opposition s’appuie sur l’article 8, paragraphe 4 ou 5, la comparaison objective servira de point de référence à l’analyse distincte qui sera réalisée au titre de ces paragraphes.
En l’absence de similitude entre les signes, l’examen du risque de confusion prend fin à ce stade. Les signes ne sont jugés différents que si aucune similitude n’est recensée à ces trois niveaux. Si les signes sont jugés différents, aucune comparaison des produits et services (y compris de la présomption d’identité), évaluation d’un caractère distinctif accru de la marque antérieure ni appréciation globale n’est réalisée. L’opposition est rejetée, en ce qui concerne le risque de confusion, dans la partie « Conclusion », et ce exclusivement sur la base de la différence entre les signes. En revanche, lorsqu’une similitude entre les signes est recensée au niveau visuel, auditif ou conceptuel, l’examen se poursuit.
5.3 Éléments distinctifs et dominants des marques
L’appréciation globale des marques en cause doit reposer sur l’impression générale qu’elles donnent, en gardant à l’esprit, notamment, leurs caractères distinctifs et dominants. Cette section de la décision explique et spécifie par conséquent les caractères dominants et/ou distinctifs des signes.
Des instructions complètes pour l’analyse des caractères distinctifs et dominants sont disponibles dans les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 4, Caractère distinctif, et chapitre 5, Caractère dominant.
5.4 Caractère distinctif de la marque antérieure
Lorsqu’un opposant allègue de manière explicite qu’une marque antérieure présente un caractère particulièrement distinctif en vertu d’un usage intensif ou de sa renommée, cette allégation est examinée et évaluée. Des informations complètes sur le caractère distinctif de la marque antérieure sont disponibles dans les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 4, Caractère distinctif.
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L’Office peut, dans certains cas, et dans l’intérêt de l’économie de procédure, décider de ne pas examiner une allégation de caractère distinctif accru lorsque celle-ci ne présente aucun intérêt pour la décision à prendre. Une telle décision n’est toutefois prise que si les droits des parties n’en sont pas affectés.
Si aucune allégation n’est présentée concernant le caractère distinctif, ou si l’allégation n’est pas étayée par des preuves, l’évaluation du caractère distinctif d’une marque antérieure s’appuiera sur son caractère distinctif en soi (en d’autres termes, sur son caractère distinctif inhérent).
5.5 Public pertinent – niveau d’attention
Des informations complètes sur le public pertinent et le niveau d’attention sont disponibles dans les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 6, Public pertinent et niveau d’attention.
La décision décrit le consommateur concerné par les produits et/ou services en question et l’importance de cette conclusion. Le cas échéant, elle précise également le degré d’attention accordé par le consommateur concerné.
5.6 Appréciation globale, autres arguments et conclusion
Des instructions complètes pour Autres facteurs et l’appréciation globale sont disponibles dans les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 7, Autres facteurs, et 8, Appréciation globale. Outre les informations fournies ci-avant concernant la « conclusion » et/ou l’« appréciation globale », l’appréciation globale :
• présente et évalue les autres facteurs et principes pertinents pour l’évaluation du risque de confusion (famille de marques, coexistence ou mode d’achat des produits et/ou services, par exemple) ;
• évalue l’importance relative de tous les facteurs interdépendants, qui peuvent se compléter ou s’annuler les uns les autres, en vue de rendre une décision quant au risque de confusion (par exemple, les marques peuvent être différentes pour certains produits ou services, mais pas pour d’autres, de sorte que le risque de confusion peut n’exister qu’en rapport avec les produits ou services pour lesquels la marque antérieure est considérée comme différente).
6 Article 8, paragraphe 3, du RMC
Les motifs de refus au sens de l’article 8, paragraphe 3, du RMC sont soumis aux conditions suivantes :
• L’opposant est le titulaire de la marque sur laquelle se fonde l’opposition ; • Le demandeur est un agent ou un représentant du titulaire de la marque
antérieure ; • La demande est formulée au nom de l’agent ou du représentant ; • La demande a été déposée sans le consentement du titulaire ; • L’agent ou le représentant ne justifie pas de ses actes ;
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• Les signes sont identiques ou présentent de légères différences et les produits et/ou services sont identiques ou équivalents.
Ces conditions sont cumulatives. Par conséquent, si l’une d’elles n’est pas remplie, l’opposition au titre de l’article 8, paragraphe 3, du RMC n’aboutira pas.
En principe, la décision d’opposition contient les sections suivantes :
1) qualité de l’opposant ; 2) qualité d’agent ou de représentant ; 3) demande présentée au nom de l’agent ou du représentant ; 4) demande présentée sans le consentement du titulaire ; 5) absence de justification de la part du demandeur ; 6) comparaison des signes ; 7) comparaison des produits et services ; 8) conclusion.
Cependant, en fonction du cas et de son issue, il peut s’avérer inutile d’inclure toutes les sections ci-dessus dans la décision. Il est par ailleurs possible de modifier l’ordre des sections. Ainsi, si l’opposition peut être rejetée au motif que les signes sont différents, la comparaison des signes pourra être la première et la seule section reprise dans la décision.
Les arguments et les preuves transmis par les parties doivent être examinés et le raisonnement fourni afin de déterminer si les conditions sont satisfaites.
Sous les sections « Comparaison des signes » et « Comparaison des produits et services », il convient d’établir si les signes sont ou non identiques (ou présentent des différences mineures qui n’affectent pas de manière substantielle leur caractère distinctif) et si les produits et/ou services sont identiques (ou équivalents en termes commerciaux).
Des instructions complètes pour l’Article 8(3) sont disponibles dans les Directives, Partie C, Opposition, Section 3, Marques déposées par un agent.
7 Article 8, paragraphe 4, du RMC
Des informations complètes sur les types de droits en vertu de l’article 8, paragraphe 4, du RMC sont disponibles dans les Directives, partie C, Opposition, section 4, Droits en vertu de l’article 8, paragraphe 4 du RMC, paragraphe 3.1. Types de droits en vertu de l’article 8, paragraphe 4 du RMC.
Les motifs de refus au sens de l’article 8, paragraphe 4, du RMC sont soumis aux conditions cumulatives suivantes :
• le droit antérieur doit être une marque non enregistrée ou un signe similaire ; • le signe doit être utilisé dans la vie des affaires ; • la portée de l’utilisation ne doit pas être uniquement locale ; • le droit doit avoir été acquis avant la date de dépôt de la marque contestée ; • le titulaire de la marque doit avoir le droit d’interdire l’utilisation de la marque
contestée, en vertu de la législation nationale régissant ce droit.
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Si l’une seule de ces conditions n’est pas remplie, l’opposition doit être rejetée et il s’avère dès lors inutile d’examiner les autres conditions.
En conséquence, la décision d’opposition doit en principe contenir les sections suivantes.
7.1 Utilisation dans la vie des affaires dont la portée n’est pas seulement locale
La condition relative à l’utilisation dans la vie des affaires est fondamentale. Sans cette condition, le signe en question ne pourra pas bénéficier d’une protection pour l’enregistrement d’une marque communautaire, indépendamment des conditions à remplir au titre de la législation nationale en vue de l’obtention de droits exclusifs.
Des informations complètes sur l’utilisation dans la vie des affaires sont disponibles dans les Directives, partie C, Opposition, section 4, Droits en vertu de l’article 8, paragraphe 4 du RMC.
7.2 Droit en vertu de la législation nationale
La décision doit démontrer si l’opposant a acquis le droit invoqué conformément à la législation régissant le signe en question (dans certains cas, la législation nationale exige l’enregistrement ou la renommée, par exemple), si le droit a été acquis avant la date de dépôt et si et à quelles conditions la législation régissant le signe en question confère à son titulaire le droit d’empêcher l’utilisation d’une marque plus récente.
Aux fins susmentionnées, il convient de vérifier les informations contenues dans les Directives (liste des « droits antérieurs » au sens de l’article 8 du RMC) et/ou les preuves présentées par les parties.
7.3 Droit de l’opposant à l’égard de la marque contestée
Cette partie de la décision examine si les conditions définies par la législation régissant le signe antérieur sont remplies en ce qui concerne la marque contestée. Cet examen requiert généralement une comparaison des signes et des produits et services ou des activités professionnelles, et une conclusion à cet égard.
7.4 Conformité avec le critère fixé par la législation nationale
Au terme de la comparaison des produits et services et des signes, il convient d’établir si les conditions fixées par la législation nationale au titre de la section « Le droit en vertu de la législation nationale » sont remplies (risque de confusion, par exemple).
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8 Article 8, paragraphe 5, du RMC
Les motifs de refus au sens de l’article 8, paragraphe 5, du RMC sont soumis aux conditions suivantes :
• les signes en cause doivent être identiques ou similaires ;
• la marque de l’opposant doit jouir d’une renommée ; celle-ci doit être antérieure à la marque contestée et la marque doit en jouir sur le territoire concerné, pour les produits et/ou services sur la base desquels l’opposition a été formée ;
• empiètement sur la renommée : l’usage de la marque contestée tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou lui porterait préjudice.
Les conditions ci-dessus sont cumulatives. Par conséquent, la non-satisfaction de l’une d’entre elles entraînera le rejet de l’opposition au titre de l’article 8, paragraphe 5, du RMC. La satisfaction de l’ensemble des conditions susmentionnées peut toutefois ne pas suffire. L’opposition peut également ne pas aboutir si le demandeur/le titulaire fournit une raison valable à l’utilisation de la marque contestée.
Par conséquent, la décision d’opposition doit en principe contenir les sections suivantes.
8.1 Comparaison des signes
L’application de l’article 8, paragraphe 5, du RMC exige une conclusion positive en ce qui concerne la similitude entre les signes. Si les signes ont déjà fait l’objet d’une comparaison dans le cadre de l’examen aux motifs de l’article 8, paragraphe 1, point b), du RMC, référence sera faite aux conclusions respectives également valides au titre de l’article 8, paragraphe 5, du RMC. Il s’ensuit que, si l’examen en vertu de l’article 8, paragraphe 1, point b), établit que les signes sont différents, l’opposition échouera automatiquement au titre de l’article 8, paragraphe 5, du RMC. Le simple fait que les signes en cause soient similaires ne suffit cependant pas pour conclure que le public pertinent établira un lien entre les signes. L’existence d’un tel lien doit obligatoirement être prouvée une fois la similitude des signes établie.
Des informations complètes sur la similitude des signes et le lien entre les signes sont disponibles dans les Directives, partie C, Opposition, section 5, Marques jouissant d’une renommée (article 8, paragraphe 5, du RMC), paragraphe 3.2, Similitude des signes, et paragraphe 3.3, Lien entre les signes.
8.2 Renommée de la marque antérieure
Les preuves déposées pour prouver la renommée doivent être clairement renseignées. Il n’est pas nécessaire de répertorier et de décrire chacun des éléments. Seules les preuves pertinentes pour tirer la conclusion qui s’impose (si elles sont suffisantes pour prouver la renommée) doivent être mentionnées, de manière générale.
Des informations complètes sur l’étendue, l’appréciation et la preuve de la renommée sont disponibles dans les Directives, partie C, Opposition, section 5, Marques jouissant d’une renommée (article 8, paragraphe 5, du RMC), paragraphe 3.1.2, L’étendue de la
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renommée, paragraphe 3.1.3, Appréciation de la renommée, et paragraphe 3.1.4, La preuve de la renommée.
8.3 Empiètement sur la renommée
Cette section couvre l’examen visant à déterminer si un préjudice ou un profit indu est probable, en ce sens qu’il est prévisible en temps ordinaire. À cette fin, l’opposant doit fournir des preuves ou, à tout le moins, avancer une argumentation cohérente et montrer en quoi consisterait le préjudice ou le profit indu et comment il pourrait se produire, ce qui permettrait de conclure de prime abord que cet événement est effectivement probable en temps ordinaire.
L’examen de la ou des allégations de l’opposant concernant l’empiètement doit être précédée de l’identification des produits et/ou services à l’encontre desquels l’opposition est dirigée et par rapport auxquels la renommée a été établie.
Des informations complètes sur les formes d’empiètement et la preuve de l’empiètement sont disponibles dans les Directives, partie C, Opposition, section 5, Marques jouissant d’une renommée (article 8, paragraphe 5, du RMC), paragraphe 3.4.3, Formes d’empiètement, et paragraphe 3.4.4, Preuve d’empiètement.
Lorsqu’il est fait droit à l’opposition dans son intégralité sur la base de l’une des formes d’empiètement, il n’est pas nécessaire d’examiner si les autres formes sont également applicables.
8.4 Juste motif
Il n’est procédé à l’examen des justes motifs que si le demandeur de la marque communautaire a invoqué de tels motifs et pour autant qu’il existe une similitude des signes, que la marque jouisse d’une renommée et qu’au moins une des formes d’empiétement soit observée.
Des informations complètes sur les justes motifs sont disponibles dans les Directives, partie C, Opposition, section 5, Marques jouissant d’une renommée (article 8, paragraphe 5, du RMC), paragraphe 3.5, L’usage sans juste motif.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 1
QUESTIONS DE PROCÉDURE
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Table des matières
1 Introduction: Présentation générale de la procédure d’opposition ...... 6
2 Examen de la recevabilité ......................................................................... 7 2.1 Acte écrit d’opposition............................................................................... 7
2.1.1 Oppositions anticipées contre un enregistrement international ..................... 8 2.1.2 Opposition anticipée contre une demande de marque communautaire ........ 8
2.2 Paiement .....................................................................................................8 2.2.1 Acte d’opposition reçu hors délai, paiement reçu dans le délai
d’opposition..................................................................................................... 8 2.2.2 Moment du paiement...................................................................................... 9 2.2.3 Conséquences en cas de non-paiement...................................................... 10 2.2.4 Remboursement de la taxe d’opposition ...................................................... 10
2.3 Langues et traduction de l’acte d’opposition......................................... 11 2.4 Examen de la recevabilité ........................................................................ 13
2.4.1 Conditions absolues de recevabilité ............................................................. 13 2.4.1.1 Identification de la demande de marque communautaire contestée .........14 2.4.1.2 Identification des marques antérieures et des droits antérieurs ................14 2.4.1.3 Identification des motifs .............................................................................18
2.4.2 Conditions relatives de recevabilité .............................................................. 19 2.4.2.1 Dates.........................................................................................................19 2.4.2.2 Représentation d’une marque antérieure ou d’un signe antérieur .............19 2.4.2.3 Produits et services ...................................................................................21 2.4.2.4 Marque antérieure jouissant d’une renommée: étendue de la
renommée .................................................................................................23 2.4.2.5 Identification de l’opposant ........................................................................23 2.4.2.6 Représentation professionnelle .................................................................27 2.4.2.7 Signature ...................................................................................................29 2.4.2.8 Conditions relatives de recevabilité: sanctions ..........................................29
2.4.3 Indications facultatives ................................................................................. 30 2.4.3.1 Étendue de l’opposition .............................................................................30 2.4.3.2 Description des motifs ...............................................................................31
2.5 Notification de l’acte d’opposition .......................................................... 31
3 Délai de réflexion..................................................................................... 32 3.1 Début du délai de réflexion...................................................................... 32 3.2 Prolongation du délai de réflexion .......................................................... 33
4 Phase contradictoire ............................................................................... 34 4.1 Compléter le dossier d’opposition.......................................................... 34 4.2 Validation par des faits, preuves et observations.................................. 34
4.2.1 Marques communautaires et demandes de marque communautaire.......... 35 4.2.2 (Demandes de) marques communautaires transformées............................ 35
4.2.2.1 Opposition fondée sur une (demande de) marque communautaire transformée (en cours de transformation) .................................................36
4.2.3 Demandes ou enregistrements de marques qui ne sont pas des marques communautaires ........................................................................................... 36 4.2.3.1 Certificats délivrés par l’autorité compétente.............................................36 4.2.3.2 Extraits de banques de données officielles ...............................................37
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4.2.3.3 Extraits de bulletins officiels publiés par les offices nationaux compétents et par l’OMPI ..........................................................................39
4.2.3.4 Durée d’un enregistrement de marque......................................................39 4.2.3.5 Vérification de la preuve............................................................................40 4.2.3.6 Certificats de renouvellement ....................................................................42 4.2.3.7 Habilitation à former l’opposition ...............................................................42
4.2.4 Preuves concernant les marques notoirement connues, la revendication de la renommée, les marques demandées par un agent et les signes antérieurs utilisés dans la vie des affaires.................................................... 44 4.2.4.1 Marque notoirement connues....................................................................44 4.2.4.2 Marques jouissant d’une renommée .........................................................44 4.2.4.3 Marque non enregistrée ou autre signe utilisé dans la vie des affaires .....45 4.2.4.4 Marque demandée par un agent ou un représentant ................................45
4.2.5 Sanction........................................................................................................ 45
4.3 Traductions/choix d’une autre langue durant la procédure d’opposition.............................................................................................. 46 4.3.1 Traduction des faits, preuves et observations présentés par l’opposant
pour compléter son dossier .......................................................................... 46 4.3.1.1 Sanction ....................................................................................................48
4.3.2 Traduction des observations supplémentaires............................................. 48 4.3.3 Traduction de documents autres que les observations................................ 49 4.3.4 Preuve de l’usage......................................................................................... 50 4.3.5 Changement de langue au cours de la procédure d’opposition................... 51
4.4 Documents illisibles/référence à d’autres dossiers............................... 51 4.4.1 Documents illisibles ...................................................................................... 51 4.4.2 Documents originaux ne pouvant pas être restitués .................................... 51 4.4.3 Informations confidentielles .......................................................................... 52 4.4.4 Références à des documents transmis dans le cadre d’autres procédures 53
4.5 Autres échanges d’observations ............................................................ 54 4.6 Observations des tiers............................................................................. 55
5 Clôture de la procédure .......................................................................... 56 5.1 Conciliation............................................................................................... 56 5.2 Limitations et retraits ............................................................................... 56
5.2.1 Limitations et retraits de demandes de marque communautaire ................. 56 5.2.1.1 Retrait ou limitation avant l’examen de la recevabilité...............................57 5.2.1.2 Limitations et retraits de demandes de marque communautaire avant
l’expiration du délai de réflexion ................................................................58 5.2.1.3 Limitations et retraits de demandes de marques communautaires après
l’expiration du délai de réflexion ................................................................58 5.2.1.4 Limitations et retraits de demandes de marques communautaires après
qu'une décision a été rendue ....................................................................59 5.2.1.5 Langues.....................................................................................................59
5.2.2 Retrait des oppositions ................................................................................. 60 5.2.2.1 Retrait de l’opposition avant l’expiration du délai de réflexion ...................60 5.2.2.2 Retrait de l’opposition après l’expiration du délai de réflexion ...................60 5.2.2.3 Retrait de l’opposition après qu'une décision a été rendue .......................60 5.2.2.4 Langues.....................................................................................................61
5.2.3 Retrait d’un retrait/d’une limitation ................................................................ 61
5.3 Décision sur le fond ................................................................................. 61 5.3.1 Le droit antérieur n’a pas été établi .............................................................. 61 5.3.2 Extinction du droit antérieur.......................................................................... 61
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5.4 Remboursement de la taxe d’opposition................................................ 62 5.4.1 Opposition réputée non formée.................................................................... 62
5.4.1.1 Opposition et retrait reçus le même jour....................................................62 5.4.1.2 Remboursement après republication.........................................................62
5.4.2 Remboursement du fait du retrait/de la limitation d’une demande de marque communautaire................................................................................ 63 5.4.2.1 Retrait/limitation d’une demande de marque communautaire avant
l’expiration du délai de réflexion ................................................................63 5.4.2.2 Retrait de l’opposition en raison d’une limitation de la demande de
marque communautaire au cours du délai de réflexion .............................63 5.4.3 Oppositions multiples et remboursement de 50 % de la taxe d’opposition.. 64 5.4.4 Cas où la taxe d’opposition n’est pas remboursée ...................................... 64
5.4.4.1 Retrait de l’opposition avant l’expiration du délai de réflexion qui N'EST PAS dû à une limitation .............................................................................64
5.4.4.2 Le retrait de l’opposition est antérieur .......................................................64 5.4.4.3 Accord entre les parties avant le début de la procédure ...........................65 5.4.4.4 Clôture de la procédure pour d’autres motifs.............................................65 5.4.4.5 Réaction à une déclaration de renonciation à invoquer un droit exclusif ...65
5.4.5 Remboursement par erreur de la taxe d’opposition ..................................... 65
5.5 Décision sur la répartition des frais........................................................ 66 5.5.1 Cas nécessitant une décision sur les frais ................................................... 66 5.5.2 Cas ne nécessitant pas une décision sur les frais ....................................... 66
5.5.2.1 Accord sur les frais....................................................................................66 5.5.2.2 Information provenant de la partie qui obtiendra probablement gain de
cause.........................................................................................................66 5.5.3 Cas ordinaires de décisions sur les frais ...................................................... 67 5.5.4 Non-lieu à statuer ......................................................................................... 68
5.5.4.1 Oppositions multiples ................................................................................68 5.5.4.2 Rejet d’une demande sur la base de motifs absolus ou de formalités.......69 5.5.4.3 Jonction d’affaires .....................................................................................69 5.5.4.4 Signification de l'expression «supporter ses propres frais».......................69
5.6 Détermination des frais............................................................................ 70 5.6.1 Montants à rembourser/déterminer .............................................................. 70 5.6.2 Procédure à suivre lorsque les frais ont été fixés dans la décision
principale ...................................................................................................... 71 5.6.3 Procédure à suivre en cas de nécessité d’une fixation séparée des frais ... 71
5.6.3.1 Recevabilité...............................................................................................71 5.6.3.2 Preuves .....................................................................................................72
5.6.4 Réexamen de la répartition des frais............................................................ 72
6 Questions procédurales.......................................................................... 72 6.1 Rectification des erreurs.......................................................................... 72
6.1.1 Rectification des erreurs figurant dans l’acte d'opposition ........................... 72 6.1.2 Rectification des erreurs et des fautes figurant dans les publications ......... 73
6.2 Délais......................................................................................................... 73 6.2.1 Prorogation des délais dans la procédure d’opposition ............................... 74
6.2.1.1 Délais prorogeables et non prorogeables..................................................74 6.2.1.2 Demande déposée dans les délais ...........................................................74 6.2.1.3 Prorogation d’un délai ex officio par l’Office ..............................................75 6.2.1.4 Signature ...................................................................................................76
6.3 Suspension............................................................................................... 76 6.3.1 Suspension à la demande des deux parties ................................................ 76 6.3.2 Suspensions ex officio par l’Office ou à la demande de l’une des parties ... 77
6.3.2.1 Explication du principe de base, moment de la suspension ......................77
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6.3.2.2 Demandes antérieures ou enregistrements antérieurs de marque communautaire..........................................................................................78
6.3.2.3 Marques nationales/internationales antérieures (demandes ou enregistrements/droits)..............................................................................78
6.3.2.4 Exemples...................................................................................................79 6.3.3 Oppositions multiples ................................................................................... 80
6.3.3.1 Après le rejet de la demande de marque communautaire .........................80 6.3.4 Aspects procéduraux.................................................................................... 80
6.3.4.1 Suivi des dossiers suspendus ...................................................................80 6.3.4.2 Reprise de la procédure ............................................................................81 6.3.4.2 Calcul des délais .......................................................................................81
6.4 Oppositions multiples.............................................................................. 81 6.4.1 Oppositions multiples et limitations .............................................................. 82 6.4.2 Oppositions multiples et décisions ............................................................... 82 6.4.3 Jonction d’affaires......................................................................................... 84
6.5 Changement des parties (transfert, changement de nom, changement de représentant, interruption de la procédure)................. 85 6.5.1 Transfert et procédure d’opposition.............................................................. 85
6.5.1.1 Introduction et principe de base ................................................................85 6.5.1.2 Transfert d'une marque communautaire antérieure...................................85 6.5.1.3 Transfert d’un enregistrement national antérieur.......................................87 6.5.1.4 Opposition fondée sur une combinaison d’enregistrements de marques
communautaires et d’enregistrements nationaux ......................................88 6.5.1.5 Transfert de la demande de marque communautaire contestée ...............89 6.5.1.6 Transfert partiel d’une demande de marque communautaire contestée ...89
6.5.2 Les parties sont les mêmes après le transfert.............................................. 90 6.5.3 Changement de nom .................................................................................... 90 6.5.4 Changement de représentants ..................................................................... 90 6.5.5 Interruption de la procédure en raison du décès ou de l’incapacité du
demandeur ou de son représentant ............................................................. 90 6.5.5.1 Décès ou incapacité du demandeur ..........................................................91 6.5.5.2 Demandeur empêché de poursuivre la procédure devant l’Office pour
des motifs juridiques (par exemple, la faillite)............................................91 6.5.5.3 Décès ou empêchement, pour des motifs juridiques, du représentant du
demandeur de poursuivre la procédure devant l’Office .............................92
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1 Introduction: Présentation générale de la procédure d’opposition
Une procédure d’opposition prend cours à la réception de l’acte d'opposition. Le demandeur est immédiatement notifié qu’un acte d'opposition a été déposé et reçoit une copie des pièces du dossier.
Lorsqu'une opposition est formée contre un enregistrement international désignant l’UE, toute référence dans les présentes directives aux demandes de marques communautaires doit être interprétée comme étant applicable aux enregistrements internationaux désignant l’UE. La partie M, des Directives, qui est spécifiquement axée sur les marques internationales, concerne également les oppositions.
Ensuite, après contrôle du paiement de la taxe d’opposition, il est vérifié que l'acte d’opposition est conforme aux autres conditions de forme énoncées dans le règlement.
De manière générale, on distingue deux types d’irrégularités pouvant influer sur la recevabilité d'une opposition:
1. les irrégularités absolues, à savoir celles auxquelles il ne peut être remédié après l’expiration du délai d’opposition. Si l'opposant ne remédie pas, de sa propre initiative, à ces irrégularités dans le délai d'opposition, l’opposition est irrecevable;
2. les irrégularités relatives, à savoir celles auxquelles il peut être remédié après l’expiration du délai d’opposition. L'Office invite l’opposant, après l’expiration du délai d’opposition, à remédier à ces irrégularités dans un délai de deux mois non prorogeable sous peine du rejet de l’opposition pour irrecevabilité.
Il est important de noter qu’afin de préserver le principe d’impartialité, l’Office n’envoie aucune communication concernant le paiement de la taxe d’opposition ou les irrégularités en matière de recevabilité pendant le délai d’opposition.
À la suite de l’examen de la recevabilité de l’opposition, une notification est adressée aux deux parties afin d’indiquer les délais de la procédure. Celle-ci débute par une période durant laquelle les parties peuvent négocier un accord à l’amiable (avec ou sans conséquences financières), à savoir le «délai de réflexion». Ce délai expire deux mois après la notification de la recevabilité de l'opposition. Il peut être prorogé une fois de 22 mois et durer au maximum 24 mois. À l'expiration du délai de réflexion, la phase contradictoire de la procédure est ouverte.
L’opposant dispose alors de deux mois supplémentaires pour compléter son dossier, c’est-à-dire présenter l’ensemble des preuves et observations qu’il juge nécessaires pour étayer son dossier. À l’issue de ces deux mois, ou dès que les preuves et observations présentées lui ont été transmises, le demandeur dispose de deux mois pour répondre à l’opposition.
L’Office peut inviter les parties à limiter leurs observations à des questions particulières et les autoriser à soulever d’autres questions dans la suite de la procédure.
Le demandeur dispose de deux moyens pour défendre sa demande de marque. Il peut contester l'utilisation effective de la/des marque(s) antérieure(s) en requérant une
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preuve de l’usage, ou présenter des observations et des preuves en vue de convaincre l’Office que l’opposition doit être rejetée.
Si le demandeur se limite à présenter des preuves et des observations, un délai de deux mois lui est imparti pour présenter des observations en réponse aux allégations du demandeur et, à l’issue de cet échange, l’opposition est normalement prête pour que soit rendue la décision.
Si le demandeur dépose une demande de preuve de l’usage de la ou des marques antérieures, la phase suivante de la procédure peut être limitée à cette seule question tandis que l’objet du conflit peut être abordé ultérieurement.
La preuve de l'usage produite par l’opposant est transmise au demandeur, qui dispose de deux mois pour formuler des observations sur ce point. Dans ce cas, les observations sont communiquées à l’opposant, qui aura ensuite l’occasion de présenter ses observations finales.
Dans certains cas, il peut se révéler utile ou nécessaire de procéder à un nouvel échange d'observations. Tel peut être le cas lorsque l’affaire porte sur des questions complexes ou lorsque l’opposant soulève un point nouveau qui est admis à la procédure. Dans ce cas, le demandeur peut avoir l’occasion de répondre. Il appartient alors à l’examinateur de décider si une nouvelle possibilité doit être accordée à l'opposant.
Dès que les parties ont présenté leurs observations, la procédure est clôturée; le dossier est prêt à être soumis pour qu’il soit statué sur le fond et les parties en sont dûment informées.
2 Examen de la recevabilité
2.1 Acte écrit d’opposition
Article 41, paragraphes 1 et 3, du RMC Règle 16 bis et Règle 17, paragraphe 4, du REMC Décision n° EX-11-3 du président de l’Office
L’acte d’opposition doit être formé par écrit, et l'Office doit le recevoir dans le délai d’opposition, à savoir dans un délai de trois mois à compter de la publication de la demande de marque communautaire contestée.
L’acte d’opposition reçu par télécopie ou par courrier est introduit dans le système informatique de l’Office, et l’opposant reçoit un accusé de réception. Le dépôt électronique d’actes d’opposition est également possible. Le formulaire électronique d'opposition est automatiquement saisi par le système et introduit dans le système informatique de l’Office.
Le demandeur reçoit immédiatement une copie de l’acte d'opposition (et de toute pièce produite par l’opposant) pour information. Si l’opposition est fondée sur une marque communautaire, le demandeur est également informé de la possibilité d’accéder aux informations relatives aux marques communautaires antérieures via les outils de recherche en ligne, disponibles sur le site internet de l’Office.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 8
FINAL VERSION 1.0 01/02/2015
2.1.1 Oppositions anticipées contre un enregistrement international
Une opposition contre un enregistrement international (EI) peut être formée entre le sixième et le neuvième mois qui suivent la date de republication (article 156, paragraphe 2, du RMC). Par exemple, si la première republication a lieu le 15 février 2013, le délai d’opposition débute le 16 août 2013 et prend fin le 15 novembre 2013.
Toutefois, les oppositions formées après la republication de l’EI mais avant le début du délai d’opposition sont gardées en attente et sont réputées avoir été formées le premier jour du délai d’opposition. En cas de retrait de l’opposition avant cette date, la taxe d’opposition est remboursée.
Si l’opposition est reçue avant le début du délai d’opposition (règle 114, paragraphe 3, du REMC), une lettre est envoyée, informant l’opposant que l’opposition est réputée avoir été reçue le premier jour du délai d’opposition et que l’opposition est mise en attente d’ici-là.
2.1.2 Opposition anticipée contre une demande de marque communautaire
Tout acte d’opposition formé à l’encontre une demande de marque communautaire reçu par télécopie et/ou courrier postal avant le début du délai d’opposition, conformément à l’article 41, paragraphes 1 à 3, du RMC, est gardé en attente et réputé avoir été déposé le premier jour du délai d’opposition, à savoir le premier jour qui suit la publication de la marque communautaire dans la partie A.1. du Bulletin des marques communautaires. Si l’opposition est retirée avant cette date ou si la demande de marque communautaire est refusée ou retirée avant la publication (article 39 du RMC), la taxe d’opposition est remboursée.
L’Office informe l’opposant que la demande de marque communautaire contre laquelle l’opposition est dirigée n’ayant pas encore été publiée au Bulletin des marques communautaires, l’acte d’opposition est gardé en attente et ne sera traité qu’après la publication de la demande de marque communautaire contestée. L’opposant est informé que l’opposition est réputée avoir été formée le premier jour du délai d’opposition.
2.2 Paiement
Pour les règles générales relatives aux paiements, voir les Directives, partie A, Dispositions générales, section 3, Paiement des taxes, frais et tarifs.
2.2.1 Acte d’opposition reçu hors délai, paiement reçu dans le délai d’opposition
Règle 17, paragraphe 2, du REMC
Si l’Office a reçu le paiement dans le délai d’opposition, mais que l’acte d'opposition parvient tardivement, l’opposition est irrecevable. Dans ce cas, l’Office conserve la taxe d’opposition. L’opposant en reçoit la notification et dispose de deux mois pour soumettre ses observations sur la constatation d’irrecevabilité.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 9
FINAL VERSION 1.0 01/02/2015
Si l’opposant soumet des éléments de preuve convaincants, tels que des rapports de télécopie, un accusé de réception de courrier transmis par messager et/ou de lettre recommandée, prouvant que l’acte d’opposition n’était pas hors délai et a en réalité bien été reçu par l’Office dans le délai d’opposition de trois mois, l'Office doit réexaminer sa constatation et considérer l’opposition comme recevable et présentée dans le délai d’opposition. Dans ce cas, l’examen de la recevabilité de l’opposition peut se poursuivre. Si les éléments de preuve présentés par l’opposant ne démontrent pas que l’acte d’opposition a été reçu dans le délai pertinent ou si l’opposant ne donne pas suite dans les deux mois impartis, une décision déclarant l’irrecevabilité de l'opposition est rendue. Lorsque cette décision est notifiée à l’opposant, une copie de celle-ci doit être envoyée au demandeur.
2.2.2 Moment du paiement
Article 41, paragraphe 3, du RMC Article 8 du RTMC Règle 17, paragraphe 1, du REMC
Le montant total de la taxe d’opposition doit parvenir à l'Office dans le délai d’opposition.
Si la taxe d’opposition est reçue après l’expiration du délai d'opposition, mais que l’ordre d'effectuer le paiement a réellement été donné à la banque au cours des dix derniers jours du délai d’opposition, l’opposition peut être maintenue si deux conditions sont remplies: l’opposant apporte la preuve que l’ordre de paiement a été donné dans les dix derniers jours du délai d’opposition ET acquitte une surtaxe égale à 10 % de la taxe d’opposition (condition cumulative). Cette surtaxe ne doit toutefois pas être payée si l’opposant apporte la preuve que l’ordre de paiement a été donné à la banque plus de dix jours avant l’expiration du délai de paiement. Si la taxe d’opposition n'a pas été reçue dans le délai d’opposition ou si la disposition susvisée ne s’applique pas, l’acte d’opposition est réputé ne pas avoir été déposé.
Article 5, paragraphe 2 et Article 8, paragraphe 1, du RTMC Décision n° EX-06-1 du président de l’Office
Si l’opposant ou son représentant possède un compte courant, le paiement est réputé effectué le jour où l’opposition parvient à l’Office.
Étant donné que le paiement est réputé avoir été effectué à la date de réception de l’opposition, si l’acte d’opposition est reçu hors délai, le paiement est également hors délai. En conséquence, l’opposition est réputée ne pas avoir été déposée.
Le système des comptes courants est un système à prélèvement automatique par lequel les montants peuvent être débités par l’Office sans instructions particulières et pour tout type de transaction financière.
L’absence d’indication ou l’indication erronée du montant de la taxe d’opposition n'a aucune conséquence négative dans la mesure où il est clair que l’opposant entendait payer le montant de la taxe d’opposition.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 10
FINAL VERSION 1.0 01/02/2015
Même en l’absence de demande expresse de la part de l’opposant, l’existence d’un compte courant est suffisante dans ce cas pour que celui-ci soit débité du montant dû. Cette règle s'applique, qu’il y ait ou non utilisation du formulaire d'opposition.
La seule exception à cette règle intervient lorsque le titulaire d'un compte courant souhaitant exclure l’utilisation du compte courant pour le paiement d’une taxe ou de frais particuliers en informe l'Office par écrit (en indiquant, par exemple, un virement bancaire).
Paiement de la taxe d'opposition par le prélèvement d’un compte courant appartenant à un tiers
Le paiement de la taxe d’opposition par le prélèvement d’un compte courant appartenant à un tiers requiert le consentement explicite du titulaire de ce compte, par lequel ce dernier autorise le débit du montant de la taxe de son compte. Dans ce cas, l’opposant doit déposer une autorisation au cours du délai d’opposition.
Le paiement est réputé effectué à la date de réception de l'autorisation par l’Office.
2.2.3 Conséquences en cas de non-paiement
Règle 17, paragraphes 1 et 4 et Règle 54 du REMC
Si la taxe d’opposition n’est pas acquittée avant l’expiration du délai d’opposition, l’acte d’opposition est réputé ne pas avoir été déposé et cette constatation doit être notifiée à l’opposant.
Une copie de cette lettre est envoyée simultanément au demandeur pour information.
Si, dans le délai de deux mois imparti, l’opposant apporte la preuve que la constatation de l’Office concernant la perte de droits n'est pas correcte et que le paiement a été effectué dans le délai, une notification doit être envoyée, et une copie de celle-ci doit être transmise au demandeur avec la preuve produite par l'opposant.
Un opposant a le droit de demander une décision dans les deux mois. Dans ce cas, la décision doit être notifiée aux deux parties.
2.2.4 Remboursement de la taxe d’opposition
Article 8, paragraphe 3 et Article 9, paragraphe 1, du RTMC Règle 17, paragraphe 1 et Règle 18, paragraphe 5, du REMC
Si l’acte d'opposition est réputé ne pas avoir été déposé et que la taxe d’opposition n’est pas acquittée intégralement ou est acquittée après l’expiration du délai d’opposition, elle est remboursée à l’opposant.
Le remboursement de la taxe d’opposition, prévu à la règle 18, paragraphe 5, du REMC, comprend toute surtaxe acquittée par l’opposant en application de l’article 8, paragraphe 3, du RTMC.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 11
FINAL VERSION 1.0 01/02/2015
2.3 Langues et traduction de l’acte d’opposition
Article 119, paragraphes 5 et 6, du RMC Règle 16, Règle 17, paragraphe 3, Règle 83, paragraphe 3, et Règle 95, point b), du REMC
Conformément à l’article 119, paragraphe 5, du RMC, l’acte d’opposition doit être déposé dans l’une des langues de l’Office. Plusieurs situations concernant le choix de la langue de procédure peuvent se présenter:
1. Le formulaire officiel d’opposition de l’OHMI a été utilisé et l’opposant a choisi une langue éventuelle de procédure.
L’opposition satisfait au régime linguistique des règlements.
Exemples
a) Les langues de la demande de marque communautaire sont le portugais et l’anglais. La version portugaise du formulaire a été envoyée, mais aucun des éléments textuels pertinents pour la recevabilité ne peut être traduit et les cases appropriées sont cochées. L’opposition est recevable. La langue de procédure ne pouvant être que l’anglais, il est inutile de demander à l’opposant d’indiquer la langue de procédure. Lors de la notification de l’opposition, un formulaire officiel vierge en anglais doit être joint et la langue de procédure doit être indiquée.
b) Les langues de la demande de marque communautaire sont l’allemand et l’anglais. La version française du formulaire a été envoyée, mais soit l’opposition est remplie en français, soit aucun des éléments textuels ne peut être traduit et les cases appropriées sont cochées. L’opposition est recevable. La langue de procédure pouvant être soit l’allemand, soit l’anglais, il convient de demander à l’opposant d’indiquer la langue de procédure. Lors de la notification de l’opposition, un formulaire officiel vierge dans la langue indiquée doit être joint.
2. Le formulaire officiel d’opposition de l’OHMI a été utilisé et le texte dans le formulaire est dans l’une des langues de l’Office, mais pas dans l’une des langues éventuelles de procédure.
Si les éléments textuels importants pour la recevabilité ne peuvent être traduits (par exemple, des chiffres) et si toutes les cases appropriées sont cochées, l’opposition est recevable, même si elle contient également des parties textuelles dans la langue incorrecte, telles qu’une explication des motifs. Une explication des motifs n’étant pas obligatoire au stade de la recevabilité, le fait qu’elle ne soit pas présentée dans la langue adéquate n’affecte pas la recevabilité. Elle n’«existe» pas.
L’Office vérifie si l’opposant a indiqué la langue de procédure dans le formulaire.
○ Dans le cas contraire, ou si une langue incorrecte a été indiquée, et si tant la première que la seconde langue de la demande de marque communautaire sont des langues de l’Office, une lettre invitant l’opposant à indiquer la langue de procédure est envoyée. Si aucune réponse n’est
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 12
FINAL VERSION 1.0 01/02/2015
reçue dans le délai de deux mois imparti, l’opposition doit être rejetée comme irrecevable. Lors de la notification de l’opposition, un formulaire officiel vierge dans la langue de procédure doit être joint.
○ Dans le cas contraire, ou si une langue incorrecte a été indiquée et que seule une des langues de la demande de marque communautaire est une langue de l’Office, il n’est pas nécessaire de s’enquérir de la langue de procédure, celle-ci ne pouvant être qu’une langue de l’Office. Lors de la notification de l’opposition, un formulaire officiel vierge dans la langue de procédure doit être joint. La langue de procédure est indiquée dans la lettre.
○ Si la langue de procédure est correctement indiquée, un formulaire vierge dans la langue de procédure doit être joint lors de la notification de l’opposition.
Il en va de même si le formulaire officiel d’opposition de l’OHMI a été utilisé et si le texte dans le formulaire N’est PAS dans l’une des langues de l’Office.
3. Le formulaire officiel d’opposition de l’OHMI n’a pas été utilisé, mais le texte de l’opposition est rédigé dans l’une des langues éventuelles de procédure.
L’opposition satisfait au régime linguistique des règlements.
4. Le formulaire officiel d’opposition de l’OHMI n’a pas été utilisé, et le texte de l’opposition est rédigé dans l’une des langues de l’Office mais pas dans l’une des langues éventuelles de procédure.
Conformément à l’article 119, paragraphe 6, du RMC et à la règle 16, paragraphe 1, du REMC, l’opposant doit déposer de sa propre initiative une traduction dans la langue de procédure dans un délai d’un mois. Si aucune traduction n’est reçue, l’opposition est irrecevable.
5. Le formulaire officiel d’opposition de l’OHMI n’a pas été utilisé, et le texte de l’opposition est rédigé dans l’une des langues officielles mais pas dans l’une des langues de l’Office.
L’opposition est irrecevable. L’article 119, paragraphe 5, du RMC s’applique. Une notification est envoyée dans la première langue (s’il s’agit de l’une des langues de l’Office) ou dans la seconde langue de la demande de marque communautaire contestée.
La liste des produits et services est soumise à des règles spéciales (voir le paragraphe 2.4.2.3 ci-dessous).
Explication des motifs: si l’une des cases du formulaire relatives aux motifs de l’opposition est cochée et qu'une explication complémentaire des faits ou des observations est fournie, cette explication ou des indications telles que «voir annexe», «cf. pièce jointe», «sera fourni(e) ultérieurement», ne doivent pas être traduites au stade de l’examen de la recevabilité. La traduction devra en être fournie après l’expiration du délai de réflexion, avant l’expiration du délai pour présenter les éléments à l’appui de l’opposition.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 13
FINAL VERSION 1.0 01/02/2015
2.4 Examen de la recevabilité
Règle 15 et Règle 17 du REMC
L’examen de la recevabilité a pour objet tant les conditions absolues que les conditions relatives:
les indications et les éléments que doit contenir l’acte d’opposition ou qui doivent être produits par l’opposant de sa propre initiative dans le délai d’opposition sont ceux visés à la règle 15, paragraphe 1 et paragraphe 2, points a) à c), du REMC;
les indications et éléments qui, s’ils ne sont pas présentés dans le délai d’opposition, donnent lieu à une notification d’irrégularité de la part de l’Office et à la fixation d’un délai non prorogeable de deux mois à l’opposant pour remédier à l’irrégularité, sont ceux visés à la règle 15, paragraphe 2, points d) à h), du REMC;
les indications facultatives (qui déterminent l’étendue de l’opposition, mais n’aboutissent pas à une conclusion d’irrecevabilité) sont celles énoncées à la règle 15, paragraphe 3, du REMC.
2.4.1 Conditions absolues de recevabilité
Si l’opposition est irrecevable au motif de conditions absolues de recevabilité, l’opposant doit en être informé et être invité à présenter ses observations sur la recevabilité. Si l’irrecevabilité est confirmée, une décision rejetant l’opposition est envoyée, avec copie au demandeur.
Oppositions contre des DMC
Les marques antérieures/droits antérieurs sont examinés afin de déterminer si l’un d’eux est clairement identifié. Si le seul droit antérieur sur lequel l’opposition est fondée n’est pas dûment identifié, l’opposition est irrecevable, et l’opposant est invité à présenter ses observations sur l’irrecevabilité avant que la décision sur l’irrecevabilité ne soit rendue. Si le seul droit antérieur sur lequel se fonde l’opposition est dûment identifié (conditions absolues), l’Office examine s’il répond également aux conditions relatives de recevabilité.
Si l’opposition est fondée sur plusieurs droits antérieurs et que l’un d’eux a été correctement identifié, il peut être procédé à l’examen de la recevabilité (conditions relatives) sur ce droit antérieur. Les parties en sont informées lorsque la notification des délais de la procédure d’opposition est envoyée aux parties.
Oppositions contre des marques internationales désignant l’UE
Les oppositions contre des marques internationales désignant l’UE font l’objet d’un examen de recevabilité complet. Cet examen doit s’étendre sur tous les droits antérieurs. Si aucun des droits antérieurs n’est correctement identifié, l’opposition est irrecevable et l’opposant est invité à présenter ses observations sur l’irrecevabilité avant que la décision sur l’irrecevabilité ne soit rendue.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 14
FINAL VERSION 1.0 01/02/2015
2.4.1.1 Identification de la demande de marque communautaire contestée
Règle 15, paragraphe 2, point a) et Règle 17 du REMC
Les éléments obligatoires pour l’identification de la demande de marque communautaire contestée sont le numéro de la demande et le nom du demandeur.
Si, par exemple, le numéro de demande indiqué ne correspond pas au nom du demandeur indiqué, l’Office décidera s’il peut identifier, sans doute aucun, la demande de marque communautaire contestée. Si le nom du demandeur n’est pas mentionné, il peut être trouvé dans le système informatique de l’Office.
La date de publication est une indication facultative, qui permet un double contrôle aux fins de l’identification de la demande de marque communautaire. Même si cette date n’apparaît pas, les autres indications peuvent suffire pour identifier la demande de marque communautaire.
Dans un acte d’opposition, une seule demande de marque communautaire peut être contestée.
Si la demande de marque communautaire ne peut être identifiée, il ne peut être remédié à cette irrégularité qu'à l’initiative de l'opposant dans le délai d’opposition de trois mois; autrement, l’opposition est irrecevable, et une invitation à formuler des observations sur l'irrecevabilité doit être envoyée. Si l'irrecevabilité est confirmée, une décision de rejet de l’opposition est notifiée à l’opposant, avec copie au demandeur.
2.4.1.2 Identification des marques antérieures et des droits antérieurs
Article 8, paragraphe 2, du RMC Règle 15, paragraphe 2, point b) et Règle 17, paragraphe 2 du REMC
Les éléments d’identification doivent être recherchés non seulement dans l’acte d’opposition, mais aussi dans les annexes ou dans d’autres documents joints à l’acte d’opposition ou tout document soumis pendant le délai d’opposition.
Une opposition peut être fondée sur cinq catégories de droits antérieurs: 1. une demande ou un enregistrement de marque antérieure; 2. une demande ou un enregistrement de marque antérieure jouissant d’une renommée; 3. une marque antérieure notoirement connue; 4. une marque antérieure non enregistrée; 5. un signe antérieur utilisé dans la vie des affaires.
Droits antérieurs qui ne sont pas antérieurs
Article 8, paragraphe 2 et Article 41, paragraphe 1, du RMC
Pour qu’un droit antérieur soit antérieur, il doit avoir, en l’absence de toute priorité, une date de demande antérieure à la date à laquelle la demande de marque contestée a été déposée. En cas de conflit entre une marque nationale et une demande de marque communautaire, l’heure et la minute de présentation de la marque nationale ne sont
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 15
FINAL VERSION 1.0 01/02/2015
pas des éléments pertinents pour déterminer quelle marque est antérieure (arrêt du 22 mars 2012, C-190/10, «Génesis»).
Parfois, une opposition est fondée sur une ou plusieurs marques ou sur d’autres droits qui ne sont pas antérieurs à la demande de marque communautaire au sens de l'article 8, paragraphe 2, du RMC. La vérification de l’existence d’un droit antérieur s’effectue au stade de l’examen de la recevabilité.
Lorsque la seule marque antérieure ou lorsque toutes les marques antérieures ne sont pas antérieures, l’Office informe l’opposant de l’irrecevabilité et l’invite à présenter ses observations sur cette question avant de rendre une décision sur l’irrecevabilité.
Lorsque l’opposition est fondée sur plusieurs droits, dont l’un est antérieur et l’autre ou plusieurs autres ne le sont pas, l’Office notifie la recevabilité de l’opposition comme à l’accoutumée et il n’est fait aucune mention du fait qu’une ou plusieurs marques/droits ne sont pas antérieurs. La question est ensuite traitée dans la décision.
Demandes ou enregistrements antérieurs de marque
Article 8, paragraphe 2, points a) et b), du RMC Règle 15, paragraphe 2, point b), Règle 17, paragraphe 2, et Règle 19, paragraphe 3, du REMC
Ces droits comprennent les demandes et enregistrements de marques communautaires, les enregistrements internationaux désignant l’Union européenne, les demandes et enregistrements de marques nationales ou Benelux (y compris les «marques anciennement communautaires» pour lesquelles une requête en transformation a été déposée) ainsi que les enregistrements internationaux en vertu de l’arrangement ou du protocole de Madrid, produisant leurs effets dans un État membre.
L’ancienneté revendiquée dans une marque communautaire peut être prise en considération, au sens de l’article 8, paragraphe 2, point a), du RMC, à condition que le titulaire de la marque communautaire ait renoncé à la marque antérieure ou l’ait laissée s'éteindre au sens de l’article 34, paragraphe 2, du RMC et que ce fait ait été prouvé par l’opposant.
Dans ce cas, l’opposant doit fonder son opposition sur la marque communautaire en faisant explicitement valoir, pendant le délai d’opposition de trois mois, que la marque nationale continue d’exister en raison de l’ancienneté revendiquée dans la marque communautaire. Un lien clair doit être établi entre la marque communautaire indiquée et la marque antérieure dont l’ancienneté a été revendiquée dans la marque communautaire. Dans le délai imparti conformément à la règle 19, paragraphe 1, du REMC, l’opposant doit produire une preuve suffisante, émanant de l’OHMI, que la revendication d’ancienneté a été acceptée, et une preuve, émanant de l’administration par laquelle la marque nationale a été enregistrée, que le titulaire de la marque communautaire a renoncé à la marque nationale ou l’a laissée s'éteindre conformément à l’article 34, paragraphe 2, du RMC.
Les éléments absolus d’identification pour les enregistrements et demandes antérieurs de marque sont:
le numéro de l’enregistrement ou de la demande;
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 16
FINAL VERSION 1.0 01/02/2015
les demandes nationales découlant de la transformation d’une demande antérieure ou d’un enregistrement antérieur de marque communautaire sont réputées effectuées dès le moment du dépôt d’une requête en transformation valable. Ces droits sont correctement identifiés aux fins de la recevabilité dès lors que l'opposant indique le numéro de la demande ou de l’enregistrement de marque communautaire en cours de transformation et les pays pour lesquels il a demandé la transformation;
l’indication que la marque antérieure est demandée ou enregistrée;
l’État membre, y compris le Benelux, où la marque antérieure est enregistrée ou demandée ou, le cas échéant, la mention qu’il s’agit d’une marque communautaire.
Si l’État membre n'est pas indiqué dans l’acte d'opposition, mais qu’un certificat est joint en annexe, l’État membre est réputé suffisamment identifié, même si ledit certificat n'est pas rédigé dans la langue de la procédure. Une traduction du certificat n’est pas demandée à ce stade de la procédure. S’il s’agit du certificat d’un enregistrement international, l’opposition est présumée fondée sur cette marque dans tous les États membres et/ou dans les pays du Benelux mentionnés sur le certificat.
Marque demandée par un agent
Article 8, paragraphe 3, du RMC; Règle 15, paragraphe 2, point b), sous i), du REMC
Une marque demandée par un agent est une marque dont l’opposant prétend que le demandeur, qui entretient ou a entretenu une relation d'affaires avec l’opposant (son agent ou représentant), a demandé cette marque sans son consentement.
Les marques ou droits antérieurs sur lesquels l’opposition est fondée doivent être identifiés selon les mêmes critères que les enregistrements ou demandes de la marque antérieure, à savoir le pays et le numéro d'enregistrement. C’est uniquement lorsque la marque antérieure du titulaire est une marque non enregistrée que la représentation de la marque (en couleur, le cas échéant) doit être fournie, parce que, dans ce cas, aucun numéro d’enregistrement ne peut être donné pour identifier clairement la marque antérieure. Pour les marques verbales non enregistrées, il convient d’indiquer le mot qui constitue la marque. Pour les marques figuratives ou autres catégories de marques non enregistrées, la représentation de la marque telle qu'elle est utilisée et revendiquée par le titulaire doit être fournie. Voir également les Directives, partie C, Opposition, section 3, Marque demandée par un agent.
Demandes ou enregistrements antérieurs de marque jouissant d’une renommée
Article 8, paragraphes 1 et 5, du RMC Règle 15, paragraphe 2, points c) et g), du REMC
En application de l’article 8, paragraphe 5, du RMC, une opposition peut être fondée sur une marque jouissant d’une renommée, invoquée contre des produits et des services similaires et/ou différents. La marque jouissant d’une renommée peut être une
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 17
FINAL VERSION 1.0 01/02/2015
marque communautaire antérieure, un enregistrement international, Benelux et national antérieur ou une demande antérieure, mais elle doit nécessairement être enregistrée.
Les exigences d’identification sont les mêmes que pour les marques enregistrées visées à l'article 8, paragraphe 1, point b), du RMC: le numéro et l’État membre/la région couvert(e) par la protection; la mention du territoire et des produits ou services pour lesquels la marque est renommée est une condition relative de recevabilité.
Marque antérieure notoirement connue
Article 8, paragraphe 2, point c), du RMC Règle 15, paragraphe 2, point b), sous i) et ii) et Règle 17, paragraphe 2, du REMC
L’article 8, paragraphe 2, point c), du RMC protège les marques notoirement connues au sens de l'article 6 bis de la Convention de Paris. Il peut s’agir de marques enregistrées ou non, ou de marques non enregistrées dans le territoire où elles doivent être protégées (indépendamment de leur enregistrement dans le territoire d'origine).
Les éléments absolus d’identification sont les suivants:
une indication de l’État membre dans lequel la marque est notoirement connue: si cette indication ne peut être déduite des documents versés au dossier, la marque est irrecevable comme fondement d’une opposition;
s’il s'agit d'une marque enregistrée, les éléments d’identification visés à la règle 15, paragraphe 2, point b), sous i), du REMC, c’est-à-dire le numéro d’enregistrement et l’État membre où la marque est enregistrée;
si la marque n’est pas enregistrée, une représentation de la marque. Pour les marques verbales, il s’agit de l'indication du mot qui constitue la marque. Pour les marques figuratives ou autres catégories de marques, il convient de fournir la représentation de la marque notoirement connue (en couleur, le cas échéant), telle qu’elle est utilisée et revendiquée. Si l’opposition est en outre fondée sur une marque enregistrée, mais qu’aucune représentation de la marque notoirement connue n’est fournie, l’Office présume que les deux marques font référence au même signe et que l’opposant revendique la renommée de la marque enregistrée (décision du 17 octobre 2007, R0160/2007-1, «QUART/Quarto»).
Marque antérieure non enregistrée et signe antérieur utilisé dans la vie des affaires
Article 8, paragraphe 4, du RMC Règle 15, paragraphe 2, point b), sous iii), et Règle 17, paragraphe 2, du REMC
Cette catégorie est constituée de signes non enregistrés et utilisés dans la vie des affaires, ainsi que d’un grand nombre de droits antérieurs différents, parmi lesquels les droits relatifs à une dénomination sociale, à un nom commercial, à une enseigne, à des titres d'œuvres littéraires ou artistiques protégées ainsi que le droit à un signe en vertu d’une action en contrefaçon («passing-off»).
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 18
FINAL VERSION 1.0 01/02/2015
Les éléments absolus d'identification sont les suivants:
l’indication du type ou de la nature du droit. La nature du droit détermine l’étendue de l'opposition et la défense du demandeur en dépend. Des précisions telles que «nom commercial», «dénomination sociale», «enseigne», «passing- off», «titre d'une œuvre littéraire ou artistique protégée» sont des indications admissibles de la nature des droits. En revanche, des termes généraux tels que «droit coutumier» ou «concurrence déloyale», sans indication de la nature spécifique du droit, ne sont pas admis (cette liste n’est pas exhaustive). Si l’opposant fonde son opposition sur un droit qui ne saurait être un droit antérieur au sens de l’article 8, paragraphe 4, du RMC, par exemple un droit d'auteur ou un dessin ou modèle, l’opposition est recevable. Néanmoins, après l’ouverture de la procédure, l'opposition sera rejetée sur le fond;
l'indication de l’État membre dans lequel l’existence du droit est revendiquée;
une représentation du droit antérieur (en couleur, le cas échéant).
En l’absence des indications susvisées, le droit pertinent est irrecevable.
2.4.1.3 Identification des motifs
Article 41, paragraphe 3, et article 75 du RMC Règle 15, paragraphe 2, point c) et Règle 17, paragraphe 2, du REMC
Une opposition sans indication des motifs sur lesquels elle est fondée n’est pas recevable, conformément à la règle 15, paragraphe 2, point c), du REMC, s’il n'est pas remédié à cette irrégularité avant l’expiration du délai d’opposition.
L'indication des motifs doit consister en une déclaration selon laquelle les conditions correspondantes prévues à l'article 8, paragraphes 1, 3, 4 et 5, du RMC, sont remplies. La présentation d’observations et preuves est facultative à ce stade de la procédure.
En particulier, les motifs sont considérés comme dûment indiqués si:
l’une des cases correspondantes du formulaire d’opposition est cochée; la case correspondante n’est pas cochée, mais la marque antérieure est
identifiée, et l’opposition peut être considérée comme fondée sur l’article 8, paragraphe 1.
Dans les deux cas, il est possible d’identifier les motifs à partir de l’acte d’opposition, sans doute aucun, et l’opposition est recevable.
Dans le cas contraire, avant de rejeter l’opposition, il convient d'examiner soigneusement l’ensemble de l'acte d’opposition: peu importe que ces motifs soient indiqués dans le formulaire d'opposition, dans ses annexes ou dans les documents produits à l’appui. Les motifs doivent être clairs et sans équivoque.
Dans tous les autres cas, l’opposant est invité à formuler ses observations sur l’irrecevabilité avant que la décision de rejet de l’opposition ne soit rendue.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 19
FINAL VERSION 1.0 01/02/2015
2.4.2 Conditions relatives de recevabilité
Règle 15, paragraphe 2, points d) à h), du REMC
Les irrégularités relatives sont celles auxquelles il peut être remédié après l’expiration du délai d'opposition. L'Office invite l’opposant à remédier aux irrégularités dans les deux mois suivant la réception de la notification desdites irrégularités. Si l’opposant y remédie, l'opposition est réputée recevable; dans le cas contraire, elle est rejetée pour irrecevabilité.
2.4.2.1 Dates
Règle 15, paragraphe 2, point d), et Règle 17, paragraphe 4, du REMC
Ces dates comprennent la date de dépôt et, le cas échéant, la date d’enregistrement et la date de priorité de la marque antérieure.
Cette exigence s'applique aux droits suivants:
une demande antérieure ou un enregistrement antérieur de marque communautaire, nationale ou internationale au sens de l’article 8, paragraphe 2, point a) ou b), du RMC;
une marque antérieure notoirement connue au sens de l’article 8, paragraphe 2, point c), du RMC, si elle est enregistrée dans l’Union;
une marque antérieure au sens de l'article 8, paragraphe 3, du RMC, si elle est enregistrée;
une marque antérieure jouissant d’une renommée au sens de l'article 8, paragraphe 5, du RMC.
Ces indications peuvent être importantes pour éliminer les erreurs éventuelles lors de l’identification de la marque antérieure. Il suffit que ces éléments apparaissent dans les documents joints. Si ces éléments font défaut, l’opposant doit être informé de l’irrégularité.
2.4.2.2 Représentation d’une marque antérieure ou d’un signe antérieur
Règle 15, paragraphe 2, point e) et Règle 17, paragraphe 4, du REMC
Pour les droits qui ne font pas l'objet d’un enregistrement, il s’agit d’une condition absolue de recevabilité, étant donné qu’à défaut, le droit antérieur ne saurait être déterminé (voir ci-dessus).
La condition relative de recevabilité consistant à fournir une représentation de la marque conformément à la règle 15, paragraphe 2, point e), du REMC, s’applique aux droits suivants:
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 20
FINAL VERSION 1.0 01/02/2015
une demande antérieure ou un enregistrement antérieur de marque nationale ou internationale au sens de l’article 8, paragraphe 1, point a) ou b), du RMC;
une marque antérieure notoirement connue au sens de l’article 8, paragraphe 2, point c), du RMC, si elle est enregistrée dans l’Union;
une marque antérieure jouissant d'une renommée au sens de l’article 8, paragraphe 5, du RMC;
une marque déposée par un agent (article 8, paragraphe 3, du RMC), si elle est enregistrée.
Dans le cas d’une marque verbale, une indication du mot suffit.
Dans le cas d'une marque figurative, tridimensionnelle ou autre, une représentation de la marque telle qu'elle a été demandée ou enregistrée doit être présentée, le cas échéant en couleur.
Si la représentation correcte n'est pas jointe à l’acte d’opposition, l’opposant doit être informé de l’irrégularité. S’il n’y remédie pas dans le délai de deux mois imparti, le droit antérieur est considéré comme irrecevable et est rejeté.
Si la marque antérieure est une marque communautaire, il n’est pas nécessaire de fournir une représentation étant donné qu’elle est disponible dans les bases de données de l’Office.
Une représentation en couleur de la marque n'est pas obligatoire si la marque nationale n'a pas été publiée (pour des raisons techniques) en couleur, comme c'est le cas, par exemple, à Chypre et en Lettonie. Le cas échéant, l'opposant n'est invité ni à fournir une représentation en couleur, ni à produire une traduction des indications de couleur(s).
Les pays suivants ont toujours publié en couleur ou le font depuis la date indiquée:
Autriche Belgique Bulgarie Croatie (2009) République tchèque (1999) Danemark Estonie (2003) Finlande (2005) France (1992) Allemagne Grèce (2007) Irlande (2003) Italie Hongrie Lituanie (depuis juillet 2009) Luxembourg Malte Pays-Bas Pologne (2003)
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 21
FINAL VERSION 1.0 01/02/2015
Portugal (2006) Roumanie Slovaquie (2008) Slovénie (1992) Espagne (depuis le 31 juillet 2002) Suède Royaume-Uni (2004)
Les marques internationales sont publiées en couleur depuis 1989.
Règle 80, paragraphe 2 et Règle 17, paragraphe 4, du REMC
Si la représentation déposée n’est pas claire, l’Office peut en réclamer une plus nette. Si la représentation reçue est incomplète ou illisible et que l’opposant ne se conforme pas à l'invitation de fournir une représentation plus nette, la représentation est réputée ne pas avoir été reçue et le droit est considéré comme irrecevable et est donc rejeté.
2.4.2.3 Produits et services
Règle 15, paragraphe 2, point f) et Règle 17, paragraphe 4, du REMC Communication n° 5/07 du président de l’Office
La règle 15, paragraphe 2, point f), du REMC stipule que l’acte d’opposition doit contenir une indication dans la langue de la procédure des produits et services sur lesquels l’opposition se fonde. Cette règle s’applique à tous les types de droits antérieurs.
L’opposition peut être fondée sur tous les produits et services pour lesquels la marque antérieure est enregistrée ou demandée, ou seulement pour une partie d’entre eux.
Conformément à la communication n° 5/07 du président de l’Office du 12 septembre 2007 relative à des changements de pratique dans le cadre de la procédure d’opposition, une indication du ou des numéros de classe est acceptée comme indication suffisante des produits et services couverts par les droits antérieurs sur lesquels l’opposition est fondée. Cette disposition est mise en œuvre comme décrit ci-dessous.
Partie des produits et services
Si l’opposition est fondée sur une partie des produits et services pour lesquels la ou les marques antérieures sont enregistrées/demandées, ces produits et services doivent être énumérés dans la langue de procédure.
L’Office accepte également une indication du ou des numéros de classe pertinents, à condition qu’un certificat d’enregistrement ou un extrait provenant d’une source officielle soit joint (le certificat d’enregistrement ou l’extrait doit soit être établi dans la langue de procédure, soit être traduit dans la langue de procédure ou utiliser les codes nationaux ou INID de façon à identifier clairement le ou les numéros de classe pertinents).
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 22
FINAL VERSION 1.0 01/02/2015
Si les produits et services sur lesquels l’opposition se fonde sont moins nombreux que les produits et services pour lesquels la marque est enregistrée, les produits et services sur lesquels l’opposition n’est pas fondée ne doivent pas être indiqués étant donné qu’ils ne sont pas pertinents pour la procédure.
Tous les produits et services
Si l’opposition est fondée sur tous les produits et services pour lesquels la ou les marques antérieures sont enregistrées/demandées, ces produits et services doivent être énumérés dans la langue de procédure.
Toutefois, au lieu de les énumérer, l’opposant peut faire référence à «tous les produits et services pour lesquels la marque antérieure est enregistrée», à condition qu’un certificat d’enregistrement ou un extrait provenant d’une source officielle soit joint (le certificat d’enregistrement ou l’extrait doit soit être établi dans la langue de procédure, soit être traduit dans la langue de procédure ou utiliser les codes nationaux ou INID).
L’Office accepte également une indication du ou des numéros de classe pertinents, à condition qu’un certificat d’enregistrement ou un extrait provenant d’une source officielle soit joint (le certificat d’enregistrement ou l’extrait doit soit être établi dans la langue de procédure, soit être traduit dans la langue de procédure ou utiliser les codes nationaux ou INID de façon à identifier clairement le ou les numéros de classe pertinents).
En outre, lorsque l’opposant indique dans le formulaire d’opposition que l’opposition est fondée sur «tous les produits et services pour lesquels le droit antérieur est enregistré», mais n’énumère ensuite qu’une «partie» de ces produits et services (par rapport au certificat d’enregistrement ou à l’extrait officiel pertinent joint au formulaire d’opposition), l’Office présumera, afin de surmonter le problème des informations contradictoires contenues dans l’acte d’opposition, que l’opposition se fonde sur «tous les produits et services pour lesquels le droit antérieur est enregistré».
Même si l'opposant n'a pas indiqué – ou ne l’a pas fait clairement – sur quels produits et/ou services il fonde son opposition, il suffit qu’un certificat d’enregistrement établi dans la langue de la procédure soit joint. L’opposition est alors présumée se fonder sur les produits et services mentionnés dans le certificat.
Toutefois, si le certificat est établi dans une langue autre que celle de la procédure, l’irrégularité doit être notifiée.
Lorsqu’une opposition est fondée sur l’indication «tous les produits et services identiques/similaires», il convient de demander des éclaircissements étant donné que cette formulation ne suffit pas pour identifier le fondement de l’opposition.
Si une indication telle que «l’opposition se fonde sur tous les produits compris dans la classe 9» est utilisée et qu'un certificat d’enregistrement dans la langue de la procédure n’est pas annexé, l’Office demandera une liste dans la langue de la procédure.
Une indication de ce type est uniquement acceptable dans le cas où l’opposant répond qu’il est titulaire d’un enregistrement avec une description indiquant que le signe est enregistré pour «tous les produits compris dans la classe 9».
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 23
FINAL VERSION 1.0 01/02/2015
Pour les oppositions fondées sur des marques antérieures ou des droits antérieurs non enregistrés, l’opposant doit indiquer les activités commerciales dans le cadre desquelles ils sont utilisés.
Aspects spécifiques: Oppositions formées contre des enregistrements internationaux désignant l’Union européenne
Aux fins de la recevabilité, en ce qui concerne les oppositions formées contre des enregistrements internationaux désignant l’Union européenne, une indication du ou des numéros de classe ne figurant que dans l’acte d’opposition ne suffit pas pour identifier les produits et services sur lesquels l’opposition est fondée. Si l’opposition est fondée sur tout ou partie des produits et services pour lesquels la ou les marques antérieures sont enregistrées ou demandées, ces produits et services doivent être énumérés dans la langue de la procédure d’opposition. Cette liste doit inclure tous les produits ou services couverts par cette marque ou, à tout le moins, les produits ou services pertinents sur lesquels se fonde l’opposition.
2.4.2.4 Marque antérieure jouissant d’une renommée: étendue de la renommée
Règle 15, paragraphe 2, point g), du REMC
Une condition spécifique s’applique aux marques jouissant d'une renommée au sens de l'article 8, paragraphe 5, du RMC: il y a lieu d'indiquer le nom de l'État membre dans lequel la marque jouit d’une renommée ainsi que les produits et services pour lesquels la marque jouit d’une renommée.
2.4.2.5 Identification de l’opposant
Article 41, paragraphe 1, du RMC Règle 1, paragraphe 1, point b) et Règle 15, paragraphe 2, point h), sous i), du REMC
L’opposant peut être une personne physique ou morale. Afin de pouvoir identifier l’opposant, ses nom et adresse doivent être indiqués.
À ce jour, il n'y a jamais eu de cas où l’opposant n’ait pas été identifié. Si seuls sont indiqués le nom de l’opposant et, par exemple, son numéro de télécopieur, l’opposant est invité à fournir ses coordonnées complètes.
En examinant l’identification de l’opposant, il y a lieu de vérifier s’il s'agit d’une personne physique ou morale. Si cette information n'est pas clairement indiquée ou si le type de personne morale (par exemple GmbH, KG, SA, Ltd) n'est pas précisé, l’irrégularité doit être notifiée à l’opposant.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 24
FINAL VERSION 1.0 01/02/2015
Qualité pour agir
Règle 1, paragraphe 1, point b) et Règle 15, paragraphe 2, point h), sous i) et iii), du REMC
Sauf mention contraire, l’opposant est présumé être le titulaire du droit antérieur. Ce n’est que dans le cas où l’opposant agit en qualité de licencié habilité ou de personne habilitée en vertu du droit national applicable qu’il est tenu de présenter une déclaration à cet effet et des indications concernant l’autorisation ou l’habilitation à former opposition. Si ces renseignements ne sont pas communiqués, une notification d’irrégularité est envoyée.
En application de la règle 15, paragraphe 2, point h), i), du REMC, un opposant agissant en qualité de licencié ou de personne habilitée doit mentionner ses nom et adresse conformément à la règle 1, paragraphe 1, point b), du REMC.
Si l’acte d'opposition est fondé sur les motifs énoncés à l'article 8, paragraphe 1, ou à l'article 8, paragraphe 5, du RMC et, partant, sur des demandes ou des enregistrements de marque, il peut être déposé par le titulaire et par les licenciés de ces demandes ou enregistrements, pour autant qu’ils soient autorisés par le titulaire.
Si l’acte d’opposition est fondé sur les motifs énoncés à l’article 8, paragraphe 3, du RMC (marque demandée par un agent), il peut être déposé par le titulaire de cette marque.
Si l’acte d'opposition est fondé sur les motifs énoncés à l'article 8, paragraphe 4, du RMC (marques antérieures ou signes antérieurs), il peut être déposé par le titulaire de cette marque ou de ce signe antérieur ainsi que les personnes habilitées, en vertu de la législation nationale applicable, à exercer les droits découlant de la marque antérieure ou du signe antérieur.
Pour autant que l’opposant se prévale d’un droit ou d’un enregistrement dans l’un des États membres de l’Union européenne, il est en droit de former une opposition, quel que soit son pays d'origine.
Changement de titulaire (transfert de la marque antérieure) avant le dépôt de l’acte d’opposition
Si la marque antérieure a été transférée avant le dépôt de l’acte d’opposition, il y a lieu d’opérer une distinction entre les oppositions fondées sur une marque communautaire antérieure et les oppositions fondées sur des enregistrements (ou des demandes) de marques nationales.
Opposition fondée sur une marque communautaire antérieure
Une opposition fondée sur des demandes ou des enregistrements antérieurs de marque communautaire ne peut être formée par l’ayant droit du titulaire d’une marque communautaire que si les conditions énoncées à l’article 17, paragraphe 6, du RMC sont remplies, à savoir uniquement si l’opposant a, au moment du dépôt de l’opposition, déposé une demande d’enregistrement du transfert. Conformément à
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 25
FINAL VERSION 1.0 01/02/2015
l'article 17, paragraphe 7, du RMC, lorsque des délais doivent être observés vis-à-vis de l’Office, l’ayant cause peut faire à l’Office les déclarations prévues à cet effet dès que celui-ci a reçu la demande d’enregistrement du transfert.
Il incombe à l’opposant de fournir cette information et elle ne sera pas vérifiée par l’Office lors de l'examen de la recevabilité. Ce n'est que lorsque l’opposant mentionne dans l’explication des motifs de son opposition qu’il est le nouveau titulaire (ou qu’il utilise des termes similaires) que l’Office doit l’inviter à indiquer la date à laquelle la demande d’enregistrement du transfert est parvenue ou a été envoyée à l’Office.
Opposition fondée sur une demande ou un enregistrement de marque nationale
Étant donné que les pratiques diffèrent selon les États membres en ce qui concerne la nécessité d’enregistrer le transfert dans le registre national des marques pour se prévaloir des droits découlant de l’enregistrement, une opposition fondée sur une demande ou un enregistrement de marque nationale peut être formée par «l’ancien» titulaire ou par l’ayant droit.
Dans certains cas, l’opposition est formée par l’opposant A, alors que la marque appartient à B après transfert de la marque antérieure sur laquelle est fondée l'opposition. Vu la possibilité que A apparaisse toujours comme titulaire dans le registre correspondant, l’Office considère l’opposition comme valable même si A est indiqué comme opposant, alors que celui-ci n’est plus le titulaire de la marque antérieure.
Si l'opposition est déposée en indiquant B comme opposant et qu’une copie du certificat d'enregistrement montre que A est le titulaire de la marque antérieure, l'opposition est recevable sur la base de l’hypothèse que la marque antérieure a été transférée à B avant le dépôt de l’opposition (ou qu’il forme l’opposition en qualité de licencié, si cette indication figure dans l’acte d’opposition). Cependant, l’habilitation à former l’opposition doit être prouvée dans le délai imparti pour présenter les faits, preuves et observations à l’appui de l’opposition.
Pluralité d’opposants
Règle 15, paragraphe 1 et Règle 75, paragraphe 1, du REMC Décision du 11 octobre 2000, R 623/1999-1, « Emultech »
Il arrive que l’acte d'opposition indique plusieurs opposants. Il n’y a que deux situations où l'Office admet deux ou plusieurs personnes séparées (physiques ou morales) en qualité d’opposants, à savoir:
si ces personnes sont cotitulaires de la marque antérieure ou du droit antérieur;
si l’opposition est formée par le titulaire ou cotitulaire d’une marque antérieure ou d'un droit antérieur, conjointement avec un ou plusieurs licenciés de ces marques antérieures ou droits antérieurs.
Lorsque rien n’indique que la pluralité d'opposants satisfait à l’une de ces deux conditions, il y a lieu d’inviter ces derniers à préciser leur relation (cotitulaires ou titulaire/licencié) ou de désigner l’un d’entre eux comme opposant unique.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 26
FINAL VERSION 1.0 01/02/2015
Lorsqu’une marque antérieure et/ou un droit antérieur sont détenus par plus d’un titulaire (cotitulaires), l'opposition peut être formée par l’un d'entre eux ou par tous.
Cependant, si les opposants informent l’Office que, par exemple, la société A B.V. détient cinq des droits antérieurs et que la société A PLC en détient cinq autres, ils doivent indiquer avec lequel des deux titulaires la procédure d’opposition sera poursuivie. En conséquence, cinq des dix droits antérieurs ne seront pas pris en considération. Si les opposants ne donnent pas valablement suite à cette demande dans le délai de deux mois imparti, l’opposition est rejetée pour irrecevabilité.
Recevable
Marques antérieures 1 2 3 4 5 Titulaire A/B A A A A
Marques antérieures 1 2 3 4 5 Titulaires A/B A/C A A A
La seconde combinaison n’est recevable que si au moins A est l’un des opposants.
Non recevable
Marques antérieures 1 2 3 4 5 Titulaires A A B B B
Les opposants seront invités à indiquer s’ils souhaitent poursuivre la procédure avec A ou B comme opposant.
Marques antérieures 1 2 3 4 5 Titulaires A/B A A B B
Les opposants seront invités à indiquer s’ils souhaitent poursuivre la procédure d'opposition en tant qu’opposants multiples sur la base des trois premières marques antérieures ou en tant qu’opposants multiples sur la base des première, quatrième et cinquième marques antérieures.
Marques antérieures 1 2 3 4 5 Titulaires A/B/C B/C A A A
Les opposants seront invités à indiquer s’ils souhaitent poursuivre la procédure d’opposition soit en tant qu’opposants multiples A, B et C sur la base de la première et de la deuxième marque antérieure ou en tant qu’opposants multiples sur la base des première, troisième, quatrième et cinquième marques antérieures.
Indication de relations autres que la copropriété
Lorsque deux opposants sont mentionnés dans l’acte d'opposition, l’un en qualité de titulaire du droit antérieur et l’autre en qualité de licencié (autorisé par le titulaire à former opposition), aucune objection n’est soulevée si le titulaire de tous les droits
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 27
FINAL VERSION 1.0 01/02/2015
antérieurs sur lesquels est fondée l’opposition est la même personne morale ou physique, quel que soit le nombre de licenciés qui se joignent à lui.
Dans l’exemple suivant, l'’opposition est recevable avec A, B et C comme opposants multiples:
Marques antérieures 1 2 3 Titulaire A A A Licenciés B C Aucun
En revanche, dans le cas suivant, bien que B soit admis comme l’un des opposants multiples en qualité de licencié pour la marque antérieure 1, il ne peut l’être en qualité de titulaire de la marque antérieure 3. L’Office demandera aux opposants d’indiquer s’ils souhaitent poursuivre la procédure d’opposition avec A ou B comme opposant. À défaut d'une réponse des opposants, l’opposition est irrecevable.
Marques antérieures 1 2 3 Titulaire A A B Licenciés B C A
Preuve
Lorsque l’opposition est fondée sur des marques antérieures enregistrées, le moyen le plus courant d’apporter la preuve de la copropriété est de présenter une copie du certificat d’enregistrement ou un extrait d’une base de données officielle. Si l’opposition est fondée sur plusieurs marques antérieures ou droits antérieurs, mais que les opposants ont déjà apporté la preuve de copropriété d’une marque enregistrée antérieure, ils seront néanmoins invités à établir la propriété des autres droits antérieurs. À ce stade de la procédure d’opposition, les opposants ne sont pas tenus de produire la preuve de leurs marques antérieures ou droits antérieurs dès lors qu’une déclaration confirmant leur droit d’agir est jugée suffisante aux fins de la recevabilité de l’opposition.
2.4.2.6 Représentation professionnelle
Représentant
Articles 92 et 93 du RMC Règle 15, paragraphe 2, point h), sous ii), du REMC
La règle 15, paragraphe 2, point h), sous ii), du REMC, dispose que si l’opposant a désigné un représentant, il doit communiquer les nom et adresse professionnelle de ce dernier conformément à la règle 1, paragraphe 1, point e), du REMC.
Si l’opposant est un ressortissant de l’Union européenne (et n’est donc pas tenu de se faire représenter en application de l’article 92 du RMC), l’absence de désignation d’un représentant ou d’indication du nom ou de l'adresse professionnelle de celui-ci a pour seule conséquence que l’Office s'adressera directement à l'opposant.
Si l’opposant est tenu de se faire représenter en application de l'article 92 du RMC, le défaut de désigner un représentant ou d'indiquer le nom ou l’adresse professionnelle
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 28
FINAL VERSION 1.0 01/02/2015
de celui-ci constitue un motif relatif d’irrecevabilité. L’Office l’invitera à désigner un représentant et/ou à en communiquer les nom et adresse, à défaut de quoi l’opposition est rejetée.
Règle 77 du REMC
Toute notification de l’Office adressée à un représentant dûment agréé produit le même effet que si elle était adressée à la personne représentée.
Toute notification ou lettre adressée par le représentant dûment agréé à l’Office a le même effet que si elle était adressée par la personne représentée.
En outre, si la personne représentée dépose elle-même des documents auprès de l’Office, alors qu’elle est représentée par un représentant dûment agréé, ces documents ne sont acceptés par l’Office que si la personne représentée a son domicile ou son lieu d’activité principal ou un établissement industriel ou commercial réel et effectif dans l’UE. Dans le cas contraire, les documents soumis sont rejetés.
Pour de plus amples informations, voir les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
Groupement de représentants et représentant commun
Règle 75 du REMC
Chaque partie peut avoir plusieurs représentants qui peuvent agir soit conjointement, soit séparément. Il n'y a pas de limite maximale au nombre de représentants.
Cependant, l’Office communique uniquement avec le représentant cité en premier lieu. S’il y a pluralité d'opposants et que l’acte d'opposition n’indique pas un représentant commun, l’opposant cité en premier lieu dans l’acte d’opposition est réputé être le représentant commun.
En revanche, si l’un des opposants est soumis à l’obligation de désigner un représentant (parce qu’il est établi en dehors de l’Union européenne), ce représentant est réputé être le représentant commun, sauf si l’opposant cité en premier lieu dans l’acte d'opposition a désigné un représentant.
Règle 76, paragraphe 8, du REMC
En cas de pluralité d’opposants/de demandeurs, le représentant de la personne citée en premier lieu est le représentant commun de toutes ces personnes. Si la personne citée en premier lieu n’a pas désigné de représentant et que l'une de ces personnes est soumise à l’obligation de désigner un représentant et s’y est conformée, ce représentant est réputé être le représentant commun de toutes ces personnes.
Pour plus d’informations, voir les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 29
FINAL VERSION 1.0 01/02/2015
Changement de représentant
Règle 76 du REMC
Le représentant de l’opposant et du demandeur peut changer durant la procédure d’opposition. Pour plus d’informations, voir les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
Pouvoir
Article 92, paragraphe 2, du RMC Règle 76 du REMC
Lorsqu’il y a plusieurs parties à une procédure dans laquelle un représentant agit devant l’Office, les représentants doivent déposer un pouvoir signé qui doit être versé au dossier, sous la forme d’un pouvoir individuel ou d’un pouvoir général, uniquement si l'autre partie en fait la demande expresse. Lorsque le dépôt d’un pouvoir signé est demandé, l’Office fixe un délai dans lequel ledit pouvoir doit être déposé.
Les détails sur la représentation et les pouvoirs sont exposés dans les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
2.4.2.7 Signature
Règle 80, paragraphe 3, et Règle 82, paragraphe 3, du REMC
Un acte d’opposition envoyé par télécopie ou par courrier doit être signé par l’opposant ou, en cas de dépôt par un représentant, par le représentant.
Un acte d’opposition transmis par télécopie électronique ou par d’autres moyens électroniques ne doit pas être signé; l’indication du nom de l'expéditeur vaut signature.
2.4.2.8 Conditions relatives de recevabilité: sanctions
Règle 17, paragraphe 4, du REMC
Si des conditions relatives de recevabilité ne sont pas remplies ou font défaut, l’opposant ou son représentant dispose d’un délai de deux mois pour y remédier. Ce délai ne peut être prorogé.
S’il n’est pas remédié à l’irrégularité en temps utile, l’opposition est rejetée pour irrecevabilité ou si l’irrégularité porte sur une partie des droits antérieurs, l’opposant est informé que l’opposition est recevable mais que les droits antérieurs concernés ne seront pas pris en compte.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 30
FINAL VERSION 1.0 01/02/2015
2.4.3 Indications facultatives
2.4.3.1 Étendue de l’opposition
Règle 15, paragraphe 3, point a), du REMC
L’acte d’opposition peut contenir une indication des produits et services contre lesquels l’opposition est dirigée; à défaut de cette indication, l’opposition est réputée dirigée contre l’ensemble des produits et services visés dans la demande de marque communautaire contestée.
Si l’opposant indique que l’opposition est dirigée uniquement contre une partie des produits et services désignés dans la demande de marque communautaire, il doit identifier clairement ces produits. À défaut de cette identification dans l’acte d'opposition ou dans la description des motifs de l’opposition, l’irrégularité doit être notifiée à l’opposant. S’il n'est pas remédié à cette irrégularité dans le délai imparti, en énumérant les produits et/ou services contre lesquels l’opposition est dirigée, l’opposition est rejetée pour irrecevabilité.
Il arrive parfois que, en réponse à la lettre demandant à l’opposant d’identifier exactement les produits et services contre lesquels il dirige son opposition, celui-ci indique «tous les produits et services désignés dans la demande de marque communautaire». L’Office ne peut accepter cette indication comme étant valable. En effet, en indiquant que l’opposition est dirigée uniquement contre une partie des produits et services de la demande de marque communautaire, l’opposant a clairement limité son opposition de sorte qu’il ne saurait l'’étendre après le délai d’opposition de trois mois.
L’étendue de l’opposition est clairement définie lorsque les produits indiqués sont des produits spécifiques désignés par un terme plus large utilisé dans la liste contestée (par exemple, l’opposition est dirigée contre des pantalons, et la demande de marque communautaire porte sur des vêtements – dans cet exemple, les pantalons sont réputés être les seuls produits contestés). Par contre, lorsque l’opposant utilise une formulation ambiguë telle que «l’opposition est dirigée contre tous les produits similaires à...», lorsque les produits de l’opposant sont des succédanés des produits du demandeur ou que toute autre indication ne permet pas d’identifier clairement les produits et services contestés, des éclaircissements doivent être demandés. Si l’opposant ne répond pas de manière satisfaisante à cette demande, l’opposition est rejetée pour irrecevabilité.
En outre, lorsque l’opposant indique dans le formulaire d’opposition que l’opposition est dirigée contre «une partie des produits et services de la marque contestée» mais énumère ensuite «tous» ces produits et services dans l’acte d’opposition ou dans les annexes, l’Office présumera, afin de surmonter le problème des informations contradictoires contenues dans l’acte d’opposition, que l’opposition est dirigée contre «tous les produits et services».
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 31
FINAL VERSION 1.0 01/02/2015
2.4.3.2 Description des motifs
Règle 15, paragraphe 3, point b), du REMC
Il ressort désormais clairement du libellé de la règle 15 du REMC qu’il convient de distinguer:
le fondement de l’opposition, c’est-à-dire le droit antérieur invoqué, qui doit être dûment identifié et qui ne peut pas être modifié après l’expiration du délai d'opposition;
l’indication des motifs de l’opposition, c’est-à-dire le «risque de confusion» (règle 15, paragraphe 2, point c), du REMC, qui utilise l'expression «à savoir»);
une description des motifs, c’est-à-dire la mention des faits, preuves et observations à l'appui de l'opposition.
La «description des motifs» inclut la preuve de l’existence du droit antérieur qui (à la différence de l’identification du droit antérieur) est une question de fond plutôt que de recevabilité.
La description des motifs est facultative au stade du dépôt de l’opposition et n’a rien à voir avec l’examen de la recevabilité. Elle est admise lorsqu’elle accompagne l’acte d’opposition ou doit être présentée après l’expiration du délai de réflexion (règle 19, paragraphe 1, du REMC). La description des motifs concerne le fond et non la recevabilité de l’opposition.
2.5 Notification de l’acte d’opposition
Règles 16 bis et 18 du REMC Décision n° EX-11-3 du président de l’Office
L’autre partie est informée de l’opposition par communication de tout acte d’opposition, de tout document produit par l’opposant ainsi que de toute communication adressée à l'une des parties par l'Office avant le début de la période de réflexion.
Une fois que l’opposition est jugée recevable en application de la règle 17 du REMC, l’Office communique aux parties que la procédure d’opposition est réputée ouverte deux mois après réception de cette communication. La notification fixe également un délai à l’opposant pour présenter des faits, preuves et observations à l’appui de son opposition, ainsi qu’un délai au demandeur pour soumettre ses observations en réponse. Il est important de noter qu’en raison des différents moyens de communication (télécopieur, communication électronique et courrier postal), les délais mentionnés dans cette notification sont fixés en fonction du canal de communication «le plus lent». Par exemple, si l’une des parties est informée par communication électronique, à travers la page internet officielle de l’Office, la notification est réputée avoir eu lieu le cinquième jour civil suivant la date à laquelle le document a été créé par les systèmes de l’Office. Dès lors, si la notification à l’autre partie est envoyée par télécopieur, cette dernière se verra également accorder cinq jours supplémentaires afin que les délais accordés dans les notifications coïncident.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 32
FINAL VERSION 1.0 01/02/2015
Chaque fois que l’opposition est fondée sur une marque antérieure enregistrée ou demandée en couleur, l’Office veille à ce que le demandeur reçoive la représentation en couleur. Dans certains cas, cela peut nécessiter une notification par la poste.
La notification n’est pas effectuée avant l’expiration de la période d’opposition.
3 Délai de réflexion
3.1 Début du délai de réflexion
Règle 17, Règle 18, paragraphe 1, Règle 19 et Règle 20, paragraphes 2, 6, 7, du REMC Communication n° 1/06 du président de l’Office
Lorsque l’opposition est jugée recevable, l’Office notifie aux parties que l’opposition est jugée recevable et que la procédure est réputée ouverte deux mois après réception de ladite notification (sont ainsi concédés deux mois de réflexion avant que la procédure ne soit ouverte et ne produise des effets juridiques, notamment en ce qui concerne les taxes).
Conformément à l’arrêt de la Cour de justice du 18 octobre 2012 dans l’affaire C-402/11 P, «REDTUBE», la notification envoyée aux parties les informant que l’opposition est recevable en application de la règle 18, paragraphe 1, du REMC constitue une décision pouvant faire l’objet d’un recours avec la décision finale concernant l’affaire, comme mentionné à l’article 58, paragraphe 2, du RMC. En conséquence, l’Office est lié par cette décision.
Le délai de réflexion prend fin deux mois après la notification. La date exacte d’expiration est précisée dans la notification de l’Office. Cette date se situera toujours deux mois après la date de la notification, même s’il s'agit d'un jour de fermeture de l’Office, comme un samedi ou un dimanche.
Le délai de réflexion peut durer jusqu’à un total de 24 mois si les deux parties présentent des requêtes de prorogation en ce sens avant l’expiration dudit délai. L’Office accordera une prorogation de 22 mois, quelle que soit la durée de prorogation demandée.
Il n'est pas possible de contourner la limitation du délai de réflexion à 24 mois en demandant une suspension. Des demandes peuvent être acceptées à ce stade, mais elles ne deviendront effectives qu’à l’expiration du délai de réflexion. Lorsque les parties invoquent des négociations en cours, la procédure n’est pas suspendue durant le délai de réflexion, mais une demande de suspension peut être introduite à l’expiration dudit délai.
L’opposant dispose d’un délai de deux mois après l’expiration du délai de réflexion pour présenter des faits, preuves ou observations, indépendamment du fait qu'il ait déjà présenté ces faits, preuves ou observations dans l’acte d'opposition. Au cours de ce même délai, l’opposant présente également des éléments à l’appui de son ou ses droits antérieurs.
La demande faite à l’opposant est une invitation générale à compléter son dossier au sens de la règle 19 du REMC. L’Office ne précise pas la nature et le type de pièces
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 33
FINAL VERSION 1.0 01/02/2015
nécessaires pour compléter le dossier (voir, en particulier, la règle 20, paragraphe 6, deuxième phrase, du REMC). Il incombe, en revanche, à l’opposant de décider quelles pièces il entend présenter. Afin de faciliter la tâche des opposants, l’Office a établi une liste qui énumère le type de preuves généralement requises, selon la nature de chaque droit. Cette liste est envoyée aux opposants, en annexe de la notification de recevabilité de l’opposition et peut être considérée comme une liste de contrôle par les opposants pour préparer leur opposition.
Dans la pratique, le délai de présentation de ces éléments supplémentaires est fixé à quatre mois à compter de la date de la notification. En conséquence, les opposants doivent savoir que le délai de présentation de ces éléments supplémentaires n'est pas un délai de deux mois à compter de l’expiration du délai de réflexion, mais bien un délai de quatre mois à compter de la notification.
Le demandeur dispose d'un délai supplémentaire de deux mois pour répondre à l’opposition. Plutôt que de fixer un délai de deux mois séparé (deux mois de délai de réflexion, deux mois pour compléter l’opposition, deux mois pour répondre), la période impartie pour répondre à l’opposition est fixée à six mois à compter de la notification de la recevabilité (date de début du délai de réflexion).
Si l’opposant complète son opposition à tout moment entre la notification et l’expiration des quatre mois qui lui sont impartis, les pièces supplémentaires seront transmises au demandeur sans modifier le délai qui lui a été accordé pour répondre à l’opposition. Cependant, si les pièces supplémentaires parviennent à l’Office sans laisser un temps suffisant pour les transmettre au demandeur dans la période impartie à l’opposant, ces pièces seront alors transmises au demandeur en fixant un nouveau délai de deux mois pour répondre à l’opposition. Ce délai distinct de deux mois commence à courir à la date de réception de la notification des pièces supplémentaires afin de garantir que le demandeur dispose toujours de deux mois complets pour préparer sa réponse.
3.2 Prolongation du délai de réflexion
Article 119, paragraphes 5 et 6, du RMC Règle 18, paragraphe 1, et Règle 96, paragraphe 1, du REMC Communication n° 1/06 du président de l’Office
Le délai de réflexion peut être prorogé jusqu’à un total de 24 mois.
Pour proroger le délai de réflexion, les conditions suivantes doivent être remplies:
une demande signée doit être présentée par les deux parties. Elle peut prendre la forme de deux demandes distinctes ou d’une demande commune. Il n’est pas nécessaire d’indiquer le motif pour lequel la prorogation est demandée;
la demande doit être rédigée dans la langue de la procédure. À titre alternatif, la demande peut être déposée dans l’une des langues de l’Office. Toutefois, une traduction doit être présentée dans le mois suivant le dépôt de la demande, à l’initiative des parties. L’Office n’envoie pas de lettre invitant les parties à présenter une demande de prorogation;
la demande doit être déposée au plus tard à la date d’expiration du délai de réflexion. Toute demande déposée après l’expiration du délai de réflexion est
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 34
FINAL VERSION 1.0 01/02/2015
rejetée. Si l’une des parties dépose la demande durant le délai de réflexion et l’autre après l’expiration de celui-ci, la prorogation sera également refusée.
Il convient de distinguer la prorogation de la période de réflexion des demandes de prolongations de délai ou d’une suspension. Dans l’hypothèse où la demande de prorogation serait irrecevable en raison de son dépôt tardif ou au motif que le délai de réflexion a déjà été prorogé, elle sera traitée comme une demande de suspension pour autant que les conditions de cette demande soient remplies.
La prorogation est accordée pour un délai de 24 mois, à compter de la date de début du délai de réflexion. Cette procédure évite de multiples prorogations tout en laissant aux parties un maximum de liberté pour décider du moment où elles souhaitent passer à la phase contradictoire de la procédure.
Chaque partie peut alors mettre un terme au délai de réflexion («opt-out») par simple notification écrite.
Il n'y a pas lieu de recueillir l’accord de l’autre partie.
Lorsque l’une des parties décide de mettre un terme au délai de réflexion avant son expiration, l’Office confirme cette décision aux deux parties et fixe la fin du délai de réflexion à deux semaines après ladite notification. La phase contradictoire de la procédure est ouverte le lendemain. Dans la même notification sont précisés les nouveaux délais pour compléter le dossier d’opposition et la réponse du demandeur, qui correspondent à deux et à quatre mois à compter de la fin de la période de réflexion.
La décision de mettre un terme au délai de réflexion est irrévocable. Cette décision n’est pas acceptée durant le dernier mois qui précède le début de la procédure.
4 Phase contradictoire
4.1 Compléter le dossier d’opposition
Dans les deux mois suivant l’expiration du délai de réflexion, l’opposant peut présenter des faits, preuves et observations supplémentaires à l’appui de son opposition.
Au cours de la même période, il doit produire la preuve de l’existence et de la validité de ses droits antérieurs invoqués.
4.2 Validation par des faits, preuves et observations
Article 41 du RMC Règle 19, Règle 20, paragraphe 1, et Règle 79 du REMC
La règle 19, paragraphe 2, du REMC définit la validation par des faits, preuves et observations et fait référence à la preuve de l’existence, de la validité et de l’étendue de la protection de la marque antérieure ou du droit antérieur ainsi que des éléments de preuve de l’habilitation à former opposition.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 35
FINAL VERSION 1.0 01/02/2015
Lorsque la recevabilité de l’opposition a été notifiée aux parties, l’opposant dispose de deux mois à compter de l’expiration du délai de réflexion pour compléter son dossier, c’est-à-dire présenter toutes les preuves à l’appui de son opposition, et produire la preuve de l’existence et de la validité des droits antérieurs qu’il invoque ainsi que son habilitation à former opposition. Lorsque cela s’avère pertinent pour l’opposition, l’opposant doit également présenter la preuve de la renommée, du caractère distinctif accru ou de tout autre aspect influant sur l’étendue de la protection de son ou ses droits antérieurs, etc.
Les preuves doivent être produites dans la langue de la procédure ou être accompagnées d’une traduction à des fins de justification. La traduction doit être fournie dans le délai fixé pour présenter l’original. L'Office ne tient pas compte des documents ou des parties de documents qui n’ont pas été présentés ou traduits dans la langue de la procédure dans le délai fixé par lui.
À moins d’être présenté par télécopie ou par communication électronique, tout document à l’appui ou autre élément de preuve doit être présenté en deux exemplaires, dont l’un est destiné à l'autre partie. Les pièces qui sont déposées par courrier postal ou remises en personne et qui ne sont pas présentées en deux exemplaires (afin que l’un des deux puisse être transmis à l’autre partie) ne sont pas prises en compte. Tout document ou élément de preuve, autre que ceux consistant en feuilles volantes, qui a été déposé à l’Office par courrier postal ou remis en personne, doit être accompagné d’un autre exemplaire. À défaut, ces documents ou éléments de preuve ne sont pas pris en compte.
Si l’opposant n'a pas établi l’existence d’au moins un droit antérieur, l’opposition est rejetée comme non fondée.
Si le droit antérieur qui a été jugé recevable n’est pas étayé, au stade de la justification, et s’il existe un ou d’autres droits antérieurs qui sont étayés, les conditions absolues de recevabilité pour ce ou ces droits antérieurs doivent être vérifiées.
L’opposant doit démontrer son habilitation à former opposition aux fins d’en établir la validité (voir paragraphe 4.2.3.7 ci-dessous).
4.2.1 Marques communautaires et demandes de marque communautaire
Si la marque antérieure ou la demande est une marque communautaire, l’opposant ne doit soumettre aucun document en ce qui concerne l’existence et la validité de la (demande de) marque communautaire. L’examen de la validité s’effectue ex officio par rapport aux données contenues dans la base de données de l’Office.
4.2.2 (Demandes de) marques communautaires transformées
Article 112, paragraphe 1, du RMC
Cette section traite uniquement des aspects spécifiques de la transformation dans la procédure d’opposition. Pour plus d’informations sur la transformation, voir les Directives, partie E, Opérations liées au registre, section 2, Transformation.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 36
FINAL VERSION 1.0 01/02/2015
4.2.2.1 Opposition fondée sur une (demande de) marque communautaire transformée (en cours de transformation)
Les demandes de marques nationales issues de la transformation d’une (demande de) marque communautaire sont réputées exister dès qu’une requête en transformation valable est déposée. Ces droits sont réputés dûment identifiés aux fins de la recevabilité au sens de la règle 18, paragraphe 1, du REMC, si l’opposant indique le numéro de la (demande de) marque communautaire en cours de transformation et les pays pour lesquels il a requis la transformation.
Lorsqu’au cours d'une procédure d’opposition, la (demande de) marque communautaire sur laquelle l’opposition est fondée cesse d’exister (ou que la liste des produits et services est limitée) et une requête en transformation est déposée, la procédure peut se poursuivre. En effet, les enregistrements de marque nationale résultant d’une transformation de demande de marque communautaire peuvent servir de fondement à la procédure d’opposition constituée à l’origine sur la base de cette demande de marque communautaire (décision du 15 juillet 2008, R1313/2006-G, «CARDIVA/CARDIMA»).
Dans ce cas, l’Office demandera à l’opposant de lui faire savoir par écrit s’il maintient l’opposition visant à obtenir le retrait, l’abandon ou le rejet de la ou des demandes ou enregistrements de marque communautaire antérieure et s’il a l’intention de se fonder sur des demandes nationales résultant de la transformation et la marque communautaire antérieure. Si l’opposant n’informe pas l’Office dans le délai imparti qu’il souhaite se baser sur les demandes nationales, l’opposition sera rejetée comme étant non fondée.
L’opposant déposera le plus rapidement possible les preuves étayant l’existence des demandes nationales antérieures.
4.2.3 Demandes ou enregistrements de marques qui ne sont pas des marques communautaires
Règle 19, paragraphe 2, point a), sous i) et ii), du REMC
Aux fins d’établir la validité d’une demande antérieure ou d’un enregistrement antérieur de marque, l’opposant doit produire la preuve de son dépôt ou enregistrement. L'Office accepte les pièces suivantes:
certificats délivrés par l’autorité compétente; extraits de banques de données officielles; extraits de bulletins officiels publiés par les offices nationaux compétents et
l'OMPI.
4.2.3.1 Certificats délivrés par l’autorité compétente
Tout certificat d’enregistrement ou le dernier certificat de renouvellement, attestant que le délai de protection de la marque dépasse le délai fixé pour étayer l’opposition, émanant de l’office national ou de l’OMPI, s’il s’agit d’un enregistrement international constitue une preuve valide. Pour d’autres exigences relatives aux certificats de renouvellement, voir ci-dessous.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 37
FINAL VERSION 1.0 01/02/2015
Si l’opposition est fondée sur une demande, l’opposant doit produire la preuve que la demande a été déposée auprès d’un office national ou, s’il s’agit d’une demande internationale, auprès de l’OMPI. À partir du moment où une demande antérieure a passé le stade de l’enregistrement, l’opposant est tenu de déposer une preuve de l’enregistrement. Si, après la phase contradictoire de la procédure, l’opposant apporte la preuve que la demande nationale a été enregistrée avant le délai visé à la règle 19, paragraphe 1, du REMC, la marque antérieure sera rejetée comme étant non fondée, conformément à la règle 20, paragraphe 1, du REMC. Un certificat de dépôt de demande ne suffit pas à prouver que la marque a fait l’objet d’un enregistrement. En d'autres termes, un tel certificat ne peut servir de preuve de l’existence d’un enregistrement de marque.
Certains certificats doivent être examinés soigneusement, étant donné le peu de différences qu’il peut exister entre un formulaire de demande et le certificat d’enregistrement.
Des documents équivalents sont également acceptés s’ils sont délivrés par l’administration auprès de laquelle la marque est enregistrée (un certificat d'enregistrement, par exemple).
4.2.3.2 Extraits de banques de données officielles
Les extraits de banques de données ne sont acceptés que s’ils émanent d’une banque de données officielle, c’est-à-dire, de la banque de données d’un office national ou de l’OMPI, et s’ils sont équivalents à un certificat d’enregistrement ou au dernier certificat de renouvellement. L’image électronique non modifiée d’un extrait de base de données en ligne, reproduite sur une feuille séparée est également recevable pour autant qu’elle contienne une identification officielle de l’autorité ou de la base de données dont elle émane. Les extraits de banques de données privées ne sont pas acceptés, même s’ils reproduisent exactement la même information que les extraits officiels.
Sont notamment acceptés les extraits des banques de données officielles suivantes:
TMview: pour les marques communautaires et les marques demandées ou enregistrées auprès des offices participants (pour autant qu’elle contienne les données pertinentes). Pour plus d’informations, voir: http://www.tmview.europa.eu/tmview/welcome.html?language=fr;
BENELUX-MERKEN (pour les marques Benelux);
DPINFO (pour les marques allemandes);
SITADEX (pour les marques espagnoles);
OPTICS et extraits du site Internet UKPO (pour les marques du Royaume-Uni);
S.A.R.A, UIBM on-line du site internet UIBM et Telemaco des chambres italiennes du commerce (pour les marques italiennes).
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 38
FINAL VERSION 1.0 01/02/2015
En ce qui concerne les enregistrements internationaux, sont acceptés les extraits des banques de données suivantes:1
ROMARIN (la version «courte» de l’extrait étant suffisante, pour autant qu’elle contienne toutes les informations nécessaires);
TMview (pour autant qu’elle contienne toutes les informations pertinentes).
Des extraits émanant d'autres offices nationaux sont également acceptés pour autant qu’ils proviennent de banques de données officielles.
Les extraits provenant de banques de données privées ne sont pas recevables en tant que preuves, même s'ils reproduisent toutes les informations nécessaires. Ne sont ainsi notamment pas acceptés les extraits des banques de données DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK, SAEGIS ou COMPUMARK.
Lorsque l’extrait provenant d’une banque de données officielle ne contient pas toutes les informations requises, l’opposant doit les compléter par d’autres documents provenant d’une source officielle et présentant l’information manquante.
Exemples
Il arrive que les extraits de SITADEX (base de données officielle de l’office espagnol) ne contiennent pas la liste des produits et/ou services; le cas échéant, l’opposant doit déposer une pièce supplémentaire (par exemple une publication au bulletin officiel) exposant la liste des produits et services.
Il arrive que les extraits de SITADEX ne montrent pas l’image sur la même page lorsqu’il s’agit d’une marque figurative. L’image apparaît parfois sur une page séparée. Par conséquent, en ce qui concerne les marques figuratives espagnoles, lorsque les opposants déposent un extrait de SITADEX en tant que preuve, ils doivent s’assurer que la représentation de la marque figure sur la même page et, à défaut, une pièce/page supplémentaire présentant l’image doit être déposée. Ce document peut provenir de SITADEX elle-même (qui a reproduit l’image sur une page distincte qui, lors de l’impression ou de la sauvegarde en format PDF, par exemple, inclut une identification de la source) ou d’une autre source officielle (comme sa publication au bulletin officiel). Il ne suffit pas de copier l’image provenant de SITADEX et de l’inclure par voie électronique ou autre dans l’acte d’opposition.
Lorsque l’anglais est la langue de procédure, et en ce qui concerne les marques portugaises, il convient de noter que l’INPI fournit également une version anglaise de l’extrait concernant la marque portugaise, de sorte qu’aucune traduction n’est en principe nécessaire. Toutefois, en ce qui concerne la liste des produits et/ou services,
1 La pratique de l’Office a consisté à accepter des sorties imprimées de la base de données CTM-Online pour les enregistrements internationaux désignant l’UE. Cette pratique ne se poursuivra pas étant donné que cette approche contrevient à la règle 19, paragraphe 2, point a), du REMC. Une exception à cette règle n’est pas prévue au Titre XIII du RMC. Cette nouvelle pratique est entrée en vigueur le 1er juillet 2012 et s’applique à toutes les oppositions déposées à cette date ou par la suite. Les informations contenues dans les lettres types pour la notification des oppositions recevables ont été mises à jour à partir du 1er juillet 2012. L’ancienne pratique continue de s’appliquer à toutes les oppositions ayant une date de dépôt antérieure au 1er juillet 2012.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 39
FINAL VERSION 1.0 01/02/2015
l’extrait proprement dit ne donne que les intitulés de classe, accompagnés d’un avertissement indiquant que cette référence à l’intitulé de classe ne reflète pas nécessairement les produits et/ou services protégés sous la marque. À cet égard, l’opposant doit toujours déposer la liste originale en portugais (provenant d’une source officielle) et, lorsque la liste ne consiste pas en un intitulé de classe, une traduction exacte en anglais. Il en va de même pour les extraits officiels provenant d’autres offices nationaux qui fournissent la version anglaise de leurs extraits, comme en Slovénie.
4.2.3.3 Extraits de bulletins officiels publiés par les offices nationaux compétents et par l’OMPI
Dans tous les États membres, la demande et/ou l’enregistrement d’une marque font l’objet d’une publication dans un bulletin officiel. Des copies de cette publication sont admises pour autant que le document (ou les observations de l’opposant qui l'accompagnent) indique l'origine de la publication. À défaut de cette indication, le document ne suffit pas à prouver la validité de la marque.
Par ailleurs, une copie de la publication de la demande n’est pas suffisante pour prouver que la marque a fait l’objet d'un enregistrement. En d’autres termes, une telle copie ne peut servir de preuve de l’existence d’un enregistrement de marque.
L'Office considère la première publication de l’OMPI de l’enregistrement international comme une preuve suffisante de son enregistrement même si après l’enregistrement celui-ci peut encore être refusé par les offices nationaux durant les 12 ou 18 mois qui suivent. Ce n’est que si le demandeur conteste la protection de la marque en cause dans un territoire donné ou pour certains produits et services que l’opposant devra produire la preuve que la marque n'a pas été refusée.
4.2.3.4 Durée d’un enregistrement de marque
En règle générale, la durée de l’enregistrement d’une marque est de dix années. À l’issue de cette période, l’enregistrement de la marque peut être renouvelé pour des périodes de dix années. Dans la plupart des pays, le point de départ de la période de dix ans est la date de dépôt de la demande, mais il existe des exceptions.
Pays Durée de la protection Point de départ Autriche 10 ans Date d’enregistrement Benelux (Belgique, Luxembourg, Pays-Bas)
10 ans Date de dépôt
Bulgarie 10 ans Date de dépôt Croatie 10 ans Date de dépôt
Chypre Première période de 7 ans/renouvellement de14 ans Date de dépôt = date d’enregistrement
République tchèque 10 ans Date de dépôt Danemark 10 ans Date d’enregistrement Estonie 10 ans Date d’enregistrement France 10 ans Date de dépôt Finlande 10 ans Date d’enregistrement Allemagne 10 ans Date de dépôt
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 40
FINAL VERSION 1.0 01/02/2015
Grèce 10 ans Date de dépôt Hongrie 10 ans Date de dépôt Italie 10 ans Date de dépôt
Irlande 10 ans pour une marque enregistrée depuis le 1er juillet 1996 (7/14 ans pour le renouvellement avant cette date)
Date d’enregistrement = date de dépôt
Lettonie 10 ans Date de dépôt Lituanie 10 ans Date de dépôt
Malte 10 ans Date d’enregistrement = datede dépôt Portugal 10 ans Date d’enregistrement
Pologne 10 ans Date de dépôt = dated’enregistrement Roumanie 10 ans Date de dépôt Suède 10 ans Date d’enregistrement Slovaquie 10 ans Date de dépôt Slovénie 10 ans Date de dépôt
Espagne
10 ans pour une marque demandée depuis le 12 mai 1989 (20 ans pour une marque demandée avant cette date, à compter de la date d’enregistrement et avec un renouvellement à compter de la date de dépôt)
Date de dépôt
Royaume-Uni
10 ans depuis le 31 octobre 1994 (les marques demandées précédemment étaient valables, à la fin des formalités d’enregistrement, pour une durée de 7 ans à compter de la date de la demande. Les marques avec des dates de renouvellement antérieures au 31 octobre 1994 sont renouvelées pour une période de 14 ans)
Date de dépôt = date d’enregistrement
Enregistrement international
10 ans (même si ce sont 20 ans pour les enregistrements relevant de l’arrangement de Madrid; les taxes doivent être payées en deux versements correspondant à 10 ans, équivalents à une taxe de renouvellement)
Date d’enregistrement international
Conformément à la règle 19, paragraphe 2, point a), sous ii), du REMC, si la marque est enregistrée, l’opposant doit produire une preuve de l’enregistrement. Si la preuve soumise ne prouve pas qu’une demande est enregistrée et si, par la suite, l’une des parties prouve qu’à l’expiration du délai visé à la règle 19, paragraphe 1, du REMC, l’opposant n’a pas prouvé cet enregistrement, la règle 19, paragraphe 2, point a), sous ii), du REMC s’applique et la marque antérieure est rejetée comme étant dépourvue de fondement.
4.2.3.5 Vérification de la preuve
Le numéro entre crochets est le numéro de code international utilisé pour identifier les informations concernant un grand nombre, mais pas la totalité, des certificats d’enregistrement. L’opposant n’est pas tenu de fournir une explication des codes, qu’il s'agisse de codes INID ou de codes nationaux.
Les éléments suivants doivent être vérifiés:
l’autorité dont émanent ces informations;
Questions de procédures
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FINAL VERSION 1.0 01/02/2015
les numéros de dépôt [210] et/ou d’enregistrement [111] (dans certains pays, ceux-ci sont – ou étaient – différents);
l’étendue territoriale lorsqu’il s'agit d’enregistrements internationaux (c’est-à-dire les pays dans lesquels la marque bénéficie d’une protection et les produits et services pour lesquels elle est protégée);
les dates de dépôt [220], de priorité [300] et d’enregistrement [151] (dans certains pays, par exemple la France, les dates de dépôt et d’enregistrement figurant sur le certificat sont identiques);
une représentation du signe tel qu’il a été déposé ou enregistré [531, 540, 541, 546, 554, 556, 557, 571, 591] et revendiqué dans l’acte d'opposition. Il convient de vérifier que la revendication soumise par l’opposant pendant le délai d’opposition de trois mois apparaît dans la preuve soumise. Dès lors, si, par exemple, la marque antérieure est en couleur et que cela a été correctement identifié pendant le délai d’opposition de trois mois, deux scénarios sont acceptables. Le premier est celui où une représentation officielle en couleur de la marque doit être soumise (certificat d’enregistrement, certificat de renouvellement, extrait officiel, etc.) contenant une reproduction de la marque en couleur. Le second est celui où un document officiel est présenté avec la représentation de la marque en noir et blanc, conjointement avec une revendication des couleurs et une description des couleurs, toutes deux étant traduites dans la langue de procédure. Toutefois, ce second scénario n’est recevable que si l’opposant a également soumis une représentation en couleur de la marque ayant une origine non officielle (feuille de papier séparée, dans les observations, jointe à l’acte d’opposition, etc.). Lorsque l’office national des marques ne fournit pas une revendication détaillée des couleurs identifiant ces dernières et mentionne à la place «revendication de couleurs» (ou une formulation similaire), cela n’est recevable que si cette entrée est traduite dans la langue de procédure et pour autant qu’elle soit accompagnée d’une représentation en couleur de la marque (comme indiqué dans le scénario 2).
En d’autres termes, si, par exemple, l’opposant a correctement revendiqué, pendant le délai d’opposition de trois mois, que sa marque figurative était en couleur, mais a seulement envoyé une représentation en noir et blanc à l’Office, sans autre preuve d’une revendication de couleur, l’opposition fondée sur ce droit antérieur est rejetée comme n’étant pas étayée, conformément à la règle 20, paragraphe 1, du REMC.
Ce qui précède s’applique indépendamment du fait que l’opposition soit fondée sur une ou plusieurs marques antérieures.
En outre, lorsque l’office national ne fournit aucune indication d’une revendication de couleur dans son certificat ou extrait officiel, d’autres documents doivent être soumis afin de prouver cette revendication (par exemple une copie de la publication de la marque au bulletin). En outre, dans le cas où l’office national (par exemple, l’office portugais des marques) publierait la représentation de la marque en couleur, mais que l’information contenue dans le certificat ne présente pas la revendication de couleur par écrit, l’opposant doit fournir une version en couleur du certificat ou de l’extrait dans le délai spécifié à la règle 19, paragraphe 1, du REMC.
les produits et services désignés [511];
Questions de procédures
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FINAL VERSION 1.0 01/02/2015
la date d’expiration de l’enregistrement (si elle est figure);
le titulaire [731, 732];
toute inscription ayant une incidence sur la situation juridique ou sur l’étendue de la protection de la marque (renonciations [526], limitations, renouvellements, transferts, actions pendantes, le fait que la marque ait été enregistrée en raison d’un caractère distinctif acquis par l’usage, etc.).
4.2.3.6 Certificats de renouvellement
Règle 19, paragraphe 2, point a), sous ii), du REMC
Si l’opposant a fourni un certificat d’enregistrement, mais que l’enregistrement expire avant l’expiration du délai de deux mois accordé pour compléter les preuves à l’appui de l’opposition, il doit présenter un certificat de renouvellement afin de démontrer que la durée de protection de la marque dépasse le délai qui lui est accordé pour étayer son opposition. L’élément déterminant est la date d’expiration de l’enregistrement et non la possibilité de renouveler la marque durant la période de grâce de six mois au sens de la Convention de Paris.
Ce n’est que si le certificat de renouvellement contient toutes les informations nécessaires pour déterminer l’étendue de la protection de la marque antérieure que la présentation de ce dernier, sans copie du certificat d’enregistrement, est suffisante. Par exemple, les renouvellements allemands, et parfois les renouvellements espagnols, ne contiennent pas toutes les données nécessaires et ne suffisent dès lors pas, à eux seuls, à étayer la marque antérieure.
Toutefois, si l’opposant fournit un document équivalent émanant de l’administration auprès de laquelle la marque est enregistrée, il ne doit pas fournir un certificat de renouvellement.
En l’absence de preuve du renouvellement, l’enregistrement antérieur n’est pas étayé et ne sera pas pris en considération.
4.2.3.7 Habilitation à former l’opposition
Article 41 du RMC Règle 19, paragraphe 2 et Règle 15, paragraphe 2, point h), sous iii), du REMC
En fonction du motif invoqué, les personnes suivantes sont habilitées à former une opposition:
1. les titulaires et les licenciés autorisés pour les marques visées à l’article 8, paragraphes 1 et 5;
2. les titulaires (uniquement) pour les marques visées à l’article 8, paragraphe 3; 3. les titulaires de droits antérieurs visés à l’article 8, paragraphe 4, et les
personnes autorisées en vertu de la législation nationale applicable.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 43
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Exemple
Si l’opposant est une personne morale, sa dénomination doit être soigneusement comparée avec celle de la personne morale titulaire de la marque antérieure. Par exemple, dans le cas de sociétés britanniques, John Smith Ltd, John Smith PLC et John Smith (UK) Ltd sont des entités juridiques différentes.
Si l’opposition est déposée avec B comme opposant et qu’une copie du certificat d’enregistrement indique A comme titulaire de la marque antérieure, l’opposition est rejetée comme non fondée, à moins que l’opposant n'ait produit la preuve du transfert et, si possible, de l’enregistrement du transfert dans le registre pertinent ou si l’opposant a démontré que A et B sont la même personne morale qui a seulement changé de dénomination.
Si l’opposant est un licencié du titulaire de la marque, l’extrait de l’enregistrement indiquera normalement à quelle date une licence a été enregistrée. Cependant, dans certains États membres, ces licences ne sont pas inscrites au registre. Quoi qu’il en soit, il appartient à l’opposant de démontrer qu’il est un licencié et qu’il est habilité par le titulaire de la marque à former opposition. Il n’existe aucune restriction quant au type de preuve nécessaire pour prouver l’existence de cette autorisation: par exemple, toute autorisation expresse au nom du titulaire de la marque, comme un contrat de licence, est réputée suffisante, pour autant qu’elle contienne des indications concernant l’autorisation ou l’habilitation à former opposition.
Il en va de même pour les personnes habilitées en vertu de la législation nationale applicable, au motif de l’article 8, paragraphe 4, du RMC. L’opposant a la charge de démontrer son habilitation à former opposition en vertu de la législation nationale applicable.
Conformément à l’article 22 du RMC et aux règles 33, 34 et 35 du REMC, l’Office enregistre et publie les contrats de licence en ce qui concerne les marques communautaires. Si la base de l’opposition de la marque antérieure soumise au contrat de licence est une marque communautaire, l’opposant ne doit soumettre aucune preuve du contrat de licence tant que la licence n’a pas été enregistrée et publiée à l’Office, conformément à l’article 22 du RMC. Par ailleurs, l’opposant devra toujours soumettre les éléments de preuve établissant que cet accord de licence l’habilite à agir pour la défense de la marque si la licence est enregistrée et publiée à l’Office, si ces éléments de preuve n’ont pas été joints à la demande originale, déposée conformément à l’article 22, paragraphe 5, du RMC. Pour plus d’informations sur les licences, voir les Directives, partie E, Inscriptions au registre, section 3, chapitre 2, Licences. Il ne suffit pas de prouver l’enregistrement du contrat de licence – l’habilitation de l’opposant à défendre la marque communautaire doit également être soumise par écrit.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 44
FINAL VERSION 1.0 01/02/2015
4.2.4 Preuves concernant les marques notoirement connues, la revendication de la renommée, les marques demandées par un agent et les signes antérieurs utilisés dans la vie des affaires
4.2.4.1 Marque notoirement connues
Article 8, paragraphe 2, du RMC Règle 19, paragraphe 2, point b), du REMC
Une marque antérieure notoirement connue est une marque qui est notoirement connue dans un État membre, au sens de l'article 6 bis de la Convention de Paris. Une telle marque peut être enregistrée ou non.
Lorsque l’opposant invoque une marque enregistrée et revendique comme marque notoirement connue cette même marque dans ce même pays, telle revendication est généralement interprétée comme faisant référence au fait que sa marque enregistrée a acquis un caractère distinctif élevé par l'usage qui en a été fait.
Il est fréquent que des opposants confondent la notion de «marques notoirement connues» avec celle de «marques jouissant d'une renommée» au sens de l'article 8, paragraphe 5, du RMC. Selon le motif de l'opposition indiqué, l'affaire est examinée à la lumière de l'article 8, paragraphe 2, et/ou de l'article 8, paragraphe 5, du RMC. Voir également les Directives, partie C, Opposition, section 5, Marques jouissant d’une renommée.
L’opposant doit démontrer qu'il est le titulaire d’une marque antérieure devenue notoirement connue sur le territoire correspondant, pour les produits et services sur lesquels l’opposition est fondée. À cet effet, il doit produire la preuve de l’usage de cette marque et la preuve qu’elle est notoirement connue.
4.2.4.2 Marques jouissant d’une renommée
Article 8, paragraphe 5, du RMC Règle 19, paragraphe 2, point c), du REMC
Une opposition en vertu de l’article 8, paragraphe 5, du RMC est fondée sur une marque antérieure jouissant d’une renommée. Voir également les Directives, partie C, Opposition, section 5, Marques jouissant d’une renommée.
Dans de tels cas, la marque antérieure est une marque enregistrée. L’opposant doit donc produire les certificats d'enregistrement, etc., comme indiqué ci-dessus.
Pour que l’opposition remplisse les conditions de l’article 8, paragraphe 5, du RMC, l’opposant doit produire la preuve de la renommée ainsi que la preuve ou des observations dont il résulte que l’usage sans juste motif de la marque contestée tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou lui porterait préjudice, ou démontrer que ce préjudice est probable compte tenu du déroulement normal des choses.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 45
FINAL VERSION 1.0 01/02/2015
4.2.4.3 Marque non enregistrée ou autre signe utilisé dans la vie des affaires
Article 8, paragraphe 4, du RMC Règle 19, paragraphe 2, point d), du REMC
Pour ces droits, l’Office applique la protection prévue par la législation nationale applicable.
Tous les droits visés par l'article 8, paragraphe 4, du RMC ne sont pas des droits non enregistrés. Ainsi, dans certains pays, les raisons sociales ou dénominations commerciales sont enregistrées. S’il s’agit d’un droit enregistré, il y a lieu de produire une copie de l’enregistrement et des certificats de renouvellement, etc., comme indiqué ci-dessus pour les enregistrements de marque. Dans le cas de marques ou de signes non enregistrés, l’opposant doit apporter la preuve de l’acquisition du droit antérieur. Cette preuve doit en outre démontrer qu’il a le droit d’interdire l’usage d’une marque plus récente.
L’opposant doit produire la preuve qu'il a utilisé son signe (droit antérieur, enregistré ou non) dont la portée n’est pas seulement locale. Il doit aussi indiquer quelles dispositions de la législation nationale protègent son droit et faire valoir ses arguments sur le fondement de la législation nationale applicable. Voir également les Directives, partie C, Opposition, section 4, Droits en vertu de l’article 8, paragraphe 4, du RMC.
4.2.4.4 Marque demandée par un agent ou un représentant
Article 8, paragraphe 3, du RMC Règle 19, paragraphe 2, point e), du REMC
Il s’agit du cas où une personne (agent ou représentant) autre que le titulaire d’une marque demande son enregistrement auprès de l’Office. Le titulaire peut s’opposer à la demande d’un demandeur déloyal. Voir également les Directives, partie C, Opposition, section 3, Marque demandée par un Agent.
L’opposant doit produire la preuve de la propriété de la marque et de la date de son acquisition. Étant donné qu’une marque peut être enregistrée ou non, l’opposant doit apporter la preuve de l’enregistrement effectué dans quelconque pays ou la preuve de l’acquisition de droits par l’usage. L'opposant doit également produire la preuve de la nature de sa relation avec l’agent ou le représentant.
4.2.5 Sanction
Règle 20, paragraphe 1, du REMC
Dans la mesure où les droits antérieurs invoqués n’ont pas été étayés, l’opposition est rejetée comme non fondée. Lorsque l’examen des preuves révèle qu’aucun des droits antérieurs sur lesquels l’opposition est fondée n’a été établi, c’est-à-dire que l’opposant n’a pas apporté de preuves suffisantes pour démontrer qu’il est titulaire d’un droit antérieur valable, l’ensemble de l’opposition est rejetée immédiatement après l’expiration de la période de deux mois accordée pour la production de preuves, sans attendre la réponse du demandeur.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 46
FINAL VERSION 1.0 01/02/2015
En aucun cas l’Office n’est tenu d’informer les parties des faits ou preuves qui auraient pu ou qui n’ont pas été présentés. Ce point sera détaillé dans la décision finale qui peut faire l’objet d’un recours.
4.3 Traductions/choix d’une autre langue durant la procédure d’opposition
La plupart des pièces produites par les parties dans le cadre de la procédure d’opposition doivent être rédigées dans la langue de la procédure pour être prises en considération. Des règles différentes s’appliquent selon la nature des pièces présentées.
Le principe général est énoncé à la règle 96 du REMC. La règle 96, paragraphe 1, du REMC s’applique aux déclarations écrites et aux observations présentées dans le cadre de la procédure d’opposition. La règle 96, paragraphe 2, s'applique aux preuves jointes à une déclaration écrite présentée dans le cadre de la procédure d’opposition. Cependant, la règle 96 du REMC ne s’applique pas là où existe une lex specialis. La règle 19, paragraphe 3, du REMC, qui concerne les faits, preuves et observations présentés par l’opposant, et la règle 22, paragraphe 6, du REMC, relative à la preuve de l'usage (toujours produite par l’opposant) sont des lex specialis de ce type.
4.3.1 Traduction des faits, preuves et observations présentés par l’opposant pour compléter son dossier
Règle 19, paragraphes 3 et 4, et Règle 20, paragraphe 1, du REMC
L’Office ne peut prendre en considération que les éléments de preuve qui sont soumis dans la langue de la procédure d’opposition, dans le délai imparti pour soumettre le document original. La règle 19, paragraphe 3, du REMC est une lex specialis qui s’applique à toute autre règle sur le régime linguistique.
Dès lors, tant les éléments de preuve soumis pour la première fois par l’opposant au terme du délai pour étayer l’opposition que tout autre document ou certificat soumis précédemment doivent être soit établis dans la langue de procédure, soit accompagnés d’une traduction. Seules les pièces déposées et traduites pendant ce délai sont prises en considération. En l’absence de traduction ou si une traduction insuffisante a été soumise, l’opposition sera rejetée en tout ou en partie comme non fondée.
Règle 98, paragraphe 1, du REMC
La règle 98, paragraphe 1, du REMC dispose que la traduction reproduit la structure et le contenu du document original.
Dès lors, en principe, l’ensemble du document doit être traduit et suivre la structure du document original.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 47
FINAL VERSION 1.0 01/02/2015
L’Office ne considère pas les informations d’ores et déjà présentées dans la langue de la procédure dans l’acte d'opposition ou dans les documents y annexés ou présentés ultérieurement (la description des motifs, la liste des marques antérieures, etc.), comme équivalentes à une traduction valable d'un document relatif à l'enregistrement tel que le certificat d’enregistrement, même si ces indications ont été admises dans le cadre de l'examen de la recevabilité. La traduction doit être effectuée de manière autonome et ne pas être un assemblage d’extraits d’autres documents.
Les extraits de banques de données privées ne peuvent être considérés comme des traductions valables d’un document officiel, à moins qu’ils ne reproduisent la structure et le contenu du document original.
L'Office tolère l’absence de traduction des intitulés des informations des extraits/certificats (tels que «date de dépôt», «revendication de couleur(s)») pour autant que ceux-ci soient identifiés par des codes standards nationaux ou INID.
La liste des codes INID et leurs explications est jointe en annexe 1 de la norme ST.60 – Recommandation relative aux données bibliographiques concernant les marques, disponible sur le site internet de l’OMPI.
Les indications administratives non pertinentes, sans incidence sur l’affaire ne doivent pas être traduites.
Lorsque l’opposition est dirigée uniquement contre une partie des produits et services couverts par le droit antérieur, il suffit de fournir une traduction uniquement des produits et services sur lesquels l’opposition est fondée.
La seule exception au principe qui précède, selon lequel l’intégralité du document doit être traduit et suivre la structure du document original, peut être faite lorsque l’intégralité du document original est dans la langue de procédure, à l’exception de la liste des produits et services. Le cas échéant, il est acceptable que seuls les produits et services sur lesquels l’opposition se fonde aient été traduits séparément dans l’acte d’opposition ou dans les documents y annexés ou présentés ultérieurement, dans le délai imparti pour étayer l’opposition. Il en va de même pour les extraits/certificats qui utilisent des codes INID ou nationaux, où la seule information qui doive encore être traduite dans la langue de procédure est la liste des produits et services.
Lorsque les offices nationaux fournissent une traduction en anglais, tous les éléments doivent être traduits, par exemple les entrées concernant le type de marque ou le statut de la marque (enregistrée, contestée, etc.) car ces éléments ont une incidence sur l’affaire (voir l’arrêt du 29 septembre 2011, C-479/08, « adidas v. OHIM – Patrick Holding »).
Règle 98, paragraphe 1, du REMC
L’Office accepte des traductions simples rédigées par quiconque. L’Office ne fait généralement pas usage de la faculté de demander une traduction faite par un traducteur juré ou officiel. Si le représentant joint une déclaration attestant que la déclaration est fidèle au texte original, l’Office ne met pas en doute la fidélité de la traduction. L'Office accepte même des annotations manuscrites sur les copies des certificats originaux indiquant le sens des différents éléments dans la langue de la procédure, à condition naturellement que ces inscriptions soient complètes et lisibles.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 48
FINAL VERSION 1.0 01/02/2015
L'Office ne subordonne pas l’obligation pour l’opposant de fournir des traductions des preuves à la réaction du demandeur, étant donné que la règle 19, paragraphe 3, du REMC ne prévoit aucune exception au principe selon lequel les preuves doivent être traduites.
4.3.1.1 Sanction
Règle 19, paragraphes 3 et 4 et Règle 20, paragraphe 1, du REMC
Si les observations ne sont pas rédigées dans la langue de procédure, elles doivent être traduites dans le délai imparti pour la présentation du document original.
Dans le cas contraire, la conséquence juridique est que les documents qui n’ont pas été traduits dans ce délai ne sont pas pris en considération. Toutefois, si des documents prouvant l’existence et la validité du droit antérieur n’ont pas été traduits, l’opposition doit être directement rejetée comme non fondée.
4.3.2 Traduction des observations supplémentaires
Règle 20, paragraphe 2 et 4 et Règle 96, paragraphe 1, du REMC
Il n’existe pas de règle spéciale concernant la traduction de la première réponse du demandeur ou des observations rédigées par le demandeur ou l’opposant à un stade ultérieur de la procédure. En conséquence, pour ces pièces, la règle 96, paragraphe 1, du REMC s’applique. En d’autres termes, la première réponse du demandeur ou la réponse de l’opposant aux observations du demandeur peuvent être rédigées dans une des langues de l'Office.
Il convient de noter que si la première réponse du demandeur ou la réplique de l’opposant n’est pas dans la langue de procédure mais dans l’une des langues de l’Office, l’observation ne sera pas prise en considération, à moins que le demandeur ou l’opposant ne présente une traduction de ces documents dans la langue de procédure, dans un délai d’un mois à compter de la date de réception de l’original par l’Office. L’Office ne demande pas aux parties d’envoyer une traduction, les parties doivent envoyer cette traduction de leur propre initiative.
Exemple 1
La langue de l’opposition est l’anglais et le demandeur doit faire parvenir ses observations en réponse à l'acte d'opposition le 26 juin 2002 au plus tard. Si, le 20 juin 2006, il présente ses observations sur l’opposition en allemand, sa traduction doit parvenir à l'Office le 20 juillet 2002 au plus tard. S’il transmet ensuite la traduction le 20 juillet 2002 ou avant, tant les observations originales que la traduction doivent être prises en considération, bien que le délai original pour déposer les observations ait expiré le 26 juin 2002.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 49
FINAL VERSION 1.0 01/02/2015
Exemple 2
La langue de l’opposition est l’anglais et le demandeur a jusqu’au 26 juin 2002 pour déposer les observations en réponse à l’acte d’opposition. Si, le 18 mai 2002, il dépose ses observations en réponse à l’opposition en allemand, sa traduction doit parvenir à l’Office le 18 juin 2002 au plus tard. Toutefois, étant donné que son délai n’expire que le 26 juin 2002, s’il dépose ensuite les traductions avant la fin du délai, l’Office considérera la traduction comme des observations valables déposées dans la langue de la procédure dans le délai imparti.
Règle 98, paragraphe 2, du REMC
Si aucune traduction n’a été fournie, les observations sont réputées non reçues par l’Office et ne seront pas prises en compte.
4.3.3 Traduction de documents autres que les observations
Règle 96, paragraphe 2, du REMC
Toutes les preuves autres que celles que l’opposant est tenu de produire dans le délai fixé pour fonder son opposition peuvent être transmises dans l’une des langues officielles de l’Union, conformément à la règle 96, paragraphe 2, du REMC. Cela concerne tous les documents, autres que les observations, déposés par les parties après l’expiration du délai imparti à l’opposant pour compléter son dossier.
Parmi les exemples de ces preuves, on peut citer des catalogues ou des articles de magazines, des décisions de tribunaux nationaux ou des contrats signés, présentés par le demandeur en même temps que ses observations en réponse à l’opposition.
Pour ces preuves, une traduction n’est nécessaire que si l’Office l’exige. Par conséquent, les parties ne sont pas automatiquement tenues de fournir une traduction.
Règle 98, paragraphe 2, du REMC
L’Office exerce son pouvoir discrétionnaire comme suit (cette pratique correspond, mutatis mutandis, à celle concernant la preuve de l’usage).
En principe, l’Office n’exige pas d’office une traduction. Cependant, il est fondamental que la partie à laquelle les documents sont adressés soit en mesure de comprendre la signification substantielle de leur contenu. En cas de doute ou de contestation de la partie destinataire, l’Office exige une traduction dans un délai qu’il impartit.
La règle 98, paragraphe 2, ne s’applique que si l’Office exige une traduction, avec pour effet que les traductions présentées tardivement ainsi que l’original à traduire ne sont pas pris en compte.
Simultanément à l’invitation à fournir une traduction, l’Office attire également l’attention de la partie concernée sur le fait qu’il appartient à la partie d’estimer si une traduction complète de l’ensemble des preuves produites est nécessaire. Cependant, les
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 50
FINAL VERSION 1.0 01/02/2015
documents en question ne seront pris en considération que si une traduction en est fournie ou si les documents sont suffisamment explicites, quels que soient leurs éléments textuels.
Exemple
Dans le cas d’une décision d’un tribunal national, il peut s'avérer suffisant de traduire uniquement les parties pertinentes aux fins de la procédure d'opposition.
4.3.4 Preuve de l’usage
Règle 22, paragraphe 6, du REMC
En ce qui concerne la preuve de l’usage, la règle 22, paragraphe 6, du REMC constitue une lex specialis pour les traductions. Si la preuve est rédigée dans une langue de l’UE autre que la langue de la procédure, l’Office peut inviter l’opposant à produire, dans le délai qu’il lui impartit, une traduction dans la langue de la procédure.
Par conséquent, la décision de demander ou non une traduction relève du pouvoir discrétionnaire de l’Office. Dans l’exercice de ce pouvoir discrétionnaire, l’Office tient compte de l’intérêt des deux parties.
Il est fondamental que le demandeur puisse comprendre la signification substantielle du contenu des preuves produites. En cas de doute ou de contestation du demandeur, l’Office exige une traduction dans un délai qu’il impartit. Toutefois, un rejet d’une telle demande est possible lorsqu’il apparaît que la demande du demandeur, au regard du caractère suffisamment explicite des éléments de preuve soumis, est exagérée, voire injuste.
Pour plus d’informations sur la preuve de l’usage, voir les Directives, partie C, Opposition, section 6, Preuve de l’usage.
Règle 22, paragraphe 2, du REMC
La règle 22, paragraphe 2, du REMC a pour effet que l’opposition doit être rejetée 1) si aucune preuve de l’usage n’est déposée dans le délai imparti ou 2) si la preuve de l’usage a bien été déposée dans le délai imparti, mais pas la traduction exigée par l’Office.
Si l’opposant fournit la preuve de l’usage dans une autre langue que la langue de procédure, dans le délai imparti et qu’il dépose ensuite, de lui-même, une traduction de cette preuve dans la langue de procédure, après l’expiration du délai mais avant que le délai imparti au demandeur pour déposer ses observations en réponse n’ait expiré, cette preuve sera prise en considération. Cette disposition s’applique même si l’Office n’a pas demandé à l’opposant de déposer une traduction et même si le demandeur n’a pas encore contesté la preuve.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 51
FINAL VERSION 1.0 01/02/2015
4.3.5 Changement de langue au cours de la procédure d’opposition
Article 119, paragraphe 7, du RMC Règle 16, paragraphe 2, du REMC
Conformément à l’article 119, paragraphe 7, du RMC, les parties à la procédure d'opposition peuvent convenir de changer de langue de la procédure et choisir à cet effet une autre langue officielle de l’Union européenne.
La règle 16, paragraphe 2, du REMC, énonce les conditions dans lesquelles ce changement de langue peut intervenir. Elle dispose que l’opposition doit être déposée dans une langue de l'Office au départ et que les parties peuvent convenir de changer la langue de la procédure en informant l’Office avant l’expiration du délai de réflexion. Une demande de changement de langue de procédure après l’expiration du délai de réflexion ne peut être accueillie par l’Office.
Lorsque, avant l’ouverture de la phase contradictoire de la procédure, l’opposant et le demandeur conviennent d'utiliser une autre langue pour la procédure, la règle 16, paragraphe 2, du REMC prévoit que l’opposant doit «produire une traduction de l’acte d'opposition dans cette langue». Il dispose à cet effet d’un délai d’un mois à compter de la date d’expiration du délai de réflexion.
Si la traduction n’est pas produite ou l’est tardivement, la langue de la procédure demeure inchangée.
4.4 Documents illisibles/référence à d’autres dossiers
4.4.1 Documents illisibles
Règle 80, paragraphe 2, du REMC
Lorsqu’une communication reçue par télécopieur est incomplète ou illisible ou que l’Office a des doutes sérieux quant à l'intégrité des données transmises, il en informe l’expéditeur et l’invite, dans le délai qu’il lui impartit, à transmettre à nouveau l’original par télécopie ou à le lui fournir, conformément à la règle 79, point a), du REMC.
Si l’expéditeur se conforme à cette invitation en temps voulu, la date de réception de la nouvelle transmission ou de l’original est réputée être la date de réception de la communication originale.
4.4.2 Documents originaux ne pouvant pas être restitués
Les documents originaux sont versés au dossier et ne peuvent donc être renvoyés à la personne qui les a présentés.
Toutefois, la partie conserve toujours la possibilité d'obtenir une copie, certifiée conforme ou non, des documents originaux, moyennant le paiement d’une taxe. Pour plus d’informations, voir les informations affichées sur la page internet de l’Office, sous la rubrique: Inspection publique des dossiers et copies.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 52
FINAL VERSION 1.0 01/02/2015
4.4.3 Informations confidentielles
Règle 88, point c), du REMC
Dans certains cas, une des parties demande à l’Office de garder certains documents confidentiels, y compris vis-à-vis de l’autre partie à la procédure. Bien que l’Office puisse garder des documents confidentiels vis-à-vis de tiers (inspection publique), il ne peut en aucun cas préserver la confidentialité des documents vis-à-vis de l’autre partie dans le cadre d'une procédure inter partes.
Les droits de la défense doivent toujours être garantis à chacune des parties. Cela signifie que chaque partie doit disposer du plein accès à tous les documents produits par l’autre partie.
Il résulte de ce droit que tous les documents produits par une partie doivent être rendus accessibles à l’autre partie à la procédure. L’Office est donc tenu de transmettre tous les documents reçus à l’autre partie. Dès lors, si une des parties demande à ce que certains documents soient gardés confidentiels sans mentionner si cette confidentialité doit s’exercer à l’égard de tiers, l’Office considèrera comme acquis que tel est le cas et les transmettra à l’autre partie en les marquant comme confidentiels dans le dossier électronique.
Si, au cours d’une procédure d'opposition, l’Office reçoit des documents, assortis d’une demande de les garder confidentiels inter partes, l’expéditeur est informé que la confidentialité des documents ne peut être préservée vis-à-vis de l’autre partie à la procédure.
À cet effet, une lettre est envoyée à l'expéditeur des documents, lui expliquant clairement qu'il a le choix de rendre ces documents accessibles ou de les retirer. Il appartient à la partie de prendre la décision qui lui semble la plus appropriée.
S’il confirme la confidentialité des documents, ceux-ci ne seront pas transmis à l’autre partie et ne seront pas pris en considération. Ils seront marqués comme confidentiels dans le dossier électronique.
Si l’expéditeur souhaite que les documents soient pris en considération mais restent non accessibles à des tiers, les documents seront transmis à l’autre partie, mais seront marqués comme confidentiels dans le dossier électronique.
À défaut de réponse de l’expéditeur, les documents ne sont pas transmis à l’autre partie, ne seront pas pris en considération et seront marqués comme confidentiels dans le dossier électronique.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 53
FINAL VERSION 1.0 01/02/2015
4.4.4 Références à des documents transmis dans le cadre d’autres procédures
Règle 79, point a) et Règle 91 du REMC Décision n° EX-13-4 du président de l’Office
L’Office peut recevoir des observations de l’opposant ou du demandeur dans lesquelles il est fait référence à des documents ou des éléments de preuve transmis dans le cadre d’autres procédures, par exemple une preuve de l’usage déjà produite dans le cadre d’une autre opposition.
Ces références sont admises à tout stade de la procédure, pour autant que l’opposant ou le demandeur identifient clairement les documents auxquels il fait référence. La partie doit notamment indiquer les éléments suivants: 1) le numéro de l’opposition à laquelle elle fait référence, 2) le titre du document, 3) le nombre de pages de ce document et 4) la date à laquelle il a été transmis à l’Office. Exemple: «la déclaration solennelle transmise à l'Office le jj/mm/aa dans le cadre de la procédure d'opposition B xxx xxx, avec les pièces 1 à 8, se composant de xx pages».
Dans l’hypothèse où les documents mentionnés par l’opposant ou le demandeur se composeraient à l’origine d’autres preuves que de feuilles volantes, conformément à la règle 79 bis du REMC, la partie concernée soumet par courrier un second exemplaire pour transmission à l’autre partie dans le délai original. Si aucun exemplaire n’est fourni, ces éléments de preuve ne seront pas pris en considération.
En outre, il convient de noter que les documents ou preuves mentionnés pourraient nécessiter une traduction dans la langue de la procédure d’opposition. La règle 19, paragraphe 4, la règle 22, paragraphe 6, et la règle 96 du REMC s’appliquent en conséquence.
Une référence générale à des documents ou preuves présentés dans d’autres procédures n’est pas admise. Le cas échéant, la partie faisant référence de manière générale à de tels documents ou éléments de preuve peut être invitée à préciser cette référence. La partie est également informée que le délai imparti par l’Office concerne uniquement l’indication claire et précise des documents ou preuves auxquels il est fait référence et qu’en aucun cas une prorogation du délai original ne sera accordée. En outre, la partie est également informée qu’à défaut d’une précision communiquée dans le délai imparti, ces autres documents ne seront pas pris en considération.
Les parties doivent également savoir que les documents soumis dans d’autres procédures peuvent avoir été détruits cinq ans après leur réception, conformément à la règle 91 du REMC et à la décision n° EX-13-4 du président de l’Office du 26 novembre 2013 concernant la conservation des dossiers. Le cas échéant, la référence aux documents ou preuves déposés dans d’autres procédures d’opposition est sans effet.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 54
FINAL VERSION 1.0 01/02/2015
4.5 Autres échanges d’observations
Règle 20, paragraphes 2, 4 et 6, Règle 22, paragraphe 5, Règle 96, paragraphe 2 et Règle 98, paragraphe 2, du REMC
L’Office invite le demandeur à présenter ses observations dans le délai imparti conformément à la règle 20, paragraphe 2, du REMC.
Le cas échéant, l’Office peut inviter les parties à limiter leurs observations à des questions particulières. Dans ce cas, la partie est autorisée à soulever d’autres questions à un stade ultérieur de la procédure. À titre d'exemple, le demandeur peut exiger une preuve de l’usage du droit antérieur en présentant ou non en même temps des observations sur les motifs sur lesquels se fonde l’opposition. Dans ce cas, les observations peuvent être présentées avec les observations en réponse sur la preuve de l’usage.
Une fois que le demandeur a présenté ses observations en réponse, un délai final est accordé à l’opposant pour déposer sa réplique si l’Office le juge nécessaire. Après cela, la phase contradictoire de la procédure est généralement clôturée et la procédure d’opposition est prête pour faire l’objet d’une décision.
L’Office peut, cependant, accorder la possibilité d’un autre échange d’observations. Ce peut être le cas lorsque l’affaire traite de questions complexes ou lorsque l’opposant soulève un nouveau point qui est admis dans la procédure. Une possibilité de réponse doit, le cas échéant, être accordée au demandeur L’Office décidera librement si une nouvelle série d’observations doit être accordée à l’opposant.
Un nouvel échange d’observations ne peut ainsi être accordé que si les observations finales de l’opposant se limitent simplement à répondre aux observations du demandeur et sont soutenues par des éléments de preuve qui n’ont pas pour but de remédier à des lacunes telles que celles liées à la validation ou à la preuve de l’usage, par exemple si le demandeur soulève de nouveaux points tels que la coexistence des marques, la nullité du droit antérieur ou un accord entre les parties. Si l’opposant dépose une preuve du contraire, une seconde possibilité de déposer de nouvelles observations peut être accordée au demandeur. Cela n’est toutefois pas automatique et dépend des circonstances de l’affaire.
4.5.1 Éléments supplémentaires à l’appui de la preuve de l’usage
Dans certaines circonstances, l’Office peut tenir compte d’autres éléments étayant une preuve de l’usage qui sont soumis après le délai correspondant, notamment lorsque l’opposant a soumis les preuves pertinentes dans le délai, mais que celles-ci requièrent des justificatifs complémentaires (arrêt du 18 juillet 2013, C-621/11 P, «Fishbone», points 28 et 30). Les éléments supplémentaires seront examinés au cas par cas. Au besoin, un deuxième cycle d’observations sera accordé. Pour plus d’informations, voir les Directives, partie C, Opposition, section 6, Preuve de l’usage
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 55
FINAL VERSION 1.0 01/02/2015
4.6 Observations des tiers
Article 40 du RMC Communication n° 2/09 du président de l’Office
Des tiers peuvent formuler des observations précisant les motifs pour lesquels la demande de marque devait être refusée à l’enregistrement, sur la base de l’un des motifs absolus énoncés à l'article 7 du RMC. Pour plus de détails, voir les Directives, partie B, Examen, section 4, Motifs absolus de refus et marques communautaires collectives et les Directives, partie B, Examen, section 1, Procédure.
Toute personne, y compris l’opposant, peut présenter des observations de tiers. Le cas échéant, il doit cependant le faire de manière à ne laisser aucun doute à ce sujet. Conformément à la communication susvisée du président de l’Office, les observations doivent être soumises séparément. Dans la pratique cependant (voir la décision du 30 novembre 2004, R 735/2000-2, «SÉRIE A»), l’exigence de «soumission distincte» est réputée satisfaite dès lors que les observations en question sont clairement séparables des motifs et arguments à l’appui de l’opposition, même si ces observations sont incluses dans le même document. Pour autant que l’opposant indique expressément qu’il souhaite faire des observations sur la base de l'article 40 du RMC, celles-ci sont prises en considération même si elles ne sont pas soumises dans un document distinct. Toutefois, si l’opposant fait valoir, dans les documents soumis, que la demande de marque communautaire aurait dû être refusée à l’enregistrement en vertu de l'article 7 du RMC sans faire référence au contenu de l’article 40 du RMC, les documents ainsi soumis ne seront pas considérés comme des observations de tiers au sens de l'article 40 du RMC.
Si un opposant formule des observations de tiers, l’examinateur détermine si ces observations soulèvent des doutes sérieux quant au caractère enregistrable de la demande de marque communautaire ou doivent simplement être transmises au demandeur pour information.
Si les observations soulèvent des doutes sérieux, l’examinateur suspend la procédure d’opposition pour pouvoir rendre une décision sur les observations. Si elles ne soulèvent pas de doutes sérieux (c'est-à-dire, lorsque les observations doivent simplement être transmises au demandeur pour information), ou ne portent pas sur les produits ou services contestés, il n'y a pas lieu de suspendre la procédure d'opposition. Si la procédure d’opposition doit être suspendue, la suspension prend effet à partir de la date à laquelle l’Office formule l’objection visée à l’article 7, et la procédure reste suspendue jusqu’à ce qu’une décision finale soit rendue. Dans le cas où des observations de tiers sont reçues pendant le délai d’opposition de trois mois, l’Office traite la recevabilité de l’opposition et, une fois que la décision sur la recevabilité a été notifiée, la procédure d’opposition est suspendue.
Pour toutes les oppositions closes en raison d’observations de tiers, la taxe d’opposition n’est jamais remboursée, étant donné que ce remboursement n’est pas prévu dans les règlements (voir la règle 18, paragraphe 5, du REMC).
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 56
FINAL VERSION 1.0 01/02/2015
5 Clôture de la procédure
5.1 Conciliation
Règle 18, paragraphe 2, du REMC
Les parties sont libres de décider de quelle manière la procédure d’opposition doit être close. Si elles peuvent décider du retrait de l’opposition, elles peuvent également, sans donner de motif particulier, demander simplement à l’Office de rendre une décision de non-lieu. Il suffit de communiquer à l’Office le règlement entre les parties, même sans exposé des motifs, pour que la procédure soit close sans qu’aucune décision ne soit rendue. L’Office entreprend alors tous les actes nécessaires pour clore la procédure sur la base de ce règlement.
En ce qui concerne le remboursement des taxes et la décision relative aux frais en cas de règlement à l’amiable, veuillez vous reporter au paragraphe pertinent ci-dessous.
Article 42, paragraphe 4, du RMC
S’il le juge utile, l’Office invite les parties à se concilier. Tant l’Office que les parties peuvent donc engager une procédure de conciliation.
À cet effet, l’Office peut faire des propositions en vue d’un règlement à l’amiable. Étant donné que l’Office ne peut en principe (ni ne veut) se substituer aux parties, il n’interviendra que dans les très rares cas où une conciliation entre les parties paraît souhaitable ou s’il existe de bonnes raisons de penser que la procédure peut se terminer par une conciliation.
Par ailleurs, l’Office peut, à la demande expresse des parties, apporter une aide à leur négociation en servant par exemple d’intermédiaire ou en leur fournissant tout moyen matériel nécessaire. Les frais sont à la charge des parties. La conciliation peut être précédée d'une demande de suspension.
5.2 Limitations et retraits
Article 58, paragraphe 1, Article 64, paragraphe 3 et Article 85 du RMC Règle 18, paragraphes 2, 3 et 4, Règle 95, point a) et Règle 96, paragraphe 1, du REMC
5.2.1 Limitations et retraits de demandes de marque communautaire
Article 43 du RMC
Le demandeur a la possibilité de limiter les produits et services de sa demande ou de retirer la demande dans son intégralité à tout stade de la procédure d’opposition.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 57
FINAL VERSION 1.0 01/02/2015
Les retraits et les limitations doivent être explicites et inconditionnels. Un silence de la part du demandeur de la marque communautaire pendant la procédure n’est jamais considéré comme un retrait tacite.
Les retraits conditionnels ou ambigus ne seront pas acceptés et seront transmis à l’autre partie à simple titre d’information, en précisant aux parties qu’il n’en sera pas tenu compte.
L’Office n’admet pas les limitations conditionnelles. Ainsi, si dans ses observations en réponse à l’opposition, le demandeur fait valoir que les signes ne sont pas similaires mais qu’il serait disposé à limiter la liste des produits et services désignés dans la demande de marque communautaire dans le cas où l’examinateur les jugerait similaires, telle limitation n’est pas recevable. Le demandeur doit être informé du fait que la limitation doit être précise et inconditionnelle.
Pour plus d’informations sur les limitations d’une demande de marque communautaire, voir les Directives, partie B, Examen, section 3, Classification et les Directives, partie B, Examen, section 1, Procédure, paragraphe 5.2.
Si la limitation n’est pas recevable, le demandeur doit en être informé.
Si une limitation est en partie recevable et en partie non recevable (par exemple parce qu’elle donne lieu à une extension), l’Office admet la limitation pour la partie recevable. Cependant, avant de procéder à cette limitation, le demandeur est informé de la partie qui n’est pas recevable et dispose de deux mois pour réagir. Une copie de la déclaration de limitation et de la réponse de l’Office au demandeur est envoyée à l’opposant. Si, dans les deux mois impartis, le demandeur réagit en transmettant une version corrigée qui est recevable, il pourra être procédé à la limitation. Par contre, en l’absence de réaction du demandeur, il ne sera procédé à la limitation que dans la mesure où elle est recevable.
Si l’opposant retire son opposition en raison d’une limitation non recevable, le retrait n’est pas pris en considération s’il fait clairement référence à une limitation non recevable. Une fois que la limitation est devenue recevable, l’opposant est informé de la nouvelle liste des produits et services et un nouveau délai lui est accordé pour confirmer le retrait de l’opposition.
Si la limitation est recevable, une confirmation est envoyée au demandeur.
En fonction du stade de la procédure, la limitation ou le retrait a des effets différents, qui sont décrits ci-après.
5.2.1.1 Retrait ou limitation avant l’examen de la recevabilité
Limitation couvrant toute l’étendue de l’opposition/du retrait
Lorsque la demande de marque communautaire est retirée ou limitée aux produits non contestés avant la notification de la recevabilité de l’opposition, la procédure d'opposition est clôturée et la taxe d’opposition est remboursée. En d’autres termes, dans ce type d'affaire, le traitement du retrait ou de la limitation a priorité sur l’examen de la recevabilité.
Aucune décision sur les frais n’est rendue.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 58
FINAL VERSION 1.0 01/02/2015
Limitation ne couvrant pas (ou ne semblant pas couvrir) toute l’étendue de l’opposition
Dans le cas d'une limitation susceptible de contenir encore des produits et services litigieux, un examen de la recevabilité est effectué.
La limitation est notifiée à l’opposant, conjointement avec la notification de la recevabilité ou de la communication informant l’opposant de l’existence d’une irrégularité absolue ou relative en matière de recevabilité.
Si l’opposition est retirée, la taxe d’opposition est remboursée, même en présence d’irrégularités irrémédiables.
Aucune décision sur les frais n’est rendue.
5.2.1.2 Limitations et retraits de demandes de marque communautaire avant l’expiration du délai de réflexion
Limitation couvrant toute l’étendue de l’opposition/du retrait
Lorsqu’il est absolument clair que la limitation couvre toute l’étendue de l’opposition ou si la demande de marque communautaire est retirée, le retrait ou la limitation est notifié(e) aux parties. La taxe d’opposition est remboursée à l’opposant.
Aucune décision sur les frais n’est rendue.
Limitation ne couvrant pas (ou ne semblant pas couvrir) toute l’étendue de l’opposition
S’il n'est pas absolument clair que la limitation couvre toute l’étendue de l’opposition ou si la limitation ne couvre pas toute l’étendue de l’opposition, l’opposant est invité à informer l’Office s’il souhaite maintenir ou retirer l’opposition. Les parties sont informées de sa réponse. Si l’opposition est retirée, la taxe d’opposition est remboursée à l’opposant.
Aucune décision sur les frais n’est rendue.
Le moment pertinent pour déterminer si la procédure d’opposition est clôturée pendant le délai de réflexion est la date à laquelle une demande de limitation a été déposée devant l’Office.
5.2.1.3 Limitations et retraits de demandes de marques communautaires après l’expiration du délai de réflexion
Limitation couvrant toute l’étendue de l’opposition/du retrait
Lorsqu'il est absolument clair que la limitation couvre toute l’étendue de l’opposition, l’affaire est clôturée par l’Office et les parties en sont informées. Parallèlement, la limitation est envoyée à l’opposant.
L'Office rend ensuite une décision sur les frais, à moins que les parties ne présentent un accord sur ce point. Pour des informations sur la répartition des frais, voir paragraphe 5.5.3 de ces directives.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 59
FINAL VERSION 1.0 01/02/2015
Limitation ne couvrant pas (ou ne semblant pas couvrir) toute l’étendue de l’opposition
S’il n'est pas absolument clair que la limitation couvre toute l’étendue de l’opposition ou si la limitation ne couvre pas toute l’étendue de l’opposition, l’opposant est invité à informer l’Office s’il souhaite maintenir ou retirer l’opposition. Les parties sont informées de sa réponse. Si l’opposition est retirée, la procédure d’opposition est clôturée.
L'Office rend ensuite une décision sur les frais, à moins que les parties ne présentent un accord sur ce point. Pour des informations sur la répartition des frais, voir paragraphe 5.5.3 de ces directives.
5.2.1.4 Limitations et retraits de demandes de marques communautaires après qu'une décision a été rendue
Conformément à la décision de la Grande chambre de recours du 27 septembre 2006, dans l'affaire R 331/2006-G, «Optima», l’Office admet les retraits et les limitations reçus au cours du délai pour former un recours, après qu’une décision sur l’opposition a été rendue, même si un recours n’a pas été formé. Cependant le retrait ou la limitation n’a aucune incidence sur la décision, qui reste valable.
Cela signifie que l’Office prend note du retrait et clôture l’affaire. Une confirmation du retrait est adressée aux parties (toutefois, aucune décision sur les frais n’est incluse dans cette communication). La partie relative aux frais de la décision finale reste valable et peut être appliquée par la partie ayant obtenu gain de cause. La base de données de l’Office est mise à jour en conséquence, pour refléter le retrait de la demande de marque communautaire.
Pour plus d’informations, voir les Directives, partie B, Examen, section 1, Procédure et les Directives, partie E, Inscriptions au Registre, section 2, Transformation.
Lorsque la décision qui rejette la demande de marque communautaire dans son intégralité est devenue définitive, c'est-à-dire à l’expiration du délai de deux mois pour former un recours, il est trop tard pour retirer la demande de marque communautaire puisqu’il n’y a plus rien à retirer.
Si la décision rejette l’opposition, la demande de marque peut être retirée ou limitée à tout moment.
5.2.1.5 Langues
Une déclaration de limitation peut être effectuée dans la première ou la deuxième langue utilisée pour le dépôt de la demande de marque communautaire (règle 95, point a), du REMC).
Si la déclaration de limitation est effectuée dans la première langue de la demande de marque communautaire, qui n’est pas la langue de la procédure, et si la limitation ne couvre pas toute l’étendue de l’opposition, la déclaration de limitation est communiquée à l’opposant et l’invite à faire savoir à l’Office s’il maintient son opposition. L’opposant peut s’opposer à la langue utilisée pour la limitation et
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 60
FINAL VERSION 1.0 01/02/2015
demander une traduction dans la langue de la procédure. L’Office fournit alors la traduction.
Si une limitation recevable est présentée dans la première et la seconde langue, l’examinateur doit refléter cette limitation dans les deux langues dans la base de données de l’Office et confirmer au demandeur la nouvelle liste de produits et services dans les deux langues.
5.2.2 Retrait des oppositions
L’opposant peut retirer son opposition à tout moment au cours de la procédure.
Un retrait de l’opposition doit être explicite et inconditionnel. Un retrait conditionnel ou ambigu ne sera pas accepté et sera transmis au demandeur à titre d’information uniquement, précisant aux parties qu’il n’en sera pas tenu compte.
Si l’opposant retire son opposition indépendamment de toute limitation de la demande de marque communautaire, trois situations peuvent se présenter selon le statut de l’opposition (lorsque le retrait de l’opposition est motivé par une limitation de la demande de marque communautaire, voir ci-dessus).
5.2.2.1 Retrait de l’opposition avant l’expiration du délai de réflexion
Si l’opposition est retirée avant l’expiration du délai de réflexion, ce retrait est notifié aux parties. Si l’opposant retire son opposition au cours du délai de réflexion sans qu'il y ait eu limitation de la demande de marque, l’Office ne rembourse pas la taxe d'opposition et ne rend pas de décision sur les frais.
5.2.2.2 Retrait de l’opposition après l’expiration du délai de réflexion
Si l’opposition est retirée après l’expiration du délai de réflexion, ce retrait est notifié aux parties. La taxe d’opposition n’est pas remboursée. L’Office rend ensuite une décision sur les frais, à moins que les parties ne présentent un accord sur les frais. Pour des informations sur la répartition des frais, voir paragraphe 5.5.3 de ces directives.
5.2.2.3 Retrait de l’opposition après qu'une décision a été rendue
Conformément à la décision de la Grande chambre de recours du 27 septembre 2006, dans l’affaire R 331/2006-G, «Optima», l’Office admet les retraits et les limitations reçus au cours du délai pour former un recours, après qu’une décision sur l’opposition a été rendue, même si un recours n’a pas été formé. Cependant le retrait ou la limitation n’a aucune incidence sur la décision, qui reste valable.
Cela signifie que l’Office prend note du retrait et clôture l’affaire. Une confirmation du retrait est adressée aux parties (toutefois, aucune décision sur les frais n’est incluse dans cette communication). La partie relative aux frais de la décision finale reste valable et peut être appliquée par la partie ayant obtenu gain de cause. La base de données de l’Office est mise à jour en conséquence, pour refléter le retrait de l’opposition et la demande est transmise à l’enregistrement.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 61
FINAL VERSION 1.0 01/02/2015
Pour plus d’informations, voir les Directives, partie B, Examen, section 1, Procédure et les Directives, Partie E, Inscriptions au Registre, section 2, Transformation.
5.2.2.4 Langues
Un retrait de l’opposition doit s’effectuer dans la langue de procédure. La règle 96, paragraphe 1, du REMC s’applique. Si le retrait s’effectue dans une langue autre que celle de la procédure, une traduction doit être fournie dans un délai d'un mois à compter de la date de dépôt du document original, conformément à la règle 96, paragraphe 1, du REMC. Dans le cas contraire, il ne sera pas accédé au retrait.
5.2.3 Retrait d’un retrait/d’une limitation
Une partie ne peut revenir sur un retrait ou une limitation précédemment notifiés que si l’Office reçoit la lettre revenant sur ce retrait ou cette limitation le jour même où il a reçu la notification de ce retrait ou de cette limitation.
5.3 Décision sur le fond
La décision sur le fond est rendue dès lors que toutes les pièces requises ont été produites par les parties. Cette décision ne doit aborder que les questions ou les droits antérieurs pertinents pour l'issue de l'affaire.
Il existe deux exceptions:
le droit antérieur n’a pas été établi; l’extinction du droit antérieur.
5.3.1 Le droit antérieur n’a pas été établi
Règle 20, paragraphe 1, du REMC
Si aucune preuve de l’existence et de la validité des droits antérieurs invoqués n'a été dûment produite, l’opposition est rejetée dès l’expiration du délai accordé à l’opposant pour compléter son dossier.
Cependant, si seuls certains droits antérieurs n'ont pas été établis, la procédure se poursuit normalement et ces droits ne sont pas pris en considération dans la décision finale sur le fond.
5.3.2 Extinction du droit antérieur
Si, au cours de la procédure, le droit antérieur cesse d’exister (par exemple parce qu’il a été déclaré nul ou qu’il n'a pas été renouvelé), la décision finale ne peut se fonder sur celui-ci. L’opposition ne peut être accueillie que sur la base d’un droit antérieur qui est valide au moment où la décision est prise. La raison pour laquelle le droit antérieur cesse d’exister n’entre pas en ligne de compte. Puisque la DMC et le droit antérieur qui a cessé de produire ses effets ne peuvent plus coexister, l’opposition ne peut pas
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 62
FINAL VERSION 1.0 01/02/2015
aboutir sur cette base (voir arrêt du 13/09/2006, T-191/04, ‘METRO/METRO’, par 33 et 36).
La déclaration de nullité du droit antérieur, à la différence de celle d’une marque communautaire, ne peut être connue de l’Office, mais si l’une des parties en informe l’Office, l'autre partie doit être entendue et, le cas échéant, l’opposition devra être rejetée.
Avant que la décision ne soit rendue, l’Office vérifie si le droit antérieur invoqué doit être renouvelé dans l'intervalle. Dans ce cas, il invite l’opposant à produire la preuve du renouvellement de la marque. Si l’opposant n’en produit pas la preuve, l'’opposition doit être rejetée.
5.4 Remboursement de la taxe d’opposition
5.4.1 Opposition réputée non formée
Article 41, paragraphe 3, du RMC Article 9, paragraphe 1, du RTMC Règle 17, paragraphe 1, du REMC
Lorsqu’une opposition est réputée ne pas avoir été formée en raison d’un paiement tardif ou insuffisant (voir le paragraphe 2.2.2, Moment du paiement, ci-dessus) la taxe d'opposition, y compris toute surtaxe, doit être remboursée à l’opposant. Si une surtaxe a été acquittée, elle doit également être remboursée.
5.4.1.1 Opposition et retrait reçus le même jour
Lorsque l’opposition est retirée le jour où elle est formée, l’Office rembourse la taxe d’opposition.
5.4.1.2 Remboursement après republication
Si, après une republication de la demande de marque communautaire dans la partie A.2. du Bulletin des marques communautaires, en raison d’une erreur de l’Office, un opposant à la «première publication» entend retirer son opposition du fait de la deuxième publication, la procédure est close. Étant donné que l’erreur dans la première publication est imputable à l’Office, la taxe d’opposition est remboursée.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 63
FINAL VERSION 1.0 01/02/2015
5.4.2 Remboursement du fait du retrait/de la limitation d’une demande de marque communautaire
5.4.2.1 Retrait/limitation d’une demande de marque communautaire avant l’expiration du délai de réflexion
Règle 18, paragraphes 2, 4 et 5, du REMC
Si le demandeur retire sa demande de marque communautaire ou limite sa demande en supprimant tous les produits et services visés par l’opposition avant ou pendant le délai de réflexion, la procédure d’opposition est close, aucune décision sur les frais n’est rendue, et la taxe d'opposition est remboursée.
5.4.2.2 Retrait de l’opposition en raison d’une limitation de la demande de marque communautaire au cours du délai de réflexion
Règle 18, paragraphes 3, 4 et 5, du REMC
Si, pendant le délai de réflexion, le demandeur limite sa demande en supprimant certains des produits et services visés par l’opposition, l’Office invite l’opposant à faire savoir s’il maintient son opposition (et, dans l'affirmative, à préciser parmi les produits et services restants, ceux qui sont visés par l’opposition) ou s’il la retire compte tenu de la limitation.
Si l’opposition est retirée, la procédure d’opposition est close, aucune décision sur les frais n'est prise et la taxe d’opposition est remboursée.
Si le retrait de l’opposition parvient à l’Office avant qu’une copie de la notification officielle de la limitation de la demande de marque ne parvienne à l’opposant, le retrait est réputé être une conséquence de la limitation, et la taxe d’opposition est également remboursée.
La lettre de l’opposant ne doit pas nécessairement faire expressément référence à la limitation. Il suffit qu’elle soit postérieure au retrait du demandeur.
La réaction initiale de l’opposant à la notification de la limitation n’a pas d'importance, tant que le retrait est déclaré plus tard.
Exemples
l’opposant ne répond pas dans le délai qui lui est imparti, mais retire ensuite son opposition durant le délai de réflexion (qui a été prorogé);
l’opposant répond en indiquant qu’il maintient son opposition, mais il la retire ultérieurement au cours du délai de réflexion prorogé.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 64
FINAL VERSION 1.0 01/02/2015
5.4.3 Oppositions multiples et remboursement de 50 % de la taxe d’opposition
Règle 21, paragraphe 4, du REMC
Dans certains cas spéciaux concernant des oppositions multiples, la possibilité existe de rembourser la moitié de la taxe d’opposition à un opposant. Deux conditions doivent être remplies:
une des procédures d’opposition s’est terminée par le rejet de la demande de marque communautaire dans le cadre de procédures parallèles. Par exemple, si quatre oppositions A, B, C et D (opposants A, B, C, D) ont été formées contre une demande de marque communautaire X, et que cette demande de marque communautaire X est rejetée sur la base de l’opposition A, et
les autres oppositions (B, C et D) ont été suspendues à un stade antérieur de la procédure (c.-à-d. avant l’expiration du délai de réflexion) parce qu’un examen préliminaire a révélé que la demande de marque communautaire X serait probablement rejetée dans son intégralité en raison de l’opposition A.
Dans ce cas, les opposants B, C et D sont remboursés de la moitié de la taxe d’opposition.
5.4.4 Cas où la taxe d’opposition n’est pas remboursée
5.4.4.1 Retrait de l’opposition avant l’expiration du délai de réflexion qui N'EST PAS dû à une limitation
Règle 18, paragraphes 3, 4 et 5, du REMC
Si l’opposant retire son opposition avant l’expiration du délai de réflexion en l’absence de limitation de la demande de marque communautaire, l’Office ne rembourse pas la taxe d'opposition et ne rend pas de décision sur les frais.
5.4.4.2 Le retrait de l’opposition est antérieur
Règle 18, paragraphes 3 et 5, du REMC
Lorsque l’opposition est retirée avant que le demandeur limite sa demande, la taxe n'est pas remboursée. Par exemple, si le demandeur retire sa demande à la suite (en réaction au) du retrait de l’opposition, la taxe d’opposition n'est pas remboursée car il s’agit en l’occurrence du cas inverse.
Il en va de même lorsque le demandeur limite sa demande à la suite d’un retrait partiel de l’opposition.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 65
FINAL VERSION 1.0 01/02/2015
5.4.4.3 Accord entre les parties avant le début de la procédure
Règle 18, paragraphes 2, 4 et 5, du REMC
S’agissant du remboursement de la taxe d’opposition, la règle 18, paragraphe 5, du REMC prévoit uniquement cette possibilité en cas de retrait ou de limitation de la demande de marque communautaire. Si la procédure est close en raison d’un règlement, mais que celui-ci ne fait pas mention d’un retrait ou d’une limitation de la demande de marque communautaire, la taxe d’opposition est remboursée. Dans les autres cas, la taxe d’opposition n’est pas remboursée.
5.4.4.4 Clôture de la procédure pour d’autres motifs
Article 7, Article 40 et Article 92, paragraphe 2, du RMC Règle 17, Règle 18 et Règle 76, paragraphes 1 et 4, du REMC
Dans les cas où la demande est rejetée en application de:
l’article 7 du RMC (rejet d’une demande fondée sur des motifs absolus; à l’initiative de l’Office ou en raison d’observations de tiers),
l’article 92, paragraphe 2, du RMC (représentation de demandeurs non établis dans l'Union européenne),
la règle 76, paragraphe 4, du REMC (pouvoirs expressément demandés par l’une des parties),
la taxe d’opposition n’est pas remboursée étant donné qu’aucune de ces situations n’est envisagée dans le REMC comme motif de remboursement de la taxe d’opposition.
5.4.4.5 Réaction à une déclaration de renonciation à invoquer un droit exclusif
Article 37, paragraphe 2, du RMC
Si le demandeur présente une déclaration de renonciation (à invoquer un droit exclusif sur un élément de la demande de marque communautaire faisant l’objet de l’opposition au motif qu’il n’est pas distinctif) et si, ensuite, l’opposant retire l’opposition, la taxe d’opposition n’est pas remboursée, cette situation n’étant pas considérée dans le REMC comme un motif de remboursement de la taxe d’opposition. La déclaration de renonciation ne constitue pas une limitation de la liste des produits et services désignés dans la demande de marque communautaire.
5.4.5 Remboursement par erreur de la taxe d’opposition
La taxe d’opposition peut avoir été remboursée par erreur en raison d’une erreur technique de l’Office et, si l’opposant possède un compte courant, l’Office débite à nouveau automatiquement ce compte.
Pour plus d’informations, voir les Directives, partie A, Dispositions générales, section 3, Paiement des taxes, frais et tarifs
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 66
FINAL VERSION 1.0 01/02/2015
5.5 Décision sur la répartition des frais
5.5.1 Cas nécessitant une décision sur les frais
Article 85 du RMC Règle 18, paragraphe 4, du REMC
Une décision sur les frais est rendue dans toutes les procédures d’opposition qui se sont poursuivies au-delà du stade du délai de réflexion – c’est-à-dire lorsque la phase contradictoire de la procédure a été ouverte – et qui ont été closes. Aucune décision sur les frais n’est rendue pour les oppositions qui ont été closes avant ou pendant le délai de réflexion.
Si une décision sur le fond est rendue, la décision sur la répartition des frais est rendue à la fin de la décision. Dans tous les autres cas où la division d’opposition clôture l’affaire, une décision sur les frais est rendue avec les lettres de clôture à moins que les parties n’aient informé l’Office d’un accord sur les frais.
5.5.2 Cas ne nécessitant pas une décision sur les frais
5.5.2.1 Accord sur les frais
Article 85, paragraphe 5, du RMC
Lorsque les parties ont mis fin à la procédure au moyen d’un règlement comprenant un accord sur les frais, l’Office ne rend pas de décision sur les frais. Il en va de même si l’Office reçoit une communication, signée par les deux parties, déclarant qu’elles ont conclu un accord sur les frais. Cette déclaration peut aussi être envoyée à l’Office dans deux lettres séparées. Cette information doit être reçue avant que l’Office n’ait confirmé la clôture de la procédure.
Si les parties règlent l’opposition par accord mutuel, elles sont libres d’inclure la question des frais. Si aucune indication n’est donnée quant au fait que les parties se sont entendues sur les frais, l’Office rendra immédiatement une décision sur les frais, conjointement avec la confirmation du retrait/de la limitation. Si les parties informent l’Office qu’elles sont parvenues à un accord sur les frais après le retrait/la limitation, la décision déjà rendue sur les frais ne sera pas réexaminée par l’Office. Il appartient aux parties de respecter l’accord et de ne pas «exécuter» la décision de l’Office sur les frais.
5.5.2.2 Information provenant de la partie qui obtiendra probablement gain de cause
Lorsque la partie qui pourrait prétendre au remboursement des débours en vertu des prescriptions générales décrites au paragraphe 5.5.3 ci-dessous informe l’Office qu'elle consent à ce que chacune des parties supporte ses propres frais, une décision sur les frais n’est pas nécessaire. L’Office s'abstient de rendre une décision sur les frais chaque fois que la partie qui obtiendra probablement gain de cause informe l’Office qu’elle consent au partage des frais, même si la partie qui succombe ne confirme pas cet accord. Les lettres les plus récentes provenant des deux parties doivent donc être soigneusement examinées avant de rendre une décision.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 67
FINAL VERSION 1.0 01/02/2015
Cependant, si la partie qui succombe adresse une telle demande à l’Office, elle sera simplement notifiée à l’autre partie, mais la décision sur les frais sera rendue d’office selon les règles habituelles.
5.5.3 Cas ordinaires de décisions sur les frais
Article 85, paragraphes 1, 2 et 3, du RMC Règle 94 du REMC
La règle générale est que la partie qui met fin à la procédure par le retrait (total ou partiel) de la demande de marque communautaire ou le retrait de l’opposition supporte les taxes exposées par l’autre partie, ainsi que tous les frais indispensables à la procédure qu’elle a encourus.
Si les deux parties succombent partiellement, une «répartition différente» des frais doit être décidée. En règle générale, l’équité exige que chaque partie supporte ses propres frais.
Une partie qui met un terme à la procédure est réputée y avoir renoncé. L’issue hypothétique de l'affaire au cas où une décision sur le fond aurait été nécessaire est totalement dénuée de pertinence.
Dans des cas ordinaires, le résultat est décrit ci-après:
le demandeur retire ou limite sa demande aux produits et services qui ne sont pas visés par l’opposition (retrait partiel). Dans ces cas, le demandeur supporte les frais;
l’opposant retire son opposition sans qu’il y ait eu limitation de la demande de marque communautaire eu égard aux produits et services contestés après le délai de réflexion. Dans ce cas, l’opposant supporte les frais;
limitation de la demande suivie du retrait de l’opposition (voir l’arrêt du 28 avril 2004, T-124/02, «VITATASTE», point 56). En principe, chaque partie supporte ses propres frais.
Une répartition des frais différente peut toutefois se justifier pour des raisons d’équité (par exemple lorsque la demande n’a été limitée que dans une très faible mesure).
L’Office ne tiendra pas compte des arguments avancés par les parties pour savoir qui doit payer.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 68
FINAL VERSION 1.0 01/02/2015
5.5.4 Non-lieu à statuer
5.5.4.1 Oppositions multiples
Rejet intégral de la demande de marque communautaire
En cas d’oppositions multiples formées à l’encontre de la même demande de marque communautaire et lorsqu'elles n’ont pas été suspendues par l’Office en application de la règle 21, paragraphe 2, du REMC, et que l’une d’elles aboutit au rejet de la demande de marque communautaire, l’Office n'entreprend aucune action vis-à-vis des autres oppositions avant l’expiration du délai de recours.
Lorsque le délai de recours expire sans qu’un recours ait été formé, l’Office clôture les autres procédures d’opposition par un non-lieu à statuer.
Dans ce cas, la division d’opposition règle librement les frais (article 84, paragraphe 4, du RMC). L'Office ne pouvant pas déterminer quelle est la partie ayant obtenu gain de cause et quelle est la partie qui succombe, le demandeur ne doit pas être tenu de supporter les frais de plusieurs autres opposants s’il succombe sur le fond. En conséquence, conformément au principe de l’équité, chaque partie est condamnée à supporter ses propres frais.
Rejet partiel de la demande de marque communautaire
Dans les cas d'oppositions multiples en partie dirigées contre les mêmes produits et services de la demande de marque communautaire, le résultat de la décision rendue peut avoir une incidence sur les autres oppositions.
Exemple
L’opposition A est dirigée contre les produits relevant de la classe 1 et l’opposition B contre les produits relevant des classes 1 et 2, désignés dans la demande de marque communautaire contestée. Une décision est d’abord rendue sur l’opposition A qui rejette la demande contestée pour ce qui concerne les produits relevant de la classe 1. Lorsque la décision est notifiée aux parties de l’opposition A, l’opposition B doit être suspendue jusqu’à ce que la décision sur l’opposition A soit définitive et contraignante. Une fois que la décision est définitive, l’opposant de l’opposition B est invité à informer l’Office s’il souhaite maintenir ou retirer son opposition, compte tenu de la modification de la liste des produits. Si l’opposant retire l’opposition, l’affaire est clôturée.
Dans ce cas, et si l’affaire est close après le début de la phase contradictoire de la procédure, l’Office rend une décision sur les frais conformément à l’article 85, paragraphe 2, du RMC. L’opposant a retiré son opposition à la suite du rejet partiel de la marque contestée. Dans cette mesure, l’opposant a obtenu gain de cause dans la procédure. Toutefois, le rejet partiel de la marque était plus limité que la portée de l’opposition. Dans cette mesure, le demandeur/titulaire a également obtenu gain de cause à l’issue de la procédure. Par conséquent, il est équitable que chaque partie supporte ses propres frais.
Si l’opposant maintient son opposition après le rejet partiel, la procédure se poursuit et, dans la décision finale sur le fond, la décision sur les frais est rendue conformément aux règles normales.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 69
FINAL VERSION 1.0 01/02/2015
5.5.4.2 Rejet d’une demande sur la base de motifs absolus ou de formalités
Une demande de marque communautaire peut être rejetée au cours d’une procédure d’opposition sur la base de motifs absolus de refus (sur la base d’observations de tiers conformément à l’article 40 du RMC, voire d’office si l'affaire est rouverte) ou de formalités (par exemple si un demandeur non établi dans l'Union européenne n’est plus représenté conformément à l'article 92, paragraphe 2, du RMC).
Dès que le rejet est définitif, la procédure d’opposition est close par l’envoi d'une notification.
Dans ce cas, la pratique concernant la répartition des frais est la suivante.
Si le rejet est devenu définitif après l’expiration du délai de réflexion, une décision sur les frais est rendue conformément à l’article 85, paragraphe 4, du RMC. Cet article dispose que, en cas de non-lieu à statuer, l’Office règle librement les frais. Chaque partie doit alors supporter ses propres frais.
Si la même situation survient après l’ouverture de la phase contradictoire, aucune décision sur les frais n’est rendue.
5.5.4.3 Jonction d’affaires
Règle 21 du REMC
Pour plus d’informations sur les jonctions, voir le paragraphe 6.4.3 Jonction d’affaires, ci-dessous.
Lorsqu’il est fait droit à l’opposition conjointe dans son intégralité, le demandeur supporte les taxes acquittées par chacun des opposants, mais une seule fois les frais de représentation. Si la demande de marque est admise à l’enregistrement, les frais de représentation du demandeur seront attribués une seule fois, mais chacun des opposants de l’opposition jointe devra les supporter. Une répartition différente des frais peut être décidée pour des raisons d'équité. Lorsque toutes les parties obtiennent partiellement gain de cause ou pour d’autres raisons d'équité, chaque partie supportera ses propres frais.
5.5.4.4 Signification de l'expression «supporter ses propres frais»
La notion de frais couvre la taxe d’opposition et les frais indispensables à la procédure, au sens de l'article 85, paragraphe 1, du RMC et de la règle 94, paragraphes 6 et 7, du REMC, qui sont, dans la plupart des cas, les frais d’honoraires d’un agent dans la limite des tarifs prévus par le règlement.
«Chaque partie supporte ses propres frais» signifie qu’aucune partie ne peut exiger quoi que ce soit de l’autre partie.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 70
FINAL VERSION 1.0 01/02/2015
5.6 Détermination des frais
Article 85, paragraphe 6, du RMC Règle 94 du REMC
Lorsque les frais se limitent aux frais de représentation et à la taxe d’opposition, la décision fixant le montant des frais figure dans la décision sur la répartition des frais (c'est-à-dire, généralement, dans la décision sur le fond).
Autrement dit, il ne sera, dans la grande majorité des cas, pas nécessaire de fixer le montant des frais de manière séparée.
Les seules exceptions sont les suivantes:
en cas de procédure orale; lorsque la détermination des frais a été omise par inadvertance dans la décision
principale.
5.6.1 Montants à rembourser/déterminer
Le montant à rembourser doit toujours être libellé en EUR, quelle que soit la devise dans laquelle la partie a payé son représentant.
Règle 94, paragraphe 6, du REMC
Si la partie qui obtient gain de cause est l’opposant, le montant de la taxe d’opposition de 350 EUR lui sera remboursé.
Règle 94, paragraphe 3, du REMC
S’agissant des frais de représentation, le montant est limité à 300 EUR. Ceci vaut tant pour l’opposant que pour le demandeur, à la condition qu’il soit représenté dans la procédure d’opposition par un mandataire au sens de l’article 93, paragraphe 1, du RMC, que les frais aient ou non été réellement encourus.
Si la partie ayant obtenu gain de cause a été représentée, à un certain stade de la procédure, par un représentant professionnel, mais n’est plus représentée au moment où la décision sur les frais est rendue, elle a également droit à une allocation des frais, indépendamment du moment où la représentation professionnelle a cessé dans la procédure.
Les frais de représentation des employés, même d’une autre entreprise liée économiquement, ne sont pas remboursables et ne seront pas déterminés. Ce point ne sera pas traité dans la décision sur les frais.
Pour plus d’informations sur la représentation, voir les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 71
FINAL VERSION 1.0 01/02/2015
Dans le cas d’une jonction en vertu de la règle 21, paragraphe 1, du REMC, où les oppositions aboutissent, l’Office établira les taxes pour les deux (ou l’ensemble des) oppositions (une par opposition), mais une seule taxe de représentation, auquel cas les frais à payer par le demandeur aux opposants serait de 1 000 EUR.
S’agissant des frais de la procédure d’opposition, une seule décision sur la répartition et la détermination des frais doit être rendue pour l’ensemble de la procédure d'opposition.
Lorsqu’une décision est annulée par les chambres de recours et déférée à la division d’opposition, cette dernière doit statuer de nouveau sur l’affaire et déterminer les frais en suivant la voie habituelle.
Si cette décision fait à nouveau l’objet d’un recours (et n’est pas renvoyée une seconde fois), la chambre rend une décision et fixe les frais, de la façon habituelle.
5.6.2 Procédure à suivre lorsque les frais ont été fixés dans la décision principale
Règle 94, paragraphe 3, du REMC
Lorsque la décision fixant le montant des frais figure dans la décision sur la répartition des frais, aucun état des frais ou preuve n’est nécessaire. L'Office sait que la taxe d’opposition a été acquittée, et s'il y a un représentant, le montant de 300 EUR doit être accordé, que les frais aient été effectivement encourus ou non. Les frais de représentation sont supposés s’être élevés à 300 EUR au moins.
Aucun échange de courrier avec les parties sur le montant à fixer n’est donc nécessaire. La fixation du montant est automatique.
5.6.3 Procédure à suivre en cas de nécessité d’une fixation séparée des frais
Les exigences formelles suivantes s’appliquent dans les rares cas où les frais doivent être fixés séparément (y compris lorsque la fixation a été omise par inadvertance ou lorsque la partie concernée doit se conformer aux exigences applicables):
recevabilité; preuves.
5.6.3.1 Recevabilité
Article 85, paragraphe 6, du RMC
La requête de fixation des frais n’est recevable que lorsqu’elle est présentée dans un délai de deux mois à partir de la date à laquelle la décision faisant l’objet de la demande de fixation des frais devient définitive.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 72
FINAL VERSION 1.0 01/02/2015
5.6.3.2 Preuves
Règle 94, paragraphe 3, du REMC
Pour l’octroi de la taxe d’opposition, aucune preuve n’est demandée.
Pour l’allocation des frais de représentation au tarif standard, l’assurance donnée par le représentant que les frais ont été exposés est suffisante. A fortiori, si un état des frais est présenté, il suffit qu'il mentionne au moins le montant remboursable et il est indifférent qu’il soit adressé à la partie à la procédure, étant donné que la présentation d’un état des frais vaut assurance.
Pour tous les autres frais (qui n'interviennent que très rarement), un état des frais et des preuves sont nécessaires, mais il suffit qu’ils établissent de manière crédible (plutôt qu’une preuve parfaitement détaillée) que les frais ont été exposés.
5.6.4 Réexamen de la répartition des frais
Article 85, paragraphe 6, du RMC Règle 94, paragraphe 4, du REMC
Lorsque l’une des parties conteste les frais fixés, elle peut demander la révision du montant. La requête doit être motivée et présentée à l’Office dans un délai d’un mois à compter de la notification de la répartition des frais. La requête n'est réputée formée qu’après paiement de la taxe de réexamen (100 EUR)
Aucun frais n’est remboursable dans le cadre de la procédure de réexamen (voir la décision du 16 décembre 2004, R 0503/2001-4, «BIOLACT/BIO»).
6 Questions procédurales
6.1 Rectification des erreurs
Article 43, paragraphe 2, du RMC
6.1.1 Rectification des erreurs figurant dans l’acte d'opposition
Les règlements ne contiennent aucune disposition spéciale relative à la rectification des erreurs figurant dans l’acte d'opposition. En appliquant par analogie l’article 44, paragraphe 2, du RMC, des erreurs manifestes figurant dans l’acte d'opposition peuvent être rectifiées.
L’Office donne à l’«erreur manifeste» en rapport avec l’article 44, paragraphe 2, du RMC et la règle 53 du REMC la même définition que celle reprise sous le point B.16 des déclarations conjointes du Conseil et de la Commission, telles qu’elles figurent dans le procès-verbal de la réunion du Conseil au cours de laquelle le RMC a été adopté: «[...] par «erreurs manifestes» il y a lieu d'entendre des erreurs dont la rectification s’impose à l’évidence, en ce sens qu’aucun texte autre que celui résultant de la rectification n’a pu être envisagé».
Questions de procédures
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Par exemple, si les renseignements relatifs à l’opposant figurent là où devraient figurer les renseignements relatifs au représentant, cela peut être considéré comme une erreur manifeste.
6.1.2 Rectification des erreurs et des fautes figurant dans les publications
Règle 14 du REMC
Si une demande publiée comporte une erreur ou une faute imputable à l’Office, ce dernier rectifie l’erreur ou la faute d’office ou à la requête du demandeur.
Les rectifications effectuées en vertu de cette règle doivent être publiées. Si la rectification concerne des erreurs qui n’ont pas d’incidence sur l’opposition, la publication a lieu après l’enregistrement de la marque communautaire. Si la rectification donne lieu à une extension de la liste des produits ou services ou concerne la représentation de la marque, un nouveau délai d'opposition est ouvert, mais uniquement pour les parties concernées.
En cas d'oppositions formées après la «première» publication de la demande de marque communautaire, les opposants doivent être informés de la republication. Les opposants ayant formé opposition à l’encontre de la demande de la «première» publication ne doivent pas former une nouvelle opposition. La procédure est suspendue jusqu’à l'expiration du délai d'opposition afférent à la «deuxième» publication.
Si un «opposant à la première publication» souhaite retirer son opposition à la suite de la deuxième publication, la procédure est close et la taxe d’opposition est remboursée (voir le paragraphe 5.4.1.2 ci-dessus).
6.2 Délais
Règle 71, paragraphe 1, Règle 79, Règle 80, paragraphe 3, Règle 82, paragraphe 3, et Règle 96, paragraphe 1, du REMC
Les délais sont essentiels à l’exécution correcte et raisonnablement rapide des procédures. Il s’agit d’une question de politique publique et il est indispensable de s’y tenir rigoureusement afin de garantir la clarté et la sécurité juridique.
Pour des informations générales sur les délais et la poursuite de la procédure, voir les Directives, partie A, Dispositions générales, section 1, Moyens de communication, délais.
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6.2.1 Prorogation des délais dans la procédure d’opposition
6.2.1.1 Délais prorogeables et non prorogeables
Règle 71, paragraphe 1, du REMC
Un délai ne peut être prorogé si sa durée est fixée par le règlement. Les délais non prorogeables incluent:
Article 41, paragraphe 1, du RMC
le délai d’opposition de trois mois pour former opposition;
Article 41, paragraphe 3, du RMC
le délai de trois mois pour acquitter la taxe d’opposition;
Article 8, paragraphe 3, point b), du RTMC
le délai d’un mois pour acquitter la surtaxe lorsque le paiement est effectué hors délai et qu’aucune preuve n'est apportée que l’instruction de paiement a été donnée au plus tard 10 jours avant l’expiration du délai de paiement;
Règle 17, paragraphe 4, du REMC
le délai de deux mois pour remédier aux irrégularités conformément à la règle 17, paragraphe 4, du REMC.
Règle 71, paragraphe 1, du REMC
Les délais prorogeables sont les délais qui sont impartis par l’Office, par exemple le délai imparti pour présenter des observations en réponse à l’acte d’opposition.
6.2.1.2 Demande déposée dans les délais
Note: les prorogations du délai de réflexion relèvent d’un régime particulier. Pour plus de détails, voir ci-dessus le paragraphe 3.2 Prolongation du délai de réflexion.
Pour qu'une prorogation de délai soit accordée, la demande doit satisfaire aux conditions suivantes:
le délai doit être prorogeable;
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la prorogation doit être demandée par la partie concernée ou conjointement par les deux parties;
la demande doit être signée; le délai initial ne doit pas déjà avoir expiré; le régime linguistique doit être respecté: si la demande n’est pas faite dans la
langue de la procédure, une traduction doit être produite dans le mois suivant le dépôt de la demande, faute de quoi la demande ne sera pas prise en considération.
Une prorogation n’est possible que si la demande correspondante est déposée et reçue avant l’expiration du délai initial (voir ordonnance du 30 janvier 2014, C-324/13 P, «Patricia Rocha»). Si une demande de prorogation du délai parvient à l’Office après l’expiration du délai, elle est rejetée.
Toute première demande de prorogation reçue à temps se verra toujours accorder un délai de deux mois (ou moins si la demande est en ce sens), indépendamment de l’explication donnée par la partie qui la demande. Toutefois, toute demande ultérieure de prorogation de ce même délai sera rejetée, à moins que la partie qui en fait la demande n’explique et ne justifie de façon adéquate les circonstances exceptionnelles qui l’ont empêchée de respecter le délai initial ainsi que la première prorogation et la raison pour laquelle une nouvelle prorogation est nécessaire. Des explications générales ou vagues ne justifieront pas une seconde prorogation. La demande doit toujours être accompagnée d’éléments de preuve et/ou de documents à l’appui.
Par ailleurs, les circonstances qui n’échappent pas au contrôle de la partie concernée ne sont pas des «circonstances exceptionnelles». Par exemple, des discussions de dernière minute avec l’autre partie ne sont pas des «circonstances exceptionnelles». Elles sont soumises au contrôle des parties.
La demande doit être déposée par la partie concernée par le délai. Par exemple, si le demandeur doit déposer des observations en réponse à l’acte d’opposition, seul le demandeur peut demander une prorogation.
Pour plus d’information sur les prorogations de délais, voir les Directives, partie A, Dispositions générales, section 1, Moyens de communication, Délais, paragraphe 3.1.3 Prorogation des délais.
6.2.1.3 Prorogation d’un délai ex officio par l’Office
L’Office peut proroger un délai ex officio lorsque des raisons particulières le justifient. Par exemple, une demande de prorogation de délai non motivée parvient à l’Office 20 jours avant l’expiration du délai imparti pour déposer des observations, mais elle n’est pas traitée par l'Office avant l’expiration du délai. Le refus de la demande après expiration du délai portant gravement préjudice aux intérêts de la partie qui a demandé la prorogation, l’Office proroge le délai du nombre de jours restants au moment où la demande a été envoyée, en l'occurrence 20 jours. Cette pratique s’appuie sur le principe de bonne administration.
Lorsqu’une demande de prolongation d’un délai prorogeable a été déposée et reçue avant l’expiration dudit délai (voir ordonnance du 30 janvier 2014, C-324/16 P, «Patricia Rocha», la partie concernée se voit accorder au moins un jour, même si la demande est reçue le dernier jour de ce délai.
Questions de procédures
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6.2.1.4 Signature
Si une des demandes n’est pas signée, il y a lieu de vérifier d’abord si une demande signée est parvenue ultérieurement, mais toujours dans le délai imparti. Il arrive en effet que les parties oublient de signer et, s’en rendant compte après l’envoi, signent la demande et la renvoient.
Une demande conjointe doit être signée par les deux parties et parvenir à l’Office pendant le délai de réflexion. Une demande signée par l’un des représentants et assurant que l’autre partie consent à la prorogation du délai de réflexion est irrecevable.
6.3 Suspension
Règle 20, paragraphe 7, et Règle 21, paragraphe 2, du REMC
L’Office peut suspendre une procédure d’opposition ex officio à la demande des deux parties ou de l’une d’elles.
Conformément à la règle 20, paragraphe 7, l’Office «peut» suspendre la procédure d’opposition. Par conséquent, la décision sur la suspension est toujours prise à la discrétion de l’Office.
6.3.1 Suspension à la demande des deux parties
Si la suspension est demandée par les deux parties après l’expiration du délai de réflexion, celles-ci ne sont pas tenues de fournir un motif spécifique et la suspension est toujours accordée. Dans ce cas, et indépendamment du délai demandé par les parties, la première suspension sera fixée pour une période d’un an, étant entendu que les parties ont la possibilité de se retirer. La procédure de retrait est identique à celle de la prorogation du délai de réflexion: si l’une des parties se retire, la suspension prend fin 14 jours après en avoir informé les parties. La procédure reprend le jour suivant et la partie dont le délai courait au moment de la suspension se voit accorder deux mois de prolongation pour déposer ses observations. Il n’est pas possible de se retirer pendant le dernier mois de la période suspendue et toute demande en ce sens sera rejetée.
Une demande conjointe de suspension motivée par des négociations en cours reçue pendant le délai de réflexion ne pourra être acceptée, étant donné que celui-ci a précisément pour but de fixer un délai de négociation avant que ne débute la phase contradictoire.
Les parties peuvent, en principe, demander conjointement une prolongation de la suspension pour cause de négociations. Il sera accédé automatiquement à cette demande par l’octroi d’une nouvelle période d’un an. Après trois années de suspension, les parties sont toutefois tenues d’expliquer les raisons pour lesquelles les négociations ne sont pas encore terminées. Afin d’éviter tout abus possible, l’Office peut utiliser son pouvoir discrétionnaire et décider de ne pas continuer à suspendre la procédure.
Questions de procédures
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Les demandes présentées unilatéralement seront en principe rejetées. Les négociations entre parties sont monnaie courante dans les procédures d’opposition, mais il se peut que l’une des parties ne soit disposée à négocier que si cela n’engendre aucun retard dans la procédure. Telle est la raison pour laquelle les négociations ne confèrent à aucune des parties le droit d’ignorer un délai en cours ou d’obtenir une prolongation de celui-ci ou une suspension de la procédure. De telles demandes sont, par conséquent, rejetées.
6.3.2 Suspensions ex officio par l’Office ou à la demande de l’une des parties
L’Office peut suspendre la procédure d’opposition à la demande de l’une des parties dans un certain nombre de circonstances.
Le REMC envisage deux situations spécifiques de suspension de la procédure:
l’opposition est fondée sur une demande d’enregistrement de marque; l’opposition est fondée sur une demande d’enregistrement d'une indication
géographique ou d'une appellation d'origine.
En outre, selon le REMC, la procédure peut être suspendue lorsque les circonstances justifient, par exemple dans les situations suivantes:
le droit antérieur est menacé (sous opposition ou annulation); des tiers ont formulé des observations qui suscitent des doutes sérieux quant à la
possibilité d’enregistrement de la demande de marque communautaire (voir page 51);
il existe des erreurs dans la publication de la demande contestée rendant nécessaire une republication de la marque; un transfert est en cours et vise des demandes ou des enregistrements antérieurs de marques communautaires ou de demandes de marques communautaires contestées: le représentant se retire.
Il convient de souligner qu‘aucune des situations susmentionnées n’entraîne une obligation de suspendre la procédure. Cette décision est laissée à la libre appréciation de l’Office.
6.3.2.1 Explication du principe de base, moment de la suspension
Règle 20, paragraphe 7, du REMC
En principe, les oppositions fondées sur des demandes ou sur des droits antérieurs menacés ne sont pas suspendues ex officio au tout début de la procédure. Il est présumé que, dans la plupart des cas, les demandes sont prêtes à être enregistrées et que les oppositions ou actions en annulation contre des droits antérieurs sont susceptibles de se résoudre en cours de procédure.
Dans pareilles situations, la procédure d’opposition se poursuit jusqu’au moment où une décision peut être rendue. Il y a alors lieu d’examiner si le droit antérieur en question a le potentiel, à première vue, d’influencer le résultat de l’opposition. S’il est établi que l’opposition aboutira ou sera de toute façon rejetée, indépendamment du droit antérieur menacé, la procédure ne doit pas être suspendue. En revanche, s’il est
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indispensable de tenir compte du droit antérieur menacé dans la décision concernant l’opposition, la procédure sera suspendue. Avant de clore la procédure, une vérification du statut de la marque antérieure doit avoir lieu ou, dans le cas d’une demande nationale ou d’une marque nationale antérieure menacée, l’opposant doit être invité à fournir des renseignements sur l’état de la demande ou de l’enregistrement.
L’Office peut toutefois suspendre la procédure si la suspension est demandée par l’une des parties et si le droit antérieur est une demande ou est menacé. Si le droit antérieur est national, les parties doivent fournir la preuve que la demande rencontre des obstacles. Dans ce cas, le résultat de la procédure entamée contre la marque antérieure doit exercer une certaine incidence sur l’opposition. L’issue probable de l’opposition sera alors prise en compte avant de statuer sur la suspension. Tel est le cas notamment lorsque la décision finale sur l’opposition ne peut être émise sans tenir compte de la demande antérieure ou de l’enregistrement antérieur. Dans une telle situation, les circonstances de l’espèce ne permettent pas à l’Office de dire que l’opposition sera en tout état de cause rejetée (par exemple parce qu’il n’existe pas de risque de confusion) ou accueillie (parce qu’il existe d'autres droits antérieurs suffisants pour rejeter la demande de marque communautaire contestée pour tous les produits et services contestés).
Lorsqu’une opposition est fondée sur une demande d’enregistrement, il peut être approprié de suspendre la procédure d’opposition en application de la règle 20, paragraphe 7, du REMC, dans l’attente de l’enregistrement de la marque antérieure de l’opposant. Cependant, si une opposition est vouée au rejet, que ce soit pour des motifs formels ou matériels, une suspension serait dénuée de sens et ne ferait que prolonger inutilement la procédure.
Lorsqu’il n’y a pas d’autres droits antérieurs à prendre en considération (parce qu’il n’y en a pas ou parce que leur existence n’a pas été prouvée) ou lorsque la demande ou l’enregistrement doit néanmoins être pris en considération (parce que les autres droits antérieurs n’obtiennent pas gain de cause), il y a lieu, pour statuer sur la suspension, d'évaluer la probabilité qu’il soit fait droit à l’opposition sur la base de la demande. La procédure est suspendue uniquement lorsqu’il s’avère que la demande antérieure, si elle est enregistrée, conduira au rejet total ou partiel de la demande de marque communautaire contestée.
6.3.2.2 Demandes antérieures ou enregistrements antérieurs de marque communautaire
L’opposition est fondée sur une demande, mais elle n’est pas suspendue parce qu’il existe un autre droit antérieur (une marque enregistrée) sur la base duquel la demande contestée peut être rejetée. Si l’opposant ne produit pas la preuve de l’existence de cet autre droit antérieur, la demande antérieure devient fondamentale aux fins de la décision. Si, sur la base des pièces disponibles, il apparaît que seule la demande antérieure ou seul l’enregistrement antérieur rencontre des obstacles, l’opposition est suspendue.
6.3.2.3 Marques nationales/internationales antérieures (demandes ou enregistrements/droits)
La question de la suspension doit être soulevée par les parties (en général, le demandeur). Dans ce cas, la partie doit produire la preuve que la marque antérieure
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(demande ou enregistrement/droit) rencontre des obstacles. Cette preuve doit être officielle, préciser la procédure donnant lieu à la suspension et indiquer la réparation souhaitée. La preuve doit en particulier permettre de déterminer clairement les conséquences possibles pour le droit antérieur sur lequel l’opposition est fondée. La partie peut, le cas échéant, être invitée à fournir une traduction de ladite preuve.
En présence d’une telle demande, l’Office appréciera si, en fonction des circonstances du cas d’espèce, il est souhaitable de suspendre la procédure.
Si la question n’est pas soulevée, c’est le principe général qui s’applique: l’Office décide seul de la suspension si la procédure arrive à la fin de la phase contradictoire, alors qu’aucune information ne confirme que la demande a abouti à un enregistrement ou que les procédures nationales contre la marque antérieure ont abouti. Dans ce cas, il convient de demander à l’opposant d’informer l’Office sur l’état de sa demande antérieure ou de son enregistrement antérieur.
6.3.2.4 Exemples
Voici quelques exemples où, en accord avec la pratique générale exposée ci-dessus, la situation n’exige apparemment pas une suspension de la procédure, mais où cette suspension peut néanmoins être décidée si l’Office le juge approprié.
L’opposition est fondée sur une marque française et une demande de marque communautaire qui ne posent aucun problème. La marque et la demande portent sur le même signe et désignent les mêmes produits, qui sont similaires au point de pouvoir être confondus avec la marque contestée. L’opposition peut donc être examinée sur la base de la marque française uniquement. Si le risque de confusion ne peut se produire que dans des États membres autres que la France, la décision sera plus solide si elle est basée sur la demande de marque communautaire et, dès lors, il convient de suspendre la procédure pour attendre le résultat de la demande de marque communautaire.
L’existence de la demande antérieure ne modifie en rien l’issue, mais le demandeur demande une suspension. Si le droit antérieur est une demande de marque communautaire et si l’Office considère qu’elle pose problème ou, dans le cas d'une demande nationale, si le demandeur apporte la preuve que la demande de l’opposant pose problème, la procédure peut être suspendue.
Les exemples suivants relèvent de la catégorie de marques nationales antérieures menacées:
le demandeur (ou un tiers) a présenté une demande ou une demande reconventionnelle en déchéance ou en nullité de l’enregistrement antérieur;
le demandeur (ou un tiers) a présenté une demande ou une demande reconventionnelle visant le transfert du droit antérieur à son nom.
Questions de procédures
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6.3.3 Oppositions multiples
Règle 21, paragraphe 2, du REMC
Hormis dans les cas exceptionnels où une marque antérieure entraîne clairement le rejet de la marque contestée, y compris tous les produits et services, l’Office ne suspendra pas les autres procédures jusqu’à ce qu’une décision définitive soit rendue.
6.3.3.1 Après le rejet de la demande de marque communautaire
Lorsque la demande de marque communautaire est rejetée ultérieurement en raison d’une opposition «active», les oppositions suspendues sont réputées éteintes dès que la décision est définitive. Si la décision est définitive, les parties aux autres procédures en sont informées, les oppositions suspendues à un stade précoce (avant le délai de réflexion) sont closes et 50 % de la taxe d’opposition sont remboursés à chaque opposant, conformément à la règle 21, paragraphe 4, du REMC.
Si un recours a été formé contre la décision, les oppositions restent suspendues. Si la chambre de recours annule la décision, les autres procédures sont reprises immédiatement, sans attendre que cette décision devienne définitive.
6.3.4 Aspects procéduraux
Les lettres communiquant une suspension de la procédure doivent toujours indiquer la date de prise d’effet de la suspension, qui correspond généralement à la date à laquelle une demande valable a été présentée.
6.3.4.1 Suivi des dossiers suspendus
Lorsque la procédure est suspendue pour une durée indéterminée, l’Office contrôlera le statut de l’opposition tous les six mois.
Lorsque le droit antérieur est une demande d’enregistrement national ou un enregistrement national/international rencontrant une difficulté, la reprise de la procédure dépend toujours de l’initiative des parties, lesquelles sont censées informer l’Office des changements survenus dans le statut de la demande ou de l’enregistrement et fournir des preuves à cet effet. Quoi qu’il en soit, l’Office enverra tous les six mois un rappel dans lequel les parties seront invitées à soumettre des preuves.
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6.3.4.2 Reprise de la procédure
Dans tous les cas, les parties seront informées de la reprise de la procédure et de tout délai en cours, le cas échéant. Tout délai en cours au moment de la suspension sera prorogé de deux mois complets, à l’exception du délai de réflexion qui ne peut jamais excéder 24 mois, conformément à la règle 18, paragraphe 1, du REMC.
La procédure est reprise dès qu’une décision définitive a été rendue dans la procédure nationale ou dès qu’une demande antérieure a été enregistrée ou rejetée. Si la décision rendue dans le cadre de la procédure nationale déclare la déchéance ou la nullité ou si elle conduit d’une manière ou d’une autre à l’extinction du droit ou au transfert du droit antérieur de l’opposant, l’opposition est réputée non fondée dans la mesure où elle se fonde sur ce droit antérieur. Si tous les droits antérieurs sur lesquels l’opposition est fondée cessent d’exister, l’opposant aura la possibilité de retirer son opposition. S’il ne la retire pas, l’Office rendra une décision rejetant l’opposition.
6.3.4.2 Calcul des délais
Si la suspension est décidée pour une durée déterminée, les lettres doivent également indiquer la date de reprise de la procédure ainsi que la suite des événements. Lorsque la suspension est demandée par les deux parties en raison de négociations en cours, le délai sera toujours d’un an, indépendamment du délai demandé par les parties.
Si, le 30 janvier 2015, une demande de suspension de deux mois, signée par les deux parties et présentée le 15 janvier 2015 (cinq jours avant l’expiration du délai imparti à l’opposant pour compléter son dossier – le 20 janvier 2015), est traitée, le résultat est le suivant:
l’Office a suspendu la procédure d’opposition à la demande des deux parties;
cette suspension prend effet à dater du 15 janvier 2015 (date à laquelle la demande de suspension a été reçue à l’Office) et expire le 15 janvier 2016;
la procédure sera reprise le 16 janvier 2016 (un an plus tard, indépendamment du délai demandé par les parties), sans autre notification de la part de l’Office;
le délai imparti à l’opposant expire désormais le 15 mars 2016 (deux mois complets pour permettre à l’opposant de compléter le dossier);
le délai imparti au demandeur expire désormais le 15 mai 2016 (deux mois complets après l’expiration du délai imparti à l’opposant).
6.4 Oppositions multiples
Règle 21 du REMC
Il y a oppositions multiples lorsque différentes oppositions sont formées à l’encontre de la même demande de marque communautaire.
Questions de procédures
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En cas d’oppositions multiples, certains éléments supplémentaires doivent être pris en considération.
Premièrement, sauf retard important dans l’examen de la recevabilité de l’une des oppositions, la pratique consiste à notifier la recevabilité de toutes les oppositions en même temps au demandeur. Deuxièmement, des oppositions multiples peuvent entraîner la suspension de certaines d’entre elles pour des raisons d’économie de procédure. Troisièmement, une limitation effectuée par le demandeur au cours de l’une des procédures peut avoir une incidence sur les autres oppositions. En outre, il peut s'avérer pratique de rendre les décisions dans un certain ordre.
Enfin, dans certaines circonstances, des oppositions multiples peuvent être jointes et traitées en une seule procédure.
6.4.1 Oppositions multiples et limitations
En cas d’oppositions multiples, lorsque le demandeur limite la liste des produits et services dans l’une des procédures d’opposition, tous les autres opposants doivent en être informés au moyen de la lettre appropriée, dans la mesure où la limitation concerne des produits ou des services contestés dans les autres oppositions.
Par contre, s’il n’existe aucun lien entre les produits et services visés par la limitation et les produits et services contestés, il n’y a pas lieu d’en informer l’opposant.
Par exemple, quatre oppositions sont formées contre la même demande de marque communautaire, pour des produits compris dans les classes 3, 14, 18 et 25. Les oppositions sont dirigées contre les classes suivantes:
Opposition Portée
N° 1 Classe 3
N° 2 Classe 25
N° 3 Classes 18 et 25
N° 4 Classes 14 et 25
Le demandeur procède à une limitation dans la procédure d’opposition n° 2 en supprimant les indications vêtements et chapellerie. Outre les lettres appropriées concernant l’opposition n° 2, les lettres appropriées doivent également être envoyées pour ce qui concerne les oppositions n° 3 et n° 4. La limitation ne portant pas sur les produits contestés dans l’opposition n° 1, aucune action n'est nécessaire au regard de cette opposition.
6.4.2 Oppositions multiples et décisions
Lorsqu’une opposition atteint le stade de la décision, il est important de prendre en considération les éventuelles oppositions multiples en attente, dirigées contre la même demande de marque communautaire. Avant qu’il ne puisse être statué sur l’opposition, il convient d’analyser le stade de procédure des oppositions multiples et, en fonction des situations, une décision pourra être prise ou l’opposition devra être suspendue. Le principe général à appliquer est que les produits et services contestés ne doivent pas
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 83
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être rejetés plus d’une fois à différents moments. Les trois situations qui peuvent se présenter sont décrites ci-après.
1. Toutes les oppositions dirigées contre la même demande de marque communautaire sont prêtes à faire l’objet d’une décision en même temps.
Bien que le choix de cet ordre soit laissé à la discrétion de l’examinateur, il convient de tenir compte des éléments suivants.
Si toutes les oppositions vont être rejetées, les décisions peuvent être rendues dans n’importe quel ordre puisque le rejet des oppositions n’a aucune incidence sur la demande de marque communautaire. Même dans l'hypothèse où un recours serait formé contre l’une des décisions avant que les autres décisions ne soient rendues, il semble préférable de ne pas opter pour une suspension étant donné que la procédure devant la chambre de recours peut prendre un certain temps.
S’il va être fait droit à toutes les oppositions, il y a lieu de rendre en premier lieu la décision sur l’opposition éliminant le plus de produits et services de la demande de marque communautaire (opposition la plus étendue); une fois définitive, cette décision sera suivie des décisions sur l’opposition visant des produits ou des services différents de ceux contestés dans la première. Dans l’exemple mentionné ci-dessus, au paragraphe 6.4.1, la décision doit d’abord être rendue sur l’opposition n° 3 ou n° 4, puis sur l’opposition n° 1.
Hypothèse: la première décision est rendue sur l'opposition n° 4 et la demande de marque communautaire est rejetée pour les produits compris dans les classes 14 et 25. Dans ce cas, l’opposition n° 2 doit être suspendue.
Si le délai de recours a expiré et qu’aucun recours n’est formé, l’opposition n° 2 est réputée éteinte puisque désormais sans objet. Les parties en sont informées et l’opposition est close. L’affaire est considérée comme un non-lieu à statuer au sens de l’article 85, paragraphe 4, du RMC. Par conséquent, l’Office règle librement les frais. Si les parties informent l’Office d’un accord entre elles à ce sujet, l’Office ne rend pas de décision sur les frais. Généralement, la décision de l’Office est que chaque partie supporte ses propres frais.
2. Une seule opposition est prête à faire l’objet d’une décision et les autres oppositions sont encore dans la phase contradictoire de la procédure
Si l’opposition doit être rejetée, une décision peut être prise sans exercer d’autre incidence sur les multiples oppositions en attente, étant donné que le rejet n’a aucune incidence sur la demande de marque communautaire.
S’il est fait droit à l’opposition et que la décision rejette la demande de marque communautaire dans son intégralité, les multiples oppositions en attente doivent être suspendues jusqu’à ce que la décision soit définitive. Si le délai de recours a expiré et qu’aucun recours n’est formé, les oppositions multiples sont éteintes puisque désormais sans objet. Les parties en sont informées et l’opposition est close. L’affaire est considérée comme un non-lieu à statuer au sens de l’article 85, paragraphe 4, du RMC. Par conséquent, l’Office règle librement les frais. Si les parties informent l’Office d'un accord entre elles à ce sujet, aucune décision sur les frais n’est rendue. Généralement, la décision de l’Office est que chaque partie supporte ses propres frais.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 84
FINAL VERSION 1.0 01/02/2015
Il en va de même si la décision sur l’opposition rejette une partie des produits et services de la demande de marque communautaire contestée mais tous les produits et services contre lesquels les oppositions multiples sont dirigées.
Toutefois, les oppositions multiples doivent être suspendues si la décision sur l’opposition rejette une partie des produits et services de la demande de marque communautaire contestée mais uniquement une partie des produits et services contre lesquels les oppositions multiples sont dirigées. La suspension durera jusqu’à ce que la décision devienne définitive. Le cas échéant, les opposants des oppositions multiples seront invités à informer l’Office s’ils souhaitent maintenir ou retirer l’opposition. En cas de retrait de l’opposition, la procédure est close et les deux parties en sont informées. Si la procédure est close après l’expiration du délai de réflexion, l’Office rendra une décision sur les frais conformément à l’article 85, paragraphe 2, du RMC, en vertu de laquelle chaque partie supporte ses propres frais. Si les parties informent l’Office d'un accord entre elles à ce sujet avant la clôture de la procédure, aucune décision sur les frais n’est rendue.
3. Deux ou plusieurs oppositions sont prêtes à faire l’objet d’une décision et les autres oppositions sont encore dans la phase contradictoire de la procédure
Il peut arriver que certaines des oppositions soient prêtes à faire l’objet d’une décision et que certaines soient encore à différents stades de la phase contradictoire. Dans ce cas, les principes décrits sous 1) et 2) s’appliquent conjointement. En fonction de l’issue des décisions et de la portée des affaires en attente, si une décision peut être prise dans les deux oppositions et si les oppositions multiples doivent être suspendues.
6.4.3 Jonction d’affaires
Règle 21, paragraphe 1, du REMC
La règle 21, paragraphe 1, du REMC, autorise l’Office à traiter des oppositions multiples en une seule procédure. Lorsqu’il est décidé de joindre les oppositions, les parties en sont informées.
Des oppositions peuvent être jointes à la demande de l’une des parties si elles sont dirigées contre la même demande de marque communautaire. Il est d'autant plus probable que l’Office les joindra si elles ont, en outre, été formées par le même opposant ou s’il existe un lien économique entre les opposants, par exemple une société mère et une filiale.
Lorsqu’il est décidé de joindre les oppositions, il convient de vérifier si les opposants ont le même représentant. Dans la négative, les opposants sont invités à désigner un seul représentant. Par ailleurs, les droits antérieurs doivent être identiques ou fortement similaires. Si les représentants ne répondent pas à l’invitation de l’Office ou ne souhaitent pas désigner un représentant unique, les oppositions sont disjointes et traitées séparément.
Si, à un stade quelconque de la procédure, ces conditions ne sont plus remplies, par exemple si le seul et unique droit antérieur de l’une des oppositions jointes est transféré à un tiers, les procédures seront disjointes.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 85
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Sauf disjonction des procédures avant de rendre la décision, une seule décision est rendue.
6.5 Changement des parties (transfert, changement de nom, changement de représentant, interruption de la procédure)
6.5.1 Transfert et procédure d’opposition
6.5.1.1 Introduction et principe de base
Article 17 du RMC
Le transfert ou la cession d’un droit antérieur comporte un changement de propriété de ce droit. Pour plus d’informations, voir les Directives, partie E, Inscriptions au Registre, Section 3, Marques communautaires en tant qu’objets de propriété, chapitre 1, Transfert.
Le principe de base est que le nouveau titulaire se substitue à l’ancien dans la procédure. La pratique de l’Office en matière de transferts est décrite aux paragraphes 6.5.1.2 (l’enregistrement antérieur est un enregistrement de marque communautaire), 6.5.1.3 (l’enregistrement antérieur est un enregistrement national), 6.5.1.4 (les enregistrements antérieurs sont une combinaison d’enregistrements de marques communautaires et d’enregistrements nationaux) et 6.5.1.5 (transfert d’une demande de marque communautaire contestée au cours de la procédure d’opposition).
Un transfert peut avoir lieu sous plusieurs formes. Il peut s’agir d’une simple cession d’une marque antérieure de A à B, d’une société C rachetée (marques comprises) par une société D, d’une fusion des sociétés E et F en une société G (succession universelle), ou d’une succession légale (après le décès du titulaire, les héritiers deviennent les nouveaux titulaires). Cette liste n’est pas exhaustive.
Lorsqu’un transfert est effectué au cours d'une procédure d’opposition, plusieurs situations peuvent se présenter. Alors que dans le cas de demandes ou d’enregistrements antérieurs de marque communautaire sur lesquels l’opposition est fondée, le nouveau titulaire ne peut devenir partie à la procédure (ou présenter des observations) qu’au moment où la demande d’enregistrement du transfert parvient à l’Office, il suffit, pour les demandes ou enregistrements antérieurs de marques nationales, que le nouveau titulaire apporte la preuve du transfert.
6.5.1.2 Transfert d'une marque communautaire antérieure
Article 17, paragraphes 6 et 7, du RMC
En ce qui concerne les (demandes de) marques communautaires antérieures, conformément à l’article 17, paragraphe 6, du RMC, tant que le transfert n’a pas été inscrit au registre, l’ayant droit ne peut pas se prévaloir des droits découlant de l’enregistrement de la (demande de) marque communautaire. Toutefois, au cours du délai entre la date de réception de la demande d’enregistrement du transfert et la date d’enregistrement du transfert, le nouveau titulaire peut déjà faire des déclarations à l’Office afin de respecter les délais.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 86
FINAL VERSION 1.0 01/02/2015
Opposition fondée sur une seule marque communautaire
Lorsqu’une opposition est fondée sur une seule marque communautaire antérieure et que cette marque communautaire est/a été transférée au cours de la procédure d’opposition, le nouveau titulaire devient le nouvel opposant. Le nouveau titulaire se substitue à l’ancien titulaire.
À cet effet, l’ancien ou le nouveau titulaire doit informer l’Office du transfert de la marque communautaire sur laquelle est fondée l’opposition et déposer une demande d’enregistrement du transfert. Comme précisé ci-dessus, dès que la demande parvient à l’Office, le nouveau titulaire peut déjà faire des déclarations. Cependant, il ne devient partie à la procédure que lorsque le transfert est enregistré.
Dans la pratique, dès que l’Office est informé de la réception d'une demande d’enregistrement du transfert, la procédure peut se poursuivre avec le nouveau titulaire. Néanmoins, le transfert doit être enregistré avant qu’une décision sur l’opposition ne soit rendue. Si l’examen de l’opposition est terminé, mais que le transfert n’a pas été enregistré, l’opposition est suspendue.
Si le nouveau titulaire informe l’Office qu’il ne souhaite pas poursuivre la procédure, l’opposition est réputée retirée.
Transfert partiel de la seule marque communautaire sur laquelle l’opposition est fondée
En cas de transfert partiel, une partie de la marque communautaire antérieure reste la propriété du titulaire initial et une autre partie est détenue par un nouveau titulaire. Les principes appliqués dans le cas d’un transfert d’un ou de plusieurs enregistrements de marque communautaire sur lesquels l’opposition est fondée sont appliqués de manière identique dans le cas de transferts partiels. Ces principes sont décrits au paragraphe qui suit immédiatement.
Opposition fondée sur plus d’une marque communautaire antérieure
Lorsqu’une opposition se fonde sur plusieurs marques communautaires antérieures et que ces marques sont/ont été transférées au même nouveau titulaire au cours de la procédure d’opposition, les principes décrits ci-dessus s’appliquent. Il en va autrement lorsqu’une seule des marques communautaires antérieures est/a été transférée. Dans ce cas, le nouveau titulaire peut également devenir opposant, de sorte qu’ils sont deux. L’opposition est alors maintenue en une seule. En règle générale, les deux opposants ont un seul représentant.
Si l’un des opposants souhaite se retirer, il doit être accédé à sa demande, que l’autre opposant souhaite ou non poursuivre la procédure. Si la procédure est poursuivie, elle est fondée uniquement sur les droits de l’opposant qui ne s’est pas retiré. En outre, aucune décision séparée sur les frais ne sera rendue.
Les nouveaux opposants sont traités en tant que «co-opposants», ce qui signifie que l’Office continue de traiter l’affaire exactement comme auparavant, c’est-à-dire, comme une seule opposition, bien qu’elle compte plusieurs opposants. En outre, l’Office considère le représentant initial comme étant le représentant «commun» de tous les
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 87
FINAL VERSION 1.0 01/02/2015
opposants et n'invite pas les nouveaux opposants à désigner un nouveau représentant. Cependant, les nouveaux opposants ont toujours la possibilité de désigner un représentant de leur choix.
La représentation commune n’implique pas que les opposants ne puissent pas agir de manière indépendante, dans la mesure où leurs droits antérieurs restent autonomes: lorsque, par exemple, l’un des opposants aboutit à une conciliation avec le demandeur, l’opposition est considérée comme partiellement retirée pour ce qui concerne les droits antérieurs détenus par cet opposant.
6.5.1.3 Transfert d’un enregistrement national antérieur
Opposition fondée sur un seul enregistrement national
Lorsqu’une opposition est fondée sur un seul enregistrement national antérieur et que cet enregistrement est/a été transféré au cours de la procédure d’opposition, le nouveau titulaire devient le nouvel opposant. Le nouveau titulaire se substitue à l’ancien.
À cet effet, l’ancien ou le nouveau titulaire doit informer l’Office du transfert de l’enregistrement national antérieur sur lequel l’opposition est fondée et en apporter la preuve, c’est-à-dire, l’acte de transfert. Compte tenu des différentes pratiques nationales, il n’est pas obligatoire de présenter une copie de la demande d’enregistrement du transfert auprès de l’office national.
L’Office n’exige pas du nouveau titulaire qu’il confirme son souhait de poursuivre la procédure. Pour autant que la preuve du transfert soit valable, le nouveau titulaire est admis en tant que nouvel opposant. S’il informe l'Office du transfert, mais n'apporte pas la preuve (suffisante) de ce transfert, la procédure d’opposition doit être suspendue et le nouveau titulaire dispose d’un délai de deux mois pour produire la preuve du transfert.
Néanmoins, dans les États membres où il s’agit d’une exigence pour qu’un transfert produise ses effets à l'égard de tiers, le transfert doit avoir été enregistré avant de statuer sur l’opposition. Si l’instruction de l’opposition est terminée, mais que le transfert n’a pas été enregistré, l’opposition est suspendue et l’opposant est tenu de produire la preuve de l’enregistrement du transfert.
Vu qu'il n'est pas dans l’intérêt du demandeur que la procédure soit prolongée, il y a lieu de fixer un délai de deux mois au nouveau titulaire pour produire cette preuve.
Si le nouveau titulaire ne présente pas la preuve requise, la procédure est poursuivie avec l’ancien titulaire. Si l’ancien titulaire maintient qu'il n’est plus le titulaire, l’opposition est réputée non fondée dans la mesure où l’opposant n'est plus le titulaire du droit antérieur. Il est informé du fait que l’examinateur rejettera l’opposition comme non fondée, sauf s’il la retire.
Si le nouveau titulaire produit la preuve requise et informe l’Office qu’il ne souhaite pas poursuivre la procédure, l’opposition est réputée retirée.
Une preuve indiquant l’accord des parties au transfert/changement de propriété est acceptable.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 88
FINAL VERSION 1.0 01/02/2015
Transfert partiel du seul enregistrement national sur lequel l’opposition est fondée
En cas de transfert partiel, une partie de l’enregistrement national antérieur reste la propriété du titulaire initial et une autre partie est détenue par un nouveau titulaire. Les principes appliqués dans le cas du transfert d’un ou de plusieurs enregistrements nationaux sur lesquels l’opposition est fondée sont appliqués de manière identique dans le cas de transferts partiels. Ces principes sont décrits au paragraphe qui suit immédiatement.
Opposition fondée sur plusieurs enregistrements nationaux antérieurs
Lorsqu’une opposition est fondée sur plusieurs enregistrements nationaux antérieurs et que ceux-ci sont/ont été transférés au même nouveau titulaire au cours de la procédure d’opposition, les principes décrits ci-dessus s’appliquent.
Il en va autrement, cependant, lorsqu’un seul des droits nationaux antérieurs est/a été transféré. Dans ce cas, le nouveau titulaire peut également devenir opposant, de sorte qu’ils sont deux. Toutefois, l’opposition continuera d’être traitée dans une seule procédure. En règle générale, les deux opposants ont un seul représentant.
Lorsque l’un des opposants souhaite se retirer, il doit être accédé à sa demande, que l’autre opposant souhaite ou non poursuivre la procédure. Naturellement, si la procédure est poursuivie, elle se fonde uniquement sur les droits de l’opposant qui ne s’est pas retiré. Aucune décision séparée sur les frais ne sera rendue.
Dans la pratique, les nouveaux opposants sont traités en tant que «co-opposants», ce qui signifie que l’Office continue de traiter l’affaire exactement comme auparavant, c’est-à-dire, comme une seule opposition, bien qu’elle compte plusieurs opposants. En outre, l’Office considère le représentant initial comme étant le représentant «commun» de tous les opposants et n’invite pas les nouveaux opposants à en désigner un nouveau. Les nouveaux opposants ont toutefois toujours la possibilité de désigner un représentant de leur choix.
6.5.1.4 Opposition fondée sur une combinaison d’enregistrements de marques communautaires et d’enregistrements nationaux
Lorsqu’une opposition est fondée sur un ou plusieurs enregistrements de marque communautaire et un ou plusieurs enregistrements nationaux en même temps, et que l’une de ces marques est/a été transférée au même nouveau titulaire au cours de la procédure d’opposition, les principes décrits ci-dessus s’appliquent. Dans ce cas, le nouveau titulaire peut également devenir opposant, de sorte qu’ils sont deux. Toutefois, l’opposition continuera d’être traitée dans une seule procédure. En règle générale, les deux opposants ont un seul représentant.
Dans toutes ces situations, une fois que l’Office est informé du transfert de propriété, il met à jour la base de données officielle afin d’inclure le nouvel opposant/les deux opposants et en informe les parties à titre d’information uniquement. Toutefois, le simple fait que les enregistrements antérieurs aient été transférés ne justifiera jamais l’octroi d’un nouveau délai pour soumettre des observations ou tout autre document.
Questions de procédures
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 89
FINAL VERSION 1.0 01/02/2015
6.5.1.5 Transfert de la demande de marque communautaire contestée
Si, au cours de la procédure d’opposition, la demande de marque communautaire est/a été transférée, l’opposition suit la demande, c’est-à-dire que l’opposant est informé du transfert et que la procédure se poursuit entre lui et le nouveau titulaire de la demande de marque communautaire.
6.5.1.6 Transfert partiel d’une demande de marque communautaire contestée
Règle 32, paragraphe 4, du REMC
Lorsqu’il y a eu transfert partiel d’une demande de marque communautaire (contestée), l’Office ouvre un dossier séparé pour le nouvel enregistrement (ou la nouvelle demande) et lui attribue un nouveau numéro (de demande ou) d’enregistrement.
Dans ce cas, lorsque le transfert est inscrit au registre et que la nouvelle demande de marque communautaire est créée, l’examinateur chargé de l’opposition doit également créer un nouveau dossier d’opposition à l'encontre de la nouvelle demande de marque communautaire, étant donné qu'il n'est pas possible de traiter une opposition visant deux demandes de marques communautaires séparées.
Il convient cependant de noter qu’il s’agit du seul cas où certains des produits et services initialement contestés sont maintenus dans «l’ancienne» demande de marque communautaire et où certains sont inscrits dans la demande de marque communautaire nouvellement créée. Exemple: l’opposant X forme une opposition à l’encontre de tous les produits visés dans la demande de marque communautaire Y et portant sur des appareils de locomotion par terre, par air ou par eau, compris dans la classe 12 et des vêtements et chaussures, compris dans la classe 25. La demande de marque communautaire Y est partiellement transférée et divisée en deux demandes, la demande de marque communautaire Y' pour les appareils de locomotion par terre et les vêtements et la demande de marque communautaire Y'' pour les appareils de locomotion par air et les chaussures.
Articles 17 et 23 du RMC
Étant donné que lorsque l’opposant a formé son opposition, il n’y avait qu’une seule taxe d’opposition à acquitter, il ne lui est pas demandé d’acquitter une seconde taxe pour la nouvelle opposition formée après la division de la demande de marque communautaire.
Le transfert, même s’il a été demandé avant le dépôt de l’acte d’opposition, produit ses effets à l’égard de tiers uniquement après l’entrée dans la base de données de l’Office. L’acquittement d’une seule taxe d’opposition est donc correct puisque, au moment de sa formation, l’opposition visait seulement une demande de marque communautaire (c’est-à-dire la seule demande existant à ce moment-là). Dès lors, le nouveau dossier d’opposition sera créé sans qu’une nouvelle taxe d'opposition soit payée.
En ce qui concerne la répartition des frais, l'examinateur tiendra compte du fait qu’une seule taxe d’opposition a été acquittée.
Questions de procédures
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En outre, selon les circonstances du cas d’espèce, il pourrait y avoir jonction des procédures (par exemple, si la «nouvelle» demande et «l’ancienne» demande ont le même représentant).
6.5.2 Les parties sont les mêmes après le transfert
Dans l’éventualité où, à la suite d’un transfert, l’opposant et le demandeur deviennent les mêmes personnes ou entités, l’opposition devient sans objet et est en conséquence clôturée ex-officio par l’Office.
6.5.3 Changement de nom
Comme indiqué ci-dessus, un changement de nom n'implique pas un changement de propriété.
6.5.4 Changement de représentants
Article 92 du RMC
En cas de changement de représentant au cours de la procédure d’opposition, l’autre partie en sera informée par l’envoi d'une copie de la lettre et du pouvoir (si celui-ci a été déposé).
Pour plus d’information, voir les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
6.5.5 Interruption de la procédure en raison du décès ou de l’incapacité du demandeur ou de son représentant
Règle 73 du REMC
La règle 73 du REMC traite de l’interruption de la procédure. Le paragraphe 1 distingue trois situations:
La procédure devant l’Office est interrompue:
1. en cas de décès ou de mise sous tutelle du demandeur;
2. lorsque le demandeur de la marque communautaire fait l’objet d’une procédure de faillite ou d’une autre procédure similaire;
3. en cas de décès du représentant du demandeur de la marque communautaire ou de toute autre situation l’empêchant de représenter le demandeur. Pour plus d’informations, voir les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
La règle 73 du REMC fait uniquement référence au demandeur et à son représentant et n’indique rien au sujet d’autres parties telles que les opposants. En l’absence de
Questions de procédures
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dispositions pertinentes, l’Office n’applique cette disposition qu’au cas où le demandeur (ou son représentant) ne pourrait poursuivre la procédure. Dès lors, si par exemple l’opposant est déclaré en faillite, la procédure n’est pas interrompue (même dans le cas où l’opposant serait le demandeur/titulaire d’une (demande de) marque communautaire antérieure. L’insécurité du statut juridique d’un opposant ou de son représentant ne peut porter préjudice au demandeur. Dans ce cas, lorsque la notification est retournée à l’Office parce qu’elle n’a pu être délivrée, les règles normales de notification publique s’appliquent.
6.5.5.1 Décès ou incapacité du demandeur
En cas de décès du demandeur ou de la personne habilitée, en vertu de la législation nationale, à agir en son nom en cas d’incapacité du demandeur, la procédure est uniquement interrompue à la demande du représentant du demandeur ou de la personne habilitée ou lorsque le représentant démissionne.
6.5.5.2 Demandeur empêché de poursuivre la procédure devant l’Office pour des motifs juridiques (par exemple, la faillite)
La règle 73, paragraphe 1, point b), du REMC s’applique à partir du moment où la partie à la procédure n’a plus le droit de disposer de la procédure, c’est-à-dire le droit de disposer de ses biens, jusqu’au moment où un liquidateur ou un curateur à la faillite est nommé, qui continuera alors à représenter légalement la partie.
Lorsque le demandeur est représenté par un mandataire professionnel qui ne démissionne pas, il n’y a pas lieu d’interrompre la procédure. L’Office considère que le représentant du demandeur est habilité à représenter le demandeur jusqu’à ce que l’Office reçoive des informations contraires du représentant lui-même, du liquidateur désigné ou de la juridiction qui traite de l’action en question.
Si le représentant informe l’Office de sa démission, tout dépend si le représentant indique qui agit en qualité de liquidateur ou de curateur à la faillite.
Dans ce cas, l’Office continue à correspondre avec le liquidateur ou le curateur à la faillite. S’il y avait des délais exerçant une incidence sur le demandeur et qui n’avaient pas encore expiré lorsque ce dernier a fait faillite, l’Office relance ces délais. Dès lors, dans ce cas, la procédure est interrompue et reprise aussitôt. Par exemple, si le demandeur avait encore dix jours pour déposer ses observations lorsqu’il a fait faillite, la nouvelle lettre de l’Office au curateur fixera un nouveau délai de deux mois pour le dépôt de ces observations.
Si aucune information n’est communiquée sur le liquidateur ou le curateur à la faillite, l’Office n’a d'autre choix que de déclarer une interruption de procédure. Une communication à cet effet est directement envoyée au demandeur failli et à l’opposant. Bien qu’il n’incombe pas à l’Office de chercher à savoir qui est le liquidateur, l’Office s’efforcera de tenter de communiquer avec le demandeur failli dans le but de reprendre la procédure. En effet, bien que le demandeur failli ne soit pas autorisé à entreprendre des actes juridiques contraignants, il reçoit toujours du courrier ou, si tel n’est pas le cas, le courrier est automatiquement délivré au curateur, pour autant qu’il y en ait un. L’Office pourrait également prendre en considération les informations sur l’identité du curateur fournies par l’opposant.
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Lorsque la notification est renvoyée à l'Office avec la mention «ne peut être délivré», les règles normales de notification publique s’appliquent.
Si des preuves sont produites concernant la désignation d’un liquidateur ou d'un curateur à la faillite, elles doivent être traduites dans la langue de la procédure.
Dès que l’Office est informé de l’identité du liquidateur ou du curateur, la procédure reprend à une date fixée par l’Office. L’autre partie doit en être informée.
Règle 73, paragraphe 4, du REMC
Les délais qui n’avaient pas encore expiré lorsque la procédure a été interrompue recommencent à courir lors de la reprise de la procédure. Par exemple, lorsque la procédure a été interrompue dix jours avant que le demandeur ne doive déposer ses observations, un nouveau délai de deux mois recommence à courir, et non les dix jours qui restaient au moment de l’interruption. Par souci de clarté, la lettre envoyée par l’Office informant les parties de la reprise fixe un nouveau délai.
6.5.5.3 Décès ou empêchement, pour des motifs juridiques, du représentant du demandeur de poursuivre la procédure devant l’Office
Dans le cas visé à la règle 73, paragraphe 1, point c), du REMC, la procédure doit être interrompue et recommence lorsque l’Office est informé de la désignation d’un nouveau représentant du demandeur de la marque communautaire.
Cette interruption dure au maximum trois mois et, si aucun représentant n’est désigné avant la fin de ce délai, la procédure est reprise par l’Office. Lors de la reprise de la procédure, l’Office procède comme suit:
1. si la désignation d’un représentant est obligatoire en vertu de l’article 92, paragraphe 2, du RMC au motif que le demandeur n’a ni son domicile, ni son siège dans l’Union européenne, l’Office contacte le demandeur et l’informe que la demande de marque communautaire sera réputée retirée s’il ne désigne pas un représentant dans un délai de deux mois. Si le demandeur ne désigne pas un représentant avant ou lors de l’expiration de ce délai, la demande de marque communautaire sera réputée retirée;
2. si la désignation d’un représentant n’est pas obligatoire en vertu de l’article 92, paragraphe 2, du RMC, l’Office reprend la procédure et envoie directement toutes les communications au demandeur.
Dans les deux cas, la reprise de la procédure signifie que tout délai resté en suspens pour le demandeur lorsque la procédure a été interrompue recommence à courir lors de la reprise de la procédure.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 2
DOUBLE IDENTITÉ ET RISQUE DE CONFUSION
CHAPITRE 1
PRINCIPES GÉNÉRAUX ET MÉTHODOLOGIE
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Table des matières
1 Introduction................................................................................................ 3
2 Article 8, paragraphe 1, du RMC .............................................................. 4 2.1 Article 8, paragraphe 1, point a), du RMC : identité .................................4
2.1.1 Motif d’identité................................................................................................. 4
2.2 Article 8, paragraphe 1, point b), du RMC : risque de confusion ............5
3 Notion de risque de confusion ................................................................. 5 3.1 Introduction ................................................................................................5 3.2 Risque de confusion et risque d’association ...........................................6 3.3 Risque de confusion et caractère distinctif accru ...................................8 3.4 Risque de confusion: questions de fait et questions de droit ................8
3.4.1 Fait et droit: similitude des produits et/ou services et des signes .................. 8 3.4.2 Fait et droit : preuves...................................................................................... 9
4 Évaluation des facteurs pris en compte pour l’établissement du risque de confusion................................................................................. 10 4.1 Moment pertinent .....................................................................................10 4.2 Approche méthodologique de l’Office ....................................................11 4.3 Comparaison des produits et services ...................................................11 4.4 Comparaison des signes .........................................................................12 4.5 Éléments distinctifs et dominants des marques....................................12 4.6 Caractère distinctif de la marque antérieure ..........................................12 4.7 Public pertinent: niveau d’attention........................................................12 4.8 Autres observations, appréciation globale et conclusion..................... 13
Annexe I .......................................................................................................... 14
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1 Introduction
Ce chapitre comporte une introduction et une vue d’ensemble des notions i) d’identité et ii) de risque de confusion qui s’appliquent’ à des situations de conflit entre des marques faisant l’objet de procédures d’opposition au titre de l’article 8, paragraphe 1, du règlement (CE) n° 207/2009 du Conseil du 26 février 2009 sur la marque communautaire (le « RMC »).
Les paragraphes ci-dessous définissent la nature de ces notions et leur fondement juridique comme déterminés par les lois pertinentes et ’interprétés par la Cour de justice de l’Union européenne (la « Cour »)1.
Les notions juridiques d’identité et de risque de confusion servent à protéger les marques et, par la même occasion, à définir leur étendue. Il est donc primordial de garder à l’esprit les aspects ou fonctions des marques qui méritent une protection. Les marques présentent diverses fonctions. La plus fondamentale consiste à servir d’« indicateurs d’origine » de la provenance commerciale des produits et/ou services. Il s’agit là de leur « fonction essentielle ». Dans l’affaire « Canon », la Cour a soutenu que :
« selon une jurisprudence constante, la fonction essentielle de la marque est de garantir au consommateur ou à l’utilisateur final l’identité d’origine du produit ou du service marqué, en lui permettant de distinguer sans confusion possible ce produit ou service de ceux qui ont une autre provenance. »
(Voir l’arrêt du 29 septembre 1998, C-39/97, « Canon », point 28.)
La fonction essentielle de la marque d’indication de l’origine a été soulignée à maintes reprises et a fini par devenir un précepte du droit de l’Union en matière de marques (arrêt du 18 juin 2002, C-299/99, « Philips », point 30 et arrêt du 6 octobre 2005, C-120/04, « Medion », point 23).
Si l’indication de l’origine est la fonction essentielle de la marque, ce n’est pas la seule. En effet, l’expression « fonction essentielle » implique’ d’autres fonctions. La Cour a plusieurs fois fait référence aux autres fonctions des marques (par exemple, arrêt du 16 novembre 2004, C-245/02, « Anheuser-Busch », point 59 et arrêt du 25 janvier 2007, C-48/05, « Adam Opel », point 21), mais les a abordées directement dans l’affaire « L’Oréal » (arrêt du 18 juin 2009, C-487/07, « L’Oréal », points 58 à 59 et arrêt du 23 mars 2010, C-236/08 à C-238/08, « Google France et Google », points 75 à 79), dans laquelle elle a déclaré que les fonctions de marques comprennent :
« non seulement la fonction essentielle de la marque qui est de garantir aux consommateurs la provenance du produit ou du service, mais également les autres fonctions de celle-ci, comme notamment celle consistant à garantir la qualité de ce produit ou de ce service, ou celles de communication, d’investissement ou de publicité » (soulignement ajouté).
1La Cour a en effet souvent interprété les articles 4 et 5 de la directive 2008/95/CE du Parlement européen et du Conseil du 22 octobre 2008 (la « directive ») qui, aux fins d'interprétation, sont largement comparables aux articles 8 et 9 du RMC.
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L’examen des notions d’identité et de risque de confusion couvertes par ce chapitre permet d’aborder plusieurs thèmes expliqués en détail dans les chapitres suivants des Directives. L’annexe comporte un récapitulatif des principales affaires portant sur les principes fondamentaux et les notions de risque de confusion.
2 Article 8, paragraphe 1, du RMC
L’article 8 du RMC permet au titulaire d’un droit antérieur de s’opposer à l’enregistrement de demandes de marques communautaires postérieures dans toute une série de cas de figure. Le présent chapitre sera axé sur l’interprétation de l’identité et du risque de confusion au sens de l’article 8, paragraphe 1, du RMC.
Une opposition en application de l’article 8, paragraphe 1, du RMC peut être fondée sur des enregistrements ou des demandes de marques antérieures [article 8, paragraphe 2, points a) et b), du RMC] et de marques antérieures notoirement connues [article 8, paragraphe 2, point c), du RMC]2.
2.1 Article 8, paragraphe 1, point a), du RMC : identité
L’article 8, paragraphe 1, point a), du RMC prévoit des oppositions fondées sur l’identité. Il dispose que, sur opposition du titulaire d’une marque antérieure au sens de l’article 8, paragraphe 2, du RMC, une demande de marque communautaire sera refusée à l’enregistrement :
lorsqu’elle est identique à la marque antérieure et que les produits ou les services pour lesquels la marque a été demandée sont identiques à ceux pour lesquels la marque antérieure est protégée.
Le libellé de l’article 8, paragraphe 1, point a), du RMC requiert clairement une identité à la fois entre les signes concernés et entre les produits et/ou services désignés. Cette situation est désignée par l’expression « double identité ». L’existence d’une double identité est une appréciation juridique à établir par une comparaison directe des deux signes en conflit et des produits et/ou services en question3. En cas de constat de double identité, l’opposant n’est pas tenu de prouver le risque de confusion pour l’emporter ; la protection conférée par l’article 8, paragraphe 1, point a), du RMC est absolue. Par conséquent, en cas de double identité, il n’est pas nécessaire de procéder à une évaluation du risque de confusion, et l’opposition sera automatiquement accueillie.
2.1.1 Motif d’identité
Bien que les conditions spécifiques de l’article 8, paragraphe 1, point a) et de l’article 8, paragraphe 1, point b), du RMC diffèrent, elles sont connexes. Par conséquent, dans le
2 Des précisions sur les marques antérieures notoirement connues figurent dans les Directives, partie C, Opposition, section 5, Marques jouissant d'une renommée (article 8, paragraphe 5, du RMC). 3 Une orientation exhaustive sur les critères permettant de constater l'identité entre les produits et services, ainsi qu'entre les signes, figure dans les paragraphes respectifs des Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 2, Comparaison des produits et services et chapitre 3, Comparaison des signes.
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cadre des procédures d’opposition relatives à l’article 8, paragraphe 1, du RMC, si l’article 8, paragraphe 1, point a) constitue l’unique motif invoqué et qu’aucune identité ne peut être établie entre les signes et/ou les produits et/ou services, l’Office examinera néanmoins l’affaire au motif du risque de confusion énoncé à l’article 8, paragraphe 1, point b), du RMC, qui requiert au moins l’existence de similitude entre les signes, entre les produits et services, ainsi qu’un risque de confusion. La similitude désigne non seulement les situations dans lesquelles tant les marques que les produits et/ou services sont similaires, mais également les situations impliquant des marques identiques et des produits et/ou services similaires ou inversement.
De même, une opposition uniquement fondée sur l’article 8, paragraphe 1, point b), du RMC qui satisfait aux exigences de l’article 8, paragraphe 1, point a), du RMC, doit être traitée en vertu de cette dernière disposition, sans aucun ’, au titre de l’article 8, paragraphe 1, point b), du RMC.
2.2 Article 8, paragraphe 1, point b), du RMC : risque de confusion
L’article 8, paragraphe 1, point b), du RMC précise que, sur opposition, une marque communautaire demandée est refusée à l’enregistrement :
« lorsqu’en raison de son identité ou de sa similitude avec la marque antérieure et en raison de l’identité ou de la similitude des produits ou des services que les deux marques désignent, il existe un risque de confusion dans l’esprit du public du territoire dans lequel la marque antérieure est protégée; le risque de confusion comprend le risque d’association avec la marque antérieure » (soulignement ajouté).
Par conséquent, contrairement aux situations de double identité examinées ci-dessus, en cas de simple similitude entre les signes et les produits et/ou services, ou d’identité constatée pour un seul de ces deux éléments, le titulaire d’une marque antérieure ne peut s’opposer avec succès à une demande de marque communautaire en vertu de l’article 8, paragraphe 1, point b) que s’il existe un risque de confusion.
3 Notion de risque de confusion
3.1 Introduction
L’appréciation du risque de confusion est un calcul appliqué à des situations de conflit entre des marques faisant l’objet de procédures d’opposition en vertu du RMC ainsi qu’au titre d’actions en contrefaçon engagées devant les juridictions de l’UE. Toutefois, ni le RMC ni la directive ne comportent une définition du risque de confusion ou une déclaration indiquant précisément ce à quoi renvoie le terme « confusion ». Il n’est dès lors guère surprenant que le sens précis de l’expression « risque de confusion » ait été au cœur de nombreux débats et de contentieux.
Comme indiqué ci-dessous, il découle d’une jurisprudence constante depuis un certain nombre d’années que la notion de risque de confusion renvoie essentiellement à des situations dans lesquelles :
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1) le public confond directement les marques en conflit ;
2) le public établit un lien entre les marques en conflit et suppose que les produits et/ou services en cause proviennent de la même entreprise ou d’entreprises économiquement liées (risque d’association).
Ces deux situations sont examinées plus en détail ci-dessous (paragraphe 3.2). Le simple fait que la perception d’une marque postérieure évoque une marque antérieure ne constitue pas un risque de confusion.
La Cour a également établi le principe selon lequel « les marques qui ont un caractère distinctif élevé, soit intrinsèquement, soit en raison de leur réputation sur le marché, jouissent d’une protection plus étendue que celles dont le caractère distinctif est moindre » (voir paragraphe 3.3 ci-dessous).
Enfin, la notion de risque de confusion telle que développée par la Cour doit être considérée comme une notion juridique plutôt qu’un simple reflet réaliste du comportement cognitif des consommateurs et de leurs habitudes d’achat (voir paragraphe 3.4 ci-dessous).
3.2 Risque de confusion et risque d’association
La Cour a examiné en profondeur le risque de confusion dans l’affaire Sabèl (arrêt du 11 novembre 1997, C-251/95, «Sabèl»). Les équivalents de la directive de l’article 8, paragraphe 1, point b), du RMC et le 8e considérant du RMC ont clairement indiqué que le risque de confusion se rapporte à la confusion quant à l’origine des produits et/ou services, mais la Cour était tenue d’examiner précisément la signification de cette expression, car les avis divergeaient quant au sens des expressions « risque de confusion » et « risque d’association », ainsi qu’à leur rapport, lesquelles expressions sont toutes deux visées à l’article 8, paragraphe 1, point b), du RMC.
Cette question devait être résolue, car il avait été soutenu que le risque d’association était plus vaste que le risque de confusion en ce qu’il pouvait couvrir des cas où une marque postérieure évoquerait une marque antérieure, sans pour autant que le consommateur n’ait estimé que les produits/services aient la même origine commerciale4. Finalement, le problème mis en cause dans l’affaire «Sabèl» était de déterminer si le libellé disposant que « le risque de confusion comprend le risque d’association » signifiait que le « risque de confusion » pouvait désigner une situation d’association entre deux marques qui n’aurait pas donné lieu à une confusion quant à l’origine.
Dans l’affaire « Sabèl», la Cour a estimé que le risque d’association n’est pas une alternative à la notion de risque de confusion, mais qu’elle sert simplement à en préciser l’étendue. Par conséquent, un constat de risque de confusion requiert l’existence d’une confusion quant à l’origine.
4Cette notion est issue de la jurisprudence du Benelux et a notamment été appliquée à des marques sans renommée.
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Dans l’affaire « Canon » (points 29 à 30), la Cour a clarifié l’étendue de la confusion quant à l’origine en soutenant que :
« constitue un risque de confusion le risque que le public puisse croire que les produits ou services en cause proviennent de la même entreprise ou, le cas échéant, d’entreprises liées économiquement [...] l’existence d’un tel risque est exclue s’il n’apparaît pas que le public puisse croire que les produits ou services en cause proviennent de la même entreprise ou, le cas échéant, d’entreprises liées économiquement » (soulignement ajouté).
Comme mentionné’ plus haut, le risque de confusion porte sur une confusion quant à l’origine commerciale, y compris sur des entreprises liées économiquement. Ce qui importe, c’est que le public croie que les biens ou les services en question soient sous le contrôle d’une seule entreprise. La Cour n’a pas interprété l’expression entreprises liées économiquement dans le cadre du risque de confusion, mais elle l’a fait en ce qui concerne la libre circulation des produits et services. Dans l’affaire « Ideal Standard », la Cour a soutenu que :
« Plusieurs situations sont couvertes : produits mis en circulation par la même entreprise ou par un licencié ou par une société mère ou par une filiale du même groupe ou encore par un concessionnaire exclusif. »
« Dans tous les cas dont il vient d’être question, il y a contrôle par une même entité : le groupe de sociétés dans le cas de produits mis en circulation par une filiale ; le fabricant dans le cas de produits commercialisés par le concessionnaire ; le donneur de licence, s’il s’agit de produits écoulés par un licencié. Dans l’hypothèse de la licence, le donneur de licence a la possibilité de contrôler la qualité des produits du licencié en insérant dans le contrat des clauses qui obligent le licencié à respecter ses instructions et lui donnent la faculté de s’assurer de leur respect. La provenance que la marque est destinée à garantir est la même : elle n’est pas définie par le fabricant, mais par le centre d’où la fabrication est dirigée. »
(Voir l’arrêt du 22 juin 1994, C-9/93, « Ideal Standard », points 34 et 37).
Par conséquent, il y aura présomption de liens économiques dès lors que le consommateur suppose que les produits ou services respectifs sont commercialisés sous le contrôle du titulaire de la marque. L’existence d’un tel contrôle peut être supposée dans le cas d’entreprises appartenant au même groupe de sociétés et dans le cas d’accords de licence, de merchandising ou de distribution, ainsi que dans toute autre situation où le consommateur suppose que l’utilisation de la marque est normalement possible sous réserve de l’accord du titulaire de la marque.
Partant, la Cour a de ce fait conclu que le risque de confusion désigne les situations dans lesquelles le consommateur confond directement les marques entre elles ou dans lesquelles le consommateur fait un rapprochement entre les signes en conflit et suppose que les produits et/ou services désignés proviennent de la même entreprise ou d’entreprises liées économiquement.
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Ainsi, si la perception d’une marque postérieure évoque simplement une marque antérieure, sans pour autant que le consommateur n’en déduise une même origine commerciale, ce fait n’est alors pas constitutif d’un risque de confusion5.
3.3 Risque de confusion et caractère distinctif accru
Le caractère distinctif de la marque antérieure a été retenu comme étant un facteur important pour l’appréciation du risque de confusion. Les principales conclusions de la Cour sont les suivantes :
• le risque de confusion est d’autant plus élevé que le caractère distinctif de la marque antérieure s’avère important (voir l’affaire « Sabèl», point 24) ;
• les marques qui ont un caractère distinctif élevé, soit intrinsèquement, soit en raison de la connaissance de celles-ci sur le marché, jouissent d’une protection plus étendue que celles dont le caractère distinctif est moindre (voir affaire « Canon », point 18).
Ces conclusions ont notamment pour conséquence que le risque de confusion peut être établi entre des marques en conflit alors que des marques antérieures très distinctives sont invoquées, même en cas de faible degré de similitude entre les produits et services en cause (voir conclusions de l’avocat général du 21 mars 2002, C-292/00, « Davidoff », point 48)6.
3.4 Risque de confusion: questions de fait et questions de droit
La notion de risque de confusion s’apparente à une notion juridique plutôt qu’à une simple évaluation factuelle des jugements rationnels et des préférences émotionnelles qui influencent le comportement cognitif des consommateurs et leurs habitudes d’achat. Par conséquent, l’appréciation du risque de confusion dépend à la fois des questions de droit et des faits.
3.4.1 Fait et droit: similitude des produits et/ou services et des signes
La détermination des facteurs pertinents permettant d’établir le risque de confusion et l’existence de ce risque est une question de droit. Autrement dit, ces facteurs sont établis par la législation applicable, à savoir le RMC et la jurisprudence.
Par exemple, l’article 8, paragraphe 1, du RMC établit que l’identité/la similarité des produits et/ou services est une condition du risque de confusion. La question des facteurs pertinents permettant d’évaluer si cette condition est satisfaite est également une question de droit. La Cour a recensé les facteurs suivants qui permettent de déterminer s’il existe une similitude entre les produits et/ou services :
5Et ce, bien qu'une telle situation permettrait de tirer indûment profit du caractère distinctif ou de la réputation d'une marque antérieure, ou pourrait leur porter préjudice en vertu de l'article 8, paragraphe 5, voir les Directives partie C, Opposition, section 5, article 8, paragraphe 5, du RMC. 6 Voir les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 7, Appréciation globale.
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• leur nature ; • leur destination ; • leur utilisation ; • leur complémentarité éventuelle ; • leur caractère concurrent ou leur interchangeabilité éventuels ; • leurs circuits de distribution/points de vente ; • leur public pertinent ; • leur origine habituelle.
(Voir affaire C-39/97, « Canon »).
Tous ces facteurs sont des notions juridiques et la détermination de leurs critères d’appréciation est elle aussi une question de droit. Toutefois, il s’agit d’une question de fait de déterminer si, et dans quelle mesure, les critères juridiques de détermination de la « nature » sont remplis dans un cas d’espèce.
À titre d’exemple, la graisse de cuisson et les huiles et graisses lubrifiantes pétrolières sont de nature différente, même si elles contiennent toutes deux une matière grasse de base. La graisse de cuisson s’utilise dans la préparation d’aliments pour la consommation humaine, tandis que les huiles et les graisses s’utilisent pour la lubrification des machines. D’une part, la prise en considération de la « nature » comme un facteur pertinent dans l’étude de similitude de produits et/ou services est une question de droit. D’autre part, il s’agit d’une question de fait d’affirmer que la graisse de cuisson s’utilise dans la préparation des aliments pour la consommation humaine et que les huiles et les graisses s’utilisent pour les machines.
De même, quand il s’agit de comparer des signes, l’article 8, paragraphe 1, du RMC établit que l’identité/la similarité des signes est une condition du risque de confusion. Il s’agit d’une question de droit qu’une coïncidence conceptuelle entre les signes puisse provoquer leur similarité aux fins du RMC, mais il s’agit d’une question de fait, par exemple, que le terme «fghryz» n’ait aucune signification pour le public espagnol.
3.4.2 Fait et droit : preuves
Dans la procédure d’opposition, les parties doivent alléguer et, le cas échéant, prouver les faits à l’appui de leurs arguments, comme la similitude des produits et/ou services. Cela découle de l’article 76, paragraphe 1, du RMC selon lequel, dans une procédure d’opposition, l’examen de l’Office est limité aux moyens invoqués et aux demandes présentées par les parties.
Par conséquent, dans l’exemple ci-dessus, c’est à l’opposant qu’il revient de présenter les faits sur lesquels repose l’allégation de similitude et de produire des preuves à l’appui. Par exemple, en cas de comparaison de fonte résistant à l’usure et d’implants médicaux, ce n’est pas à l’Office qu’il incombe de répondre à la question de savoir si la fonte résistant à l’usure est effectivement utilisée pour des implants médicaux. C’est à l’opposant qu’il incombe de prouver la mesure de l’improbabilité (décision du 14 mai 2002, R 0684/2000-4, « Tinox »).
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Une reconnaissance par le demandeur de notions juridiques comme le risque de confusion ou de similitude de produits et services, est sans importance. Ceci ne dégage aucunement l’Office de son obligation d’étudier et de statuer sur ces notions. Cela n’est pas contraire à l’article 76, paragraphe 1, du RMC, qui engage l’Office uniquement en ce qui concerne les faits, preuves et observations, et non pas à leur évaluation juridique’’. Par conséquent, les parties peuvent s’entendre sur les faits ayant été prouvés ou non, mais ne peuvent pas déterminer si ces faits suffisent à établir les notions juridiques correspondantes comme la similitude des produits et/ou services, la similitude des signes, ainsi que le risque de confusion.
L’article 76, paragraphe 1, du RMC n’empêche pas l’Office de prendre en considération, de sa propre initiative, des faits qui sont déjà notoires ou renommés, voire susceptibles d’être recueillis auprès de sources généralement accessibles, par exemple, que PICASSO soit identifié par les consommateurs de l’UE comme un célèbre peintre espagnol (arrêt du 22 juin 2004, T-185/02, « Picaro », C-361/04P rejeté). Toutefois, l’Office ne peut citer ex officio de nouveaux faits ou observations (par exemple, la renommée ou le degré de connaissance de la marque antérieure, etc.).
En outre, même si certaines marques sont parfois utilisées au quotidien en tant que termes génériques de produits et de services qu’elles désignent, l’Office ne devrait jamais considérer cela comme un fait. En d’autres termes, les marques ne doivent jamais être désignées (ou interprétées) comme s’il s’agissait d’un terme générique ou d’une catégorie de produits ou services. Par exemple, que dans la vie quotidienne, certaines personnes fassent référence à « X » en parlant de yaourts (« X » étant une marque de yaourts) ne doit pas conduire à l’usage de « X » comme terme générique de yaourts.
4 Évaluation des facteurs pris en compte pour l’établissement du risque de confusion
Après qu’il a été établi ce que l’on entend par risque de confusion, ce paragraphe explique les divers facteurs qui sont examinés afin d’évaluer l’existence d’un risque de confusion et l’interaction entre ces facteurs.
4.1 Moment pertinent
Le moment pertinent pour l’appréciation du risque de confusion correspond à celui de la prise de décision de l’opposition.
Lorsque l’opposant s’appuie sur le caractère distinctif accru d’une marque antérieure, les conditions pour ce faire doivent avoir été satisfaites au plus tard à la date de dépôt de la demande de marque communautaire (ou à toute date de priorité) et elles doivent être remplies jusqu’à la date de la décision. L’Office a pour pratique de supposer que tel est’ le cas, sauf indication contraire.
Lorsque le demandeur de marque communautaire s’appuie sur une étendue de protection réduite (faiblesse) de la marque antérieure, seule la date de la décision est pertinente.
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4.2 Approche méthodologique de l’Office
Dans l’affaire « Sabèl », la Cour a énoncé au point 23 que :
« l’appréciation globale doit, en ce qui concerne la similitude visuelle, auditive ou conceptuelle des marques en cause, être fondée sur l’impression d’ensemble produite par les marques, en tenant compte, notamment, des éléments distinctifs et dominants de celles-ci. Il ressort du libellé de l’article 4, paragraphe 1, sous b), de la directive, aux termes duquel "[...] il existe, dans l’esprit du public, un risque de confusion [...] " que la perception des marques qu’a le consommateur moyen du type de produit ou service en cause joue un rôle déterminant dans l’appréciation globale du risque de confusion. Or, le consommateur moyen perçoit normalement une marque comme un tout et ne se livre pas à un examen de ses différents détails. »
En d’autres termes, l’existence d’un risque de confusion dépend d’une appréciation globale de plusieurs facteurs interdépendants, à savoir : i) la similitude des produits et des services ; ii) la similitude des signes ; iii) les éléments distinctifs et dominants des signes en conflits ; iv) le caractère distinctif de la marque antérieure ;v) le public pertinent.
La première étape de détermination de l’existence du risque de confusion consiste à examiner ces facteurs (voir paragraphe 4.3 et suivants ci-dessous).
La deuxième étape vise à déterminer leur pertinence dans une « appréciation globale » distincte permettant de parvenir à une conclusion sur le risque de confusion après avoir mis en balance ces différents facteurs susceptibles de complémentarité ou de compensation mutuelle et qui présentent divers degrés d’importance relative en fonction des circonstances spécifiques.
La méthodologie de l’Office à cet égard diffère des approches qui combinent l’appréciation de facteurs en une seule évaluation visant à déterminer si les marques sont « similaires au point de porter à confusion ». En principe, cette différence ne devrait pas affecter l’« appréciation globale » définitive, qui peut être établie’ de diverses manières.
4.3 Comparaison des produits et services
La similitude et/ou l’identité des produits et/ou services est une condition sine qua non pour déterminer le risque de confusion. Une orientation exhaustive sur la comparaison des produits et/ou services figure dans les Directives, partie C, Opposition, section 2, Identité et risque de confusion, chapitre 2, Comparaison des produits et services.
S’il n’existe pas de degré de similitude entre les produits et les services, il ne sera pas donné suite à l’examen en ce qui concerne le risque de confusion.
Dans le cas contraire, et dès lors qu’il existe au moins un certain degré de similitude, l’examen d’autres facteurs sera poursuivi.
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4.4 Comparaison des signes
Au moins un certain degré de similitude entre les signes est également une condition nécessaire de la constatation d’un risque de confusion. La comparaison des signes implique une appréciation générale de leurs caractéristiques visuelles, auditives et/ou conceptuelles. En cas de similitude concernant ne serait-ce qu’un seul de ces trois aspects, les signes sont réputés similaires. La question de savoir si les signes sont suffisamment similaires pour conduire à un risque de confusion est traitée dans le cadre de l’appréciation globale du risque de confusion. Une orientation exhaustive sur la comparaison des signes figure dans les Directives, partie C, Opposition, section 2, Identité et risque de confusion, chapitre 3, Comparaison des signes.
Les signes ne sont réputés différents que si aucune similitude ne peut être constatée pour l’un quelconque des trois aspects.
En cas d’absence de degré de similitude entre les signes, il ne sera pas donné suite à l’examen en ce qui concerne le risque de confusion.
Dans le cas contraire, et dès lors qu’il existe au moins un certain degré de similitude, l’examen d’autres facteurs sera poursuivi.
4.5 Éléments distinctifs et dominants des marques
L’appréciation globale des marques en conflit doit être fondée sur l’impression d’ensemble que dégagent les marques, en tenant compte, en particulier, de leurs éléments distinctifs et dominants. Une orientation exhaustive sur l’étude des éléments distinctifs et dominants figure dans les Directives, partie C, Opposition, section 2, Identité et risque de confusion, chapitre 4, Caractère distinctif et chapitre 5, Caractère dominant.
4.6 Caractère distinctif de la marque antérieure
Lorsqu’un opposant avance explicitement qu’une marque antérieure est particulièrement distinctive du fait d’un usage intensif ou de sa renommée, cette allégation fera l’objet d’un examen et d’une évaluation. Une orientation exhaustive sur le caractère distinctif de la marque antérieure figure dans les Directives, partie C, Opposition, section 2, Identité et risque de confusion, chapitre 4, Caractère distinctif.
4.7 Public pertinent: niveau d’attention
Le public pertinent joue un rôle clé dans l’appréciation d’autres éléments d’un risque de confusion (par exemple, la comparaison des produits et des services, la comparaison des signes, l’appréciation du caractère distinctif). En outre, le niveau d’attention du public constitue l’un des autres facteurs qui peuvent jouer en faveur ou en défaveur d’une constatation de l’existence d’un risque de confusion. Une orientation exhaustive sur le public pertinent et le niveau d’attention figure dans les Directives, partie C, Opposition, section 2, Identité et risque de confusion. Chapitre 6, Public pertinent et niveau d’attention.
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4.8 Autres observations, appréciation globale et conclusion
L’appréciation globale permet de :
• définir et d’évaluer d’autres facteurs et principes pertinents à l’évaluation du risque de confusion (comme une famille de marques, la coexistence ou le mode d’acquisition des produits et/ou services) ;
• d’apprécier l’importance relative de tous les facteurs interdépendants susceptibles de complémentarité ou de compensation mutuelle, afin de parvenir à une décision sur le risque de confusion. Par exemple, les marques peuvent présenter un caractère distinctif pour certains produits ou services mais aucun pour d’autres et dès lors, un risque de confusion ne peut exister que pour les produits et services pour lesquels la marque antérieure est réputée distinctive.
Une orientation exhaustive sur des Autres facteurs et sur l’appréciation globale figure dans les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 7, Autres Facteurs, et 8, Appréciation globale.
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Annexe I
Principes généraux issus de la jurisprudence7
Arrêt du 11 novembre 1997, C-251/95, « Sabèl» - Le risque de confusion doit être apprécié globalement en tenant compte de tous les facteurs
pertinents du cas d’espèce (point 22). - L’appréciation du risque de confusion dépend de nombreux facteurs et notamment de la
connaissance de la marque sur le marché, de l’association qui peut en être faite avec les deux marques et du degré de similitude entre les signes et entre les produits (point 22).
- L’appréciation globale doit, en ce qui concerne la similitude visuelle, auditive ou conceptuelle des marques en cause, être fondée sur l’impression d’ensemble produite par les marques, en tenant compte de leurs éléments distinctifs et dominants (point 23).
- Le consommateur moyen perçoit normalement une marque comme un tout et ne se livre pas à un examen de ses différents détails (point 23).
- Le risque de confusion est d’autant plus élevé que le caractère distinctif de la marque antérieure s’avère important (point 24).
- Il ne saurait être exclu que la similitude conceptuelle découlant du fait que deux marques utilisent des images qui concordent dans leur contenu sémantique puisse créer un risque de confusion dans un cas où la marque antérieure possède un caractère distinctif particulier, soit intrinsèquement, soit grâce à la notoriété dont elle jouit auprès du public (point 24).
- Toutefois, lorsque la marque antérieure ne jouit pas d’une notoriété particulière et consiste en une image présentant peu d’éléments imaginaires, la simple similitude conceptuelle entre les marques ne suffit pas pour créer un risque de confusion (point 25).
- La notion de risque d’association n’est pas une alternative à celle du risque de confusion, mais sert à en préciser l’étendue (point 18).
- La simple association entre deux marques que pourrait faire le public par le biais de la concordance de leur contenu sémantique ne suffit pas en elle-même pour conclure à l’existence d’un risque de confusion (point 26).
Arrêt du 29 septembre 1998, C-39/97, « Canon »
– Le risque que le public puisse croire que les produits ou services en cause proviennent de la même entreprise ou, le cas échéant, d’entreprises liées économiquement, constitue un risque de confusion (point 29).
– En revanche, l’existence d’un tel risque est exclue s’il n’apparaît pas que le public puisse croire que les produits proviennent de la même entreprise (ou d’entreprises liées économiquement) (point 30).
– Pour apprécier la similitude entre les produits ou services en cause, il y a lieu de tenir compte de tous les facteurs pertinents qui caractérisent le rapport entre les produits ou services (point 23).
– Ces facteurs incluent, en particulier, leur nature, leur destination [la traduction «end users» dans la version officielle de la langue anglaise est erronée], leur utilisation ainsi que leur caractère concurrent ou complémentaire (point 23).
– L’appréciation globale du risque de confusion implique une certaine interdépendance entre les facteurs pris en compte, et notamment la similitude des marques et celle des produits ou des services désignés. Un faible degré de similitude entre les produits ou services désignés peut être compensé par un degré élevé de similitude entre les marques, et inversement (point 17).
– Les marques qui ont un caractère distinctif élevé, soit intrinsèquement, soit en raison de la connaissance de celles-ci sur le marché, jouissent d’une protection plus étendue que celles dont le caractère distinctif est moindre (point 18).
– Il peut y avoir lieu de refuser à l’enregistrement une marque, malgré un moindre degré de similitude entre les produits ou services désignés, lorsque la similitude des marques est grande et que le caractère distinctif de la marque antérieure, et en particulier sa renommée, est fort (point 19).
– Le caractère distinctif de la marque antérieure, et en particulier sa renommée, doit donc être pris en compte pour apprécier si la similitude entre les produits et les services est suffisante pour donner lieu à un risque de confusion (point 24).
– Il peut exister un risque de confusion, même lorsque, pour le public, les produits en cause ont des lieux de production différents (point 30).
7 Il ne s'agit pas de citations directes.
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Arrêt du 22 juin 1999, C-342/97, « Lloyd Schuhfabrik Meyer »
– Le niveau d’attention du consommateur moyen, qui est censé être normalement informé et raisonnablement attentif et avisé, varie en fonction de la catégorie de produits et de services en cause (point 26).
– Cependant, il convient de tenir compte de la circonstance que le consommateur moyen n’a que rarement la possibilité de procéder à une comparaison directe des différentes marques, mais doit se fier à l’image non parfaite qu’il en a gardée en mémoire (point 26).
– Dans le cadre de l’appréciation du degré de similitude visuelle, auditive et conceptuelle, il peut s’avérer approprié d’évaluer l’importance qu’il convient d’attacher à ces différents éléments, en tenant compte de la catégorie de produits et des conditions dans lesquelles elles sont commercialisées (point 27).
– Il ne saurait être exclu que la seule similitude auditive puisse créer un risque de confusion (point 28).
– Pour déterminer le caractère distinctif d’une marque et, partant, pour évaluer si elle a un caractère distinctif élevé, il y a lieu de procéder à une appréciation d’ensemble de l’aptitude plus ou moins grande de la marque à identifier les produits et services pour lesquels elle a été enregistrée comme provenant d’une entreprise déterminée (point 22).
– Lors de cette appréciation, il convient de prendre en considération notamment toutes les qualités intrinsèques de la marque, y compris le fait qu’elle est ou non dénuée de tout élément descriptif des produits ou services pour lesquels elle a été enregistrée ; la part de marché détenue par la marque ; l’intensité, l’étendue géographique et la durée de son usage ; ainsi que l’importance des investissements réalisés par l’entreprise pour la promouvoir ; la proportion des milieux intéressés qui identifie les produits ou services comme provenant d’une entreprise déterminée ; ainsi que les déclarations des chambres de commerce et d’industrie ou d’autres associations professionnelles (point 23).
– Il ne saurait être indiqué de façon générale, par exemple en recourant à des pourcentages déterminés relatifs au degré de connaissance de la marque dans les milieux concernés, quand une marque a un caractère distinctif fort (point 24).
Arrêt du 22 juin 2000, C-425/98, « Marca Mode »
– La renommée d’une marque ne permet pas de présumer l’existence d’un risque de confusion du seul fait de l’existence d’un risque d’association au sens strict (point 41).
– L’article 5, paragraphe 1, sous b), de la directive ne peut pas être interprété en ce sens que • lorsqu’une marque possède un caractère distinctif particulier, soit intrinsèquement, soit grâce à
la notoriété dont elle jouit auprès du public, et • que, sans le consentement du titulaire de la marque, un tiers fait usage, dans la vie des
affaires, pour des produits ou des services identiques ou similaires à ceux pour lesquels la marque est enregistrée, d’un signe qui ressemble à ce point à la marque qu’il suscite la possibilité de l’associer à la marque, le droit exclusif du titulaire de la marque l’habilite à interdire à ce tiers cet usage du signe quand le caractère distinctif de la marque est tel qu’il n’est pas exclu que cette association puisse susciter une confusion (soulignement ajouté) (point 42).
Arrêt du 6 octobre 2005, C-120/04, « Medion »
- Un risque de confusion peut exister dans l’esprit du public, en cas d’identité des produits ou des services, lorsque le signe contesté est constitué au moyen de la juxtaposition, d’une part, de la dénomination de l’entreprise du tiers et, d’autre part, de la marque enregistrée, dotée d’un pouvoir distinctif normal, et que celle-ci, sans créer à elle seule l’impression d’ensemble du signe composé, conserve dans ce dernier une position distinctive autonome (point 37).
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 2
DOUBLE IDENTITÉ ET RISQUE DE CONFUSION
CHAPITRE 2
COMPARAISON DES PRODUITS ET SERVICES
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Table des matières
1 Introduction................................................................................................ 6 1.1 Pertinence...................................................................................................6 1.2 Classification de Nice: un point de départ................................................ 7
1.2.1 Sa nature comme outil de classification ......................................................... 7 1.2.2 Sa structure et sa méthodologie..................................................................... 7 1.2.3 Conclusions à tirer de la structure de la classification de Nice ...................... 8 1.2.4 Modifications dans la classification des produits et/ou services .................... 8
1.3 La base de données de l’OHMI pour la comparaison des produits et/ou services ............................................................................................. 9
1.4 Définition des produits et services (Terminologie)..................................9 1.4.1 Produits........................................................................................................... 9 1.4.2 Services ........................................................................................................ 10 1.4.3 Produits......................................................................................................... 11
1.5 Détermination des produits et/ou services............................................. 11 1.5.1 Le libellé correct ........................................................................................... 11 1.5.2 Le champ d’application pertinent.................................................................. 12 1.5.3 Le sens de l’expression «produits et/ou services»....................................... 13
1.6 Approche objective .................................................................................. 14 1.7 Exposé des motifs.................................................................................... 14
2 Identité...................................................................................................... 15 2.1 Principes généraux .................................................................................. 15 2.2 Identité complète: termes identiques ou synonymes ............................ 15 2.3 Identité partielle........................................................................................ 16
2.3.1 La marque antérieure inclut les produits et/ou services de la marque contestée ...................................................................................................... 16
2.3.2 La marque contestée inclut les produits et/ou services de la marque antérieure...................................................................................................... 17
2.3.3 Chevauchement ........................................................................................... 18
2.4 Pratique concernant l’utilisation des indications générales des intitulés de classe..................................................................................... 19
3 Similitude des produits et services ....................................................... 21 3.1 Principes généraux .................................................................................. 21
3.1.1 Facteurs de similitude................................................................................... 21 3.1.2 Définition des facteurs pertinents ................................................................. 22
3.2 Facteurs de similitude spécifiques ......................................................... 23 3.2.1 Nature ........................................................................................................... 23 3.2.2 Destination.................................................................................................... 26 3.2.3 Utilisation ...................................................................................................... 26 3.2.4 Complémentarité .......................................................................................... 27 3.2.5 Caractère concurrent .................................................................................... 30 3.2.6 Circuit de distribution .................................................................................... 31
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3.2.7 Le public pertinent ........................................................................................ 32 3.2.8 Origine habituelle (producteur/fournisseur) .................................................. 33
3.3 Relation entre différents facteurs............................................................ 35 3.3.1 Interaction entre les facteurs ........................................................................ 35 3.3.2 Importance de chaque facteur...................................................................... 36 3.3.3 Différents types de comparaisons: entre produits et produits, services et
services et produits et services .................................................................... 37 3.3.4 Degré de similitude....................................................................................... 37
Annexe I .......................................................................................................... 39
1 Pièces, composants et équipements..................................................... 39
2 Matières premières et produits semi-transformés ............................... 39
3 Accessoires ............................................................................................. 40
4 Services d’installation, d’entretien et de réparation............................. 41
5 Services de conseil ................................................................................. 41
6 Location et crédit-bail ............................................................................. 42 6.1 Location/crédit-bail par opposition à services connexes...................... 43 6.2 Location/crédit-bail par opposition à produits: en principe, toujours
dissemblables........................................................................................... 43
Annexe II ......................................................................................................... 44
1 Produits chimiques, produits pharmaceutiques et cosmétiques ....... 44 1.1 Produits chimiques (classe 1) par opposition à produits chimiques
(classes 3 et 5).......................................................................................... 44 1.2 Produits pharmaceutiques par opposition à produits
pharmaceutiques...................................................................................... 45 1.3 Produits pharmaceutiques par opposition à substances diététiques
à usage médical........................................................................................ 46 1.4 Produits pharmaceutiques par opposition à cosmétiques.................... 46 1.5 Produits pharmaceutiques par opposition à services ........................... 46
2 Industrie automobile ............................................................................... 47
3 Appareils/instruments électriques......................................................... 47
4 Industries de la mode et du textile ......................................................... 48 4.1 Matières premières ou semi-transformées par opposition à produits
finis............................................................................................................ 48 4.2 Produits textiles (classe 24) par opposition à vêtements (classe 25)... 48 4.3 Vêtements, chaussures et chapellerie (classe 25) ................................. 49
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4.4 Accessoires de mode............................................................................... 49 4.5 Vêtements, chaussures et chapellerie de sport (classe 25) par
opposition à articles de sport et de gymnastique (classe 28)............... 50 4.6 Stylisme (classe 42), services de tailleurs (classe 40) par opposition
à vêtements (classe 25) ........................................................................... 50
5 Alimentation, boissons et services de restauration ............................. 51 5.1 Ingrédients des aliments préparés.......................................................... 51 5.2 Ingrédient principal .................................................................................. 51 5.3 Boissons sans alcool (classe 32) par opposition à boissons
alcoolisées (à l’exception des bières) (classe 33).................................. 51 5.4 Bières (classe 32), boissons alcoolisées (à l’exception des bières)
(classe 33)................................................................................................. 52 5.5 Services de restauration (alimentation) par opposition à aliments et
boissons ................................................................................................... 52
6 Services de support offerts à d’autres entreprises .............................. 52
7 Services de vente au détail..................................................................... 54 7.1 Services de vente au détail par opposition à tout produit:
dissemblables........................................................................................... 55 7.2 Services de vente au détail de produits spécifiques par opposition
aux mêmes produits spécifiques: similaires à un faible degré............. 55 7.3 Services de vente au détail de produits spécifiques par opposition
aux produits spécifiques différents ou similaires: dissemblables ....... 55 7.4 Services de vente au détail par opposition aux services de vente au
détail ou aux services de vente au détail de produits spécifiques: identiques ................................................................................................. 56
7.5 Services de vente au détail de produits spécifiques par opposition aux services de vente au détail d’autres produits spécifiques: similaires................................................................................................... 56
7.6 Services auxquels s’appliquent les mêmes principes........................... 56 7.7 Services auxquels ne s’appliquent pas les mêmes principes............... 56
8 Services financiers.................................................................................. 57 8.1 Services bancaires (classe 36) par opposition à services
d’assurance (classe 36) ........................................................................... 57 8.2 Affaires immobilières (classe 36) par opposition à transactions
financières (classe 36) ............................................................................. 58 8.3 Cartes de crédit (classe 9) par opposition à services financiers
(classe 36)................................................................................................. 58
9 Transport, emballage et entreposage.................................................... 59 9.1 Transport de marchandises (classe 39) par opposition à tout produit 59
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9.2 Emballage et entreposage de marchandises (classe 39) par opposition à tout produit ......................................................................... 59
10 Technologie de l’information.................................................................. 59 10.1 Ordinateurs par opposition à logiciels ................................................... 59 10.2 Logiciels par opposition à appareils utilisant des logiciels .................. 60 10.3 Logiciels, applications téléchargeables et publications électroniques
téléchargeables ........................................................................................ 60 10.4 Logiciels spécifiques par opposition à logiciels spécifiques ............... 61 10.5 Ordinateurs et logiciels (classe 9) par opposition à programmation
informatique (classe 42)........................................................................... 61 10.6 Appareils pour l’enregistrement, la transmission, la reproduction du
son ou des images, ordinateurs et logiciels (classe 9) par opposition à services de télécommunications (classe 38)....................................... 62
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1 Introduction
1.1 Pertinence
La comparaison des produits et des services est essentiellement pertinente pour l’appréciation de l’identité conformément à l’article 8, paragraphe 1, point a), du RMC et du risque de confusion conformément à l’article 8, paragraphe 1, point b), du RMC. L’une des principales conditions de l’article 8, paragraphe 1, point a), du RMC concerne l’identité des produits et/ou services, tandis que l’article 8, paragraphe 1, point b), du RMC exige l’identité ou la similitude des produits et/ou services. Par conséquent, si tous les produits et/ou services sont jugés dissemblables, l’une des conditions figurant à l’article 8, paragraphe 1, du RMC n’est pas remplie et l’opposition doit être rejetée sans aborder les autres sections de la décision1.
Les critères pour l’appréciation de l’identité ou de la similitude pourraient également jouer un rôle lorsque la preuve de l’usage a été demandée et que cette preuve doit être appréciée afin de conclure si l’opposant a apporté la preuve d’un usage pour les mêmes produits et/ou services que ceux qui sont protégés. En particulier, il est important de déterminer si des produits et services pour lesquels la marque a été utilisée appartiennent à la classe des produits et services pour lesquels la marque a été enregistrée ou s’ils sont seulement similaires à ceux-ci, voire différents de ceux-ci (voir les Directives relatives à l’Opposition, partie 6, La preuve de l’usage).
De même, la preuve de l’usage des produits et/ou services pourrait également être pertinente lors de l’examen d’une demande au regard du caractère distinctif renforcé. Le cas échéant, il est souvent nécessaire pour l’examinateur de déterminer si le caractère distinctif renforcé couvre des produits et/ou services pour lesquels la marque antérieure est protégée et qui sont pertinents en l’espèce, c’est-à-dire ceux qui ont été considérés comme identiques ou similaires aux produits et/ou services de la marque communautaire contestée (voir les Directives relatives à l’Opposition, partie 2, Identité et risque de confusion, chapitre 4, Caractère distinctif).
En outre, le résultat de la comparaison des produits et/ou services joue un rôle important pour la définition de la partie du public à l’égard de laquelle il existe un risque de confusion. Le public pertinent est également pris en considération pour les produits et/ou services jugés identiques ou similaires (voir les Directives relatives à l’Opposition, partie 2, Identité et risque de confusion, chapitre 6, Public pertinent et degré d’attention).
La comparaison des produits et/ou services peut aussi être pertinente en vertu de l’article 8, paragraphe 3, du RMC qui exige l’identité ou «le lien étroit ou l’équivalence sur le plan commercial» des produits et/ou services (voir les Directives relatives à l’Opposition, partie 3, Marques demandées par un agent - article 8, paragraphe 3, du RMC) et au titre des dispositions applicables de la législation nationale en vertu de l’article 8, paragraphe 4, du RMC, car l’identité ou la similitude des produits et/ou services est souvent une condition selon laquelle l’usage d’une marque postérieure peut être interdite (voir les Directives relatives à l’Opposition, partie 4, Droits en vertu de l’article 8, paragraphe 4, du RMC).
1 De même, la comparaison des produits et des services est essentielle dans le cadre de la procédure en nullité, puisque, conformément à l'article 53, paragraphe 1, point a), du RMC, une marque communautaire enregistrée est déclarée nulle lorsque les conditions énoncées à l'article 8, paragraphe 1, du RMC sont réunies.
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1.2 Classification de Nice: un point de départ
Les produits et services à comparer sont classés selon la classification de Nice. Actuellement, la classification de Nice se compose de 34 classes (1 à 34) pour classer les produits et de 11 classes (35 à 45) pour classer les services.
1.2.1 Sa nature comme outil de classification
La classification de Nice a été créée dans le but d’harmoniser les pratiques nationales en matière de classification. Sa première édition est entrée en vigueur en 1961. Même si elle a connu plusieurs révisions, elle accuse parfois un retard par rapport à l’évolution rapide du développement des produits sur les marchés. En outre, le libellé des intitulés est parfois confus et imprécis.
Le règlement d’exécution, règle 2, paragraphe 4, du REMC, énonce expressément que la classification de Nice est établie à des fins exclusivement administratives et, à ce titre, ne constitue pas en soi une base permettant de tirer des conclusions quant à la similitude des produits et services.
Le fait que les produits ou services respectifs figurent dans la même classe de la classification de Nice n’est pas, en soi, une indication de similitude.
Exemples
Les animaux vivants sont différents des fleurs (classe 31). La publicité est différente de travaux de bureau (classe 35).
Même le fait que deux produits ou services spécifiques relèvent de la même indication générale d’un intitulé de classe ne les rend pas similaires en soi: voitures et bicyclettes - bien que les deux relèvent des véhicules de la classe 12 - ne sont pas considérées comme similaires.
En outre, les produits et/ou services indiqués dans différentes classes ne sont pas nécessairement considérés comme étant différents (voir l’arrêt du 16 décembre 2008, T-259/06, «Manso de Velasco», points 30 à 31).
Exemples
Les extraits de viande (classe 29) sont similaires aux épices (classe 30). L’organisation de voyages (classe 39) est similaire aux services d’hébergement
temporaire (classe 43).
1.2.2 Sa structure et sa méthodologie
Indépendamment des dispositions de la règle 2, paragraphe 4, du REMC, la classification peut servir d’outil pour identifier les caractéristiques communes de certains produits et services.
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De nombreuses classes de la classification de Nice sont structurées selon des facteurs tels que la fonction, la composition et/ou l’usage prévu qui peuvent être pertinents dans la comparaison des produits et services. Par exemple:
La classe 1 regroupe des produits chimiques essentiellement en fonction de leurs propriétés chimiques (nature), plutôt que de leur application spécifique. En revanche, la classe 3 couvre tous les articles, qu’il s’agisse des produits de nettoyage ou des produits pour l’hygiène personnelle ou de beauté. Bien qu’ils puissent, par leur nature, être également classés comme produits chimiques, c’est leur utilisation spécifique qui permet d’établir une distinction et par conséquent un classement différent.
De même, c’est en raison de leur nature que la plupart des articles en cuir sont classés dans la classe 18, alors que les vêtements en cuir relèvent de la classe 25 puisqu’ils sont destinés à un usage très précis, à savoir l’habillement des personnes et la protection contre les éléments.
1.2.3 Conclusions à tirer de la structure de la classification de Nice
La structure des intitulés de classe n’est pas uniforme et ne suit pas la même logique. Certaines classes sont composées d’une seule indication générale qui, par sa définition couvre déjà presque tous les produits et/ou services inclus dans cette classe (classe 15 instruments de musique; classe 38 télécommunications). D’autres comprennent de nombreuses indications générales, certaines étant très larges et d’autres très spécifiques. Par exemple, l’intitulé de la classe 9 comprend plus de 30 termes, allant des appareils et instruments scientifiques aux extincteurs.
Exceptionnellement, il existe des intitulés de classe contenant des indications générales qui comprennent une autre indication générale et qui sont par conséquent identiques, par exemple, le matériel pour pansements de la classe 5 comprend les emplâtres de la classe 5. C’est particulièrement le cas lorsqu’une indication spécifique d’un intitulé de classe est uniquement mentionnée pour préciser qu’elle n’appartient pas à une autre classe, bien qu’elle soit déjà incluse dans une autre indication plus large de l’intitulé de classe. Exemple: les adhésifs (matières collantes) destinés à l’industrie sont inclus dans les produits chimiques destinés à l’industrie de la classe 1. Sa référence est essentiellement destinée à les distinguer des adhésifs classés dans la classe 16 et qui sont destinés à la papeterie ou au ménage.
Pour conclure: la classification de Nice donne des indications qui peuvent être utilisées dans l’appréciation de l’identité ou de la similitude des produits et/ou services. Toutefois, sa structure et son contenu ne sont pas cohérents. Par conséquent, chaque intitulé ou terme spécifique doit être analysé en fonction de la classe spécifique sous laquelle il est classé. Comme précisé auparavant, la classification de Nice vise essentiellement à classer les produits et/ou services à des fins administratives et n’est pas déterminante quant à leur comparaison.
1.2.4 Modifications dans la classification des produits et/ou services
Normalement, lors de chaque révision de la classification de Nice, des modifications sont apportées à la classification des produits et/ou services (en particulier le transfert de produits et/ou services entre différentes classes) ou au libellé des intitulés. Le cas échéant, la liste des produits et/ou services de la marque antérieure, mais aussi celle
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de la marque contestée doivent être interprétées en fonction de l’édition de la classification de Nice en vigueur au moment de son dépôt.
Exemple
Les services juridiques ont été transférés de la classe 42 à la classe 45 avec la 8e édition de la classification de Nice. La nature de ces services n’a pas été modifiée.
1.3 La base de données de l’OHMI pour la comparaison des produits et/ou services
La base de données pour la comparaison des produits et services est un outil de recherche visant à aider et à soutenir les examinateurs dans l’appréciation de la similitude des produits et services. La base de données est destinée à harmoniser la pratique de l’appréciation de la similitude des produits et services et à garantir la cohérence des décisions d’opposition. La base de données doit être consultée.
Cette base de données repose sur la comparaison de paires spécifiques de produits et services. Une «paire» compare deux «expressions». Une «expression» se compose d’un numéro de classe de la classification de Nice (1 à 45) et d’un élément textuel, c’est-à-dire un produit ou un service particulier (y compris les classes de produits et services tels que «vêtements» ou «éducation»). Il existe cinq résultats de recherche possibles: identité, degré de similitude élevé, similitude, faible degré de similitude et dissemblance. Dans le cas des divers degrés de similitude, la base de données indique les critères sur lesquels se fondent ses résultats.
La base de données est constamment mise à jour et, le cas échéant, révisée afin de constituer une source de référence complète et fiable.
Étant donné que la base de données donne ou donnera des réponses à des comparaisons spécifiques, les Directives mettent l’accent sur la définition des principes généraux et leur application dans la pratique.
1.4 Définition des produits et services (Terminologie)
1.4.1 Produits
Le règlement ne donne pas de définition des produits et services. Même si la classification de Nice fournit quelques explications générales à cet effet dans ses remarques liminaires, elle s’abstient de fixer clairement les critères permettant d’établir une distinction entre les produits et les services.
En principe, un produit représente tout type d’article qui peut être commercialisé. Les produits comprennent les matières premières (matières plastiques à l’état brut de la classe 1), les produits semi-finis (produits en matières plastiques mi- ouvrées de la classe 17) et des produits finis (récipients en matières plastiques pour le ménage de la classe 21). Ils comprennent les produits naturels et manufacturés, tels que les produits agricoles de la classe 31 et les machines et les machines-outils de la classe 7.
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Cependant, il est parfois malaisé de déterminer si les produits comprennent uniquement des produits matériels tangibles, contrairement aux services, qui sont intangibles. La définition et par conséquent, l’étendue de la protection sont particulièrement pertinentes lorsqu’il s’agit de «produits» tels que «l’électricité», qui sont intangibles. Cette question a déjà trouvé une réponse lors de l’examen de la classification et, en général, ne posera pas de problème dans la comparaison des produits et services.
1.4.2 Services
Un service représente toute activité ou tout avantage qu’une partie peut offrir à une autre, qui est intangible et n’aboutit pas au transfert de propriété d’un objet matériel quelconque.
Exemple
La réparation de voiture est un service.
Contrairement aux produits, un service est toujours un actif incorporel. Les services comprennent les activités économiques fournies à des tierces parties qui ne relèvent pas de la production initiale, de la fabrication ou de la vente de produits.
.
Faire la promotion de ses propres produits n’est pas un service, mais l’exploitation d’une agence de publicité (conception de campagnes de publicité pour le compte de tiers) l’est. Les termes figurant sur la liste, tels que publicité, doivent par conséquent servir à couvrir uniquement la définition ci-dessus des services.
La vente ou la distribution de ses propres produits n’est pas un service. Les services de commerce de détail sont destinés à couvrir les services liés à la vente effective de produits, tels que le fait d’offrir au client l’occasion de voir, comparer ou tester les produits de façon pratique.
La valeur économique indépendante constitue une indication pour qu’une activité soit considérée comme un service selon le droit des marques, c’est-à-dire que ce service est généralement fourni sous réserve d’une certaine forme de compensation (monétaire). Dans le cas contraire, il pourrait n’être qu’une simple activité accessoire fournie avec ou après l’achat d’un produit particulier.
Exemple
La livraison, y compris le transport de meubles qui ont été achetés précédemment, n’est pas un service indépendant relevant des services de transport de la classe 39.
Toutefois, le but lucratif n’est pas nécessairement un critère permettant de déterminer si une activité peut être considérée comme un «service» (voir l’arrêt du 9 décembre 2008, C-442/07, «Radetzky», points 16 à 18). Il convient davantage de se demander si le service est associé à un segment de marché et est fourni à des clients indépendants, plutôt que d’examiner la manière ou la forme selon laquelle la compensation est finalement réalisée.
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1.4.3 Produits
Dans le langage courant, le terme «produits» est utilisé à la fois pour les produits et les services, par exemple «produits financiers» au lieu de «services financiers». Qu’un terme soit décrit comme un «produit» dans le langage courant ne revêt aucune importance quant à son classement comme produit ou service.
1.5 Détermination des produits et/ou services
1.5.1 Le libellé correct
Tout d’abord, le libellé correct des listes de produits et/ou services analysés doit être identifié.
1.5.1.1 Marques communautaires
La demande de marque communautaire est publiée dans toutes les langues officielles de la Communauté européenne (article 120, paragraphe 1, du RMC). De même, toutes les inscriptions au registre des marques communautaires sont faites dans toutes ces langues (article 120, paragraphe 2, du RMC). Les publications à la fois des demandes et des inscriptions portées au registre sont faites dans le Bulletin des marques communautaires (règle 85, paragraphes 1 et 2, du REMC).
Dans la pratique, des différences occasionnelles peuvent être constatées entre:
la traduction du libellé de la liste des produits et/ou services d’une marque communautaire (demande ou enregistrement) publiée dans le Bulletin des marques communautaires;
le libellé original tel qu’il a été déposé.
En cas de différence, la version définitive de la liste des produits et services est:
si la première langue est une langue de l’Office, le texte dans la première langue.
si la première langue de la demande ne fait pas partie des cinq langues de l’Office, le texte établi dans la deuxième langue indiquée par le demandeur (voir l’article 120, paragraphe 3, du RMC).
Cette règle s’applique indépendamment du fait que la marque communautaire (ou la demande de marque communautaire) constitue le droit antérieur ou la demande contestée.
1.5.1.2 Marques nationales antérieures et enregistrements internationaux
La liste des produits et services des marques antérieures sur laquelle est fondée l’opposition doit être présentée dans la langue de la procédure d’opposition (règle 19, paragraphe 3, du REMC). L’Office n’exige pas de traduction certifiée et accepte des traductions simples, établies par l’opposant ou son représentant. Normalement, l’Office
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ne fait pas usage de sa faculté en vertu de la règle 98, paragraphe 1, du REMC, 2e phrase, à exiger que la traduction soit certifiée par un traducteur assermenté ou officiel. Lorsque le représentant ajoute une déclaration selon laquelle la traduction est fidèle à l’original, l’Office ne la remettra pas en cause. L’autre partie peut toutefois remettre en cause l’exactitude de la traduction au cours de la phase contradictoire de la procédure. En outre, étant donné que la traduction doit reproduire la structure du document original (règle 98, paragraphe 1, du REMC), des incohérences évidentes peuvent également être remarquées par l’examinateur (par exemple, la liste de la langue d’origine se compose de trois expressions tandis que la traduction s’étend sur deux pages, etc.). Le cas échéant, le problème devra être clarifié par l’examinateur dans la décision finale.
Pour les enregistrements internationaux en vertu de l’arrangement ou du protocole de Madrid, la langue dans laquelle l’enregistrement international a été effectué est définitive (français, anglais ou espagnol). Toutefois, lorsque la langue de la procédure d’opposition est différente de celle de l’enregistrement international, une traduction doit être fournie.
1.5.2 Le champ d’application pertinent
La comparaison des produits et services doit être fondée sur le libellé indiqué dans les listes respectives des produits et/ou services. L’usage réel ou prévu des produits et des services qui n’est pas énoncé dans la liste des produits et/ou services n’est pas pertinent aux fins de l’examen (voir l’arrêt du 16 juin 2010, T-487/08, «Kremezin», point 71).
Toutefois, si la preuve de l’usage de la marque antérieure est valablement requise et la preuve apportée n’est suffisante que pour une partie des produits et/ou services de la liste des produits et/ou services, la marque antérieure n’est réputée enregistrée que pour ces produits et/ou services (article 42, paragraphe 2, du RMC) et, par conséquent l’examen est limité à ces produits et/ou services (voir plus en détail, partie 6 - La preuve de l’usage).
En outre, dans le cas de la marque antérieure, seuls sont pertinents les produits et services sur lesquels l’opposition est valablement fondée. Par conséquent, il ne sera pas tenu compte des produits et/ou services:
qui ne peuvent pas être pris en considération pour des raisons de recevabilité;
qui n’ont pas été dûment justifiés (par exemple, seulement une traduction partielle de la liste des produits et/ou services a été déposée);
sur lesquels l’opposition n’est pas ou n’est plus fondée.
De même, seuls les produits et services de la demande contestée contre lesquels l’opposition est dirigée sont pris en considération. En conséquence, les restrictions au cours de la procédure concernant soit la liste des produits et/ou services de la demande, soit l’étendue de l’opposition, ou les deux à la fois, limiteront les produits et services qui doivent être comparés.
En outre, une analyse du libellé de la liste des produits et/ou services pourrait s’avérer nécessaire pour déterminer l’étendue de la protection de ces produits et services. Cela est particulièrement vrai dans les cas où les termes en particulier, à savoir, ou des
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équivalents sont utilisés afin de montrer la relation entre un produit individuel et une catégorie plus large.
Le terme en particulier (ou par exemple, tel que, y compris ou un autre équivalent) indique que les produits et/ou services spécifiques ne sont que des exemples d’éléments inclus dans la catégorie, et que la protection n’est pas limitée à ces derniers. En d’autres termes, il introduit une liste non exhaustive d’exemples (en ce qui concerne l’utilisation de «en particulier», voir l’arrêt du 9 Avril 2003, T-224/01, «Nu-tride»).
En revanche, le terme à savoir (ou exclusivement ou un autre équivalent) est exclusif et restreint le champ de l’enregistrement uniquement aux produits spécifiquement énumérés.
Par exemple, dans le cas des produits chimiques destinés à l’industrie, à savoir les matières premières de l’industrie des plastiques, seules les matières premières de l’industrie des plastiques doivent être comparées avec les produits de l’autre marque.
Il convient de rappeler que l’utilisation de virgules dans la liste des produits et/ou services sert à séparer les éléments au sein d’une catégorie identique ou similaire. L’utilisation d’un point-virgule signifie une séparation entre les termes. La séparation des termes par une ponctuation différente peut entraîner des modifications de leur sens et peut conduire à une appréciation différente lorsque l’on compare les produits et/ou services.
Par exemple, dans «logiciel destiné aux machines industrielles; extincteurs» de la classe 9, l’inclusion d’un point-virgule signifie que le terme «extincteurs» doit être considéré comme une catégorie indépendante de produits, peu importe si l’intention était de protéger un logiciel à utiliser dans le domaine des machines industrielles et des extincteurs d’incendie.
1.5.3 Le sens de l’expression «produits et/ou services»
Une fois que le libellé des produits et services à analyser a été déterminé, leur sens doit être défini.
Dans certains cas, la signification exacte est immédiatement évidente à partir de la liste des produits et/ou services des marques où une description plus ou moins détaillée des produits et des services sera souvent fournie. Par exemple, le libellé ceintures en tant que vêtements exclut par définition les ceintures de sécurité ou les courroies industrielles.
En cas de doute sur le sens exact des termes utilisés dans la liste des produits et/ou services, ces termes doivent être interprétés à la fois à la lumière de la classification de Nice et d’un point de vue commercial.
Par conséquent, les ceintures de la classe 25 sont, en raison de leur classification, des vêtements.
Lorsque la signification des termes dans un contexte sémantique, commercial et /ou en vertu de la classification de Nice est ambiguë ou laisse des doutes, le sens qu’ils ont selon la classification de Nice prévaut.
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Vêtements, par exemple, renvoie à «vêtements collectivement» (voir par exemple, Oxford English Dictionary) et donc à des articles portés pour couvrir le corps, tels que les chemises, les robes, les pantalons, etc. Même si la définition que l’on trouve dans les dictionnaires généraux n’exclut pas explicitement le terme chaussures, le fait qu’il apparaisse dans la classification de Nice en tant qu’élément distinct dans la même classe 25 mène à la conclusion que les vêtements et les chaussures ne sont pas identiques mais similaires (confirmé par l’arrêt du 13 juillet 2004, T- 115/02, «a (fig)», point 26).
Toutefois, cela ne signifie pas que deux indications générales d’un intitulé de classe ne peuvent jamais être considérées comme identiques. Comme indiqué ci-dessus, la structure des intitulés de classe n’est pas uniforme. Certaines indications générales incluses dans les intitulés de classe peuvent en englober d’autres.
Exemple
Viande et volaille sont identiques (classe 29).
1.6 Approche objective
La comparaison des produits et services en cause doit être réalisée sans tenir compte du degré de similitude des signes litigieux ou du caractère distinctif de la marque antérieure. C’est seulement au cours de l’appréciation globale d’une décision que les examinateurs prendront en considération tous les facteurs pertinents.
La classification des produits ou des services n’est pas concluante, parce que des produits et/ou services similaires peuvent être classés dans différentes classes, tandis que des produits et/ou services dissemblables peuvent relever de la même classe.
L’identité ou la similitude des produits et/ou services en cause doit être déterminée sur une base objective.
Les conclusions doivent être fondées sur les réalités du marché, c’est-à-dire sur les usages établis dans le domaine concerné de l’industrie ou du commerce. Ces usages, en particulier les pratiques commerciales, sont dynamiques et évoluent constamment. Par exemple, de nos jours, le téléphone portable cumule de nombreuses fonctions, y compris celles d’un outil de communication et d’un appareil photo.
Dans certains cas, l’examinateur peut uniquement fonder sa décision sur les faits et les éléments de preuve présentés par les parties. Les éléments qui ne découlent pas des preuves produites, ou qui ne sont pas communément connus, ne doivent pas faire l’objet de spéculation ou mener d’office à une enquête approfondie (voir l’arrêt du 9 février 2011, T-222/09, «Alpharen», points 31 et 32).
1.7 Exposé des motifs
L’examinateur est tenu de motiver, dans sa décision, les résultats de la comparaison (identité, similitude ou dissemblance) pour chacun des produits et services indiqués dans la demande d’enregistrement, indépendamment de la manière dont la demande a été formulée. Toutefois, lorsque la même conclusion est tirée pour une catégorie ou un groupe de produits ou de services, l’examinateur peut se limiter à une motivation globale pour tous les produits ou les services concernés, pour autant qu’ils présentent
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des caractéristiques analogues (voir par analogie l’ordonnance du 18 mars 2010, C-282/09, «PAYWEB CARD», points 37 et 38, l’arrêt du 12 avril 2011, T-28/10, «EURO AUTOMATIC PAYMENT», point 54 et l’arrêt du 17 octobre 2013, C-597/12P, «ZEBEXIR», points 26 et 27).
2 Identité
2.1 Principes généraux
L’identité est généralement définie comme «la qualité ou l’état d’être la même chose en termes de substance, de composition, de nature, de propriétés ou de qualités particulières dans le cadre d’une comparaison» (Oxford English Dictionary).
L’identité n’existe pas seulement lorsque les produits et services correspondent parfaitement (les mêmes termes ou synonymes sont utilisés), mais également lorsque et dans la mesure où les produits et/ou services de la marque contestée entrent dans la classe plus large de la marque antérieure ou lorsque et dans la mesure où – à l’inverse – un terme plus large de la marque contestée comprend les produits et/ou services les plus spécifiques de la marque antérieure. Il peut aussi y avoir identité lorsque la comparaison de deux catégories larges présente une correspondance partielle («chevauchement»). Par conséquent, une distinction peut être faite entre les cas d’«identité complète» et d’«identité partielle».
L’identité ne doit pas être établie sur la base de facteurs de similitude (voir la section 3.1.1 ci-dessous).
2.2 Identité complète: termes identiques ou synonymes
L’identité des produits et/ou services en litige doit être établie sur la base du libellé des parties pertinentes des listes de produits et/ou services des deux marques qui ont été identifiées conformément aux principes énoncés ci-dessus. L’identité est évidente lorsque les produits et/ou services à comparer sont répertoriés exactement dans les mêmes termes.
Exemple
Les véhicules sont identiques aux véhicules.
Lorsque ce n’est pas le cas, les termes des listes respectives de produits et/ou services doivent être interprétés afin de démontrer qu’ils sont en effet synonymes, c’est-à-dire que leur signification est la même. L’interprétation peut être faite à partir des définitions de dictionnaires, des expressions de la classification de Nice et en particulier en tenant compte du point de vue commercial.
Exemples
Vélo est un synonyme de bicyclette. Ces produits sont identiques.
La signification de l’expression smokers’ articles (articles pour fumeurs) de la classe 34 fait référence à des objets individuels qui sont utilisés en étroite relation avec le tabac ou les produits du tabac. Dans les anciennes éditions de la
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classification de Nice ces produits ont été appelés smokers’ requisites (articles pour fumeurs). Par conséquent, malgré un terme différent utilisé dans l’intitulé actuel, ces produits sont identiques.
D’un point de vue commercial, les services de stations thermales et les services de bien-être sont les mêmes et sont donc identiques.
Toutefois, si un libellé identique est utilisé, mais que les produits sont classés dans différentes classes, cela signifie généralement que ces produits ne sont pas identiques:
Exemples
«Drills» (foreuses) (machines-outils) de la classe 7 ne sont pas identiques aux «drills» (perçoirs) (outils à main) de la classe 8.
Lasers (non à usage médical) de la classe 9 ne sont pas identiques aux lasers (à usage médical) de la classe 10.
Même s’ils peuvent être similaires, la classification en différentes classes indique qu’ils ont une nature, une destination ou une utilisation différente, etc.
Le même raisonnement ne s’applique pas si le classement différent est uniquement dû à la révision de la classification de Nice ou si les produits et/ou services sont manifestement «classés» à tort en raison d’une erreur évidente, par exemple, une erreur de transcription.
Exemples
Les cartes à jouer (classe 16 – 7e édition) sont identiques aux cartes à jouer (classe 28 – 10e édition).
Les produits pharmaceutiques (classe 15 – évidente erreur de dactylographie) sont identiques aux produits pharmaceutiques (classe 5).
2.3 Identité partielle
2.3.1 La marque antérieure inclut les produits et/ou services de la marque contestée
Lorsque la liste des produits et/ou services du droit antérieur comprend une indication générale ou une large catégorie qui couvre les produits et/ou services de la marque contestée dans leur intégralité, ces produits et services seront identiques (voir l’arrêt du 17 janvier 2012, T-522/10, «Hell», point 36).
Marque antérieure
Marque contestée
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Exemples
Hébergement temporaire (droit antérieur, classe 43) inclut les services d’hébergement en auberge de jeunesse (marque contestée, classe 43). Par conséquent, ces services sont identiques.
Les pâtes alimentaires (droit antérieur, classe 30) incluent les spaghettis (marque contestée, classe 30). Les produits litigieux sont considérés comme identiques.
2.3.2 La marque contestée inclut les produits et/ou services de la marque antérieure
Si les produits et/ou services désignés par la marque antérieure sont couverts par une indication générale ou une catégorie plus générale utilisée dans la marque contestée, ces produits et/ou services doivent être considérés comme identiques, car l’Office ne peut pas disséquer d’office la catégorie plus générale de produits et/ou services du demandeur/titulaire (voir l’arrêt du 7 septembre 2006, T-133/05, «Pam-Pim’s Baby- Prop», point 29).
Exemples
Les jeans de la marque antérieure (classe 25) sont inclus dans les vêtements (marque contestée, classe 25). Ces produits sont considérés comme identiques.
Les vélos de la marque antérieure (classe 12) sont inclus dans les véhicules (marque contestée, classe 12). Ces produits sont considérés comme identiques.
Le demandeur/titulaire peut toutefois limiter la liste de produits et/ou services d’une façon qui exclut l’identité, mais pourrait néanmoins conduire à une similitude (voir l’arrêt du 24 mai 2011, T-161/10, «E-Plex», point 22).
Les jeans de la marque antérieure (classe 25) sont inclus dans les vêtements (classe 25). Le demandeur/titulaire limite la précision aux vêtements, à l’exclusion des jeans. Ces produits ne sont plus identiques mais restent similaires.
Les vélos de la marque antérieure (classe 12) sont inclus dans les véhicules (marque contestée, classe 12). Le demandeur/titulaire limite la précision aux véhicules, à savoir automobiles. Ces produits ne sont plus identiques ou similaires.
Marque antérieure
Marque contestée
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Si le demandeur/titulaire ne limite pas la liste de produits et/ou services, ou le fait de manière insuffisante, l’Office considérera l’indication générale ou le terme/la catégorie large de la marque contestée comme une seule unité et jugera qu’il existe une identité.
Si la marque contestée couvre une indication générale ou un terme une catégorie plus généraux, ainsi que les éléments spécifiques qui y figurent, tous ces éléments doivent être comparés avec les produits et/ou services antérieurs spécifiques. Le résultat de l’identité constatée avec l’indication générale ou le terme ou la catégorie plus généraux n’affecte pas automatiquement les éléments spécifiques.
Exemple
La marque contestée couvre les véhicules (indication générale) ainsi que les vélos, aéronefs, trains (inclus dans les véhicules). Lorsque la marque antérieure est protégée pour les vélos, l’identité sera constatée en ce qui concerne les véhicules et les vélos, mais pas pour les aéronefs ou les trains.
Toutefois, si la marque contestée couvre une indication générale ou un terme ou une catégorie plus généraux et des termes spécifiques qui ne sont pas énumérés indépendamment, mais uniquement à titre d’exemples, la comparaison est différente dans la mesure où seule l’indication générale ou le terme ou la catégorie plus généraux doivent être comparés.
Exemple
La marque contestée couvre les véhicules, en particulier vélos, aéronefs, trains. La marque antérieure est protégée pour les vélos. Les produits litigieux sont considérés comme identiques.
Le demandeur/titulaire peut éviter ce résultat par la suppression de l’indication générale véhicules, de l’expression en particulier, et de la catégorie spécifique vélos.
Lorsque la liste de produits et/ou services de la marque contestée se lit comme suit: véhicules, à savoir vélos, aéronefs, trains, la comparaison est différente dans la mesure où seuls les éléments spécifiques doivent être comparés. Dans ce cas, seuls les vélos contestés sont identiques aux produits antérieurs.
2.3.3 Chevauchement
Si deux catégories de produits et/ou services correspondent partiellement («chevauchement») il peut y avoir identité si:
a. elles sont classées dans la même classe;
Marque antérieure Marque contestée
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b. elles relèvent de la même indication générale de l’intitulé de classe; et c. il est impossible de distinguer clairement les deux produits et/ou services.
Exemples
Produits antérieurs Produits contestés Élément concomitant
Vêtements d’extérieur pour femmes. Vêtements en cuir Vêtements d’extérieur en cuir pour femmes
Composants et pièces détachées pour véhicules terrestres
Sièges de véhicule2 Sièges pour véhicules terrestres
Pain Produits de boulangerielongue conservation. Pain longue conservation
Ustensiles de cuisine électriques Thermomètres
3 Thermomètres électriques de cuisine
Il en va de même lorsqu’une indication générale d’un intitulé de classe est partiellement incluse dans une autre indication générale du même intitulé de classe.
Exemples
Produits antérieurs Produits contestés Élément concomitant
Savons Préparations pour nettoyer Savons pour nettoyer
Instruments scientifiques Instruments optiques
Instruments optiques scientifiques, ex.: microscopes
Fongicides Produits pharmaceutiques Produits pharmaceutiques fongicides
Le cas échéant, il est impossible pour l’Office de filtrer ces produits à partir des catégories précitées. Étant donné que l’Office ne peut pas disséquer d’office la catégorie plus générale de produits du demandeur/titulaire, ils sont considérés comme identiques.
Dans le premier exemple présenté ci-dessus, le résultat varie bien sûr si savons est limité aux savons pour usage personnel. En l’espèce, les produits ne sont plus inclus dans l’intitulé préparations pour nettoyer de la classe 3, ce dernier étant uniquement destiné à l’usage domestique.
2.4 Pratique concernant l’utilisation des indications générales des intitulés de classe
Après la communication n° 2/12 du 20/06/2012 du président, l’Office ne s’oppose pas à l’utilisation de l’une quelconque des indications générales des intitulés de classe à condition que cette identification soit suffisamment claire et précise. 4.
2 Arrêt du 9 septembre 2008, T-363/06, «Magic seat», point 22. 3 Arrêt du 19 janvier 2011, T-336/09, «Topcom», point 34. 4 Voir à cet égard, la «Communication commune relative à la pratique commune en matière d’indications générales figurant dans les intitulés de classes de la classification de Nice».
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Conformément à la communication précitée, l’Office interprète l’utilisation de toutes les indications générales de l’intitulé de classe comme suit:
Marques communautaires demandées au plus tard le 20/06/2012: En ce qui concerne les marques communautaires enregistrées et les demandes déposées avant l’entrée en vigueur de la communication ci-dessus5 qui utilisent toutes les indications générales énumérées dans l’intitulé de classe d’une classe particulière, l’Office considère que l’intention du demandeur était de couvrir non seulement le sens littéral des indications générales mais aussi les produits ou services répertoriés dans la liste alphabétique de cette classe dans l’édition de la classification de Nice en vigueur au moment du dépôt de la demande.
Dans l’arrêt du 31 janvier 2013, T-66/11, «Babilu», points 49 et 50, le Tribunal a confirmé cette interprétation de l’étendue de la protection des marques communautaires antérieures.
Marques communautaires demandées le 21/06/2012 ou après: Le demandeur d’une marque qui utilise toutes les indications générales d’un intitulé de classe particulier de la classification de Nice pour identifier les produits ou services pour lesquels la protection de la marque est demandée doit préciser si sa demande d’enregistrement est destinée à couvrir tous les produits ou services inclus dans la liste alphabétique de la classe particulière concernée ou seulement certains de ces produits ou services. Si le demandeur n’indique pas une telle intention, les indications générales (à condition que celles-ci respectent les exigences de clarté et de précision) seront interprétées de façon littérale.
L’OHMI et tous les offices nationaux des marques de l’Union européenne ont publié une communication commune sur l’application de l’arrêt «IP Translator» (ci-après: «communication commune sur l’application de l’arrêt IP Translator»). Selon cette communication, l’OHMI interprète l’étendue de la protection des marques nationales contenant des intitulés de classe comme suit:
Marques nationales antérieures déposées avant l’arrêt «IP Translator»: En principe, l’OHMI accepte la pratique en matière de dépôt de tous les offices nationaux des marques de l’Union européenne. Les marques nationales déposées avant l’arrêt «IP Translator» bénéficient de l’étendue de protection accordée par l’office national. La majorité des offices nationaux interprètent littéralement les intitulés de classe de leurs marques. Pour ces marques, l’OHMI interprète également les intitulés de classe sur la base du sens naturel et habituel de chaque indication générale.
Seuls huit offices nationaux n’interprètent pas les intitulés de classe de leurs propres marques déposées avant l’arrêt «IP Translator» sur la base de leur sens naturel et habituel: la Bulgarie, la Finlande, la Grèce, la Hongrie, l’Italie, la Lituanie, Malte et la Roumanie (voir le tableau 1 de la communication commune). L’OHMI interprète ces marques nationales comme couvrant les intitulés de classe plus la liste alphabétique de l’édition de la classification de
5 Cette communication est entrée en vigueur le 21.06.2012.
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Nice au moment du dépôt (même si l’office national interprète l’intitulé de classe comme couvrant tous les produits et services de la classe).
Marques nationales antérieures déposées après l’arrêt «IP Translator»: L’OHMI interprète tous les produits et services couverts par les marques nationales sur la base de leur sens naturel et habituel (voir le tableau 5 de la communication commune).
Afin de déterminer l’étendue de la protection, les principes susmentionnés doivent être appliqués. Seuls les produits ou services considérés comme couverts en application de ces principes seront pris en considération lors de la comparaison entre les produits et/ou services.
3 Similitude des produits et services
3.1 Principes généraux
3.1.1 Facteurs de similitude
En règle générale, deux éléments sont définis comme étant similaires lorsqu’ils ont certaines caractéristiques en commun.
La similitude des produits et services a été traitée dans la jurisprudence de la Cour de justice dans l’affaire Canon (arrêt du 29 septembre 1998, C-39/97, «Canon»). La Cour de justice a estimé que pour apprécier la similitude entre les produits, il y a lieu de tenir compte de tous les facteurs pertinents qui caractérisent le rapport entre ces produits. Ces facteurs incluent, en particulier, leur nature, leur destination, leur utilisation ainsi que leur caractère concurrent ou complémentaire (point 23).
Le terme «en particulier» montre que l’énumération des facteurs ci-dessus par la Cour n’est donnée qu’à titre indicatif. La similitude des produits et des services ne peut pas dépendre d’un certain nombre de critères fixes et limités qui pourraient généralement être déterminés à l’avance, avec un effet uniforme dans tous les cas de figure. Il existe éventuellement d’autres facteurs, en plus ou au lieu de ceux qui sont mentionnés par la Cour, qui peuvent être pertinents pour le cas particulier.
Il convient par conséquent de prendre en considération les facteurs suivants.
Facteurs énumérés dans l’arrêt Canon:
la nature; la destination; l’utilisation; la complémentarité; le caractère concurrent.
Facteurs supplémentaires:
les circuits de distribution; le public pertinent; l’origine habituelle des produits et/ou services.
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Ces facteurs seront expliqués plus en détail ci-dessous (voir «Les facteurs de similitude spécifiques»); ils sont également utilisés dans la base de données de l’Office dans le cade de la comparaison des produits et des services. Il convient toutefois de noter que même si la base de données est limitée à ces huit facteurs, il peut exister des cas spécifiques où d’autres critères sont pertinents.
3.1.2 Définition des facteurs pertinents
La comparaison doit mettre l’accent sur l’identification des facteurs pertinents qui caractérisent précisément les produits et/ou services à comparer. Par conséquent, la pertinence d’un facteur particulier dépend des produits et/ou services correspondants à comparer.
Exemple
Lorsque l’on compare les skis et les chaussures de ski, il est évident qu’ils ne coïncident pas du point de vue de leur nature, de leur utilisation et qu’ils ne sont pas concurrents. Par conséquent, la comparaison doit mettre l’accent sur leur destination, leur caractère complémentaire, leurs circuits de distribution, leur origine habituelle et/ou le public pertinent.
Par conséquent, les facteurs pertinents et les fonctions qui caractérisent un produit ou un service peuvent être différents en fonction des produits et services par rapport auxquels ils doivent être comparés.
Il n’est pas nécessaire de répertorier tous les facteurs possibles. Il importe toutefois de savoir si les relations entre les facteurs pertinents sont suffisamment proches pour constater une similitude.
Les questions suivantes pourraient être posées:
Comment les produits et/ou services seront-t-ils utilisés? Quelle est leur destination? Quelle est la probabilité pour qu’ils coïncident du point de vue du producteur? Les trouve-t-on habituellement dans le même point de vente, magasin ou dans le
même rayon d’un supermarché?
Si les facteurs ne peuvent pas encore être définis à partir du libellé des produits et/ou services, des informations supplémentaires peuvent être extraites des entrées de dictionnaires. Toutefois, les entrées de dictionnaires doivent être analysées par rapport aux réalités commerciales et en particulier en tenant compte de la classification de Nice.
Exemple
Selon le dictionnaire, ice (glace) est le singulier d’ices (glaces) et signifie entre autres «(une) crème glacée» ou «la glace» (The Oxford English Dictionary, édition en ligne). Si la comparaison d’ices (glaces comestibles) et de ice (glace à rafraîchir) de la classe 30 était uniquement établie sur la base de la définition du dictionnaire, cela conduirait à une conclusion erronée selon laquelle ice (glace à rafraîchir) est identique à ices (glaces comestibles). Toutefois, étant donné que les termes ices et ice sont tous deux mentionnés dans la liste des produits de la classe 30, ices doit être compris comme «glaces comestibles», tandis que ice
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doit avoir le sens de «glace à rafraîchir». Bien qu’elles coïncident du point de vue de la composition dans la mesure où toutes les deux sont composées (en partie) d’eau gelée, leur nature commerciale est différente: tandis que l’une est un aliment, l’autre est un produit auxiliaire pour conserver et/ou rafraîchir des aliments. Cet exemple montre que la classification de Nice, ainsi que le point de vue commercial prévalent sur la définition du dictionnaire.
Une fois que les facteurs pertinents ont été identifiés, l’examinateur doit déterminer la relation qui existe entre eux et le poids qui leur est attribué (voir ci-dessous «Relation entre différents facteurs»).
3.2 Facteurs de similitude spécifiques
Les sections suivantes définissent et illustrent les différents facteurs de la similitude des produits et services.
3.2.1 Nature
La nature d’un produit ou service peut être définie comme les qualités ou les caractéristiques essentielles grâce auxquelles ce produit ou service est reconnu. La nature correspond souvent à un type particulier de produit ou service ou à une catégorie spécifique à laquelle ce produit ou service appartient et qui est généralement utilisée pour le définir. En d’autres termes, elle est la réponse à la question «Qu’est-ce que c’est?»
Exemples
Yaourt est un produit laitier. Voiture est un véhicule. Lotion pour le corps est un produit cosmétique.
3.2.1.1 Valeur indicative des intitulés de classes et des catégories
Le fait que les produits et/ou services à comparer relèvent de la même indication générale d’un intitulé de classe ou d’une catégorie plus générale ne signifie pas automatiquement qu’ils ont la même nature. Les aliments destinés à la consommation humaine constituent un exemple de catégorie plus générale.
Exemples
Les fruits frais (classe 31) d’une part et le café, les farines et le pain (classe 30), d’autre part, ont une nature différente bien que tous constituent des denrées alimentaires.
Les viandes, poissons, volailles et gibier (classe 29) sont des aliments d’origine animale. Les fruits et légumes (classe 31) sont des aliments d’origine végétale. Cette faible relation, à savoir que tous ces éléments sont des aliments, n’exclut pas que leur nature est différente.
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Le fait que les produits et/ou services à comparer relèvent d’une indication générale suffisamment étroite d’un intitulé de classe tend à indiquer une nature identique ou similaire.
Exemple
Le lait concentré et le fromage (classe 29 pour les deux) partagent la même nature parce qu’ils appartiennent à la même famille de produits, c’est-à-dire celle des produits laitiers, qui sont une sous-catégorie d’aliments (voir l’arrêt du 4 novembre 2003, T-85/02, «Castillo», point 33).
3.2.1.2 Caractéristiques des produits déterminant leur nature
Diverses caractéristiques des produits en cause peuvent être utiles afin de déterminer leur nature. Celles-ci comprennent les éléments suivants:
Composition: par exemple, les ingrédients, les matériaux à partir desquels les produits sont fabriqués.
Exemple
Le yaourt (classe 29) est un produit à base de lait (la nature du yaourt peut être définie par son ingrédient de base).
La composition peut être le critère le plus pertinent pour déterminer la nature. Toutefois, une composition identique ou similaire des produits n’est pas en soi un indicateur de la même nature.
Exemple
Une chaise (classe 20) et une poupée (classe 28) peuvent toutes les deux être en plastique, mais elles n’ont pas la même nature puisque le premier produit est un meuble et le deuxième est un jouet. Ces produits appartiennent à des catégories différentes.
Principe de fonctionnement: par exemple, fonctionnement mécanique, avec ou sans moteur, fonctionnement optique, électrique, biologique ou chimique.
Exemple
Le télescope (classe 9) est un dispositif optique (la nature d’un télescope peut être définie par son principe de fonctionnement, qui est optique).
Bien que le principe de fonctionnement puisse aider à définir la nature de certains produits, il n’est pas toujours concluant. Il existe des cas où les produits, en particulier liés à la technologie, ayant le même principe de fonctionnement, ont une nature différente.
Exemple
Un émulseur et une brosse à dents électrique ont le même principe de fonctionnement, c’est-à-dire, la rotation, mais ils n’ont pas la même nature.
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En revanche, il existe des produits ayant différents principes de fonctionnement, mais qui ont la même nature.
Exemple
Le principe de fonctionnement des lave-linge utilisant de la poudre à lessive est chimique, ce qui n’est pas la même chose que le principe de fonctionnement des lave-linge utilisant des ondes magnétiques. Toutefois, ces produits ont la même nature puisque ce sont tous les deux des lave-linge.
Caractéristique physique: par exemple, liquide/solide, dur/souple, flexible/rigide
La caractéristique physique représente une autre caractéristique des produits qui peut être utilisée pour définir leur nature, mais à l’image du principe de fonctionnement, elle n’est pas concluante.
Exemples
Toutes les boissons sont liquides. Leur nature est différente de celle des produits alimentaires solides. Toutefois, lorsque l’on compare deux boissons différentes, leur caractéristique physique ne saurait être concluante: le lait (classe 29) n’a pas la même nature qu’une boisson alcoolisée (classe 33).
Le yaourt est commercialisé aussi bien sous forme solide que sous forme liquide. Du reste, la nature de ce produit est définie non pas par sa caractéristique physique, mais (comme indiqué ci-avant) par son ingrédient de base (le lait). Solide ou liquide, la nature d’un yaourt est la même dans les deux cas (produit laitier).
3.2.1.3 Nature des services
Lors de la définition de la nature des services, les caractéristiques (composition, principe de fonctionnement, caractéristique physique) ne peuvent pas être utilisées étant donné que les services sont intangibles.
La nature des services peut être définie, en particulier, selon le type d’activité proposée aux tierces parties. Dans la plupart des cas, c’est la catégorie dont relève le service qui définit sa nature.
Exemple
Les services de taxi (classe 39) ont la même nature que les services d’autobus (classe 39), étant donné qu’ils constituent tous les deux des services de transport.
3.2.1.4 Nature des produits par opposition à nature des services
Par leur nature, les produits sont généralement différents des services en ce sens que les produits sont des articles de commerce, des biens, des marchandises ou des biens immobiliers. Leur vente implique habituellement le transfert du titre de propriété de quelque chose de physique, c’est-à-dire des biens mobiliers ou immobiliers. En revanche, les services reposent sur la prestation d’activités intangibles.
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3.2.2 Destination
La destination est généralement définie comme la raison pour laquelle on fait ou crée quelque chose, ou la raison d’être de quelque chose (Oxford Dictionary Online).
En tant que facteur énuméré dans l’arrêt Canon, la destination signifie l’usage prévu des produits ou services et nul autre usage possible.
Exemple
Un sachet en matière plastique peut être utilisé comme une protection contre la pluie. Toutefois, sa destination est de contenir des objets.
La destination est définie par la fonction des produits et/ou services. En d’autres termes, elle répond aux questions: à quoi doivent servir ces produits et/ou services? quel problème servent-ils à résoudre?
Il est parfois difficile de déterminer le niveau d’abstraction approprié pour définir la destination. Comme dans le cas de la détermination de la nature, la destination doit être définie de façon suffisamment stricte.
Exemple
Dans le cas de vinaigres, la destination ne doit pas être définie comme «consommation humaine», qui est la destination générale que tous les aliments partagent, mais comme «assaisonnement ordinaire».
3.2.3 Utilisation
L’utilisation détermine la manière dont les produits et/ou services sont utilisés pour correspondre à leur destination.
La question à se poser est la suivante: Comment ces produits et/ou services sont-ils utilisés?
L’utilisation découle souvent directement de la nature et/ou de la destination prévue des produits et/ou services et, en tant que telle, elle est dès lors sans importance ou d’une importance limitée pour l’analyse de la similitude.
Exemple
L’utilisation des journaux et des livres est la même dans le sens où ils sont tous destinés à la lecture. Toutefois, la similitude peut déjà être établie à partir du fait qu’ils sont des produits imprimés (même nature) et qu’ils servent à divertir ou à informer (même destination).
Indépendamment de l’explication précédente, de la nature et de la destination, l’utilisation peut être importante lorsqu’elle caractérise les produits:
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Exemple
Les produits pharmaceutiques pour traiter les maladies de la peau de la classe 5 peuvent prendre la forme de crèmes. Elles ont la même utilisation que les crèmes cosmétiques de la classe 3.
Toutefois, même si l’utilisation caractérise les produits comparés et si elle est identique pour ces deux produits, ce fait ne suffit pas à lui seul pour établir la similitude.
Exemple
Les gommes à mâcher (classe 30) et le tabac à chiquer (classe 34) ont la même utilisation. Toutefois, ce seul fait ne les rend pas similaires.
3.2.4 Complémentarité
Les produits (ou services) sont complémentaires s’il existe un lien étroit entre eux, en ce sens que l’un est indispensable (essentiel) ou important (significatif) pour l’usage de l’autre de sorte que les consommateurs peuvent penser que la responsabilité de la fabrication de ces produits ou de la fourniture de ces services incombe à la même entreprise (voir, en ce sens, l’arrêt du 11 mai 2011, T-74/10, «Flaco», point 40, l’arrêt du 21 novembre 2011, T-558/11, «Artis», point 25 et l’arrêt du 4 février 2011, T-504/11, «Dignitude», point 44).
La relation complémentaire entre les produits et/ou services peut être, par exemple, fonctionnelle.
Exemple
Les services d’hébergement de sites Internet de la classe 42 ne peuvent exister sans les services de programmation pour ordinateurs de la classe 42. Il y a une complémentarité fonctionnelle entre ces services qui, par leur nature, appartiennent au domaine des technologies de l’information. En outre, ces services sont destinés au même public et utilisent les mêmes canaux de distribution. Ils sont donc similaires (voir l’arrêt du 29 septembre 2011, T-150/10, «Loopia», points 36 et 43).
Par définition, des produits qui s’adressent à des publics différents ne peuvent pas présenter un caractère complémentaire (voir l’arrêt du 22 juin 2011, T-76/09, «Farma Mundi Farmaceuticos Mundi», point 30 et l’arrêt du 12 juillet 2012, T-361/11, «Dolphin», point 48). Voir également la section 3.3.1, Interaction entre les facteurs.
Exemple
Les produits textiles de la classe 24 (destinés au grand public) et les services de traitement relatifs aux produits textiles de la classe 40 (destinés aux professionnels) ne peuvent être complémentaires (voir l’arrêt du 16 mai 2013, T-80/11, «Ridge Wood», points 28 à 32). Ces produits et services ne sont pas similaires.
La complémentarité n’est pas concluante en elle-même pour établir une similitude entre les produits et/ou services. Bien qu’un certain degré de complémentarité puisse exister, les produits et/ou services peuvent être dissemblables.
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Exemple
Il existe un degré de complémentarité entre le vin (classe 33) et les verres à vin (classe 21) dans la mesure où les verres à vin sont destinés à être utilisés pour consommer du vin. Toutefois, cette complémentarité n’est pas assez marquée pour conclure que ces produits sont similaires. De plus, ces produits n’ont pas la même nature ni la même origine habituelle et ne partagent pas non plus en général les mêmes circuits de distribution (voir l’arrêt du 17 juillet 2007, T-105/05, «Waterford Stellenbosch», point 34, confirmé par l’arrêt du 7 mai 2009, C-398/07 P, «Waterford Stellenbosch», point 45).
Cependant, lorsque la complémentarité entre les produits et/ou services a été identifiée en combinaison avec d’autres facteurs, tels que l’«origine habituelle» et/ou le «circuit de distribution», la similitude peut être établie.
Exemples
Les skis (classe 28) et les chaussures de ski (classe 25) sont complémentaires car l’utilisation de l’un des produits est indispensable pour l’utilisation de l’autre. Le public pertinent peut penser que la production de ces produits se situe dans la même entreprise. De plus, ils partagent le même public et les mêmes circuits de distribution. Par conséquent, ces produits sont considérés comme similaires.
Le matériel d’enseignement de la classe 16 (tel que les imprimés, les supports de données préenregistrées et les cassettes audio/vidéo) est essentiel et donc complémentaire aux cours de la classe 41 et, de façon générale, le matériel est publié par la même entreprise. Ils partagent le même public et les mêmes circuits de distribution. Ces produits sont similaires aux services en question (voir, par exemple, l’arrêt du 23 octobre 2002, T-388/00, «ELS»).
Les services d’un architecte (conception de bâtiments) (classe 42) sont indispensables pour la construction de bâtiments (classe 37). Ces services sont souvent proposés ensemble à travers les mêmes circuits de distribution, par les mêmes fournisseurs et au même public. Par conséquent, ces services sont complémentaires et similaires (voir l’arrêt du 9 avril 2014, T-144/12, «Comsa», points 65 à 67).
3.2.4.1 Utilisation combinée: non complémentaire
La complémentarité doit être clairement distinguée de l’utilisation combinée dans laquelle les produits et/ou services sont simplement utilisés ensemble soit par choix, soit par commodité (par exemple, du pain et du beurre). Cela signifie qu’ils ne sont pas indispensables l’un pour l’autre (voir la décision du 16 décembre 2013, R 634/2013-4, «ST LAB», paragraphe 20). Dans de tels cas, la similitude ne peut être établie que sur la base d’autres facteurs, mais pas sur la base de la complémentarité.
Exemple
Même si le fonctionnement des courroies de transmission de la classe 12 peut être mesuré à l’aide d’un dispositif de test pour véhicules à moteur de la
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classe 9, cela ne veut pas dire que ces produits sont complémentaires. Il peut être pratique, dans certains cas, de mesurer la performance de l’un ou l’autre paramètre, mais une simple commodité ne suffit pas pour conclure qu’un produit est indispensable à l’autre (voir la décision du 3 octobre 2013, R 1011/2012-4, «SUN», paragraphe 39).
Certains produits, qui sont souvent coordonnés entre eux mais qui n’entrent pas dans le champ d’application d’autres facteurs de similitude, ont été jugés par le Tribunal comme ayant une «complémentarité esthétique» (voir l’arrêt du 1er mars 2005, T-169/03, «Sissi Rossi», point 62, les arrêts du 11 juillet 2007, T-150/04, «Tosca Blu», points 35 à 39 et T-443/05, «PiraÑAM», points 49 et 50, l’arrêt du 20 octobre 2011, T-214/09, «Cor», points 32 à 37). Cette relation entre les produits n’entre pas dans le champ de la définition existante de la complémentarité.
Exemple
Les sacs à main (classe 18) et les vêtements (classe 25) sont étroitement liés, mais pas complémentaires puisque les uns ne sont pas indispensables à l’utilisation des autres. Souvent, ils sont simplement utilisés en combinaison. Ils sont, toutefois, similaires du fait qu’ils peuvent être distribués par les mêmes fabricants ou des fabricants associés, être achetés par le même public et que ces produits peuvent se trouver dans les mêmes points de vente.
3.2.4.2 Produits et/ou services accessoires: non complémentaires
Lorsque certains produits et/ou services servent seulement à soutenir ou à compléter un autre produit ou service, ils ne sont pas considérés comme complémentaires au sens de la jurisprudence. Les produits accessoires sont généralement ceux qui sont utilisés pour l’emballage (par exemple, des bouteilles, des boîtes, des bidons, etc.) ou la promotion (par exemple, des brochures, des affiches, des listes de prix, etc.). De même, les produits et/ou services offerts gratuitement dans le cadre d’une campagne de marchandisage ne sont pas habituellement similaires au produit ou service principal.
Exemples
Les services organisation et conduite d’expositions ne sont pas similaires aux produits de l’imprimerie, y compris notes relatives à l’événement (classe 16), étant donné que ces produits ont pour seul objet la promotion et l’annonce de l’événement spécifique. Ces produits et services ne sont pas complémentaires.
Les compléments nutritionnels à base de plantes de la classe 5 ne sont pas indispensables ou importants pour l’utilisation de bières, eaux minérales et gazeuses et autres boissons sans alcool, boissons à base de fruits et jus de fruits, sirops et autres préparations pour faire des boissons de la classe 32. Toute consommation combinée de ces produits est simplement accessoire. Par conséquent, ils ne sont pas complémentaires. En outre, puisque leurs destination, circuits de distribution et producteurs habituels sont différents et puisqu’ils ne sont pas concurrents, ces produits ne sont pas similaires (voir l’arrêt du 23 janvier 2014, T-221/12, «Sun Fresh», point 84).
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3.2.4.3 Matières premières: non complémentaires
Enfin, lorsque les produits concernent les matières premières, le critère de complémentarité n’est pas applicable dans le cadre de l’analyse de la similitude.
Les matières premières en tant que composants de base très importants d’un produit fini peuvent être jugées similaires à ce produit, mais non sur la base de la complémentarité (voir également l’annexe I, sections 1 et 2, et l’annexe II, sections 5.1 et 5.2).
Exemple
Le lait (classe 29) et les fromages (classe 29) ne sont pas similaires sur la base de la complémentarité même si le lait est la matière première pour la fabrication du fromage. La similitude doit être établie, toutefois, sur la base du fait qu’ils partagent la même nature, les mêmes circuits de distribution, le même public pertinent et le même producteur.
3.2.5 Caractère concurrent
Des produits et/ou services s’inscrivent dans un rapport de concurrence lorsque l’un peut se substituer à l’autre. Cela signifie qu’ils ont la même destination ou ont une destination similaire et sont proposés à la même clientèle réelle et potentielle. Dans un tel cas, les produits et/ou services sont également définis comme «substituables» (voir l’arrêt du 4 février 2013, T-504/11, «DIGNITUDE», point 42).
Exemples
Les papiers peints (classe 27) et les peintures (classe 2) sont en concurrence, car les deux servent à couvrir ou à décorer les murs.
La location de films (classe 41) et les services d’un cinéma (classe 41) sont en concurrence, car tous les deux permettent de regarder un film.
Des produits et/ou services qui sont en concurrence se situent souvent dans la même gamme de prix, ou leurs prix globaux ne sont pas sensiblement différents s’ils sont correctement calculés.
Exemple
Les rasoirs électriques et les lames de rasoir (classe 8 pour les deux) sont en concurrence vu qu’ils ont la même destination. En tenant compte de la durée de vie d’un rasoir électrique, celui-ci peut être globalement moins cher que le nombre de lames de rasoir nécessaire pour le remplacer. La différence de prix initiale est compensée par sa longévité plus importante.
Toutefois, dans certains cas, les prix des produits et/ou services en concurrence peuvent être très sensiblement différents.
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Exemple
Les bijoux en or et les bijoux de fantaisie (classe 14 pour les deux) sont concurrents, bien que leurs prix (et leur valeur) soient très différents.
3.2.6 Circuit de distribution
Même si le «circuit de distribution» n’est pas expressément mentionné dans l’arrêt Canon, il est largement utilisé internationalement et nationalement pour apprécier si deux produits et/ou services sont similaires. En tant que facteur supplémentaire, il a été pris en considération dans plusieurs arrêts des tribunaux européens (voir notamment l’arrêt du 21 avril 2005, T-164/03, «monBeBé», point 53). Le raisonnement en est le suivant:
Si les produits et/ou services sont mis en vente par les mêmes circuits de distribution, il est plus probable que le consommateur suppose que les produits ou services relèvent du même segment de marché et sont éventuellement fabriqués par la même entité, et inversement.
Le terme «circuit de distribution» ne se réfère pas tant à la façon de vendre ou de promouvoir le produit d’une entreprise mais plutôt à son lieu de distribution. Pour l’analyse de la similitude des produits et/ou services, le système de distribution – qu’il soit direct ou indirect – n’est pas décisif. La question à se poser est plutôt la suivante:
Les produits et/ou services ont-ils les mêmes points de vente ou sont-ils généralement fournis ou proposés aux mêmes lieux ou à des lieux similaires?
Toutefois, il ne convient pas d’accorder une importance particulière à ce facteur, puisque les supermarchés, les épiceries et les grands magasins modernes vendent des produits de toute sorte. Le public pertinent est conscient que les produits vendus dans ces lieux proviennent d’une multitude d’entreprises indépendantes. Par conséquent, le point de vente est moins décisif lorsqu’il s’agit de décider si le public pertinent considère que les produits partagent une origine commune simplement parce qu’ils sont vendus au même point de vente.
Seule la présence des produits concernés dans le même rayon de ces magasins tend à indiquer une similitude. Dans ce cas, il doit être possible d’identifier le rayon par ses séparations dans l’espace et d’un point de vue fonctionnel par rapport à d’autres rayons (par exemple, le rayon produits laitiers d’un supermarché, le rayon produits cosmétiques d’un grand magasin).
De même, ce facteur peut être valable dans les cas où les produits sont vendus exclusivement ou couramment dans des magasins spécialisés. Dans ce cas, il est possible que les consommateurs aient tendance à croire que les produits ont la même origine s’ils sont vendus dans les mêmes magasins spécialisés et à écarter l’hypothèse d’une origine commune s’ils ne sont pas habituellement vendus dans les mêmes magasins.
Inversement, des points de vente différents peuvent plaider contre la similitude des produits.
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Exemple
Fauteuils roulants par opposition à vélos:
Bien que tous les deux relèvent des véhicules de la classe 12, on ne les trouvera pas dans les mêmes points de vente. Les vélos sont généralement vendus dans des magasins de vélos spécialisés ou dans un magasin de grande distribution où des équipements de sport sont disponibles. En revanche, les circuits de distribution des fauteuils roulants sont des distributeurs spécialisés d’équipements et d’appareils médicaux qui fournissent des hôpitaux et des magasins spécialisés où des appareils pour les personnes handicapées sont vendus.
3.2.7 Le public pertinent
Le public pertinent, c’est-à-dire les clients réels et potentiels des produits et services en cause, constitue un autre facteur à prendre en considération dans l’analyse de leur similitude (voir les Directives, partie C, section 2, chapitre 6, Public pertinent et degré d’attention).
Le public pertinent peut être composé:
du public en général (ou grand public); du public professionnel (clients professionnels ou public spécialisé).
Le public pertinent ne correspond pas nécessairement à l’utilisateur final; par exemple, les utilisateurs finaux des aliments pour animaux de la classe 31 sont des animaux mais pas le public pertinent. En l’espèce, le public pertinent serait le consommateur en général.
Le simple fait que les clients potentiels coïncident ne constitue pas automatiquement une indication de similitude. Le même groupe de clients peut avoir besoin de produits ou de services très diversifiés en termes d’origine et de nature. Le fait que, par exemple, les téléviseurs, les voitures et les livres soient achetés par le même public pertinent, à savoir le grand public, n’a aucune incidence sur l’analyse de la similitude. Dans de nombreux cas, soit l’une soit les deux listes de produits et/ou services comparés sont destinées au grand public, mais la destination (la satisfaction des besoins des clients) dans chaque cas est différente. De telles circonstances plaident contre la similitude.
Tandis qu’une coïncidence du point de vue du public pertinent ne représente pas nécessairement une indication de similitude, des publics très différents plaident fortement contre la similitude.
On peut trouver des clients différents dans les cas suivants où:
a) les produits et/ou services des deux listes sont destinés au grand public, qui peut toutefois être clairement classé selon les différents besoins (personnels), âges, etc.
Exemple: fauteuils roulants par opposition à vélos (classe 12).
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b) les produits et/ou services des deux listes sont destinés à des clients professionnels, qui agissent néanmoins dans un segment de marché très différent.
Exemple: produits chimiques pour la sylviculture par opposition à solvants pour l’industrie des laques (classe 1).
c) un public pertinent est constitué par le consommateur en général et l’autre par des clients professionnels.
Exemple: étuis pour verres de contact (de la classe 9) par opposition à appareils et instruments chirurgicaux (de la classe 10).
3.2.8 Origine habituelle (producteur/fournisseur)
Même si la Cour de justice n’a pas mentionné expressément ce facteur dans son arrêt Canon, il découle de la notion générale de risque de confusion que l’origine habituelle des produits et des services revêt une importance particulière pour l’analyse de la similitude. Comme l’a établi la Cour, «constitue un risque de confusion le risque que le public puisse croire que les produits ou services en cause proviennent de la même entreprise ou, le cas échéant, d’entreprises liées économiquement» (arrêt Canon, point 29). Par conséquent, il existe un argument important en faveur de la similitude lorsque, dans l’esprit du public pertinent, les produits et services ont la même origine habituelle.
Toutefois, cela ne devrait pas être interprété à tort comme un élément qui bouleverse l’examen du risque de confusion et de la similitude des produits et/ou services: la constatation d’un risque de confusion dépend de nombreux autres facteurs (tels que la similitude des signes, le caractère distinctif de la marque antérieure) et n’est pas exclusivement déterminée par l’origine habituelle qui, en tant que telle, n’est qu’un facteur dans l’analyse de la similitude des produits et/ou services.
Une constatation selon laquelle les consommateurs ne se tromperont pas quant à l’origine des produits et/ou services n’est pas un argument approprié à la comparaison des produits et/ou services. Cette constatation doit être mentionnée dans l’appréciation globale du risque de confusion. L’origine, dans ce contexte, porte principalement sur le secteur manufacturier (industrie) ou le type d’entreprise qui produit les produits ou propose les services en question plutôt que sur l’identité du producteur.
L’«origine» n’est pas simplement définie par le lieu réel de la production/fourniture (par exemple, une usine, un atelier, un institut ou un laboratoire) mais surtout par la prise en considération de celui qui gère et/ou contrôle la production/fourniture des produits et/ou services. En d’autres termes, la question à se poser est la suivante: qui est responsable de la fabrication du produit ou chargé de fournir le service?
L’origine géographique (ex.: la Chine) n’est pas pertinente pour la constatation de la similitude des produits et/ou services.
Dans l’arrêt ELS, la Cour a statué que même des produits et services peuvent avoir la même origine s’il est courant que le même type d’entreprise soit responsable de la production/fourniture des deux. Les manuels éducatifs (classe 16) ont été considérés comme ayant la même origine que la fourniture de cours par correspondance (classe 41) puisque «des entreprises qui offrent des cours de tout genre donnent
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souvent aux élèves, en tant que matériel pédagogique d’appui, les produits précités» (arrêt du 23 octobre 2002, T-388/00, «ELS», point 55).
Le critère «origine habituelle» doit être appliqué de manière restrictive afin de ne pas en réduire la portée. Si tous les types de produits et/ou services provenant d’une même grande entreprise (multinationale) ou d’un holding étaient considérés comme ayant la même origine, ce facteur perdrait son importance.
Exemple
Les cosmétiques (classe 3) et les aliments (classes 29 à 31) pourraient être produits dans le cadre d’une seule entreprise, mais cela ne reflète pas l’usage commercial courant selon lequel ces types de produits ont différents producteurs, chacun relevant d’une industrie distincte.
3.2.8.1 Caractéristiques déterminant une origine commune
Lors de la détermination de l’origine habituelle d’un produit ou service, les caractéristiques suivantes pourraient être pertinentes.
Sites de fabrication
Exemple
Les vernis, laques, matières tinctoriales et mordants (classe 2) sont en principe fabriqués dans les mêmes entreprises de production, généralement spécialisées dans les produits chimiques.
Le lieu de production peut très fortement laisser supposer que les produits et/ou services en cause proviennent de la même source. Toutefois, si l’identité des sites de fabrication laisse supposer une origine habituelle commune, l’existence de différents sites de fabrication n’exclut pas que les produits proviennent de la même entreprise ou d’entreprises liées économiquement. Par exemple, les produits intitulés «livres» (classe 16) et «supports électroniques» (classe 9) (produits concurrents, les supports électroniques se substituant aux livres) figurent tous les deux parmi les produits d’une maison d’édition.
Procédés de fabrication
Exemple
Les ceintures en cuir (classe 25) et les sacs à main en cuir (classe 18) ne sont pas seulement fabriqués dans les mêmes sites, par exemple des ateliers de travail du cuir, mais ils sont aussi fabriqués en utilisant les mêmes outils et machines pour le traitement du cuir.
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Compétences (techniques)
Exemple
Les services de protection contre les virus informatiques (classe 42) et la conception de logiciels (classe 42) impliquent les mêmes compétences techniques dans le domaine informatique.
Usage commercial établi connu du public
Un usage commercial établi, comme lorsque les fabricants étendent leur champ d’activité à des marchés voisins, revêt une importance particulière pour conclure que des produits et/ou services de nature différente ont la même origine. Dans de telles situations, il convient de déterminer si cette extension est courante dans le secteur ou, inversement, si elle ne peut se produire que dans des cas exceptionnels.
Exemple de secteurs dans lesquels l’extension à d’autres activités est devenue courante:
Souliers (classe 25) et sacs à main (classe 18): il est courant que, sur le marché, les producteurs de chaussures soient également associés à la fabrication de sacs à main.
Exemple de secteurs dans lesquels cette extension n’est pas (encore) courante:
Vêtements (classe 25) et parfums (classe 3): même si certains couturiers vendent également des parfums sous leurs marques, cet usage n’est pas la règle dans le secteur de l’habillement et s’applique en particulier à la haute couture.
3.3 Relation entre différents facteurs
Les critères retenus dans l’affaire Canon sont énumérés dans l’arrêt concerné en l’absence de toute hiérarchie et d’indication d’une relation quelconque entre eux. Ils ont été examinés individuellement. Toutefois, ils ne peuvent pas être considérés de façon indépendante en raison de leur degré d’interdépendance et d’importance relative, peu importe que l’on compare des produits entre eux, des services entre eux ou encore des produits avec des services. Suite à l’appréciation de l’ensemble de ces facteurs conformément à leur importance respective en ce qui concerne les produits et/ou services en cause, toute similitude peut être variable en termes de degré (voir le paragraphe 3.3.4 ci-dessous).
3.3.1 Interaction entre les facteurs
Il convient de noter que, dans de nombreux cas, il y aura des relations entre les facteurs en ce sens que lorsque l’un est partagé, l’autre peut offrir des correspondances aussi.
Exemples
Sur la base de la destination, on peut également déterminer qui sont les clients réels et potentiels, c’est-à-dire le public pertinent.
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La destination ainsi que le public pertinent peuvent également révéler si des produits et/ou services sont concurrents.
Le même circuit de distribution va de pair avec le même public. En d’autres termes, lorsque les circuits de distribution sont différents, le public peut également être différent.
Des produits et/ou services adressés à des publics différents ne peuvent pas présenter un caractère complémentaire (voir l’arrêt du 11 mai 2011, T-74/10, «Flaco», point 40 et l’arrêt du 22 juin 2011, T-76/09, «Farma Mundi Farmaceuticos Mundi», point 30).
L’utilisation dépend généralement de la nature et de la destination des produits.
Dans certains cas, une distinction entre les différents facteurs sera difficile à établir. Cela est particulièrement vrai en ce qui concerne la «nature», la «destination» et l’«utilisation». Lorsque l’examinateur rencontre ces difficultés, il suffit de traiter ces facteurs conjointement.
Exemple
Un moteur est une machine destinée à la transformation de diverses formes d’énergie en force mécanique et en mouvement. Dans un tel cas, il est difficile de distinguer la nature de la destination de ce produit. Par conséquent, une distinction entre ce qui, dans ce cas, relève de la nature et ce qui relève de la destination n’est pas nécessaire.
3.3.2 Importance de chaque facteur
Pour apprécier la similitude des produits et des services, il convient de tenir compte de tous les facteurs pertinents qui caractérisent la relation entre ces produits ou services. Toutefois, selon le type de produits et services, un critère particulier peut être plus ou moins important. En d’autres termes, les différents critères n’ont pas une valeur standard, c’est pourquoi il convient de déterminer leur importance spécifique dans le cadre de chaque cas individuel.
En général, l’importance de chaque facteur dépendra de son incidence sur une confusion possible quant à l’origine. Les critères qui laissent manifestement supposer que les produits et/ou services proviennent ou non de la même entreprise ou d’entreprises liées économiquement devraient prévaloir sur les critères qui semblent n’avoir qu’une incidence secondaire.
Facteurs généralement importants
Origine habituelle (parce qu’elle a une forte incidence sur le risque de confusion);
Destination (parce qu’elle est décisive pour le choix du client d’acheter ou de choisir des produits et/ou services);
Nature (car elle définit les qualités et caractéristiques essentielles des produits et/ou services);
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Complémentarité (parce que le lien étroit entre l’utilisation des produits et/ou services fait croire au public qu’ils partagent la même source);
Concurrence (généralement les produits et/ou services concurrents ont la même destination et sont destinés au même public).
Facteurs moins importants
Utilisation (même des produits dissemblables peuvent être utilisés de la même manière, par exemple les voitures d’enfants et les chariots à provisions);
Circuits de distribution (même des produits différents peuvent être vendus dans le même rayon de magasin en fonction de différentes pratiques d’exposition, par exemple, gommes à mâcher (classe 30) et cigarettes (classe 34));
Public pertinent (en particulier lorsque les produits et/ou services sont destinés au grand public).
3.3.3 Différents types de comparaisons: entre produits et produits, services et services et produits et services
En principe, les mêmes facteurs destinés à comparer des produits avec d’autres produits sont pertinents pour comparer des services avec d’autres services. Il convient néanmoins, dans le cadre de l’application de ces facteurs, de prendre en considération la différence fondamentale entre les produits et les services (caractère tangible ou intangible).
En outre, les mêmes principes qui s’appliquent à la comparaison entre des produits et d’autres produits et entre des services et d’autres services s’appliquent lorsque des produits sont comparés à des services.
Par leur nature, les produits sont généralement différents des services. Ils peuvent, toutefois, être complémentaires. Des services peuvent aussi avoir la même destination et ainsi être en concurrence avec des produits. Il s’ensuit que l’on peut conclure, dans certaines circonstances, à la similitude entre des produits et des services.
3.3.4 Degré de similitude
Des produits et/ou services peuvent être jugés similaires à des degrés différents (faible, moyen, élevé) en fonction du nombre de facteurs qu’ils partagent et de l’importance accordée à chacun d’entre eux. Le degré de similitude entre les produits et services revêt une grande importance au moment de statuer enfin sur l’existence du risque de confusion.
Généralement, un facteur à lui seul ne suffit pas pour établir un faible degré de similitude entre les produits et/ou services, même s’il constitue un facteur important.
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Exemples de dissemblance
Les voitures et les vélos (classe 12 pour les deux) partagent la même destination (moyen de transport pour se déplacer d’un point A à un point B), mais cela ne les rend pas similaires.
Même si les carreaux de fenêtre (classe 19) et les verres de lunettes (classe 9) ont la même nature, ils ne sont pas similaires, puisqu’ils ne coïncident pas au regard d’autres facteurs pertinents, tels que la destination, le producteur, le circuit de distribution et le public pertinent.
C’est la combinaison de divers facteurs et leur importance qui permet la conclusion finale de la similitude. La combinaison de deux facteurs importants, tels que la nature et le producteur, ou la combinaison d’un facteur important et deux facteurs faibles conduira souvent à une similitude. En revanche, la combinaison de deux facteurs faibles, comme le circuit de distribution et le public pertinent n’est pas concluante en principe pour établir une similitude entre les produits et les services.
Exemples de similitude
Le lait et les fromages (classe 29 pour les deux) ont une destination et une utilisation différentes; ils ne sont ni concurrents, ni complémentaires. Toutefois, le fait qu’ils partagent la même nature (produits laitiers) et la même origine habituelle (entreprise de produits laitiers) est déterminant pour établir une similitude.
Même si les produits pharmaceutiques et les emplâtres (classe 5 pour les deux) ont une nature différente, ils ont une destination similaire, c’est-à-dire le traitement de maladies, de handicaps ou de blessures. En outre, ils ont les mêmes circuits de distribution et le même public pertinent. Par conséquent, ils sont similaires.
La quantité de facteurs concomitants constatés ainsi que leur importance/poids établissent le degré de similitude. En règle générale, plus le nombre de facteurs communs est important, plus le degré de similitude est important. Une similitude constatée uniquement sur la base de deux facteurs ne devrait normalement pas être élevée, contrairement aux cas où les produits et/ou services ont quatre facteurs pertinents concomitants ou davantage.
Toutefois, il n’existe aucune analyse mathématique possible puisque cela dépend toujours des circonstances particulières de chaque cas.
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Annexe I
Questions spécifiques relatives à la similitude des produits et services
Cette partie n’établit pas de nouveaux critères pour la constatation d’une similitude entre les produits et services. Elle permet simplement de clarifier comment comparer certains groupes de produits et de services lorsque, à part les critères issus de l’arrêt Canon, certaines règles générales et exceptions s’appliquent.
1 Pièces, composants et équipements
Le simple fait qu’un certain produit puisse être composé de plusieurs composants ne permet pas d’établir automatiquement une similitude entre le produit final et ses pièces détachées (voir l’arrêt du 27 octobre 2005, T-336/03, «Mobilix», point 61).
Exemples de dissemblance
Pales de ventilateur (classe 7) et sèche-cheveux (classe 11); Câble électrique (classe 9) et lampe d’éclairage (classe 11); Boutons (classe 26) et vêtements (classe 25).
La similitude ne sera constatée que dans des cas exceptionnels et exige qu’au moins certains des principaux facteurs qui établissent une similitude, tels que le producteur, le public et/ou la complémentarité soient réunis.
Une telle exception est fondée sur le fait que les pièces et les équipements sont souvent produits et/ou vendus par la même entreprise qui fabrique le produit final et cible la même clientèle, comme dans le cas des pièces détachées ou de rechange. Selon le produit concerné, il n’est pas exclu que le public s’attende à ce que le composant soit produit par le fabricant «d’origine», ou sous son contrôle, et ce facteur laisse alors supposer que les produits sont similaires.
En règle générale, plusieurs facteurs peuvent être significatifs dans chaque cas d’espèce. Par exemple, si le composant est également vendu séparément, ou s’il est particulièrement important pour le fonctionnement de la machine, ce facteur plaidera en faveur de la similitude.
Exemples de similitude
Brosse à dents électrique (classe 21) et têtes de brosse de rechange (classe 21); Imprimante (classe 9) et cartouches à jet d’encre (classe 2); Machines à coudre (classe 7) et pieds marcheurs pour machines à coudre
(classe 7).
2 Matières premières et produits semi-transformés
Une approche similaire est également suivie en ce qui concerne les matières premières et les produits semi-transformés d’une part et les produits finis d’autre part.
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Dans la plupart des cas, le simple fait qu’un produit soit utilisé pour la fabrication d’un autre n’est pas suffisant en soi pour démontrer que les produits sont similaires, car ils peuvent avoir une nature, une destination, un public pertinent et des canaux de distribution bien distincts (voir l’arrêt du 13 avril 2011, T-98/09, «T Tumesa Tubos del Mediterráneo S.A.», points 49 à 51). Les matières premières sont généralement destinées à être utilisées dans l’industrie et non à être achetées directement par le consommateur final.
Exemples de dissemblance
Le cuir, les peaux d’animaux (classe 18) et les vêtements (classe 25); Les métaux précieux (classe 14) et la joaillerie et bijouterie (classe 14).
Toutefois, la conclusion finale peut varier en fonction des circonstances spécifiques de l’espèce, telles que le degré de transformation de la matière première ou si celle-ci constitue le composant de base du produit final. La similitude entre les produits est d’autant plus probable que la matière première revêt de l’importance pour le produit fini. Par conséquent, la similitude peut être établie lorsque la matière première ou le produit semi-fini peuvent être déterminants pour la forme, la nature, la qualité ou la valeur du produit fini. Dans ces cas, on peut souvent se procurer la matière première séparément du produit fini par les mêmes circuits de distribution.
Exemple de similitude
Les pierres précieuses (classe 14) et la joaillerie et bijouterie (classe 14). Contrairement aux métaux précieux, on peut se procurer des pierres précieuses dans des bijouteries indépendamment du produit fini.
Les ingrédients utilisés pour la préparation des aliments (voir ci-dessous «Ingrédients») sont une sous-catégorie de matières premières.
3 Accessoires
Un accessoire est un élément supplémentaire qui améliore ou complète le produit principal auquel il est ajouté. Contrairement aux pièces, composants et équipements, un accessoire ne constitue pas une partie intégrante du produit principal, même s’il est généralement utilisé en étroite relation avec lui. Généralement, un accessoire remplit une fonction technique utile ou décorative.
Les règles relatives aux pièces, composants et équipements s’appliquent également dans une certaine mesure aux accessoires. Le simple fait qu’un produit déterminé soit utilisé en combinaison avec un autre produit n’est pas nécessairement concluant pour établir une similitude.
Exemples de dissemblance
Vêtements (classe 25) et articles décoratifs pour la chevelure (classe 26); Pare-soleils pour automobiles (classe 12) et véhicules (classe 12).
Toutefois, il est courant que certains accessoires soient également produits par le fabricant du produit principal. Par conséquent, le consommateur peut s’attendre à ce que le produit principal et les accessoires soient fabriqués sous le contrôle de la même
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entité, en particulier lorsqu’ils sont distribués via les mêmes circuits commerciaux. Dans ces cas, il existe un argument important en faveur de la similitude.
Exemples de similitude
Vélos (classe 12) et sacoches de bicyclettes (classe 12); Lunettes (classe 9) et étuis à lunettes (classe 9).
4 Services d’installation, d’entretien et de réparation
Ces services appartiennent à la catégorie des services associés aux produits.
Étant donné que, par nature, les produits et les services sont dissemblables, une similitude entre des produits et leur installation, entretien et réparation ne peut être établie que lorsque:
il est courant que, dans le segment de marché concerné, le fabricant des produits fournisse également ces services;
le public pertinent coïncide; l’installation, l’entretien et la réparation de ces produits sont assurés
indépendamment de l’achat des produits (hors services après-vente).
L’installation de presque tous les produits est classée dans la classe 37, telles que l’installation d’appareils pour le conditionnement de l’air, d’appareils électriques, d’ascenseurs, d’alarmes incendies, d’équipement de réfrigération, d’équipement de cuisines, et de machines. L’installation et réparation d’ordinateurs figure également dans la classe 37, s’agissant d’une activité physique de réparation et d’installation. Toutefois, l’installation et réparation de logiciels est classée dans la classe 42, car elle implique une programmation informatique sans aucune installation ou réparation physique.
Exemples de similitude
Équipements pour le traitement d’informations et ordinateurs (classe 9) et installation et réparation d’appareils électroniques (classe 37);
Appareils de climatisation (classe 11) et services d’installation, d’entretien et de réparation (classe 37);
Distributeurs automatiques (classe 7) et services d’entretien (classe 37).
Exemples de dissemblance
Matériaux de construction (classe 19) et services d’installation (classe 37); Souliers (classe 25) et réparation de chaussures (classe 37); Véhicules (classe 12) et débosselage de véhicules à moteur (classe 37) (voir
l’arrêt du 15 décembre 2010, T-451/09, «Wind», points 28 à 30).
5 Services de conseil
Avec la 8e édition de la classification de Nice, les «services de conseils professionnels» de la classe 42 ont été supprimés et, depuis, les services de conseils – ainsi que les services de conseils et d’information – sont classés dans la classe du service qui
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correspond à l’objet de la consultation. Par exemple, le conseil en transport appartient à la classe 39, la consultation pour la direction des affaires relève de la classe 35, la consultation en matière financière figure dans la classe 36 et les conseils en beauté dans la classe 44. La fourniture de conseils, d’informations ou d’avis par des moyens électroniques (par exemple, par téléphone, ordinateur) n’affecte pas la classification de ces services.
Les services de conseils, de consultants, etc., sont en principe toujours similaires aux services connexes.
Exemples
Consultation en matière de logiciels (classe 42) est similaire à installation et maintenance de logiciels (classe 42)
Les services d’informations financières (classe 36) sont inclus dans les transactions financières (classe 36) et sont par conséquent identiques (voir l’arrêt du 27 février 2008, T-325/04, «Worldlink», point 58)
Lorsqu’il s’agit de la comparaison des services de conseils, des services de consultants et autres prestations similaires avec des produits, la similitude peut être constatée dans des conditions similaires à celles concernant les services de maintenance, d’installation et de réparation (voir la section 4).
Exemples de similitude
Services de conseils dans le domaine informatique (matériels et logiciels) (classe 42) et logiciels (classe 9);
Conseils en beauté (classe 44) et cosmétiques (classe 3).
Exemples de dissemblance
Services d’information concernant l’achat d’articles de mode (guides d’achat) (classe 35) et vêtements, chaussures et chapellerie (classe 25) étant donné qu’il n’est pas courant sur le marché que le fabricant d’articles de la classe 25 fournisse ces services d’information;
Fourniture de services d’information en matière de divertissement (classe 41) et jouets (classe 28) étant donné qu’il n’est pas courant sur le marché que le fabricant de jouets de la classe 28 fournisse ces services d’information.
6 Location et crédit-bail
Les services de location sont classés dans les mêmes classes que le service fourni en fonction des objets loués:
la location de téléphones relève de la classe 38 parce que les services de télécommunications figurent dans la classe 38;
la location de voitures relève de la classe 39 parce que les services de transport figurent dans cette classe.
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Les services de crédit-bail sont analogues aux services de location et sont par conséquent classés de la même façon. Toutefois, le financement par la location-vente ou la location-achat relève de la classe 36 en tant que service financier.
À partir du sens du terme leasing en anglais, qui signifie location, ces services doivent être clairement distingués de tout service financier. La comparaison des services de location et de crédit-bail mène au résultat suivant.
6.1 Location/crédit-bail par opposition à services connexes
Même si les services de location sont classés dans les mêmes classes que le service fourni en fonction des objets loués, ils ne sont pas automatiquement identiques à ce service. La comparaison entre ces services doit être faite en appliquant des critères normaux pour l’identité et la similitude.
Exemples
Il existe une identité entre la location d’appartements (classe 36) et les affaires immobilières (classe 36), car la location d’appartements est incluse dans les affaires immobilières;
Le même raisonnement ne peut pas s’appliquer à la location de bulldozers (classe 37) et aux services connexes de construction (classe 37). La location de bulldozers n’est pas incluse dans la construction et, par conséquent, ces services ne sont pas considérés comme identiques.
6.2 Location/crédit-bail par opposition à produits: en principe, toujours dissemblables
Location de véhicules (classe 39) et véhicules (classe 12); Location de films (classe 41) et DVD (classe 9);
Il existe des exceptions où il est courant que le fabricant des produits fournisse également des services de location.
Location et crédit-bail de logiciels informatiques (classe 42) et logiciels (classe 9). Ils sont considérés comme similaires à un faible degré;
Location de distributeurs automatiques (classe 35) et distributeurs automatiques (classe 7). Ils sont considérés comme similaires à un faible degré.
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Annexe II
Secteurs spécifiques
1 Produits chimiques, produits pharmaceutiques et cosmétiques
1.1 Produits chimiques (classe 1) par opposition à produits chimiques (classes 3 et 5)
Même si les grands fabricants de produits chimiques sont généralement associés à la production d’un vaste ensemble de produits chimiques de base, de produits chimiques de spécialité, de produits biotechnologiques, notamment des produits pharmaceutiques et des pesticides, ainsi que des produits de consommation, tels que les produits de nettoyage et les produits cosmétiques, lors de la comparaison de ces produits, le simple fait que leur nature coïncide étant donné que tous ces produits peuvent en général être classés comme des produits chimiques n’est pas suffisant pour les considérer comme similaires. Il convient d’être particulièrement attentif à leur destination spécifique, ainsi qu’à leur public et leur circuit de distribution. Ce qui vient d’être exposé ci-dessus en ce qui concerne la relation entre les matières premières, les produits semi-transformés et les produits finis s’applique particulièrement à ces produits. Par conséquent, même si les produits des classes 3 et 5 sont généralement des combinaisons de divers produits chimiques, ils ne sont pas en principe considérés comme similaires aux produits figurant dans la classe 1. Leur destination en tant que produit fini est généralement différente de celle des produits de la classe 1 qui sont principalement des produits à l’état brut, inachevés et non encore mélangés avec d’autres produits chimiques et supports inertes pour constituer un produit fini. Les produits finis des classes 3 et 5 sont en général également destinés à un public différent et ne partagent pas les mêmes circuits de distribution.
En revanche, il ne peut être exclu que les produits tels que les produits chimiques utilisés pour l’agriculture, l’horticulture et la sylviculture nécessitent peu d’étapes de transformation pour être considérés comme des produits finis comme les fongicides. Il est possible de considérer ces produits chimiques comme partageant déjà la destination propre aux fongicides, à savoir la destruction ou l’inhibition des champignons ou spores fongiques, notamment lorsqu’ils contiennent l’ingrédient actif du fongicide. En outre, les produits semi-transformés comme le produit fini sont susceptibles d’être fabriqués par les mêmes sociétés de l’industrie (agro)chimique. Il y a donc un faible degré de similitude entre les produits chimiques utilisés pour l’agriculture, l’horticulture et la sylviculture et les fongicides (voir la décision du 8 octobre 2012, R 1631/2012-1, «QUALY / QUALIDATE», paragraphes 27 et 28).
Par ailleurs, il existe aussi dans la classe 1 des produits qui ne sont pas de simples produits chimiques, mais des produits semi-finis, voire finis, destinés à une utilisation spécifique qui constitue un facteur important à prendre en compte lorsqu’il s’agit de comparer des produits de la classe 1 à des produits d’autres classes.
Par exemple, les engrais pour les terres de la classe 1, d’une part, et les pesticides, fongicides et herbicides de la classe 5, d’autre part, ne sont pas seulement des produits chimiques, ils sont également des produits finis avec une utilisation spécifique dans le secteur agricole. Ils sont similaires du point de vue de leur destination étant donné que les produits spécifiques de la classe 5 peuvent être considérés comme des
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fertilisants puisqu’ils empêchent les conditions qui pourraient inhiber la croissance des plantes.
1.2 Produits pharmaceutiques par opposition à produits pharmaceutiques
Un produit pharmaceutique fait référence à tout type de médicament, c’est-à-dire une substance ou une combinaison de substances pour traiter ou prévenir les maladies des êtres humains ou des animaux. À partir de leur définition on peut déjà en conclure que les produits vétérinaires – bien que mentionnés séparément dans l’intitulé de classe – sont inclus dans le terme plus large de produits pharmaceutiques. Par conséquent, ils sont identiques.
Il en va de même pour les médicaments homéopathiques et ceux à base de plantes puisqu’ils sont inclus dans le terme général de produits pharmaceutiques.
De même, les produits de test, c’est-à-dire les réactifs chimiques à usage médical y compris à des fins vétérinaires, relèvent également de l’indication générale des produits pharmaceutiques.
Des produits pharmaceutiques spécifiques sont considérés comme similaires à d’autres produits pharmaceutiques spécifiques. La raison en est que plusieurs, sinon tous les critères de similitude sont généralement réunis: ils partagent la même nature parce qu’ils sont des produits chimiques spécifiques; leur destination est, d’une façon générale, la guérison et/ou la cure; ils sont vendus dans les mêmes lieux, à savoir, les pharmacies; et ils proviennent de la même source, en l’occurrence, l’industrie pharmaceutique. Cette industrie fabrique une grande variété de médicaments avec diverses indications thérapeutiques, et le grand public en est conscient. En outre, leur utilisation pourrait être la même et ils peuvent être en concurrence les uns avec les autres (voir l’arrêt du 17 novembre 2005, T-154/03, «Artex», point 48).
Toutefois, le degré de similitude entre des produits pharmaceutiques spécifiques peut varier en fonction de leurs indications thérapeutiques spécifiques.
Exemple 1
Produits pharmaceutiques contre les allergies par opposition à crème antihistaminique. Ces produits pharmaceutiques sont très similaires.
Exemple 2
Remèdes contre l’épilepsie par opposition à produits pharmaceutiques, à l’exception des médicaments pour lutter contre les maladies liées au système nerveux central. Ces produits pharmaceutiques sont considérés comme similaires (voir l’arrêt du 24 mai 2011, T-161/10, «E-plex», point 26).
Exemple 3
Contraceptifs par opposition à préparations pour lavages oculaires. Ces produits pharmaceutiques sont seulement similaires à un faible degré. À cet égard, il convient de noter qu’un faible degré de similitude ne devrait être établi que dans des cas exceptionnels, par exemple lorsqu’il est possible d’établir clairement qu’ils ont différentes indications et différentes utilisations.
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Le fait qu’un produit pharmaceutique spécifique soit vendu sous ordonnance n’a pas d’incidence particulière pour la comparaison des produits. Il a plutôt une incidence dans l’appréciation globale du risque de confusion, en particulier le degré d’attention du public pertinent. En outre, il convient de noter que la nécessité d’une ordonnance dépend dans une large mesure des différentes législations nationales. Par conséquent, un médicament délivré sous ordonnance doit en général être considéré comme similaire à un médicament sans ordonnance pour les raisons exposées ci-dessus.
1.3 Produits pharmaceutiques par opposition à substances diététiques à usage médical
Les substances diététiques et compléments diététiques à usage médical sont des substances préparées pour des besoins diététiques spéciaux dans le but de traiter ou de prévenir une maladie. Dans cette perspective, leur destination est similaire à celle des produits pharmaceutiques (substances utilisées dans le traitement de maladies) dans la mesure où ils sont utilisés pour améliorer l’état de santé des patients. Le public pertinent coïncide et ces produits partagent généralement le même canal de distribution. Pour les raisons exposées ci-dessus, ces produits sont considérés comme étant similaires.
1.4 Produits pharmaceutiques par opposition à cosmétiques
Les catégories générales produits pharmaceutiques et cosmétiques sont considérées comme étant similaires. Les cosmétiques comprennent une liste de produits utilisés pour améliorer ou protéger l’apparence ou l’odeur du corps humain. Les produits pharmaceutiques, en revanche, comprennent des produits tels que des produits de soin pour la peau ou les cheveux avec des propriétés médicinales. Ils peuvent coïncider du point de vue de la destination avec les cosmétiques. En outre, ils partagent les mêmes circuits de distribution car on peut les trouver dans des pharmacies ou d’autres magasins spécialisés. Ils sont destinés au même public et sont souvent fabriqués par les mêmes entreprises.
Toutefois, lors de la comparaison des produits pharmaceutiques spécifiques avec des cosmétiques, il est possible qu’ils présentent seulement un faible degré de similitude ou même qu’ils soient complètement dissemblables. Le cas échéant, cela dépendra du médicament spécifique et de sa destination spécifique (indication médicale/effet médical) ou de son utilisation.
Exemple
Un analgésique est différent des laques pour les ongles.
1.5 Produits pharmaceutiques par opposition à services
Même si les entreprises pharmaceutiques sont fortement associées aux activités de recherche et de développement, elles ne fournissent généralement pas ces services à des tiers. Par conséquent, les produits de la classe 5 sont généralement dissemblables à tous les services couverts par la classe 42.
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La dissemblance doit également être constatée en comparant les produits pharmaceutiques avec des services médicaux (y compris les services vétérinaires) de la classe 44. Même si l’on ne peut nier l’existence d’un certain lien en raison de l’objectif commun qui est de traiter les maladies, les différences relatives à leur nature et, en particulier, à l’origine habituelle neutralisent de façon évidente toute similitude. Le public pertinent ne s’attend pas à ce qu’un médecin développe et mette un médicament sur le marché.
2 Industrie automobile
L’industrie automobile est une industrie complexe ayant recours à divers types d’entreprises, y compris des constructeurs automobiles ainsi que des fournisseurs qui pourraient fournir aux constructeurs automobiles leurs matières premières (métaux, aluminium, matières plastiques, peintures), pièces détachées, modules ou systèmes complets. Plusieurs secteurs de production peuvent être distingués: ingénierie d’entraînement, châssis, électronique, aménagement intérieur et équipement extérieur.
Cet aspect rend cette industrie extrêmement difficile à analyser lorsqu’il faut examiner une similitude entre le produit fini (par exemple, une voiture) et ses différentes pièces ou différents matériaux utilisés pour sa production. En outre, lors de l’achat d’une voiture, le grand public est conscient de ce fait et sait qu’il y a de nombreux éléments provenant de nombreuses sources et que le constructeur automobile pourrait assembler des composants qui ont été fabriqués par des tiers. Toutefois, les produits sont normalement proposés sous un seul signe, ce qui fait qu’il est presque impossible pour le grand public d’identifier d’autres fabricants ou de distinguer leur source de production. Les batteries de voiture, sur lesquelles d’autres signes sont généralement visibles, en sont l’unique exception.
Comme pour les autres industries spécifiques, les critères issus de l’arrêt Canon s’appliquent en conséquence et, en particulier, les principes généraux définis pour la comparaison des pièces, composants et équipements doivent être pris en considération.
En particulier, il convient de garder à l’esprit qu’il existe des produits qui ne seront achetés que par l’industrie automobile sans aucune possibilité pour le grand public d’y avoir accès et de les acheter (le consommateur final) (par exemple, les métaux les plus souvent [classe 6] utilisés pour former le châssis). Ils sont à l’évidence différents du produit fini ainsi que probablement de l’ensemble des autres pièces, composants et équipements. En ce qui concerne les pièces détachées qui pourraient également être achetées par le grand public à des fins de réparation ou de maintenance, l’appréciation de la similitude des produits dépendra essentiellement du fait que la pièce détachée spécifique est couramment produite ou non par le constructeur automobile.
3 Appareils/instruments électriques
L’expression appareils et instruments électriques, de la classe 9, ne peut être interprétée comme couvrant tous les appareils à alimentation électrique. Il existe, en effet, des appareils à alimentation électrique dans plusieurs classes. Le terme appareils électriques figurant dans la liste des produits de la classe 9 doit être considéré comme couvrant les appareils et instruments pour la conduite, la distribution, la transformation, l’accumulation, le réglage ou la commande du courant électrique (voir l’arrêt du 1er février 2012, T-353/09, «mtronix», point 33).
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4 Industries de la mode et du textile
Les produits classés dans les classes 22, 23, 24 et 25 sont des produits liés au textile. Il existe une certaine progression à travers ces classes: les matières textiles fibreuses brutes, c’est-à-dire les fibres (classe 22) sont transformées en fils (classe 23), puis en tissus, c’est-à-dire les étoffes (classe 24) et finissent comme produits finis textiles (classe 24) ou vêtements (classe 25).
En outre, les produits de la classe 18 tels que les produits en cuir et imitations du cuir sont également liés au secteur de la mode et du textile.
4.1 Matières premières ou semi-transformées par opposition à produits finis
Étant donné que la relation entre les classes susmentionnées est souvent basée sur le fait qu’un produit est utilisé pour la fabrication d’un autre (par exemple, les tissus de la classe 24 sont utilisés pour la fabrication de vêtements de la classe 25), dans les comparaisons de ce genre, les principes généraux concernant les matières premières s’appliquent (voir partie précédente au sujet des «Matières premières et produits semi- transformés»).
Par exemple, des matières premières telles que le cuir et imitations du cuir, les peaux d’animaux (classe 18) sont différentes des vêtements, chaussures et chapellerie (classe 25). Le simple fait que le cuir soit utilisé pour la fabrication de chaussures (chaussures en cuir) n’est pas suffisant, en soi, pour conclure que les produits sont similaires, car ils ont une nature, une destination et un public pertinent bien distincts: les matières premières sont destinées à être utilisées dans l’industrie et non à être achetées directement par le consommateur final.
Toutefois, un faible degré de similitude est établi entre les tissus et les produits textiles tels que les draps, tapis de table, figurant dans la classe 24. En l’espèce, le degré de transformation nécessaire du matériau au produit final est souvent négligeable: le tissu est simplement découpé et/ou cousu pour obtenir le produit fini. En outre, de nombreux établissements permettent aux clients d’acheter le matériau de base ou des coussins prêts à l’emploi, etc. confectionnés à partir de ces matériaux. Par conséquent, le public pertinent peut s’attendre à ce que ces produits proviennent des mêmes entreprises.
4.2 Produits textiles (classe 24) par opposition à vêtements (classe 25)
Le principal point commun entre les produits textiles de la classe 24 et les vêtements de la classe 25 est qu’ils sont fabriqués à partir d’une matière textile. Toutefois, cela ne suffit pas pour conclure à l’existence d’une similitude. Ils ont également des destinations complètement différentes: les vêtements sont destinés à être portés par des personnes, ou servent d’articles de mode, alors que les produits textiles sont essentiellement destinés à des fins domestiques et à la décoration intérieure. Par conséquent, leur utilisation est différente. En outre, les circuits de distribution et les points de vente de produits textiles et de vêtements sont différents, et le public pertinent ne pense pas qu’ils proviennent de la même entreprise. Par conséquent, les
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produits textiles sont considérés comme différents des vêtements, (voir les décisions du 31 mai 2012, R 1699/2011-4, «GO/GO GLORIA ORTIZ», paragraphe 16; du 26 juillet 2012, R 1367/2011-1, «PROMO TEXTILE/Promodoro», paragraphe 17; du 1er août 2012, R 2353/2010-2, «REGRIGUE FOR COLD/REFRIGIWEAR et al.», paragraphe 26).
4.3 Vêtements, chaussures et chapellerie (classe 25)
Les produits de la classe 25, à savoir vêtements, chaussures et chapellerie sont identiques ou de nature très similaire. Ils ont la même destination puisqu’ils sont utilisés pour couvrir et protéger les diverses parties du corps humain contre les éléments. Ce sont également des articles de mode et on les trouve souvent dans les mêmes magasins de détail. Lorsqu’ils souhaitent acheter des vêtements, les consommateurs s’attendent à trouver des chaussures et des articles de chapellerie dans le même magasin ou la même boutique, et vice versa. Par ailleurs, de nombreux fabricants et stylistes conçoivent et produisent tous les articles susmentionnés. Par conséquent, ces produits sont similaires les uns aux autres.
4.4 Accessoires de mode
Comme il est expliqué dans la section sur les «Accessoires» (voir ci-dessus), le simple fait qu’un produit déterminé soit utilisé en combinaison avec un autre produit n’est pas nécessairement concluant pour établir une similitude. Toutefois, il est courant que certains accessoires soient également produits par le fabricant du produit principal. Par conséquent, le consommateur peut s’attendre à ce que le produit principal et les accessoires soient fabriqués sous le contrôle de la même entité, surtout lorsqu’ils sont distribués via les mêmes circuits commerciaux. En l’espèce, il existe un argument important en faveur de la similitude. Par conséquent, ce ne sont pas tous les produits considérés comme accessoires de mode qui seront similaires aux vêtements, chaussures et chapellerie (classe 25).
La catégorie plus générale de produits en cuir et imitations du cuir de la classe 18 inclut des produits tels que les sacs (à main), les sacs de sport, les serviettes, les portefeuilles, les porte-monnaie, les porte-clés, etc. Ces produits sont liés à des articles de la classe 25, vêtements, chaussures et chapellerie, en ce sens qu’ils sont susceptibles d’être considérés par les consommateurs comme étant des accessoires esthétiques complémentaires aux vêtements d’extérieur, à la chapellerie, voire aux chaussures, car ils sont étroitement liés à ces articles et pourraient être distribués par les mêmes fabricants ou par des fabricants associés, et il n’est pas inhabituel que des fabricants de vêtements les produisent et les commercialisent directement. En outre, ces produits peuvent se trouver dans les mêmes magasins de détail. Par conséquent, ces produits sont considérés comme des produits similaires aux vêtements, chaussures et chapellerie.
En revanche, les accessoires pour cheveux tels que les épingles à cheveux et les rubans sont différents des vêtements. Même si ces produits pouvaient avoir un lien éloigné avec le marché de la mode, le simple fait que quelqu’un pourrait vouloir assortir des épingles à cheveux à des vêtements ne suffit pas pour conclure que ces produits sont complémentaires et, par conséquent, similaires. Ces produits peuvent seulement être considérés comme complémentaires s’il existe un lien étroit entre eux, dans le sens où l’un est indispensable ou important pour l’utilisation de l’autre et n’est pas simplement accessoire. En l’espèce, ces conditions ne sont pas remplies. En outre, la
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nature et l’utilisation de ces produits sont différentes. Ils ne sont pas en concurrence les uns avec les autres. La production de ces produits implique différentes compétences, ils n’appartiennent pas à la même catégorie de produits et ne sont pas considérés comme des éléments d’une vaste gamme de produits qui ont potentiellement la même origine commerciale (voir la décision du 3 octobre 2011, R 1501/2010-4, «Wild Nature/WILD NATURE», paragraphe 18).
De même, les produits de luxe, tels que les lunettes (classe 9) et la joaillerie, bijouterie (classe 14) sont considérés comme différents des vêtements, chaussures et chapellerie. La nature et la principale destination de ces produits sont différentes. La fonction principale de l’habillement est de vêtir le corps humain alors que la principale destination des lunettes est d’améliorer la vue, et la joaillerie et la bijouterie sont portées comme parure personnelle. Ils n’ont pas les mêmes circuits de distribution et ne sont ni concurrents, ni complémentaires (voir les décisions du 30 mai 2011, R 0106/2007-4, «OPSEVEN2/SEVEN», paragraphe 14; du 12 septembre 2008, R 0274/2008-1, «Penalty/PENALTY», paragraphe 20; du 5 octobre 2011, R 0227/2011-2, «OCTOPUSSY/OCTOPUSSY ET AL», paragraphes 23 à 26).
Le même raisonnement s’applique aux produits de luxe, tels que les parfums (classe 3) – dont la destination principale est de diffuser une senteur de longue durée sur le corps, sur les articles de papeterie, etc. – et des produits tels que les sacs de voyage (classe 18) qui sont destinés à transporter des objets lors d’un voyage. Même si aujourd’hui des couturiers vendent également des parfums, des accessoires de mode (tels que les lunettes et les bijoux) et des accessoires de voyage sous leurs marques, cet usage n’est pas la règle et s’applique plutôt à la haute couture.
4.5 Vêtements, chaussures et chapellerie de sport (classe 25) par opposition à articles de sport et de gymnastique (classe 28)
La catégorie générale des vêtements, chaussures et chapellerie comprend les vêtements, chaussures et chapellerie de sport qui sont des vêtements ou des articles d’habillement spécifiquement conçus pour être utilisés lors d’une activité sportive. Bien que la nature de ces produits soit différente de celle des articles de sport et de gymnastique qui sont des articles et des équipements pour tout type de sport et de gymnastique, tels que les poids, les haltères, les raquettes de tennis, les balles et les équipements de fitness, il existe des entreprises qui fabriquent à la fois des articles de sport et de gymnastique et des vêtements de sport/des chaussures de sport. Par conséquent, les circuits de distribution peuvent être les mêmes. Il existe un faible degré de similitude lorsque des vêtements de sport/des chaussures de sport sont comparés aux articles de sport et de gymnastique.
4.6 Stylisme (classe 42), services de tailleurs (classe 40) par opposition à vêtements (classe 25)
Il existe un faible degré de similitude entre les vêtements et le stylisme et les services de tailleurs car ils partagent le même public pertinent et pourraient coïncider en ce qui concerne la même origine habituelle (producteur/fournisseur). Des producteurs de vêtements prêt-à-porter (surtout les costumes de marié et les robes de mariée) fournissent fréquemment des services de tailleurs qui sont étroitement liés au stylisme, qui constitue l’étape préalable dans le processus de production des vêtements.
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5 Alimentation, boissons et services de restauration
5.1 Ingrédients des aliments préparés
Les ingrédients utilisés pour la préparation des aliments sont une sous-catégorie de matières premières et ils sont traités de la même façon que celles-ci en général. Par conséquent, le simple fait que l’un des ingrédients soit nécessaire pour la préparation d’un aliment, en général, n’est pas suffisant en soi pour prouver que les produits sont similaires, même s’ils relèvent tous de la catégorie générale des aliments (voir l’arrêt du 26 octobre 2011, T-72/10, «Naty’s», points 35 et 36).
Exemples de dissemblance
Œufs (classe 29) et crèmes glacées (classe 30); Levure (classe 30) et pain (classe 30).
5.2 Ingrédient principal
Lorsque l’ingrédient peut être considéré comme étant le principal ingrédient du plat cuisiné, une similitude n’existera que si les produits partagent un ou d’autres critères pertinents, en particulier l’origine habituelle, la nature, la destination ou l’utilisation.
Exemples de similitude (ingrédient principal + autre(s) critère(s))
Lait (classe 29) et yaourt (classe 29); Poisson (classe 29) et bâtonnets de poisson (classe 29); Pâte à cuire (classe 30) et pizzas (classe 30).
Voir également l’arrêt du Tribunal du 4 mai 2011, T-129/09, «Apetito», dans lequel le Tribunal confirme l’existence d’une similitude entre un aliment particulier et des plats cuisinés essentiellement composés du même aliment particulier.
Il convient de rappeler qu’il n’y a pas de complémentarité dans ces cas, tout simplement parce qu’un ingrédient est nécessaire pour la production/préparation d’un autre aliment. La complémentarité s’applique uniquement à l’utilisation des produits et non à leur processus de production (voir le chapitre «Complémentarité» et l’arrêt du 11 mai 2011, T-74/10, «Flaco», point 40 et la décision du 11 décembre 2012, R 2571/2011-2, «FRUITINI», paragraphe 18).
5.3 Boissons sans alcool (classe 32) par opposition à boissons alcoolisées (à l’exception des bières) (classe 33)
Les boissons sans alcool, d’une part, et les boissons alcoolisées (à l’exception des bières), sont vendues côte à côte tant dans les magasins, les bars et sur les cartes de boissons, etc. Ces produits sont destinés au même public et ils peuvent être concurrents. Il y a lieu de conclure que ces produits sont similaires à un faible degré (voir l’arrêt du 5 octobre 2011, T-421/10, «Rosalia de Castro», point 31).
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5.4 Bières (classe 32), boissons alcoolisées (à l’exception des bières) (classe 33)
Il existe une similitude entre les différentes boissons alcoolisées de la classe 33, ainsi qu’entre la grande catégorie des boissons alcoolisées et la bière de la classe 32. Bien que leurs processus de production soient différents, ces produits appartiennent tous à la même catégorie de boissons alcoolisées (nature) destinées au grand public. Elles peuvent être servies dans les restaurants et dans les bars et sont en vente dans les supermarchés et les épiceries. Ces boissons peuvent se trouver dans le même rayon de supermarché, même si l’on peut également établir une certaine distinction entre elles, par exemple, en fonction de leurs sous-catégories respectives. En outre, certaines boissons alcoolisées peuvent provenir des mêmes entreprises.
Exemples
Les bières sont similaires aux boissons alcoolisées (à l’exception des bières); Les vins sont similaires aux boissons alcoolisées (à l’exception des vins).
5.5 Services de restauration (alimentation) par opposition à aliments et boissons
Les services de restauration (alimentation) de la classe 43 couvrent principalement les services d’un restaurant ou des services similaires, tels que la restauration, les cafétérias et les snack-bars. Ces services sont destinés à servir de la nourriture et des boissons directement pour la consommation.
Le simple fait que des aliments et des boissons soient consommés dans un restaurant n’est pas une raison suffisante pour établir une similitude entre eux (voir l’arrêt du 9 mars 2005, T-33/03, «Hai», point 45 et la décision du 20 octobre 2011, R 1976/2010-4, «THAI SPA/SPA et al.», paragraphes 24 à 26).
La réalité du marché montre que certains producteurs de produits alimentaires et/ou de boissons fournissent également des services de restauration sous leur marque (par exemple, du café et leurs magasins de café, de la crème glacée et leurs glaciers, de la bière et leurs pubs); toutefois, cette pratique ne constitue pas un usage commercial établi et concerne plutôt des entreprises florissantes (économiquement). Il y a lieu d’examiner ces situations au cas par cas.
6 Services de support offerts à d’autres entreprises
Tous les services indiqués dans l’intitulé de la classe 35 sont destinés à soutenir ou à aider d’autres entreprises dans la conduite de leurs affaires ou dans l’amélioration de celles-ci. Ils sont donc, en principe, destinés au public professionnel.
Lorsque l’on compare des services spécifiques relevant de la classe 35, il est très utile de se concentrer sur la question suivante: qui fournit ce type de service? Est-ce une agence de publicité, un consultant en gestion, un consultant en ressources humaines, un comptable, un auditeur, un agent commercial ou un conseiller fiscal? Une fois que
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l’origine habituelle a été établie, il est plus facile de trouver l’indication générale à laquelle le service spécifique appartient.
Les services de publicité consistent à offrir à d’autres entreprises une assistance dans la vente de leurs produits et services en assurant la promotion de leur lancement et/ou de leur vente, ou à assurer le renforcement de la position des entreprises clientes sur le marché et à acquérir un avantage concurrentiel grâce à la publicité. Afin de remplir cet objectif, des moyens et des produits divers et variés peuvent être utilisés. Ces services sont fournis par des sociétés spécialisées dont l’objet est d’étudier les besoins du client et de lui fournir toutes les informations et tous les conseils nécessaires pour la commercialisation de ses produits et services, et de créer une stratégie personnalisée concernant la publicité de ses produits et services dans les journaux, sur les sites internet, au moyen de vidéos, sur internet, etc. Il convient de préciser que la nature et la destination des services de publicité sont fondamentalement différentes de la fabrication de produits ou de la fourniture de divers autres services. Par conséquent, la publicité est généralement différente des produits ou services qui font l’objet de la promotion. Il en va de même pour la comparaison des services de publicité avec des produits qui peuvent être utilisés comme un support de diffusion de la publicité, tels que des DVD, des logiciels, des imprimés, des prospectus et des catalogues.
Les services de gestion des affaires commerciales sont des services habituellement proposés par des sociétés spécialisées dans ce domaine spécifique telles que les cabinets de consultants auprès des entreprises. Elles recueillent des informations et proposent leurs outils ainsi que leur expertise pour permettre à leurs clients de mener leurs affaires ou encore pour fournir aux entreprises le support nécessaire pour acquérir, développer et augmenter leurs parts de marché. Elles reposent sur des activités telles que les études commerciales et les évaluations d’entreprise, l’analyse des coûts et des prix et le conseil en organisation. Ces services comprennent également toute activité de «consultation», de «conseil» et d’«assistance», qui peut être utile à la «gestion d’une entreprise», concernant par exemple les moyens d’allouer efficacement les ressources humaines et financières, d’améliorer la productivité, d’augmenter la part de marché, d’agir à l’égard des concurrents, d’optimiser la fiscalité, de développer de nouveaux produits, de communiquer avec le public, de définir la stratégie de commercialisation, d’examiner les tendances de la consommation, de lancer de nouveaux produits, de créer une image de marque, etc.
Lorsque l’on compare la gestion des affaires commerciales avec la publicité, il convient de noter que la publicité est un outil essentiel dans la gestion des affaires commerciales, car elle permet à l’entreprise de se faire connaître sur le marché. Comme il est indiqué ci-dessus, la destination des services de publicité est de «renforcer la position (de l’entreprise) sur le marché» et la destination des services de gestion des affaires commerciales est d’aider une entreprise «à acquérir, à développer et à augmenter ses parts de marché». Il n’existe pas de différence nette entre «renforcer la position de l’entreprise sur le marché» et «aider l’entreprise à développer et à augmenter ses parts de marché». Un professionnel qui offre des conseils relatifs à la stratégie à adopter pour diriger efficacement une entreprise peut raisonnablement inclure des stratégies publicitaires dans ces conseils, car il ne fait guère de doute que la publicité joue un rôle essentiel dans la gestion des affaires commerciales. En outre, les consultants d’entreprise peuvent offrir un service de conseils en publicité (et en marketing) dans le cadre de leurs services et, par conséquent, le public pertinent peut croire que ces deux services ont la même origine professionnelle. Par conséquent, compte tenu de ce qui précède, ces services sont similaires à un faible degré (voir la décision R 2163/2010-1, «INNOGAME/INNOGAMES», paragraphes 13 à 17).
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Les services d’administration commerciale consistent à organiser le personnel et les ressources de manière efficace afin d’axer les activités au service d’objectifs communs. Ils comprennent des activités telles que le recrutement de personnel, la préparation des feuilles de paye, l’établissement des relevés de comptes et l’établissement des déclarations fiscales. La ligne de démarcation entre les deux intitulés, à savoir la gestion des affaires commerciales et l’administration commerciale, est floue et il est parfois très difficile (voire impossible) de faire clairement la distinction entre les deux. Toutes les deux relèvent de la catégorie plus générale des services d’affaires commerciales. En règle générale, on peut dire que les services d’administration commerciale sont fournis afin d’organiser et de gérer une entreprise, tandis que la gestion des affaires commerciales suit une approche supérieure destinée à fixer les objectifs communs et le plan stratégique pour une entreprise commerciale.
Les travaux de bureau couvrent les services qui sont destinés à réaliser les tâches quotidiennes requises par une entreprise pour atteindre ses objectifs commerciaux. Ils couvrent principalement les activités qui aident au fonctionnement d’une entreprise commerciale. Ils comprennent les activités habituelles de services de secrétariat, telles que les services de sténographie et de dactylographie, ainsi que les services de support, tels que la location de machines et d’équipements de bureau.
7 Services de vente au détail
Le commerce de détail est communément défini comme l’action ou l’activité qui consiste à vendre des produits ou des marchandises en quantités relativement réduites pour l’utilisation ou la consommation plutôt qu’à des fins de revente (par opposition à la vente en gros qui est la vente de produits en grande quantité généralement à des fins de revente).
Toutefois, il convient de noter que la vente de produits n’est pas un service au sens de la classification de Nice. Par conséquent, l’activité de vente au détail de produits en tant que service pour lequel la protection d’une marque communautaire peut être obtenue ne repose pas sur le simple acte de vente des produits, mais sur les services fournis entourant la vente effective des produits, qui sont définis dans la note explicative à la classe 35 de la classification de Nice par les termes «le regroupement pour le compte de tiers de produits divers (à l’exception de leur transport) permettant au consommateur de les voir et de les acheter commodément».
En outre, le Tribunal a estimé que l’objectif du commerce de détail est la vente de produits aux consommateurs, qui comprend, outre l’acte juridique de vente, toute l'activité déployée par l’opérateur en vue d'inciter à la conclusion d’un tel acte. Cette activité consiste, notamment, en la sélection d’un assortiment des produits proposés à la vente et en l’offre de diverses prestations qui visent à amener le consommateur à conclure ledit acte avec le commerçant en cause plutôt qu’avec un concurrent (arrêt du 7 juillet 2005, C-418/02, «Praktiker Bau- und Heimwerkermärkte», point 34).
Les services de vente au détail permettent aux consommateurs de satisfaire différents besoins d’achat à un point de vente et sont généralement destinés au consommateur en général. Ils peuvent avoir lieu dans un emplacement fixe, comme un magasin, un supermarché, une boutique ou un kiosque, ou sous la forme d’une vente hors boutique, c’est-à-dire via internet, par catalogue ou par correspondance.
“”Les principes suivants s’appliquent en ce qui concerne la similitude des produits ou services en cause.
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7.1 Services de vente au détail par opposition à tout produit: dissemblables
Les services de vente au détail en général6 (c’est-à-dire, dont la spécification n’est pas limitée à la vente de certains produits) ne sont pas similaires à tous les produits qui peuvent être vendus au détail. Outre qu’ils sont de nature différente, et étant donné le caractère intangible des services, à l’inverse des produits, ils répondent à des besoins différents. Par ailleurs, l’utilisation de ces produits et services est différente. Ils ne sont ni concurrents, ni nécessairement complémentaires, les uns vis-à-vis des autres.
La spécification des services de vente au détail à la vente de produits en utilisant des termes comme «y compris, en particulier, par exemple, comprenant, spécifiquement, tels que» n’est pas assez précise puisque tous ces termes signifient, en principe, «par exemple». Ils ne limitent pas les produits qui suivent. En conséquence, des formulations telles que «services de commerce de détail, en particulier de chaussures» doivent être traitées de la même manière que «services de vente au détail en général», sans aucune spécification.
7.2 Services de vente au détail de produits spécifiques par opposition aux mêmes produits spécifiques: similaires à un faible degré
Les services de vente au détail concernant la vente de produits particuliers sont similaires (à un faible degré) à ces produits particuliers (voir l’arrêt du 5 octobre 2011, T-421/10, «Rosalia de Castro», point 33). Bien que la nature, la destination et l’utilisation de ces produits et services ne soient pas les mêmes, il convient de noter qu’ils présentent des similitudes, compte tenu du fait qu’ils sont complémentaires et que ces services sont généralement proposés dans les mêmes lieux que ceux où les produits sont proposés à la vente. En outre, ils sont destinés au même public.
Les produits couverts par les services de vente au détail et les produits spécifiques couverts par l’autre marque doivent être identiques afin de conclure à une similitude, c’est-à-dire, soit ils doivent être exactement les mêmes produits, soit ils doivent correspondre au sens naturel et habituel de la catégorie (par exemple, «vente au détail de lunettes de soleil» par opposition à «lunettes de soleil» et «vente au détail d’appareils optiques» par opposition à «lunettes de soleil»).
7.3 Services de vente au détail de produits spécifiques par opposition aux produits spécifiques différents ou similaires: dissemblables
Les services de vente au détail liés à la vente de produits particuliers et d’autres produits ne sont pas similaires. Il convient de garder à l’esprit qu’en principe les produits ne sont pas similaires aux services. Une trop grande protection serait accordée aux services de vente au détail si une similitude était établie lorsque les
6 L’expression «services de vente au détail» en tant que telle n’est pas acceptable à des fins de classification par l’OHMI, à moins de faire l’objet de précisions supplémentaires (voir les Directives, Partie B, Section 3, Classification).
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produits vendus au détail sont seulement très similaires ou similaires aux produits couverts par l’autre marque.
7.4 Services de vente au détail par opposition aux services de vente au détail ou aux services de vente au détail de produits spécifiques: identiques
Les services de vente au détail en général, c’est-à-dire, qui ne sont pas limités dans la liste à la vente de produits particuliers, sont identiques aux services de vente au détail en général ou liés à la vente de produits spécifiques.
7.5 Services de vente au détail de produits spécifiques par opposition aux services de vente au détail d’autres produits spécifiques: similaires
Les services de vente au détail liés à des produits spécifiques sont considérés comme similaires aux services de vente au détail liés à d’autres produits spécifiques indépendamment de l’existence ou non d’une similitude entre les produits en question. Les services comparés partagent la même nature, qui consiste en des services de vente au détail; ils ont la même destination, celle de permettre aux consommateurs de satisfaire de façon pratique différents besoins d’achat, et ils ont la même utilisation. En outre, en fonction des produits qui sont vendus au détail, ils peuvent coïncider en termes de public pertinent et de circuits de distribution.
7.6 Services auxquels s’appliquent les mêmes principes
Les principes énoncés ci-dessus s’appliquent aux services fournis dans le cadre de différentes formes qui reposent exclusivement sur des activités liées à la vente effective de produits, tels que les services fournis par les magasins de détail, les services de vente en gros, les services de commerce électronique, de vente par catalogue ou par correspondance, etc. (dans la mesure où ceux-ci relèvent de la classe 35).
7.7 Services auxquels ne s’appliquent pas les mêmes principes
En revanche, les principes énoncés ci-dessus ne s’appliquent pas à d’autres services qui ne sont pas limités aux services liés à la vente de produits, ou qui ne relèvent pas de la classe 35, tels que les services d’importation et d’exportation (classe 35), les services de distribution (classe 39), les services de transport ou de réparation (classe 37), etc.
Exemple
Services d’import-export
Les services d’import-export ne sont pas considérés comme un service de vente et ne peuvent donc pas être envisagés de la même manière que la comparaison des produits avec les services de vente au détail.
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Les services d’import-export portent sur la circulation des produits et exigent normalement l’intervention des autorités douanières, tant dans le pays d’importation que d’exportation. Ces services font souvent l’objet de contingents à l’importation, d’accords douaniers et commerciaux. Comme ils relèvent de la classe 35, ils sont considérés comme étant liés à l’administration commerciale. Ces services ne sont pas ne portent pas sur la vente effective au détail ou en gros des produits; ils sont d’habitude préparatoires ou accessoires à la commercialisation de ces produits. C’est pourquoi les produits doivent être considérés comme différents des services d’importation et d’exportation de ces produits. Le fait que l’objet sur lequel portent les services d’import-export et les produits en cause sont les mêmes n’est pas un facteur pertinent pour établir l’existence d’une similitude.
Exemple
Import et export de produits du tabac (classe 35) est différent de produits du tabac (classe 34).
L’arrêt du 9 juin 2010, T-138/09, «Riojavina», dans lequel un faible degré de similitude a été constaté entre l’import-export de vinaigre et de vin n’est pas suivi.
8 Services financiers
Les services financiers font référence aux services fournis par le secteur de la finance. Le secteur de la finance englobe une vaste gamme d’organisations qui traitent de la gestion, de l’investissement, du transfert, et du prêt de fonds. Parmi ces organisations figurent par exemple les banques, les sociétés de carte de crédit, les compagnies d’assurance, les sociétés de financement de la consommation, les sociétés de bourse et les fonds d’investissement.
8.1 Services bancaires (classe 36) par opposition à services d’assurance (classe 36)
La fourniture de services bancaires repose sur la fourniture de l’ensemble des services réalisés à des fins d’épargne ou commerciales concernant la réception, le prêt, l’échange, l’investissement et la protection de fonds, l’émission de billets ainsi que la réalisation d’autres activités financières.
La fourniture de services d’assurance consiste à accepter d’endosser la responsabilité de certains risques et les pertes y afférentes. Les assureurs offrent généralement une compensation monétaire et/ou une assistance au cas où se produirait une contingence déterminée, telle qu’un décès, un accident, une maladie, une rupture de contrat et, plus généralement, tout événement susceptible de causer des dommages.
Les services d’assurance ont des destinations différentes des services habituellement fournis par les banques comme la fourniture de crédit ou la gestion d’actifs, les services de cartes de crédit, l’évaluation financière ou le courtage d’actions et d’obligations. Néanmoins, il existe aussi certains points communs significatifs.
Les services d’assurance ont une nature financière et les compagnies d’assurance sont soumises aux mêmes règles d’agrément, de supervision et de solvabilité que les banques et les autres institutions fournissant des services financiers. La plupart des
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banques offrent également des services d’assurance, y compris l’assurance-maladie, ou elles agissent en tant qu’intermédiaires de compagnies d’assurance avec lesquelles elles sont souvent liées économiquement. En outre, il n’est pas rare de voir des institutions financières et une compagnie d’assurance au sein du même groupe économique.
Par conséquent, bien que les services d’assurance et les services bancaires aient des destinations différentes, ils ont une nature similaire; ils peuvent être fournis par la même entreprise ou des entreprises liées et partagent les mêmes circuits de distribution. Ces circonstances démontrent que les services d’assurance sont similaires aux services bancaires.
8.2 Affaires immobilières (classe 36) par opposition à transactions financières (classe 36)
Les affaires immobilières comprennent la gérance des biens immobiliers, d’agences immobilières et l’évaluation des biens immobiliers, ainsi que la consultation et la fourniture d’informations connexes. Il s’agit essentiellement de mettre à la disposition d’acheteurs potentiels des biens immobiliers en qualité d’intermédiaire. Les consommateurs font clairement la distinction entre les services d’agents immobiliers et ceux des institutions financières. Ils ne s’attendent pas à ce qu’une banque leur propose un bien immobilier ou qu’un agent immobilier gère leurs finances.
Le simple fait que les biens immobiliers puissent faire l’objet d’un financement pour être achetés ne suffit pas pour établir l’existence d’une similitude entre les affaires immobilières et les services financiers. Si les services financiers peuvent s’avérer importants pour l’acquisition d’un bien immobilier, les consommateurs s’adressent généralement en premier lieu à une agence immobilière pour la recherche d’un bien immobilier et, en second lieu, à une institution financière pour le financement de l’opération concernant ledit bien.
Toute autre conclusion impliquerait que toute opération de nature non financière qui serait subordonnée à l’octroi d’un financement serait complémentaire d’un service financier. Il convient donc de conclure qu’il n’existe pas de similitude entre ces services, même si les services financiers sont indispensables ou importants pour l’usage des services immobiliers. Les consommateurs n’attribueraient pas la responsabilité de ces deux services à la même entreprise (voir l’arrêt du 11 juillet 2013, T-197/12, «GRUPOMETROPOLIS», points 47 à 51).
8.3 Cartes de crédit (classe 9) par opposition à services financiers (classe 36)
Une carte de crédit est une petite carte en plastique délivrée aux utilisateurs comme système de paiement. Elle permet à son détenteur d’acheter des produits et des services sur la base de la promesse de paiement de ces produits et services par le détenteur. L’émetteur de la carte crée un compte renouvelable et accorde une ligne de crédit au consommateur (ou à l’utilisateur) sur laquelle l’utilisateur peut emprunter de l’argent pour le paiement à un commerçant ou comme une avance de trésorerie à l’utilisateur.
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Les services financiers sont proposés par des institutions telles que les banques pour la facilitation de différentes transactions financières et d’autres activités connexes dans le monde de la finance.
Même si les cartes de crédit sont en quelque sorte liées aux services financiers, elles peuvent, par exemple, servir à retirer de l’argent au guichet automatique d’une banque. Ce lien est trop éloigné pour rendre similaires ces produits et ces services. Les clients sont conscients du fait que les institutions financières ne sont pas responsables des aspects technologiques liés à la délivrance de cartes magnétiques ou à puce (voir la décision du 7 mai 2012, R 1662/2011-5, «CITIBANK», paragraphe 29).
9 Transport, emballage et entreposage
9.1 Transport de marchandises (classe 39) par opposition à tout produit
Les services de transport ne sont pas considérés comme similaires aux produits. Ces services sont fournis par des entreprises de transport spécialisées dont l’activité n’est ni la fabrication ni la vente de ces produits. Quant à la nature des produits et services, les services de transport font référence à une flotte de camions ou de navires utilisés pour transporter des marchandises d’un point A à un point B.
Exemple
La pâtisserie et la confiserie sont différentes des services de transport. Ils n’ont pas les mêmes nature, destination prévue et utilisation, et ne sont ni complémentaires, ni concurrents. Toutes ses différences expliquent pourquoi le service de transport et les produits de la pâtisserie et de la confiserie ciblent des consommateurs distincts. Le transport s’adresse principalement à des professionnels (ceux qui doivent déplacer les produits) alors que la pâtisserie et la confiserie sont destinées à des consommateurs non professionnels (alimentation de personnes ordinaires) (voir la décision du 7 janvier 2014, R 1006/2012-G, «PIONONO», paragraphes 28 à 36).
9.2 Emballage et entreposage de marchandises (classe 39) par opposition à tout produit
De même, les services d’emballage et d’entreposage font simplement référence au service par lequel les produits d’une entreprise ou de toute autre personne sont emballés et stockés dans un endroit particulier moyennant des frais. Ces services ne sont similaires à aucun type de produits, y compris tout produit pouvant être emballé et stocké (voir l’arrêt du 7 février 2006, T-202/03, «Comp USA», l’arrêt du 22 juin 2011, T- 76/09, «Farma Mundi Farmaceuticos Mundi», point 32 et la décision du 7 janvier 2013, R 1006/2012-G, «PIONONO», paragraphe 38).
10 Technologie de l’information
10.1 Ordinateurs par opposition à logiciels
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Ce que l’on appelle un ordinateur est en fait un «système», une combinaison de composants qui fonctionnent ensemble. Les dispositifs matériels sont les composants physiques de ce système. Ils sont conçus pour aller de pair avec des programmes informatiques appelés logiciels. Le matériel informatique et les logiciels sont fabriqués par les mêmes sociétés, partagent les mêmes circuits de distribution et peuvent cibler le public professionnel (par exemple pour une utilisation dans les secteurs bancaire et financier, éducatif, médical, en entreprise et dans le cadre de spectacles/activités récréatives) comme le grand public. De plus, ils sont complémentaires (voir paragraphe 10.2). Ces produits sont considérés comme similaires.
10.2 Logiciels par opposition à appareils utilisant des logiciels
Dans la société hautement technologique d’aujourd’hui, presque tous les appareils électroniques ou numériques fonctionnent avec des logiciels intégrés. Toutefois, cela ne permet pas automatiquement de conclure que les logiciels sont similaires aux produits utilisant des logiciels pour pouvoir fonctionner correctement (voir également l’Annexe I, section 1, «Pièces, composants et équipements»).
Exemple de dissemblance
● Une balance numérique fonctionne avec son logiciel intégré. Cela ne permet pas de conclure que le logiciel et la balance sont similaires. Il peut être avancé que le logiciel est important pour l’utilisation de la balance. Or, ils ne sont pas similaires parce qu’ils ne ciblent pas le même public. La balance numérique est destinée au grand public, alors que le logiciel s’adresserait plutôt au fabricant de la balance. Leurs producteurs ainsi que leurs circuits de distribution sont différents et ils n’ont pas la même destination.
Cependant, lorsque le logiciel ne fait pas partie intégrante d’un appareil et peut être acheté indépendamment, et lorsqu’il sert par exemple à apporter des fonctionnalités supplémentaires ou différentes, la similitude peut être établie.
Exemple de similitude
● Un appareil photographique numérique et un logiciel permettant d’en accroître les fonctionnalités sont tous deux destinés au même public et produits par une même entreprise ou par des entreprises connexes. Ils sont distribués par l’intermédiaire des mêmes circuits et l’utilisation de l’un est indispensable à celle de l’autre. Par conséquent, les appareils photographiques numériques et les logiciels (notamment ceux qui permettent par exemple d’accroître les fonctionnalités d’un appareil photographique numérique) sont considérés comme similaires.
10.3 Logiciels, applications téléchargeables et publications électroniques téléchargeables
Un logiciel d’application, également appelé «une app», est un logiciel informatique conçu pour aider l’utilisateur à effectuer différentes tâches sur l’ordinateur. Le logiciel d’application se distingue du logiciel système en ce que l’utilisateur peut y avoir accès et l’exécuter sur l’ordinateur. Le logiciel d’application est généralement conçu dans l’optique du client. Si la nouvelle définition d’application renvoie aux petites «apps»
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conçues pour les téléphones mobiles, elle englobe toutefois l’ensemble des applications pour téléphones intelligents, tablettes et ordinateurs. Dès lors, logiciels, logiciels d’application et applications téléchargeables sont considérés comme identiques.
Les publications électroniques téléchargeables, comme les livres et périodiques électroniques, les journaux et magazines en ligne, etc., sont des versions électroniques de supports traditionnels. Il devient courant de diffuser livres, magazines et journaux aux consommateurs, sous la forme de publications électroniques, au moyen de dispositifs de lecture pour tablette utilisant lesdites «apps». De ce fait, il existe une relation de complémentarité entre les logiciels/«apps» et les publications électroniques téléchargeables. Leurs fabricants peuvent être les mêmes, ils suivent les mêmes circuits de distribution et leur public est aussi généralement le même. Ces produits sont considérés comme similaires.
10.4 Logiciels spécifiques par opposition à logiciels spécifiques
Il existe de nombreux types de logiciels et bien qu’ils soient de même nature (ensembles d’instructions permettant à un ordinateur d’effectuer une tâche), cela ne veut pas dire qu’ils aient la même destination spécifique. En l’occurrence, il se peut même qu’un logiciel très spécifique soit dissemblable à un autre type de logiciel.
Exemple
Le champ d’application des logiciels de jeux diffère de celui des logiciels destinés aux appareils pour le diagnostic de maladies. En raison des différences considérables entre leurs champs d’application, l’expérience requise pour mettre au point ces types de logiciels n’est pas la même, et leurs utilisateurs finaux et circuits de distribution sont différents. Ces produits sont donc dissemblables.
10.5 Ordinateurs et logiciels (classe 9) par opposition à programmation informatique (classe 42)
La programmation informatique désigne, entre autres, le processus d’écriture d’un code source (voir l’arrêt du 29 mars 2012, T-417/09, «Mercator Studios», point 26) et un programme informatique est un ensemble d’instructions codées qui permet à une machine, en particulier un ordinateur, d’effectuer une séquence d’opérations souhaitée.
Les ordinateurs sont des dispositifs qui calculent, en particulier des machines électroniques programmables qui exécutent à grande vitesse des opérations mathématiques ou logiques ou qui regroupent, enregistrent, mettent en corrélation ou traitent des informations. Les ordinateurs ont besoin de programmes pour fonctionner.
Un logiciel est composé de programmes, de routines, de langages symboliques qui contrôlent le fonctionnement du matériel et gèrent ses opérations.
Par conséquent, les services de programmation informatique sont étroitement liés aux ordinateurs et aux logiciels. C’est parce que, dans le domaine informatique, les fabricants d’ordinateurs et/ou de logiciels fourniront aussi couramment des services informatiques et/ou des services liés aux logiciels (comme moyen d’assurer la mise à jour du système, par exemple).
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En conséquence, et en dépit du fait que la nature des produits et services n’est pas la même, les utilisateurs finaux et les fabricants/fournisseurs des produits et services coïncident. En outre, ce sont des produits et services complémentaires. C’est pourquoi ces produits et services sont considérés comme similaires.
10.6 Appareils pour l’enregistrement, la transmission, la reproduction du son ou des images, ordinateurs et logiciels (classe 9) par opposition à services de télécommunications (classe 38)
Les appareils pour l’enregistrement, la transmission ou la reproduction du son ou des images sont des appareils et dispositifs utilisés pour la communication d’informations audio ou vidéo à distance via des ondes radio, des signaux optiques, etc., ou sur une ligne de transmission.
Les services de télécommunications sont ceux qui permettent aux gens de communiquer les uns avec les autres grâce à des moyens de communication à distance.
Depuis les années 1990, la frontière entre les équipements de télécommunications et les matériels et logiciels informatiques est devenue floue en raison du développement de l’internet et de son rôle grandissant en matière de transfert des données dans le domaine des télécommunications. Il est également considéré que les équipements utilisés à des fins de télécommunication, tels que les modems, téléphones mobiles, répondeurs, télécopieurs, appareils de radiomessagerie, routeurs, etc., comprennent les logiciels de gestion des télécommunications dont la présence est nécessaire pour mener à bien ces télécommunications. Tout logiciel offrant la possibilité d’effectuer des opérations de télécommunication peut être considéré comme un logiciel de gestion des télécommunications.
Il existe clairement un lien entre les produits précités de la classe 9 et les services de télécommunications de la classe 38. Ces produits et services sont similaires en raison de leur caractère complémentaire, et, bien que leur nature soit différente, leur destination et leurs circuits de distribution sont les mêmes (voir l’arrêt du 12 novembre 2008, T-242/07, «Q2web», points 24 à 26).
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 2
DOUBLE IDENTITÉ ET RISQUE DE CONFUSION
CHAPITRE 3
COMPARAISON DES SIGNES
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Table des matières
1 Introduction................................................................................................ 4 1.1 Introduction ................................................................................................ 4
Principes généraux .................................................................................... 4 1.2.1 Comparaison objective ................................................................................... 4 1.2.2 Trois aspects: visuel, phonétique et conceptuel............................................. 5 1.2.3 Signes à comparer ......................................................................................... 5 1.2.4 Résultat possible de la comparaison.............................................................. 5 1.2.5 Territoire pertinent et public pertinent............................................................. 6
2 Identité des signes .................................................................................... 6 2.1 La notion d’identité .................................................................................... 6 2.2 Seuil minimum pour conclure à l’identité................................................. 7 2.3 Identité des marques verbales ..................................................................8 2.4 Marques verbales et marques figuratives............................................... 10 2.5 Identité des marques figuratives............................................................. 10 2.6 Identité entre une marque antérieure en noir et blanc ou nuances de
gris et une marque déposée en couleur ................................................. 11
3 Similitude des signes.............................................................................. 13 3.1 La notion de similitude............................................................................. 13 3.2 Seuil minimum pour conclure à la similitude ......................................... 13 3.3 Les éléments négligeables ...................................................................... 14 3.4 Comparaison visuelle .............................................................................. 15
3.4.1 Comparaison visuelle impliquant des marques verbales ............................. 15 3.4.1.1 Marque verbale vs marque verbale ...........................................................15 3.4.1.2 Comparaison entre une marque verbale et une marque figurative
comportant des éléments verbaux ............................................................16 3.4.2 Comparaison visuelle n’impliquant pas de marques verbales ..................... 18
3.4.2.1 Signes purement figuratifs vs signes purement figuratifs ..........................18 3.4.2.2 Comparaison visuelle de deux marques verbales/figuratives....................19 3.4.2.3 Comparaison visuelle entre un signe verbal/figuratif et un signe figuratif ..21 3.4.2.4 Scénarios particuliers lors de la comparaison de signes figuratifs ............22 3.4.2.5 Comparaison visuelle de marques de «couleurs en tant que telles».........22 3.4.2.6 Comparaison visuelle de marques tridimensionnelles...............................23
3.5 Comparaison phonétique ........................................................................ 24 3.5.1 Critères pratiques ......................................................................................... 24 3.5.2 Signes et éléments des signes à apprécier.................................................. 25 3.5.3 Sons identiques/similaires mais dans un ordre différent .............................. 29 3.5.4 Signes composés de mots étrangers ou inventés ou contenant des mots
de ce type ..................................................................................................... 29
3.6 Comparaison conceptuelle: critères pratiques ...................................... 31 3.6.1 Définition du contenu sémantique ................................................................ 31
3.6.1.1 Le contenu sémantique des mots..............................................................32 3.6.1.2 Le contenu sémantique des parties de mots .............................................35 3.6.1.3 Le contenu sémantique des mots mal orthographiés ................................37 3.6.1.4 Le contenu sémantique des prénoms et noms de famille .........................38
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3.6.1.5 Le contenu sémantique des signes figuratifs, symboles, formes et couleurs.....................................................................................................40
3.6.1.6 Le contenu sémantique des chiffres et des lettres ....................................41 3.6.1.7 Le contenu sémantique des noms géographiques ....................................42 3.6.1.8 Le contenu sémantique des onomatopées................................................42
3.6.2 Comment procéder à une comparaison conceptuelle.................................. 43 3.6.2.1 Les deux marques ont en commun un mot et/ou une expression .............44 3.6.2.2 Deux mots ou termes ont la même signification mais dans des langues
différentes..................................................................................................45 3.6.2.3 Deux mots font référence au même terme sémantique ou à des
variations de celui-ci..................................................................................46 3.6.2.4 Deux signes figuratifs, symboles et/ou formes représentent le même
objet ou la même idée ...............................................................................47 3.6.2.5 Lorsqu’il existe un mot par opposition à un signe figuratif, un symbole,
une forme et/ou une couleur représentant le concept désigné par le mot .48
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1 Introduction
1.1 Introduction
Il existe un risque de confusion (y compris un risque d’association) s’il y a un risque que le public puisse croire que les produits ou services en cause, dans l’hypothèse où ils portent les marques en cause, proviennent de la même entreprise ou, le cas échéant, d’entreprises liées économiquement.
L’existence d’un risque de confusion dépend d’une appréciation globale de plusieurs facteurs interdépendants, y compris: (i) la similitude des produits et des services, (ii) la similitude des signes, (iii) les éléments distinctifs et dominants des signes en conflit, (iv) le caractère distinctif de la marque antérieure, et (v) le public pertinent.
La première étape pour évaluer l’existence d’un risque de confusion consiste à établir ces cinq facteurs. La deuxième étape consiste à déterminer leur importance.
Ce chapitre traite de la comparaison des signes. La comparaison des signes a pour objet de déterminer si les signes sont identiques (Section 2 de ce chapitre), similaires (Section 3 de ce chapitre) ou différents.
La similitude entre les signes est une condition nécessaire pour considérer qu’il existe un risque de confusion au sens de l’article 8, paragraphe 1, point b), du RMC (voir l’arrêt du 23 janvier 2014, «Western Gold», C-558/12 P, point 44). Si les signes sont clairement différents, l’examen du risque de confusion prend fin à ce stade.
1.2 Principes généraux
1.2.1 Comparaison objective
La comparaison des signes est une comparaison dite objective, objective signifiant que tous les éléments des signes sont pris en compte, indépendamment de leur caractère distinctif ou dominant. Par conséquent, la méthodologie étape par étape employée par l’Office consiste à séparer, dans un premier temps, l’appréciation objective de la similitude des signes de l’appréciation du caractère distinctif des éléments qui les composent1.
La constatation d’une similitude entre les signes ne doit toutefois pas être considérée comme une preuve concluante de l’existence d’un risque de confusion. La comparaison objective de l’Office permet d’établir qu’il existe au moins un certain degré de similitude entre les signes. Ce degré de similitude sera nécessaire pour qu’une appréciation globale du risque de confusion2 soit effectuée, prenant en compte tous les facteurs (y compris le degré de similitude).
Cela contraste avec d’autres approches consistant à apprécier le caractère distinctif des différents éléments des marques tout en évaluant la similitude des signes. Bien qu’il ne s’agisse que d’une différence de méthode, n’ayant aucune incidence sur la
1Voir les Directives, Opposition, partie 2: Double identité et risque de confusion, chapitre 4: Caractère distinctif, et chapitre 5: Éléments dominants. 2Voir les Directives, Opposition, partie 2: Double identité et risque de confusion, chapitre 8: Appréciation globale.
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conclusion ultime de l’existence d’un risque de confusion, l’Office applique la première méthode décrite ci-dessus, dans un souci de cohérence.
La même méthode est utilisée pour apprécier si les signes sont identiques, conclusion qui nécessite une coïncidence objective de tous les éléments, qu’ils soient ou non distinctifs ou dominants.
1.2.2 Trois aspects: visuel, phonétique et conceptuel
Les signes sont toujours comparés à trois niveaux, à savoir au niveau visuel (Section 3.4 de ce chapitre), phonétique (Section 3.5. de ce chapitre) et conceptuel (Section 3.6 de ce chapitre). En effet, les signes peuvent être perçus visuellement et phonétiquement (la comparaison par le goût, l’odorat ou le toucher est, pour plusieurs raisons, moins pertinente, voire tout à fait impossible), et ils peuvent évoquer une image ou un concept similaire. Ce n’est que lorsqu’il est impossible de comparer les signes à un niveau donné (par exemple la comparaison phonétique lorsque la marque est purement figurative) que l’aspect en question sera ignoré.
1.2.3 Signes à comparer
Lors de l’appréciation de l’identité ou de la similitude, les signes doivent être comparés dans la forme dans laquelle ils sont protégés, c’est-à-dire dans la forme dans laquelle ils sont enregistrés/demandés. L’usage réel ou potentiel des marques enregistrées sous une autre forme est dénué de pertinence lors de la comparaison de signes (voir l’arrêt du 9 avril 2014, T-623/11 ‘Sobieraj (MILANÓWEK CREAM FUDGE)’ points 38)3.
La comparaison doit porter sur les signes dans leur ensemble. Dès lors, il est erroné de ne pas comparer certains éléments des signes au simple motif qu’ils sont, par exemple, plus petits que d’autres éléments présents dans les signes (à moins qu’ils ne soient négligeables, comme expliqué ci-dessous), ou bien qu’ils soient dépourvus de caractère distinctif (voir l’arrêt du 12 juin 2007, C-334/05 P, «Limoncello», points 41 et 42, et l’arrêt du 13 décembre 2011, T-61/09, «Schinken King», point 46).
1.2.4 Résultat possible de la comparaison
La comparaison des signes permet d’aboutir à l’une des trois conclusions suivantes: identité, similitude ou dissimilitude. Le résultat est décisif pour l’examen ultérieur de l’opposition car il comporte les implications suivantes:
une conclusion d’identité entre les signes entraîne une protection absolue au sens de l’article 8, paragraphe 1, point a), du RMC si les produits et/ou services sont également identiques.
une conclusion de similitude entraîne l’ouverture d’un examen du risque de confusion conformément à l’article 8, paragraphe 1, point b), du RMC.
une conclusion de dissimilitude exclut le risque de confusion. Il n’est pas nécessaire d’examiner plus avant les conditions préalables visées à l’article 8, paragraphe 1, point b), du RMC.
3En ce qui concerne l’effet des déclarations de renonciation, voir les Directives, Opposition, partie 2: Double identité et risque de confusion, chapitre 4: Caractère distinctif.
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1.2.5 Territoire pertinent et public pertinent
La similitude doit être appréciée au regard du territoire sur lequel la marque antérieure est protégée. Le territoire pertinent doit être indiqué. En outre, le public pertinent joue un rôle important dans la comparaison des signes4.
Lorsque la marque antérieure est une marque nationale, les critères pertinents doivent être analysés au regard du public pertinent dans l’État membre de l’UE concerné (ou dans les États membres dans le cas de marques du Benelux). La perception de la similitude peut varier d’un État membre à l’autre en raison de différences de prononciation et/ou de signification/compréhension.
Lorsque la marque antérieure est un enregistrement de marque communautaire, l’analyse doit, en principe, s’étendre à l’ensemble de l’UE. Toutefois, lorsqu’il existe un risque de confusion dans au moins un État membre et lorsque cela est justifié pour des raisons d’économie procédurale (notamment pour éviter l’examen de prononciations ou de significations spécifiques de marques dans plusieurs langues), l’Office n’est pas tenu d’étendre son analyse à l’ensemble de l’UE, mais peut au contraire se concentrer sur une ou plusieurs parties de l’UE pour lesquelles il existe un risque de confusion.
Le caractère unitaire de la marque communautaire implique que, dans le cadre d’une procédure d’opposition, une marque communautaire antérieure est opposable à toute demande d’enregistrement de marque communautaire qui porterait atteinte à la protection de la première marque, ne fût-ce que par rapport à la perception des consommateurs d’une partie du territoire communautaire (voir l’arrêt du 8 septembre 2008, C-514/06, «Armacell», points 56-57 et la jurisprudence ultérieure, entre autres, et l’arrêt du 18 septembre 2011, T-460/11, «BÜRGER», point 52 et la jurisprudence citée).
2 Identité des signes
2.1 La notion d’identité
Comme indiqué ci-dessus, une conclusion d’identité entre les signes entraînera le succès de l’opposition conformément à l’article 8, paragraphe 1, point a), du RMC si les produits et services sont également identiques.
Les différences entre l’article 8, paragraphe 1, point a), du RMC et la protection dans le cas de l’existence d’un risque de confusion conformément à l’article 8, paragraphe 1, point b), du RMC doivent être prises en considération pour comprendre la notion d’identité et les conditions y afférentes.
La protection prévue à l’article 8, paragraphe 1, point a), du RMC est absolue dans la mesure où l’enregistrement d’un signe identique postérieur pour des produits ou des services identiques compromettrait la fonction de la marque antérieure en tant que moyen d’identification de l’origine commerciale. Lorsque des signes ou des marques
4 Voir les Directives, Opposition, partie 2: Double identité et risque de confusion, chapitre 6:
Public pertinent et niveau d’attention.
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absolument identiques sont enregistrés pour des produits ou des services identiques, il est impossible de concevoir des circonstances dans lesquelles tout risque de confusion peut être écarté. Il n’est pas nécessaire de d’examiner d’autres facteurs, tels que le niveau d’attention du public ou le caractère distinctif de la marque antérieure.
Par ailleurs, conformément à l’article 8, paragraphe 1, point b), du RMC, la marque antérieure est protégée contre le risque de confusion: à supposer même que les marques diffèrent par certains éléments, leur similitude – combinée à d’autres éléments qui doivent être appréciés globalement – peut laisser supposer que les produits en cause proviennent de la même entreprise ou d’entreprises liées économiquement.
En raison de la protection absolue conférée par l’article 8, paragraphe 1, point a), du RMC, la notion d’identité entre les marques doit faire l’objet d’une interprétation restrictive. La protection absolue dans le cas d’une demande de marque communautaire «identique à la marque [antérieure] pour des produits ou des services identiques à ceux pour lesquels celle-ci est enregistrée [conformément à l’article 8, paragraphe 1, point a), du RMC], ne saurait être étendue au-delà des situations pour lesquelles elle a été prévue, en particulier, auxdites situations qui sont plus spécifiquement protégées par [l’article 8, paragraphe 1, point b), du RMC]» (voir l’arrêt du 20 mars 2003, C-291/00, «LTJ Diffusion» (Arthur et Félicie), points 50-54 au regard des dispositions correspondantes de la directive sur les marques).
2.2 Seuil minimum pour conclure à l’identité
La définition même de la notion d’identité implique que les deux signes soient en tous points les mêmes. Il en résulte qu’il existe une identité entre les marques lorsque la demande de marque communautaire reproduit, sans modification ni ajout, tous les éléments constituant la marque antérieure.
Toutefois, la perception d’une identité entre le signe et la marque n’étant pas toujours le résultat d’une comparaison directe de toutes les caractéristiques des éléments comparés, des différences insignifiantes entre les marques peuvent passer inaperçues aux yeux d’un consommateur moyen.
Par conséquent, la demande de marque communautaire doit être considérée comme identique à la marque antérieure «lorsqu’elle reproduit, sans modification ni ajout, tous les éléments constituant la marque ou lorsque, considérée dans son ensemble, elle recèle des différences si insignifiantes qu’elles peuvent passer inaperçues aux yeux d’un consommateur moyen» (voir l’arrêt du 20 mars 2003, C-291/00, «LTJ Diffusion» (Arthur et Félicie), points 50-54).
Une différence insignifiante entre deux marques est une différence qu’un consommateur raisonnablement attentif ne percevra qu’après avoir examiné les marques côte à côte. «Insignifiant» n’est pas un terme objectif et son interprétation dépend du niveau de complexité des marques comparées. Les différences insignifiantes sont celles qui, parce qu’elles concernent des éléments qui sont très petits ou qui sont noyés au sein d’une marque complexe, ne sont pas facilement détectables par l’œil humain lors de l’observation de la marque concernée, étant donné que, généralement, le consommateur moyen ne se livre pas à un examen analytique d’une marque mais la perçoit dans son intégralité.
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La conclusion selon laquelle un élément est «insignifiant» doit être accompagnée d’un raisonnement suffisant quant à l’absence d’impact de cet élément sur la perception globale de la marque.
Il résulte de la définition de la notion d’identité ci-dessus que les conditions suivantes doivent être remplies pour que des marques soient considérées comme identiques conformément à l’article 8, paragraphe 1, point a), du RMC:
identité complète des signes considérés dans leur ensemble. L’identité partielle n’est pas suffisante en vertu de l’article 8, paragraphe 1, point a), du RMC; une coïncidence dans une partie quelconque de la marque peut cependant entraîner une similitude entre les signes et doit être prise en compte dans le cadre de l’examen au regard de l’article 8, paragraphe 1, point b), du RMC.
Tout élément supplémentaire est suffisant pour conclure que les marques ne sont pas identiques; peu importe que l’élément ajouté soit un mot, un élément figuratif ou une combinaison des deux.
Dès lors, deux marques verbales ne seront pas considérées comme identiques si l’une est contenue dans l’autre mais qu’elle comporte d’autres caractères (voir la partie 2.4) ou de mots, indépendamment du caractère distinctif ou de l’éventuel caractère descriptif.
Signe antérieur Signe contesté et commentaires Affaire nº
millenium
MILLENIUM INSURANCE COMPANY LIMITED
Il a été conclu que «les signes en cause étaient à l’évidence non identiques», même si «Insurance company limited» était descriptif en anglais pour les services correspondants.
R 0696/2011-1
INDIVIDUAL R 0807/2008-4
identité à tous les niveaux de la comparaison. Il doit y avoir identité entre les signes à tous les niveaux pertinents de la comparaison des marques, c’est-à-dire au niveau visuel, phonétique et conceptuel. Si les marques sont identiques à certains égards (sur les plans visuel, phonétique ou conceptuel) mais pas à d’autres, elles ne sont pas identiques dans l’ensemble. Dans ce dernier cas, elles peuvent être similaires et, de ce fait, le risque de confusion doit être examiné.
2.3 Identité des marques verbales
Les marques verbales sont identiques si elles sont toutes deux des marques purement verbales et si la séquence de lettres ou les chiffres qui les composent sont exactement identiques. Les marques verbales sont des marques composées de lettres, de chiffres et d’autres signes (par exemple, «+», «@», «!») reproduits dans la police de caractères généralement utilisée par l’office compétent. Cela signifie qu’elles ne revendiquent aucun élément figuratif ou aspect en particulier. Lorsque les deux marques sont enregistrées en tant que marques verbales, la police de caractères effectivement utilisée par l’office compétent dans la publication officielle (le Bulletin, par exemple) n’a aucune importance. De même, les différences liées à l’utilisation de
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lettres minuscules ou majuscules n’ont pas d’importance, même si les minuscules alternent avec les majuscules.
Les marques verbales suivantes sont identiques:
Signe antérieur Signe contesté Affaire nº
MOMO MoMo B 1 802 233
BLUE MOON Blue Moon R 0835/2010-1
Global Campus GLOBAL CAMPUS R 0719/2008-2
Zeus ZEUS R 0760/2007-1
Jumbo JUMBO R 0353/2007-2
DOMINO Domino R 0523/2008-2
apetito APETITO T-129/09
En général, il convient de vérifier si le signe a été enregistré en tant que marque verbale. Ainsi, le seul examen de la représentation graphique de la marque (par exemple, dans le système de Madrid) peut être trompeur car, selon la représentation graphique des signes utilisée dans les certificats, bulletins, etc., une marque revendiquée comme marque verbale peut inclure des éléments ou des polices de caractères figuratifs ou stylisés. Dans ces cas, la revendication l’emportera sur la reproduction exacte figurant dans le certificat, le bulletin, etc.
Les marques en caractères non latins doivent être considérées comme des marques verbales dans les pays dans lesquels ces caractères sont officiellement utilisés (par exemple, l’alphabet cyrillique dans le cas d’une marque communautaire ou d’un enregistrement international (EI) désignant la Bulgarie ou l’UE), conformément à l’indication de catégorie nº 28.05 («inscriptions en caractères cyrilliques») de la Classification de Vienne des éléments figuratifs.
Signe antérieur Signe contesté Affaire nº
B 1 827 537
Une différence d’une seule lettre suffit pour conclure à l’absence d’identité. La même règle vaut pour un espace ou un signe de ponctuation (trait d’union, point...), la présence de l’un ou de l’autre pouvant modifier la façon dont le signe est perçu (voir le premier exemple ci-dessous). Les marques verbales suivantes ne sont pas identiques:
Signe antérieur Signe contesté Affaire nº
She , SHE S-HE T-391/06
TELIA teeli B 13 948
NOVALLOY NOVALOY B 29 290
HERBOFARM HERBO-FARMA R 1752/2010-1
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2.4 Marques verbales et marques figuratives
Une marque verbale et une marque figurative – même si les deux sont composées du même mot – ne seront pas identiques, à moins que les différences ne puissent passer inaperçues aux yeux du public pertinent.
Dans les exemples suivants, les signes ne sont, à l’évidence, pas identiques:
Signe antérieur Signe contesté Affaire nº
IHotel T-277/11
ELCO R 0803/2008-1
eClear R 1807/2010-1
BIG BROTHER R 0932/2010-4
Or, il peut être plus difficile de parvenir à la conclusion selon laquelle des marques ne sont pas identiques si la marque figurative est écrite dans une police de caractères normale. Pour autant, dans les exemples suivants, il a été considéré que les marques n’étaient pas identiques:
Signe antérieur Signe contesté Affaire nº
THOMSON R 0252/2008-1
Klepper R 0964/2009-1
2.5 Identité des marques figuratives
Il y a identité entre deux marques figuratives lorsque les deux signes concordent dans tous leurs éléments figuratifs (forme, couleurs, contraste, ombres, etc.).
Il va sans dire que l’utilisation du même mot, alors que l’élément figuratif n’est pas le même, ne suffira pas pour conclure à l’identité des marques. Les marques suivantes ne sont pas identiques:
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Signe antérieur Signe contesté Affaire nº
R 0558/2011 1
R 1440/2010-1
7078 C
Cependant, étant donné que, dans le cas suivant, la différence de présentation des lettres «TEP» en italiques passerait inaperçue aux yeux du public, les marques ont été considérées comme identiques:
Signe antérieur Signe contesté Affaire nº
B 2 031 741
2.6 Identité entre une marque antérieure en noir et blanc ou nuances de gris et une marque déposée en couleur
Dans le cadre du réseau européen des marques, dessins et modèles, l’OHMI et divers offices des marques de l’Union européenne ont adopté une pratique commune concernant le degré d’identité entre des marques antérieures en noir et blanc ou nuances de gris et les versions colorées du même signe.
Selon cette pratique commune, les différences entre une marque antérieure en noir et blanc ou nuances de gris et une version colorée du même signe seront normalement remarquées par le consommateur moyen, ce qui signifie que les marques ne seront pas considérées comme identiques. Elles ne seront considérées comme identiques que dans des circonstances exceptionnelles, si les différences entre les couleurs ou les nuances sont si insignifiantes qu’un consommateur relativement observateur ne les percevra qu’en les examinant côte à côte. En d’autres termes, pour qu’on puisse parler d’identité, les différences de couleurs des signes en question doivent être à peine visibles par le consommateur moyen.
Exemples inventés de différences significatives entraînant l’absence d’identité:
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Signe antérieur Signe contesté
Exemples inventés de différences insignifiantes entraînant l’identité:
Signe antérieur Signe contesté
En relation avec les conclusions ci-dessus, la question de savoir si une marque enregistrée en noir et blanc devrait être considérée comme couvrant toutes les couleurs a été abordée par la Cour dans un jugement ultérieur (arrêt du 9 juin 2014, T- 623/11 ‘Sobieraj (MILANÓWEK CREAM FUDGE)’
Signe antérieur Signe contesté Affaire nº
et al.
T-623/11
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La Cour a considéré que le fait que «le titulaire de la marque [puisse] l’utiliser dans une couleur ou une association de couleurs et en obtenir, le cas échéant, la protection selon les textes pertinents applicables […] ne saurait signifier pour autant […] que l’enregistrement d’une marque ne désignant aucune couleur en particulier couvrirait “toutes les combinaisons de couleurs qui sont comprises dans la représentation graphique”» (point 39)
Dans le cas d’espèce, la Cour a considéré que la Salle a correctement constaté «qu’une différence entre la marque demandée et les première et deuxième marques antérieures résidait dans le fait que la marque demandée était constituée, en partie, par un fond jaune avec des bandes verticales blanches» (point 40).
3 Similitude des signes
3.1 La notion de similitude
Selon la jurisprudence, deux marques sont similaires entre autres lorsque, du point de vue du public pertinent, il existe entre elles une égalité au moins partielle en ce qui concerne un ou plusieurs aspects pertinents (voir l’arrêt du 23 octobre 2002, T-6/01, «Matratzen», point 30 (C-03/03 P); l’arrêt du 12 novembre 2008, T-281/07, «BLUE», point 26].
L’appréciation globale du risque de confusion doit, en ce qui concerne la similitude visuelle, phonétique ou conceptuelle des marques en cause, être fondée sur l’impression d’ensemble produite par les marques, en tenant compte, notamment, des éléments distinctifs et dominants de celles-ci (voir l’arrêt du 11 novembre 1997, C-251/95, «SABEL», point 23).
3.2 Seuil minimum pour conclure à la similitude
S’il existe un degré de similitude à un, deux ou trois niveau(x), alors les signes sont similaires (voir l’arrêt du 2 décembre 2009, T-434/07, «Volvo», point 50-53). Le point de savoir si les signes sont suffisamment similaires pour conclure à l’existence d’un risque de confusion doit être examiné dans une autre partie de la décision (l’«appréciation globale») et non dans la partie portant sur la comparaison des signes.
En bonne logique, si le seuil est bas, le constat de similitude ne conduira pas automatiquement à la conclusion selon laquelle il existe un risque de confusion, y compris un risque d’association, quand bien même les produits et les services seraient similaires ou identiques. Comme indiqué ci-dessus, le risque de confusion, y compris le risque d’association, dépend de nombreux facteurs qui doivent d’abord être examinés séparément5.
Étant donné qu’il n’est pas toujours aisé de définir la frontière qui sépare le similaire du dissemblable, ces notions sont traitées ensemble dans chacune des comparaisons: comparaison visuelle, comparaison phonétique et comparaison conceptuelle.
5 Voir les Directives, Opposition, partie 2: Double identité et risque de confusion, chapitre 8:
Appréciation globale.
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3.3 Les éléments négligeables
Comme mentionné dans la Section 1.2.1 ci-dessus, la comparaison doit porter sur les signes dans leur ensemble. Toutefois, dans le cas d’éléments négligeables, l’Office peut d’emblée omettre de comparer ces éléments, à condition d’avoir dûment expliqué pourquoi ceux-ci doivent être considérés comme négligeables (voir l’arrêt du 12 juin 2007, C-334/05 P, «Limoncello», point 42). Cela est particulièrement important lorsque l’élément négligeable est l’élément commun des signes. La notion d’élément négligeable doit faire l’objet d’une interprétation restrictive et, en cas de doute, la décision doit porter sur les signes dans leur ensemble.
L’Office considère qu’un élément négligeable se rapporte à un élément qui, du fait de sa taille et/ou de sa position, n’est pas perceptible à première vue ou fait partie d’un signe complexe composé de nombreux autres éléments (comme les étiquettes de boissons, les emballages, etc.), et qui, partant, a toutes chances d’être ignoré par le public pertinent.
Exemples:
Signe antérieur Signe contesté Affaire nº
(GREEN BY MISSAKO)
T-162/08
Les mots «by missako» sont quasiment illisibles: ils sont difficiles à déchiffrer en raison de leur taille et de l’écriture.
LUNA
R 02347/2010-2
L’élément «Rótulos Luna S.A.» a été considéré comme négligeable.
MATHEUS MÜLLER
R 0396/2010-1
La chambre n’a pas apprécié les éléments «30 cl», «30% vol.», «ANNO» ou «1857» sur le plan phonétique ou conceptuel.
MAGNA
R 1328/2005-2
La chambre a décrit le signe contesté dans son intégralité, mais les éléments négligeables comme «70%» n’ont pas été pris en compte dans la comparaison à trois niveaux.
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T-472/08
Les éléments autres que l’élément «cachaça»/«pirassununga» et l’élément «51», écrit en caractères blancs dans un cercle à moitié inséré dans une large bande qui traverse le signe de part en part, sont négligeables dans l’impression d’ensemble produite par ces marques (point 65).
3.4 Comparaison visuelle
3.4.1 Comparaison visuelle impliquant des marques verbales
Lorsqu’au moins une marque verbale est concernée, c’est le mot en tant que tel qui est protégé et non sa forme écrite.
Selon la jurisprudence, une marque verbale est une marque constituée exclusivement de lettres, de mots ou d’associations de mots, écrits en caractères d’imprimerie dans une police normale, sans élément graphique spécifique (voir l’arrêt du 20 avril 2005, T-211/03, «Faber», point 33, et l’arrêt du 13 février 2007, T-353/04, «Curon», point 74). La protection qui découle de l’enregistrement d’une marque verbale porte sur le mot indiqué dans la demande d’enregistrement et non sur les aspects graphiques ou stylistiques particuliers que cette marque pourrait éventuellement revêtir (voir l’arrêt du 22 mai 2008, T-254/06, «RadioCom», point 43).
En conséquence, il est indifférent que la marque verbale soit représentée en caractères minuscules ou majuscules:
Signe antérieur Signe contesté Affaire nº
BABIDU babilu T-66/11 (point 57)
BALLYMANOR BallyM R 0391/2010-1
3.4.1.1 Marque verbale vs marque verbale
Pour les marques verbales, la comparaison visuelle est fondée sur une analyse du nombre et de la séquence des lettres/caractères, de la position des lettres/caractères identiques, du nombre de mots ainsi que de la structure des signes (par exemple, si les éléments verbaux sont séparés par un espace ou un trait d’union).
Toutefois, le consommateur moyen perçoit normalement un signe comme un tout et ne se livre pas à un examen de ses différents détails. Dès lors, de petites différences dans le nombre de lettres sont souvent insuffisantes pour exclure l’existence d’une similitude visuelle, en particulier lorsque les signes ont une structure commune.
Dans les cas suivants, les marques ont été jugées similaires sur le plan visuel:
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Signe antérieur Signe contesté Affaire nº
CIRCULON CIRCON T-542/10
MEDINETTE MESILETTE T-342/10
FORTIS FORIS R 0049/2002-4
ARTEX ALREX T-154/03
BALLYMANOR BallyM R 0391/2010-1
MARILA MARILAN R 0799/2010-1
EPILEX E-PLEX T-161/10
CHALOU CHABOU T-323/10
Les marques verbales suivantes sont différentes sur le plan visuel:
Signe antérieur Signe contesté Affaire nº
ARCOL CAPOL C-193/09 P et T-402/07
La chambre a considéré que, bien que ces marques aient en commun la lettre «a» et la terminaison «ol», elles «diffèrent clairement» sur le plan visuel. Le Tribunal de l’UE partageait cet avis. Il considérait que le
même nombre de lettres dans deux marques ne revêt pas en tant que tel une importance particulière pour le public pertinent, même dans le cas d’un public spécialisé. Puisque l’alphabet est constitué d’un nombre de lettres limité qui, en outre, ne sont pas utilisées à la même fréquence, il est inévitable que de nombreux mots possèdent le même nombre de lettres (qui sont parfois les mêmes), mais ces mots ne peuvent pas, pour cette seule raison, être considérés comme similaires sur le plan visuel. De plus, le public ne prête généralement pas attention au nombre exact de lettres dans une marque verbale, et ne remarquera donc pas, dans la majorité des cas, que deux marques en conflit
possèdent le même nombre de lettres (points 81 et 82). Selon le Tribunal, ce qui importe dans l’appréciation de la similitude visuelle de deux marques verbales c’est, plutôt, la présence, dans
chacune d’elles, de plusieurs lettres dans le même ordre (point 83). La terminaison «ol» des marques en conflit constitue un élément commun à ces marques, mais figure à la fin desdites marques et est précédée de groupes de lettres totalement différents (respectivement, les groupes de lettres «arc» et «cap»). La chambre de recours a donc pu, à juste titre, conclure que ce point commun ne rendait pas les marques visuellement similaires (point 83). La Cour de justice a confirmé cette appréciation sur le plan
visuel (point 74).
3.4.1.2 Comparaison entre une marque verbale et une marque figurative comportant des éléments verbaux
Lorsque des marques figuratives comportant des éléments verbaux et des marques verbales sont comparées sur le plan visuel, la question qui se pose est de savoir si les signes ont en commun un nombre significatif de lettres dans la même position et si l’élément verbal du signe figuratif est hautement stylisé. Une similitude peut être constatée, nonobstant la représentation graphique des lettres dans des polices de caractères différentes, en italiques ou en caractères gras, en minuscules ou en majuscules, ou encore en couleur.
En principe, lorsque les mêmes lettres apparaissent dans la même séquence, la différence de stylisation doit être importante pour pouvoir conclure à l’existence d’une différence sur le plan visuel.
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Les marques suivantes ont été jugées similaires sur le plan visuel, parce qu’il n’y avait pas de différence importante dans la stylisation des éléments verbaux des marques figuratives et parce que l’élément verbal était facilement reconnaissable et lisible:
Signe antérieur Signe contesté Affaire nº
VITAFIT T-552/10
Hella T-522/10
vitafresh R 0399/2009-1
COTO DE IMAZ R 0409/2009-1
vendus sales & communication group R 0994/2009-4
OPENDOOR R1309/2008-4
VITESSE R 0636/2008-4
EMERGEA T-172/04
Toutefois, lorsque le mot de la marque figurative est hautement stylisé, les marques doivent être considérées comme différentes sur le plan visuel, comme dans les exemples suivants:
Signe antérieur Signe contesté Affaire nº
NEFF R 1242/2009-2
NODUS R 1108/2006-4
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3.4.2 Comparaison visuelle n’impliquant pas de marques verbales
Lorsqu’aucun des signes à comparer n’est une marque verbale, il convient d’établir une distinction entre les éléments purement figuratifs des marques et les éléments verbaux:
Lors de la comparaison des signes en conflit du point de vue de leurs éléments purement figuratifs, l’Office considère ces derniers comme des images: s’ils coïncident par un seul élément reconnaissable séparément, ou s’ils possèdent le même contour ou un contour similaire, il est probable qu’une certaine similitude visuelle sera constatée.
Lors de la comparaison des signes du point de vue de leurs éléments verbaux, l’Office considère les signes comme similaires lorsqu’ils ont en commun un nombre significatif de lettres dans la même position et lorsqu’ils ne sont pas hautement stylisés ou sont stylisés de la même manière ou d’une manière similaire. Une similitude peut être constatée nonobstant la représentation graphique des lettres dans différentes polices de caractères, en italiques ou en caractères gras, en lettres minuscules ou majuscules, ou encore en couleur (voir l’arrêt du 18 juin 2009, T-418/07, «LiBRO», et l’arrêt du 15 novembre 2011, T-434/10, «ALPINE PRO SPORTSWEAR AND EQUIPMENT», pourvoi C-42/12 P rejeté).
En règle générale, il existe trois types de comparaison visuelle:
Signes purement figuratifs vs signes purement figuratifs: les signes sont visuellement similaires s’ils coïncident par l’un quelconque de leurs éléments;
Signe figuratif contenant des éléments verbaux vs signe figuratif contenant des éléments verbaux: les signes sont visuellement similaires si leurs éléments figuratifs coïncident et/ou s’ils ont en commun des mots et/ou des lettres écrites dans une police de caractères identique/similaire ou dans une police de caractères qui n’est pas hautement stylisée;
Signes figuratifs contenant des éléments verbaux vs signe purement figuratif (ou vice-versa): les signes sont visuellement similaires s’ils coïncident par l’un de leurs éléments figuratifs.
Ces trois scénarios sont examinés de façon approfondie ci-après et plusieurs situations particulières sont décrites à la fin du chapitre.
3.4.2.1 Signes purement figuratifs vs signes purement figuratifs
Comme expliqué précédemment, les signes peuvent être visuellement similaires lorsqu’ils sont identiques ou ont des contours similaires.
Les signes purement figuratifs suivants ont été jugés similaires sur le plan visuel.
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Signe antérieur Signe contesté Affaire nº
T-379/08
B 1 157 769
T-523/08
Les signes purement figuratifs suivants ont été jugés différents sur le plan visuel:
Signe antérieur Signe contesté Affaire nº
B 1 572 059
(T-502/11)
3.4.2.2 Comparaison visuelle de deux marques verbales/figuratives
Comme indiqué précédemment, dans le cas où les deux signes contiennent des éléments verbaux, une similitude sera constatée si ces éléments coïncident par une séquence de lettres qui ne sont pas hautement stylisées. Tel est le cas même si les lettres sont représentées graphiquement dans des polices de caractères différentes mais qui ne sont pas hautement stylisées, que ce soit en italiques ou en caractères gras, en lettres minuscules ou majuscules, ou encore en couleur (voir l’arrêt du 18 juin 2009, T-418/07, «LiBRO», et l’arrêt du 15 novembre 2011, T-434/10, «ALPINE PRO SPORTSWEAR & EQUIPMENT», pourvoi C-42/12 P rejeté).
Dans les exemples suivants, les marques ont été jugées similaires sur le plan visuel parce qu’elles ont en commun certains mots ou certaines séquences de lettres et que la police de caractères n’a pas été considérée comme hautement stylisée:
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Signe antérieur Signe contesté Affaire nº
T-418/07
T-434/10 (pourvoi rejeté)
R 1148/2008
T-460/09
T-204/09
T-383/12
Cependant, dans les exemples suivants, les marques ont été considérées comme différentes sur le plan visuel(en dépit du fait qu’elles avaient en commun certains mots et/ou lettres et/ou éléments figuratifs), parce que les lettres communes étaient hautement stylisées, placées différemment et/ou parce que les marques contenaient des éléments figuratifs supplémentaires:
Signe antérieur Signe contesté Affaire nº
T-390/03
T-106/06
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R 1109/2008-1
R 0576/2010-2 (confirmé par T-593/10)
R 0111/2010-4
3.4.2.3 Comparaison visuelle entre un signe verbal/figuratif et un signe figuratif
Une coïncidence dans un élément figuratif qui est perçu visuellement de manière identique ou similaire peut déboucher sur une similitude visuelle.
Les exemples suivants sont des cas dans lesquels il existe des similitudes visuelles du fait de la présence d’éléments figuratifs concordants:
Signe antérieur Signe contesté Affaire nº
T-81/03, T-82/03 et T-103/03
(i)
(ii) R 0144/2010-2
R 1022/2009-2
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Dans l’exemple suivant, les éléments figuratifs étaient différents et les signes ont été jugés différents sur le plan visuel:
Signe antérieur Signe contesté Affaire nº
B 134 900
Les marques ont été considérées comme différentes sur le plan visuel.
3.4.2.4 Scénarios particuliers lors de la comparaison de signes figuratifs
Lors de la comparaison de signes figuratifs sur le plan visuel, il est toujours possible de conclure à une similitude visuelle lorsque les éléments figuratifs sont différents (c’est-à-dire qu’ils ne concordent pas et n’ont pas le même contour ou un contour similaire) et que les éléments verbaux diffèrent. Une similitude sera constatée lorsque la stylisation, la structure et la combinaison de couleurs globales rendent les signes globalement similaires sur le plan visuel.
L’exemple suivant montre comment une structure, une stylisation et une combinaison de couleurs similaires contribuent à rendre les signes similaires sur le plan visuel:
Signe antérieur Signe contesté Affaire nº
B 1 220 724
Les signes ont été considérés comme visuellement similaires.
3.4.2.5 Comparaison visuelle de marques de «couleurs en tant que telles»
Lors de la comparaison de marques de couleurs pures, il y aura une similitude sur le plan visuel dans la mesure où les marques contiennent les mêmes couleurs/combinaisons de couleurs ou des nuances similaires.
Exemple:
Signe antérieur Signe contesté Affaire nº
Indication de couleur: Jaune curry (ocre) RAL 6003- HR/vert olive RAL 1027-HR.
Indication de couleur: Jaune, Pantone PMS 142, vert RAL 6001
B 1 229 790
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Les signes ont été jugés similaires sur le plan visuel dans la mesure où ils contiennent tous deux des nuances de vert et de jaune similaires.
3.4.2.6 Comparaison visuelle de marques tridimensionnelles
Lors de la comparaison de signes tridimensionnels et bidimensionnels, il convient d’appliquer les mêmes principes de base que ceux applicables aux marques bidimensionnelles. Même si, en général, la rareté comparative du signe tridimensionnel concernera surtout l’impact visuel du signe, celui-ci doit être considéré par rapport à l’impression globale.
En revanche, il existe un faible degré de similitude visuelle entre les marques suivantes:
Signe antérieur Signe contesté Affaire nº
R 0806/2009-4
T-24/08
Les marques suivantes sont différentes sur le plan visuel:
Signe antérieur Signe contesté Affaire nº
R 0806/2009-4, paragraphe 34
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3.5 Comparaison phonétique
3.5.1 Critères pratiques
Lorsque l’opposition est fondée sur des signes antérieurs protégés dans différents États membres de l’UE, il convient, en principe, de tenir compte de toutes les prononciations différentes des signes par le public pertinent dans toutes les langues officielles des États membres concernés. Les accents locaux ne sont pas pris en compte. Cependant, comme indiqué précédemment, lorsque la marque antérieure est un enregistrement de marque communautaire, l’analyse doit en principe s’étendre à l’ensemble de l’UE. Toutefois, lorsqu’il existe un risque de confusion dans au moins un État membre et si cela est justifié pour des raisons d’économie procédurale (notamment pour éviter l’examen de prononciations ou de significations spécifiques de marques dans plusieurs langues), l’Office n’est pas tenu d’étendre son analyse à l’ensemble de l’UE mais peut au contraire se concentrer sur une seule partie ou plusieurs parties lorsqu’il existe un risque de confusion.
L’impression phonétique d’ensemble produite par un signe est particulièrement influencée par le nombre et la séquence de ses syllabes. Le rythme et l’intonation commune des signes jouent un rôle important dans la perception phonétique des signes. Le dictionnaire anglais Collins définit «rythme» comme «l’agencement de mots en une séquence plus ou moins régulière de syllabes accentuées, non accentuées, longues ou courtes». L’«intonation» est définie comme «les inflexions sonores de locutions et de phrases produites par les changements de ton dans la voix».
Par conséquent, les facteurs clés pour déterminer l’impression phonétique d’ensemble d’une marque sont les syllabes ainsi que leur séquence et leur intonation particulières. L’appréciation de syllabes communes est particulièrement importante pour la comparaison phonétique de marques. En effet, une impression phonétique globale similaire dépendra notamment de ces syllabes communes et de leur combinaison identique ou similaire.
Les marques suivantes sont des exemples de marques différentes sur le plan phonétique:
Signe antérieur Signe contesté Territoire pertinent Affaire nº
CAPOL ARCOL EU C-193/09
CLENOSAN ALEOSAN ES R 1669/2010-2
GULAS MARGULIÑAS ES R 1462/2010-2
Les marques suivantes sont des exemples de marques similaires/identiques sur le plan phonétique:
Signe antérieur Signe contesté Territoire pertinent Affaire nº
FEMARA EU
R 0722/2008-4
BX R 0166/2010-1
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DE R 1071/2009-1 similaire à un degré
faible
PT: «Une partie significative [du grand]
public [au Portugal] dispose à tout le moins d’une connaissance de base de cette langue
lui permettant de comprendre et de
prononcer des mots anglais aussi basiques
et courants que “forever” ou de
prononcer en anglais des chiffres inférieurs à
dix.» (point 68) «Eu égard notamment à l’usage très répandu
du langage dit “langage SMS” […] le chiffre 4, lorsqu’il est
associé à un mot anglais, sera
généralement lui- même lu en anglais.»
(point 69)
T-528/11
Les marques constituées d’une seule lettre peuvent être comparées sur le plan phonétique. Les marques suivantes sont identiques sur le plan phonétique dans la mesure où elles reproduisent toutes deux la lettre «A»:
Marque antérieure Signe contesté Affaire nº
T-115/02
3.5.2 Signes et éléments des signes à apprécier
Une marque figurative dépourvue d’éléments verbaux ne peut pas être prononcée en tant que telle. Tout au plus, son contenu visuel ou conceptuel peut être décrit oralement (voir l’arrêt du 7 février 2012, T-424/10, «Marque communautaire figurative représentant des éléphants dans un rectangle», point 46).
En d’autres termes, les marques purement figuratives (c’est-à-dire celles qui ne comportent aucun élément verbal) ne font pas l’objet d’une appréciation phonétique. La «signification» évoquée par l’image ne doit être appréciée que d’un point de vue visuel et conceptuel.
Dans les exemples suivants, aucune comparaison phonétique n’a pu être effectuée, les marques étant purement figuratives:
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Signe antérieur Signe contesté Affaire nº
R 0131/2010-4
R 0403/2009-2
T-424/10
En outre, lorsque l’un des signes possède des éléments qui peuvent être lus et que l’autre signe ne comporte que des éléments figuratifs ne faisant pas l’objet d’une appréciation sur le plan phonétique, il y a lieu de conclure qu’aucune comparaison phonétique ne peut être effectuée. Par exemple:
Signe antérieur Signe contesté Affaire nº
(KUNGFU)
R 0144/2010-2
En ce qui concerne la prononciation d’éléments figuratifs évoquant une lettre, il convient de souligner que le public pertinent aura tendance à ne lire ces éléments figuratifs que s’ils sont liés à un mot connu du public pertinent ou s’ils font partie d’un mot connu du public pertinent, comme dans les exemples suivants:
Signe antérieur Signe contesté Affaire nº
OLI SONE B 1 269 549
ROCK T-146/08
Enfin, si les mots, les lettres et les chiffres doivent toujours faire l’objet d’une appréciation phonétique, certains symboles et abréviations peuvent susciter des interrogations.
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Ainsi, le logogramme «&» (esperluette) sera généralement lu et prononcé, et il doit donc être pris en compte dans la comparaison phonétique. Or, la prononciation d’un symbole donné peut varier lorsqu’il est prononcé dans différentes langues.
Signe antérieur Signe contesté Affaire nº
DNG
R 0160/2010-2 L’esperluette «&» sera prononcée dans la plupart des langues communautaires et est reconnue comme étant la traduction de la conjonction «et».
Il en va de même pour le caractère typographique «@», qui sera en principe prononcé. Bien entendu, la prononciation d’un symbole donné peut varier lorsqu’il est prononcé dans différentes langues.
Signe antérieur Signe contesté Affaire nº
VODAFONE AT HOME
R 1421/2010-4 @ sera prononcé «at» ou «arrobase» au Benelux
(paragraphe 21).
Dans le cas précédent, il est indéniable qu’une partie significative du public pertinent – notamment les anglophones – liraient le symbole «at» et, partant, prononceraient la marque: «at home». Cette possibilité doit donc être prise en compte, de même que d’autres possibilités telles que «a home» ou simplement «home». Naturellement, dans d’autres langues, ce symbole peut être lu différemment (par exemple «arroba» en espagnol et en portugais).
Comparons toutefois cet exemple avec le cas suivant:
Signe antérieur Signe contesté Affaire nº
R 0719/2010-1 (T-220/11 rejeté, C-524/12 P rejeté) Le «@» sera perçu comme la lettre «a» (à tout le moins) par le public anglophone (point 25).
Les symboles plus «+» et moins/trait d’union «-» peuvent également être prononcés par le public pertinent en fonction des circonstances. Le symbole moins peut être prononcé lorsqu’il est utilisé avec un nombre, par exemple «-1», mais il ne sera pas prononcé s’il sert de trait d’union (comme dans «G-Star»).
Dans les exemples suivants, le symbole «+» de la demande de marque communautaire contestée serait prononcé «plus»:
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Signe antérieur Signe contesté Affaire nº
AirPlus International T-321/07
(C-216/10 P rejeté)
T-400/06
Les symboles de devises«€, $, ₤», etc. peuvent, eux aussi, être prononcés lorsque la marque en cause est prononcée à haute voix. À titre d’exemple (fictif), au Royaume-Uni le signe «₤20» serait prononcé «20 pounds». Les signes «₤20», «20 pounds» et «twenty pounds» sont donc phonétiquement identiques.
Or, compte tenu de la façon dont les symboles (ou lettres) sont parfois utilisés, il n’est pas réaliste de penser qu’ils seront lus et prononcés lorsque, dans une marque figurative par exemple, un symbole est répété pour créer un motif, fortement déformé ou peu lisible. Cela est illustré par les exemples suivants:
Marque Explication
T-593/10
Dans cette marque figurative, la lettre «B» peut être lue. La marque doit donc être appréciée sur le plan phonétique.
T-593/10
Dans cette marque figurative, la lettre «B» est si fortement déformée que le tribunal a conclu qu’il était difficile pour une partie du public de savoir clairement s’il s’agissait effectivement de la lettre «B» ou du chiffre «8».
R 1779/2010-4
Il est très difficile de déterminer la prononciation du signe. Une comparaison phonétique peut donc conduire à des résultats très différents, allant de l’identité à la dissimilitude.
B 1 127 416
Dans cette marque figurative, la lettre «H» peut être lue et doit donc faire l’objet d’une appréciation phonétique.
B 1 127 416
Dans ce signe, le motif rend peu probable la lecture d’un «H» (ou plutôt de plusieurs «H») par les consommateurs. Cette marque ne peut pas être appréciée sur le plan phonétique.
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T-282/12 Le tribunal a estimé que, bien qu’à peine lisibles à première vue, les mots FREE et STYLE dans les deux signes sont prononcés
de manière identique quelle que soit la langue du public.
En résumé, le fait qu’un symbole/lettre donné puisse être prononcé ou non dépend du type de caractère concerné, de la manière dont il est représenté et de la façon dont il est associé à d’autres éléments du signe.
3.5.3 Sons identiques/similaires mais dans un ordre différent
Lorsque les marques en conflit sont composées de syllabes ou de mots qui sont identiques ou fortement similaires mais placés dans un ordre différent – de sorte que si l’on changeait la position de l’un des mots ou syllabes, les signes seraient identiques ou fortement similaires sur le plan phonétique –, il convient de conclure à la similitude phonétique des signes.
Par exemple:
Signe antérieur Signe contesté Affaire nº
SAT-COM COM S.A.T B 361 461
Kids Vits VITS4KIDS T-484/08 (C-84/10 P rejeté)
T-67/08
3.5.4 Signes composés de mots étrangers ou inventés ou contenant des mots de ce type
Lorsqu’un signe contient des mots étrangers, il convient de partir du principe que le public pertinent est peu au fait de la prononciation d’une langue étrangère par des locuteurs natifs. De ce fait, le public aura tendance à prononcer un mot étranger en suivant les règles phonétiques de sa propre langue.
Signe antérieur Signe contesté Affaire nº
LIDL LIFEL
R 0410/2010-1 Les deux premières lettres et la dernière lettre sont les mêmes dans les deux marques. Sur le plan phonétique, la similitude est d’autant plus forte que le mot «LIDL» sera souvent prononcé comme s’il s’écrivait «LIDEL». Pour des raisons phonologiques, les lettres «D» et «L» sont quasiment impossibles à prononcer dans la plupart des langues sans intercaler de voyelle. Les
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marques seraient donc prononcées «LIFEL» et «LIDEL» dans des langues comme l’espagnol, l’italien, l’allemand ou le français.
KAN-OPHTAL PAN-OPHTAL BAÑOFTAL
T-346/09 Le territoire pertinent est l’Allemagne. Le tribunal a conclu à l’existence d’une similitude phonétique. Le consommateur allemand prononcera probablement les lettres «N» et «Ñ» de la même façon. De plus, les lettres «P» et «B» s’articulent avec les deux lèvres et leur son peut être confondu si elles sont suivies de la même voyelle; les signes «PAN-OPHTAL» et «BAÑOFTAL» sont très similaires sur le plan phonétique.
GLÄNSA GLANZ
T-88/10 Le tribunal a conclu que l’«umlaut» n’est pas susceptible de modifier l’impression phonétique d’ensemble pour les locuteurs EN, FR et ES, dès lors que la lettre «ä» n’existe pas dans les langues concernées (point 40)
Cependant, il n’en ira pas de même lorsque le public pertinent connaît un mot, comme dans les cas suivants, par exemple:
Lorsqu’il est un fait notoire qu’une langue étrangère est connue du public pertinent. Ainsi, le tribunal a déjà confirmé qu’une compréhension de base (au minimum) de la langue anglaise par le grand public des pays scandinaves, des Pays-Bas et de la Finlande, est un fait notoire (voir l’arrêt du 26 novembre 2008, T-435/07, «NEW LOOK», point 23).
Lorsque certains termes sont clairement connus du public pertinent pour certaines classes de produits et/ou de services. Ainsi, par exemple, les informaticiens et les scientifiques sont généralement considérés comme étant plus familiers avec l’utilisation du vocabulaire anglais technique de base que le consommateur moyen, quel que soit le territoire concerné (voir l’arrêt du 27 novembre 2007, T-434/05, «ACTIVY Media Gateway», points 38 et 48 pour le secteur de l’informatique (C-57/08 P rejeté), et l’arrêt du 9 mars 2012, T-207/11, «EyeSense», points 21 et 22 pour les spécialistes allemands relevant du domaine médical).
Lorsque des mots appartenant au vocabulaire de base sont compris dans tous les États membres, comme les mots anglais «baby», «love», «one», «surf», «pizza», etc.
Marque antérieure Signe contesté Affaire nº
Babylove Baby Love R 0883/2010-2
Enfin, lorsque l’une des parties produit des preuves irréfutables qu’un tel mot est connu d’une partie significative du public pertinent.
Lorsqu’une partie significative du public pertinent prononce le mot étranger correctement mais qu’une autre partie significative applique les règles de sa langue maternelle, toute appréciation de la similitude phonétique doit mentionner les deux prononciations et être motivée. Par exemple:
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Signe antérieur Signe contesté Affaire nº
WRITE RIGHT
(à titre d’exemple uniquement) Anglais: très similaires sur le plan phonétique.
Espagnol: différent sur le plan phonétique.
ZIRH
T-355/02 (pourvoi C-206/04 P rejeté) Similaires dans les pays anglophones et en Espagne.
S’agissant des mots inventés ou fantaisistes (mots qui ne correspondent à aucun mot existant dans l’UE), le consommateur pertinent pourrait les prononcer non seulement tels qu’ils seraient prononcés selon les règles de prononciation de sa langue maternelle, mais aussi tels qu’ils sont écrits.
Signe antérieur Signe contesté Affaire nº
BAMIX KMIX
T-444/10 Le tribunal a constaté que l’élément verbal «kmix» ne correspondant à aucun mot existant dans l’Union européenne, il peut être prononcé par une partie du public pertinent tel qu’il est écrit, en une seule syllabe. Toutefois, la prononciation en deux syllabes de la marque demandée, en l’occurrence «ka» et «mix», est également possible. En effet, dans certaines langues de l’Union européenne (notamment dans les langues française et allemande), la lettre «k» se prononce «ka» et la prononciation «km» n’est pas courante (point 32).
3.6 Comparaison conceptuelle: critères pratiques
3.6.1 Définition du contenu sémantique
Deux signes sont identiques ou similaires sur le plan conceptuel lorsqu’ils sont perçus comme ayant le même contenu sémantique ou un contenu sémantique analogue (voir l’arrêt du 11 novembre 1997, C-251/95, «SABEL», point 24). Le «contenu sémantique» d’une marque correspond à ce qu’elle signifie, ce qu’elle évoque ou, lorsqu’il s’agit d’une image ou d’une forme, ce qu’elle représente. Dans ce texte, les expressions «contenu sémantique» et «concept» sont utilisées indifféremment.
Si une marque est composée de plusieurs éléments (par exemple, un mot et un élément figuratif), le concept de chacun de ces éléments doit être défini. Toutefois, si la marque est composée d’une expression significative (constituée de deux mots ou plus), ce qui importe c’est la signification de l’expression dans son ensemble et non la signification de chacun des mots pris isolément.
Il n’est pas nécessaire de définir tous les concepts: seuls comptent ceux qui sont susceptibles d’être connus du public pertinent, tels que définis par le territoire pertinent.
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Ainsi, si le territoire pertinent est l’Espagne, le fait que le mot ait une signification en polonais est, en principe, dépourvu de pertinence.
En règle générale, la comparaison conceptuelle n’est pas influencée par les produits et services en cause. Toutefois, si un terme a plusieurs significations et que l’une d’entre elles revêt une importance particulière pour les produits et services en cause, la comparaison conceptuelle peut porter sur cette signification. En tout état de cause, ce qui importe, c’est la façon dont le terme est perçu par le public pertinent. Il ne faut pas établir à tout prix ou de façon artificielle un lien entre les produits et services et ce que le signe signifie, évoque ou représente. Par exemple, si les produits pertinents se rapportent à l’éclairage et que le signe est l’élément «LED» ou contient cet élément, «diode électroluminescente» est l’une des significations possibles de «LED». Par conséquent, la comparaison conceptuelle peut porter sur cette signification.
3.6.1.1 Le contenu sémantique des mots
Lorsque la marque est composée d’un mot ou contient un mot, la première étape pour un examinateur consiste à chercher la définition de ce mot dans des dictionnaires et/ou des encyclopédies dans la ou les langues du territoire pertinent. Si le mot figure dans le dictionnaire/encyclopédie, la signification qui en est donnée constituera son contenu sémantique.
D’emblée, il convient de constater que le public pertinent des divers États membres de l’UE est censé parler principalement les langues prédominantes sur les territoires respectifs de ces États (voir l’arrêt du 23 octobre 2002, T-6/01, «MATRATZEN», point 27). Ces langues sont généralement les langues officielles du territoire pertinent.
Marque antérieure Signe contesté Affaire nº
HALLOUMI HELLIM T-534/10
Hellim est la traduction turque de Halloumi (grec) (type de fromage). Le territoire pertinent était Chypre. Le tribunal a jugé que si le turc ne figure pas au nombre des langues officielles de l’Union, il figure toutefois parmi les langues officielles de la République de Chypre. Dès lors, le turc est compris et parlé par une partie de la population de Chypre (point 38). Partant, le tribunal a conclu que le consommateur moyen de Chypre, où le grec et le turc sont les langues officielles, comprendra que les mots HALLOUMI ou HELLIM renvoient, tous deux, au même fromage spécial chypriote. Il s’ensuit qu’il existe une certaine similitude conceptuelle entre ces mots (point 41).
Toutefois, le tribunal a également précisé que cette règle ne concerne que la compréhension linguistique primaire du public dans ces territoires. Cette règle n’est pas inflexible. Le public pertinent ne devrait pas être automatiquement considéré comme ayant pour langue maternelle la langue prédominante de l’État membre concerné ou comme n’ayant pas de connaissance particulière d’une autre langue (voir l’ordonnance du 3 juin 2009, C-394/08 P, «ZIPCAR», point 51).
Il convient ainsi de prendre en compte d’autres langues que la langue prédominante dans les cas de figure suivants:
lorsque le mot dans une autre langue est très proche du mot équivalent dans la langue officielle du territoire pertinent. Par exemple, le mot anglais «bicycle» sera compris en Espagne car il est très proche du mot espagnol équivalent «bicicleta»;
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lorsque le mot dans une langue étrangère est couramment utilisé dans le territoire pertinent. Par exemple, le mot espagnol «bravo» est couramment utilisé en Allemagne comme un terme élogieux (dans le sens de «bien fait»);
lorsqu’il est notoire que le public pertinent connaît une langue étrangère. Par exemple, le tribunal a déjà confirmé que le grand public, dans les pays scandinaves, aux Pays-Bas et en Finlande, a au minimum une compréhension de base de la langue anglaise (voir l’arrêt du 26 novembre 2008, T-435/07, «NEW LOOK», point 23);
lorsqu’il est notoire que le public pertinent connaît une langue donnée pour certaines classes de produits et/ou de services. Par exemple, les termes informatiques anglais sont généralement compris par le public pertinent pour des produits informatiques, et ce quel que soit le territoire concerné;
en présence de mots très basiques, qui seront compris dans tous les États membres parce qu’ils sont utilisés dans le monde entier, tels que «love», «one», «surf», «pizza», «baby», etc.
enfin, lorsque l’une des parties produit la preuve qu’un tel mot est connu d’une partie significative du public pertinent.
Les cas suivants sont des exemples de concepts désignés par les mots:
Marque Territoire Concept Affaire nº
Mirto ES [en EN: myrte] en espagnol décrit un arbuste de la famille des Myrtaceae, de deux à trois mètres de haut.
T-427/07
Peer EN Lord T-30/09
Storm EN Bad weather (intempérie) T-30/09
--- STAR
SNACKS
EU
Les termes «star snacks» et «star foods» seront compris comme renvoyant à des aliments de qualité non seulement par des anglophones, mais aussi par la majorité du public pertinent.
T-492/08 (Star foods I) T-333/11 (Star Foods II)
-
EU
Il existe une certaine similitude sur le plan conceptuel compte tenu de l’élément «Mc» et du fait que les mots «baby» et «kids» font tous deux référence aux enfants (point 42).
T-466/09
Ainsi qu’il a été démontré dans certains des exemples précédents, il n’est pas toujours nécessaire de consulter un dictionnaire et de donner la définition complète de la signification d’un mot. Il suffit d’avoir recours à un synonyme, comme Peer = Lord ou Storm = bad weather.
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En outre, lorsqu’une partie du public comprendra le concept alors qu’une autre partie ne le comprendra pas ou lui attribuera une signification différente, il convient d’établir une distinction.
Lorsque la marque est composée d’une expression significative, c’est la signification de l’expression dans son ensemble, à condition qu’elle soit comprise en tant que telle par le public pertinent, et non celle des différents mots, qui doit être retenue pour la comparaison conceptuelle (à noter toutefois l’exception ci-dessous concernant les expressions étrangères). Exemple fictif: «KING’S DOMAIN» vs «KING SIZE».
Appréciation erronée: KING (roi) signifie «souverain mâle», «DOMAIN» (domaine) signifie «territoire gouverné ou contrôlé» et «SIZE» (taille) signifie «les dimensions physiques, les proportions, l’ampleur ou l’étendue d’un objet». Les marques sont conceptuellement similaires dans la mesure où elles ont en commun la notion de «roi».
Appréciation correcte: «KING’S DOMAIN» signifie «territoire contrôlé par un roi»; «KING SIZE» signifie «plus grand ou plus long que la taille habituelle ou normale». Les marques sont conceptuellement différentes bien qu’elles aient en commun le mot «KING».
Cela est illustré par les exemples suivants, dans lesquels les marques ont été jugées différentes sur le plan conceptuel:
Signe antérieur Signe contesté Affaire nº
MOUNTAIN BIKER MOUNTAIN B 1 950
Goldband GoldGips R 0975/2009-4
ALTA FIDELIDAD ALTA B 112 369
La règle susmentionnée concernant les expressions significatives admet l’exception suivante: lorsque des signes sont dans une langue étrangère, une partie significative du public pertinent peut n’avoir qu’une connaissance limitée de la langue étrangère concernée et, partant, ne pas être capable de distinguer la différence de signification entre deux expressions. Dans ces cas, il est possible que la signification d’une expression, en tant que telle, ne soit pas comprise; seule la signification des différents éléments étant alors comprise. Cela peut donc conduire à une conclusion de similitude dans la mesure où le public ne comprend que la partie commune. Dans l’exemple précédent, s’il est constaté qu’une partie du public ne comprendra que le mot «KING», il convient de conclure que les signes sont similaires sur le plan conceptuel.
Marque antérieure Signe contesté Affaire nº
ICEBERG ICEBREAKER T-112/09
Le tribunal a considéré que «icebreaker» ne serait compris que de la partie du public italien maîtrisant l’anglais. Toutefois, «iceberg» constitue un terme courant, ayant une signification immédiatement perceptible pour le public pertinent. Il en résulte que le public italien percevra la marque antérieure «ICEBERG» comme ayant une signification claire, alors que la marque demandée «ICEBREAKER» sera dénuée de signification claire pour ce public.
Le tribunal a également indiqué que les marques en conflit ont en commun le préfixe «ice». Le tribunal a considéré ce mot comme faisant partie du vocabulaire de base de la langue anglaise, compréhensible pour la plus grande partie du public pertinent. Il en a conclu que, le préfixe «ice» jouissant d’une certaine force évocatrice, il doit être considéré comme limitant la différence conceptuelle des marques en cause
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en servant de «pont sémantique» (points 41-42).
Des considérations similaires s’appliquent aux expressions comportant une combinaison de mots techniques, qui ne sont compris que d’une partie du public pertinent (tels que les mots latins ou les mots appartenant à un vocabulaire très spécialisé), et des mots couramment employés. Dans de tels cas, il est possible que seule la signification des mots couramment employés soit perçue, et non celle de l’expression en tant que telle.
3.6.1.2 Le contenu sémantique des parties de mots
À cet égard, le tribunal a considéré que si le consommateur moyen perçoit normalement une marque comme un tout et ne se livre pas à un examen de ses différents détails, il n’en reste pas moins que, en percevant un signe verbal, il décomposera celui-ci en des éléments verbaux qui, pour lui, suggèrent une signification concrète ou qui ressemblent à des mots qu’il connaît (voir l’arrêt du 13 février 2007, T-256/04, «RESPICUR», point 57).
Par conséquent, si la règle est que les marques sont perçues comme un tout, l’exception à la règle est que, dans certaines circonstances, les consommateurs peuvent les décomposer en petites parties. Étant donné qu’il s’agit d’une exception, celle-ci doit être appliquée de manière restrictive.
L’exception s’appliquera aux cas suivants:
lorsque le signe est lui-même décomposé en plusieurs parties (par exemple, par l’utilisation de lettres majuscules, comme dans AirPlus);
lorsque toutes les parties suggèrent une signification concrète connue du public pertinent (par exemple Ecoblue); ou
lorsqu’une partie seulement a une signification claire (par exemple Dermaclin).
Exemples de signes décomposés sur le plan visuel:
Signe Territoire Concept Affaire nº
VITS4KIDS EU La marque contient VITS (faisant allusion à«vitamines») et KIDS. T-484/08
AirPlus EU Il y a deux significations, «Air» et «Plus», qui peuvent être perçues visuellement, le mot «Plus» étant écrit avec une majuscule.
T-321/07 (C.216/10P rejeté)
EU AGRO: référence à l’agriculture HUN: référence à la Hongrie UNI: référence à universel ou union
T-423/08
RNAiFect EU
Le public pertinent, notamment le public spécialisé, percevra les trois premières lettres comme une référence à l’abréviation anglaise du terme acide ribonucléique.
T-80/08
nfon EU Le public pertinent isolera la syllabe «fon» du signe«nfon», et percevra que ce terme est pareillement lié T-283/11
(C-193/13 P
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aux mots «telephone» ou «phone» (point 60). rejeté)
Exemples de signes qui ne sont pas décomposés visuellement mais dont toutes les parties suggèrent une signification concrète connue du public pertinent:
Signe Territoire Concept Affaire
Ecoblue EU
L’élément verbal «eco» est un préfixe ou une abréviation courante dans de nombreuses langues parlées dans l’Union européenne, alors que le mot anglais «blue» désigne la couleur bleue et fait partie du vocabulaire anglais de base connu du public pertinent.
T-281/07 (C-23/09P rejeté)
Solfrutta / FRUTISOL EU
Les éléments «sol» et «frut» sont généralement reconnaissables et peuvent être compris comme faisant allusion à «soleil» et à «fruit» respectivement.
T-331/08
RIOJAVINA EU
Le terme «riojavina» dans la marque demandée fait directement référence, en ce qui concerne le public pertinent, aux produits de la vigne et, plus particulièrement, au vin Rioja.
T-138/09 (C-388/10P rejeté)
Enfin, les cas dans lesquels seule une partie a une signification claire sont généralement des cas dans lesquels il existe un préfixe ou un suffixe commun, par exemple:
Signe Territoire Concept Affaire
DE «DERMA» peut être perçu comme renvoyant à desproduits dermatologiques. B 1 249 467
Comme expliqué ci-dessus, ces trois exceptions doivent faire l’objet d’une interprétation restrictive; dès lors, lorsqu’il n’est pas évident qu’une ou plusieurs parties suggèrent une signification concrète connue du public pertinent, les examinateurs doivent s’abstenir de chercher de telles significations d’office. Dans les exemples suivants, il a été conclu que les signes ne véhiculaient aucun concept:
Signe Territoire Concept Affaire
ATOZ DE, ES, FR,IT, AT
La marque ne sera pas perçue comme «from A to Z». Les lettres «to» (correspondant à une préposition anglaise) ne se distinguent nullement des lettres «a» et «z».
T-100/06 (C-559/08P rejeté)
SpagO BX
Le mot «SpagO» est un mot inventé n’ayant aucune signification dans les langues officielles des pays du Benelux. Il ne doit pas être perçu comme une combinaison composée de SPA + GO.
T-438/07
CITRACAL ---
CICATRAL ES
Les éléments verbaux «cica» et «citra» n’ont pas plus de signification concrète que les terminaisons «tral» et «cal». Les signes en cause ne sont donc pas susceptibles d’être décomposés par le public en des éléments verbaux qui ont une signification concrète ou ressemblent à des mots qu’il connaît, et qui, ensemble, formeraient un tout cohérent donnant une signification à chacun des signes en conflit ou à l’un quelconque d’entre eux.
T-277/08
Double identité et risque de confusion - Comparaison des signes
Directives relatives à l’examen devant l'Office, partie C, Opposition Page 37
FINAL VERSION 1.0 01/02/2015
3.6.1.3 Le contenu sémantique des mots mal orthographiés
Il n’est pas nécessaire qu’un mot soit écrit correctement pour que son contenu sémantique soit perçu par le public pertinent. Ainsi, bien que le mot écrit «XTRA» diffère visuellement du mot «correct» «EXTRA», le concept du mot «correct» (extra) sera généralement transféré au mot mal orthographié (xtra), celui-ci étant identique au mot correctement orthographié.
Les exemples suivants illustrent ce point:
Signe Territoire Concept Affaire
EU Une partie du public pertinent le considèrera comme une référence au mot anglais «store», signifiant «magasin, entrepôt».
T-309/08
CMORE EN
Compte tenu de la pratique courante consistant à envoyer des SMS, «CMORE» sera probablement associé par une partie significative du grand public, au Danemark et en Finlande, à une abréviation ou à une graphie erronée du verbe anglais «to see» (voir), le concept étant ainsi perçu comme «see more» (voir plus).
T-501/08 «SEE MORE/CMOR E»
EN Le mot «ugli» dans la marque antérieure sera probablement associé au mot anglais «ugly» (laid) par le public pertinent.
T-488/07
EU
Le terme contenu dans la marque évoquera chez les consommateurs l’idée de «yaourt», c’est-à-dire «un aliment semi-solide, légèrement acide, à base de lait fermenté par l’ajout de bactéries».
B 1 142 688
ES
Les mots «KARISMA» et «C@RISMA» font référence à «charisma» ou «charism» (charisme), c’est-à-dire la qualité individuelle ou la capacité particulière d’une personne à influencer ou à inspirer un groupe.
B 1 012 857
En tout état de cause, les examinateurs doivent faire preuve d’une attention particulière lorsqu’ils attribuent une signification à un mot mal orthographié. En effet, la signification n’est pas susceptible d’être transférée lorsque les mots ne sont pas (phonétiquement) identiques et/ou lorsque l’élément mal orthographié ne peut être perçu indépendamment:
Marque Territoire Concept Affaire
Bebimil EU La marque demandée ne contient pas le mot «baby» mais un mot fantaisiste, qui est très éloigné et n’a pas de signification claire ou concrète, à savoir «bebi».
T-221/06
Double identité et risque de confusion - Comparaison des signes
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FINAL VERSION 1.0 01/02/2015
3.6.1.4 Le contenu sémantique des prénoms et noms de famille
Le tribunal a accepté que les noms véhiculent un concept. Partant, une comparaison conceptuelle peut être effectuée lorsque des signes en conflit sont composés de noms (voir exemples ci-dessous).
Néanmoins, le fait qu’une marque contienne un nom de famille est rarement significatif sur le plan conceptuel. En particulier, la similitude conceptuelle ne peut résulter du simple fait que les deux marques contiennent un nom, même s’il s’agit du même type de nom (nom de famille celte, nom néerlandais, etc.).
Marque Territoire Concept Affaire nº
MCKENZIE/ McKINLEY EU
Le public pertinent reconnaît le préfixe «Mc», signifiant «fils de», comme celui de nombreux noms de famille écossais ou irlandais. Ce public percevra donc les éléments verbaux des marques en cause comme des noms de famille celtes, n’ayant pas de signification conceptuelle, à moins que le nom ne soit particulièrement bien connu comme étant celui d’une personne célèbre.
T-502/07
VANGRACK/ VAN GRAF DE
Le fait que les deux marques puissent être perçues comme des noms de famille allemands ou néerlandais est, en soi, neutre aux fins de la comparaison.
R 1429/2010-4
Le simple fait que deux noms puissent être regroupés sous un terme générique commun de «noms» n’est pas constitutif d’une similitude conceptuelle. Ainsi, si l’on compare «FRANK» et «MIKE»: le fait qu’il s’agisse, dans les deux cas, de prénoms ne permettrait pas de conclure à l’existence d’une similitude conceptuelle; en effet, le public n’est pas susceptible d’établir un lien conceptuel entre ces deux mots. En revanche, le fait que «FRANK» et «FRANKIE» constituent le même prénom, mais que ce dernier soit le diminutif du premier, est pertinent et devrait donc conduire à conclure à l’existence d’une similitude conceptuelle.
Marques Territoire Concept Affaire nº
SILVIAN HEACH (FIG.)/ H. EICH
Italie et autres territoires
L’élément «EICH» serait perçu comme un nom d’origine germanique, alors que «HEACH» serait perçu comme un nom d’origine anglo-saxonne (point 66). De ce fait, les consommateurs s’apercevraient que ces noms renvoient à des personnes différentes. Les signes sont conceptuellement différents (point 69).
T-557/10
Le fait qu’une marque contienne un nom peut avoir une incidence sur la comparaison conceptuelle dans les cas suivants:
(a) Lorsqu’il s’agit du prénom/nom de famille d’une personne célèbre (CERVANTES, MARCO POLO, PICASSO):
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Marque Territoire Concept Affaire nº
PICASSO EU
Le signe verbal «PICASSO» a un contenu sémantique clair et spécifique pour le public pertinent. La réputation du peintre Pablo Picasso est telle qu’il n’est pas plausible de considérer, en l’absence d’indices concrets en sens contraire, que le signe «PICASSO», en tant que marque pour des véhicules, pourrait se superposer, dans la perception du consommateur moyen, au nom du peintre.
T-185/02 (C-361/04 P rejeté)
(b) Lorsque les deux marques représentent le même nom mais dans différentes versions (comme pour «FRANK»et le diminutif «FRANKIE») ou dans différentes langues, comme dans les exemples suivants:
Marques Territoire Concept Affaire nº
--- ELISE
EU
Le public pertinent considérera certainement ces noms comme des prénoms féminins fortement similaires et issus de la même racine. Dans certains États membres, notamment au Royaume-Uni, en Irlande, en Allemagne et en Autriche, ils seront sans doute perçus comme des diminutifs du prénom complet Elizabeth par le public pertinent.
T-130/09
PEPEQUILLO / PEPE ES
Le public espagnol comprendra «Pepequillo» comme un diminutif de «Pepe», d’où une identité conceptuelle. T-580/08
JAMES JONES / JACK JONES EU
Les deux marques peuvent être comprises comme renvoyant à la même personne. T-11/09
(c) Lorsque les deux marques peuvent être comprises comme renvoyant à la même personne, en particulier lorsque la marque antérieure est composée uniquement d’un nom de famille. Cela pourrait être le cas lorsqu’un nom est plus important que l’autre:
Marque Territoire Concept Affaire nº
CTMA: Julián Murúa
Entrena
Marque antérieure:
MURUA
ES
La demande de marque communautaire comporte un nom espagnol (un prénom et deux noms de famille). Le premier nom de famille, qui, pour le public espagnol, est le plus important, coïncide avec la marque communautaire antérieure.
T-40/03
Demande de marque
communautaire: MANSO DE VELASCO
Marque antérieure: VELASCO
ES
Velasco est un nom patronymique espagnol. La demande de marque communautaire peut être comprise comme étant composée de deux noms de famille.
T-259/06
Demande de marque IT
Les signes sont similaires d’un point de vue conceptuel en ce sens qu’ils ont en commun le T-133/09 et
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communautaire: Antonio Basile
Marque antérieure:
BASILE
même nom patronymique (point 60). T-134/09
(d) Si le nom contenu dans les marques est pourvu de signification dans une langue, la coïncidence de cette signification peut conduire à une similitude conceptuelle:
Marque Territoire Concept Affaire nº
peerstorm/PETE R STORM EU, UK
Les consommateurs anglophones associeront le patronyme Storm à la notion d’intempérie (point 67). T-30/09
3.6.1.5 Le contenu sémantique des signes figuratifs, symboles, formes et couleurs
Les concepts de marques composées d’éléments figuratifs ou contenant des éléments figuratifs ou de marques composées de formes (marques tridimensionnelles) consisteront en l’objet représenté par ces éléments figuratifs ou formes, comme dans les exemples suivants:
Marque Territoire Concept Affaire nº
BX, DE, ES, FR, IT, AT,
PT
La représentation d’un mug rouge reposant sur un lit de grains de café.
T-5/08 à T-7/08
DE Une partie du public pertinent pourrait reconnaître unpaon. T-361/08
BX La marque contestée sera décrite comme un hommed’affaires jouant au football. R 0403/2009-2
Par conséquent, lorsqu’une marque est constituée à la fois de mots et d’images, il convient d’examiner tous les concepts.
Marque Territoire Concepts Affaire nº
EN
Le mot «ugli» dans la marque antérieure sera probablement associé au mot anglais «ugly» (laid) par le public pertinent. Un bulldog devant un agrume.
T-488/07
Double identité et risque de confusion - Comparaison des signes
Directives relatives à l’examen devant l'Office, partie C, Opposition Page 41
FINAL VERSION 1.0 01/02/2015
EU
Le terme «Rioja» dans la marque antérieure, qui est lui-même renforcé sur le plan conceptuel par la représentation d’une grappe de raisins et d’une feuille de vigne, renvoie directement aux produits de la vigne et, plus particulièrement, au vin Rioja.
T-138/09 (C-388/10 P rejeté)
BL, BX, CY, DE, ES, FR, HU, RO, SK, IT
La marque représente un type de poisson (un requin). La majorité des locuteurs des langues concernées comprendront le terme «SPAIN» (Espagne) dans la marque contestée comme renvoyant à ce pays. Le mot «Tiburón» signifie «requin» en espagnol mais ne sera pas compris par le reste du public pertinent. L’autre terme, «SHARK», sera probablement compris par les consommateurs anglophones dans les territoires pertinents.
B 1 220 724
Enfin, le contenu sémantique (concept) des marques de couleurs en elles-mêmes consiste en la couleur reproduite par celles-ci.
3.6.1.6 Le contenu sémantique des chiffres et des lettres
Le concept d’un mot représentant un chiffre est le nombre qu’il identifie, comme dans l’exemple suivant:
Marque Territoire Signification Affaire nº
DE Le mot «zéro» évoque le nombre cardinal «0». T-400/06
TV2000 (fig.)/TV1000 LT
Les signes sont conceptuellement similaires dans la mesure où ils ont en commun l’idée de «télévision» associée à un nombre entier de quatre chiffres et où ils sont en outre tous les deux dans l’ordre des milliers (point 47).
R 2407/2011-2
7 (fig.)/7 (fig.) EU La chambre de recours a conclu que le nombre«7» avait une signification (paragraphe 25). R 0782/2011-2
Le concept d’un chiffre est le nombre identifié par celui-ci, à moins qu’il ne suggère un autre concept, tel qu’une année particulière.
L’approche adoptée par l’Office consiste à dire que les lettres seules peuvent avoir une signification conceptuelle indépendante. Le tribunal a confirmé cette approche (voir l’arrêt du8 mai 2012, T-101/11, «G/G+», point 56, ayant fait l’objet du pourvoi C-341/12 P), en concluant à l’identité conceptuelle lorsque les deux marques peuvent être perçues comme la même lettre:
Marque Territoire Signification Affaire nº
/ DE
Pour la partie du public pertinent qui interprète les signes comme la lettre «e» ainsi que pour la partie du public pertinent qui interprète les signes comme la lettre «c», les signes sont
T-22/10
Double identité et risque de confusion - Comparaison des signes
Directives relatives à l’examen devant l'Office, partie C, Opposition Page 42
FINAL VERSION 1.0 01/02/2015
conceptuellement identiques (point 99).
/
et al
EU Les signes ont été considérés commeconceptuellement identiques (points 60-61). T-187/10
3.6.1.7 Le contenu sémantique des noms géographiques
Les noms de villes, de villages, de régions et autres zones géographiques évoquent un concept qui peut être pertinent pour la comparaison conceptuelle s’il est probable que le public pertinent les reconnaîtra en tant que tels. Généralement, le grand public en Europe connaît le nom des capitales et des grandes villes, ainsi que celui des destinations de vacances ou de voyage. Si la perception du public dans un État membre donné est importante, la connaissance des noms de petites villes dans le pays concerné peut également être présumée.
L’absence de preuve ou d’indication du fait que le public pertinent reconnaît le nom géographique n’a aucune incidence sur la comparaison conceptuelle. Voir l’exemple suivant:
Marque Territoire Concept Affaire nº
vs DE
Le résultat de la comparaison conceptuelle est neutre. Il est impossible de déduire de l’argument de la requérante, selon lequel le nom «Chtaura» désigne une région agricole du Liban, réputée pour ses produits agricoles, que cette signification sera également connue des milieux spécialisés en Allemagne.
R 1213/2008-4
3.6.1.8 Le contenu sémantique des onomatopées
L’analyse du contenu sémantique des onomatopées suit les règles générales de la comparaison conceptuelle: le concept sera celui qui est représenté par l’onomatopée en question, à condition qu’il puisse être établi que celle-ci sera reconnue en tant que telle par le public pertinent. Ainsi, «WOOF WOOF» représente l’aboiement d’un chien pour les locuteurs anglophones, et «MUUU» le meuglement d’une vache pour les locuteurs espagnols.
Marque Territoire Concept Affaire nº
CLICK DE
Sur le plan conceptuel, la marque contestée «CLICK» est une onomatopée anglaise exprimant un son court et aigu. Ce mot sera aisément compris en Allemagne du fait de son équivalent proche en allemand, «Klick» (paragraphe 45).
R 1394/2006-2
Double identité et risque de confusion - Comparaison des signes
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Dans certains cas, le contexte dans lequel l’onomatopée sera utilisée peut être déterminant pour établir si le public pertinent reconnaîtra sa signification. Ainsi, dans le cas suivant, la chambre a considéré que le public pertinent n’interprèterait pas le signe «PSS» comme une onomatopée dans le contexte de services informatiques:
Marque Territoire Concept Affaire nº
PSS ES
L’argument de la demanderesse selon lequel la marque antérieure pourrait également être prononcée comme une onomatopée [pour demander le silence] est farfelu au vu des services informatiques en cause et du public pertinent, lequel, comme le relève la demanderesse elle-même, est habitué aux acronymes dans ce secteur (paragraphe 42).
R 1433/2007-2
3.6.2 Comment procéder à une comparaison conceptuelle
En substance, lors d’une comparaison conceptuelle, l’examinateur doit d’abord déterminer si les signes véhiculent un concept conformément aux principes énoncés dans la section précédente.
Si aucun des signes ne véhicule de concept, il convient de conclure qu’il est impossible de procéder à une comparaison conceptuelle.
Si seul un des signes évoque un concept, il convient de conclure qu’il est impossible de procéder à une comparaison conceptuelle.
Si les deux signes véhiculent un concept, les concepts seront comparés afin de déterminer si les signes sont conceptuellement identiques ou similaires (c’est-à-dire renvoient aux mêmes concepts ou à des concepts similaires), ou bien différents (c’est-à-dire renvoient à des concepts différents). Les signes seront différents sur le plan conceptuel lorsqu’il y a deux mots pour lesquels il existe un terme générique recouvrant les deux mots et/ou lorsque les deux signes appartiennent à la même catégorie générale de signes. Si les significations sémantiques sont trop différentes l’une de l’autre, il se peut que les signes aient un concept général en commun, mais que celui-ci soit tellement large que la relation conceptuelle sera dépourvue de pertinence. Dans ces cas, aucune similitude conceptuelle ne sera constatée. Par exemple:
Le simple fait que les deux mots ou symboles puissent être regroupés sous un terme générique commun ne constitue nullement un exemple de similitude conceptuelle. Ainsi, dans le cas de «Jaguar» vs «Elephant», le fait qu’il s’agisse dans les deux cas d’animaux ne permettrait pas de conclure à l’existence d’une similitude conceptuelle, le public n’étant pas susceptible d’établir un lien conceptuel entre les deux mots. De fait, puisqu’ils renvoient à des animaux différents, ces mots doivent être considérés comme différents sur le plan conceptuel.
Il en va de même lorsque deux signes appartiennent au même type de marque ou de mot: le fait que «TDI» et «LNF» soient des abréviations de trois lettres est dénué de pertinence d’un point de vue conceptuel. Les signes doivent être considérés comme différents sur le plan conceptuel.
Les noms constituent un autre exemple de signes «appartenant à la même catégorie» (ceci rejoint ce qui est indiqué dans la Section 3.6.1.4 ci-dessus). Si
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l’on compare «FRANK» et «MIKE», le fait qu’il s’agisse de deux prénoms est dénué de pertinence sur le plan conceptuel (puisqu’ils se situent à des niveaux complètement différents); en revanche, le fait que «FRANK» et «FRANKIE» constituent le même prénom, mais que ce dernier soit le diminutif du premier, est pertinent, et devrait donc, dans ce cas, conduire à l’existence d’une similitude conceptuelle.
Les marques seront notamment identiques ou similaires sur le plan conceptuel lorsque:
3.6.2.1 Les deux marques ont en commun un mot et/ou une expression
Lorsque les deux marques ont en commun le même mot ou la même expression, les marques seront conceptuellement similaires, comme dans les exemples suivants:
Signe antérieur Signe contesté Opposition nº
B 1 209 618 (ES)
Similaires: Les marques ont en commun le concept de «SOL» (= soleil: «l’astre qui donne lumière et chaleur aux planètes du système solaire»).
Signe antérieur Signe contesté Affaire nº
BLUE ECOBLUE T-281/07
(C-23/09P rejeté) (UE)
Les marques en cause sont conceptuellement similaires car elles renvoient toutes deux à la couleur bleue.
Signe antérieur Signe contesté Opposition nº
T-MUSIC B 1 081 167(UE)
Les marques ci-dessus sont conceptuellement similaires car elles renvoient toutes deux au concept de MUSIQUE (= «l’art de combiner des sons dans le temps afin de produire une composition continue, unifiée et évocatrice, notamment au travers de la mélodie, de l’harmonie, du rythme et du timbre»).
Signe antérieur Signe contesté Opposition nº
B 1 220 724 (BL, BX, CY, CZ, DE, ES, FR, HU, RO, SK
et IT)
Les marques ci-dessus sont conceptuellement similaires car les deux signes contiennent une image du même poisson (un requin) et une référence au mot «SHARK» (= «l’un des nombreux poissons carnivores, principalement marins, de la classe des Chondrichthyes (sous-classe des Elasmobranchii)…»).
Signe antérieur Signe contesté Affaire nº
EL CASTILLO CASTILLO T-85/02 (ES)
Le tribunal a considéré que les signes étaient pratiquement identiques sur le plan conceptuel.
Signe antérieur Signe contesté Affaire nº
Double identité et risque de confusion - Comparaison des signes
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Servus et al. SERVO SUO T-525/10 (UE, IT en particulier)
Les signes sont conceptuellement similaires, du point de vue du consommateur moyen italien, dans la mesure où les deux signes ont en commun une référence à la notion de «serviteur». Le tribunal a confirmé la conclusion de la chambre selon laquelle le public italien était susceptible de percevoir la signification du mot latin «SERVUS», en raison de sa proximité avec le mot italien «SERVO».
Comme indiqué précédemment, les fautes d’orthographe peuvent également avoir un contenu sémantique, auquel cas elles peuvent être comparées, comme dans les exemples suivants:
Marque antérieure Signe contesté Affaire nº
T-485/07 (ES)
Pour le public espagnol pertinent, les deux signes renvoient au concept d’une olive. Il n’y a pas de preuve que le consommateur espagnol pertinent comprendra le mot anglais «live».
Signe antérieur Signe contesté Opposition nº
B 1 142 688 (UE)
Les deux marques font référence au mot yaourt et, partant, ont en commun le concept d’un «produit laitier produit par fermentation bactérienne».
Signe antérieur Signe contesté Opposition nº
B 1 012 857 (ES)
Les marques ci-dessus sont conceptuellement similaires car elles renvoient toutes deux à la notion de «charisme» (= «la capacité de développer ou d’inspirer chez autrui l’adhésion idéologique à un point de vue particulier»).
3.6.2.2 Deux mots ou termes ont la même signification mais dans des langues différentes
Il est possible que le public pertinent perçoive une similitude conceptuelle, voire une identité, entre des marques dont les éléments correspondent à des langues différentes, dans la mesure où les mots dans ces langues sont connus du public en question.
Dans l’exemple suivant, les marques ont été considérées comme conceptuellement identiques, car une grande partie du public portugais comprendrait les mots constituant les marques en conflit pour les raisons suivantes: i) il existe une forte ressemblance entre le terme anglais «vitamin» et son équivalent portugais «vitamina», ii) «water» est
Double identité et risque de confusion - Comparaison des signes
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un mot anglais appartenant au vocabulaire de base, susceptible d’être compris par la partie du public portugais dotée d’une connaissance suffisante de la langue anglaise, et iii) «aqua» est un terme latin répandu qui ressemble au terme portugais équivalent «água» (points 56 à 60):
Marque antérieure Signe contesté Affaire nº
VITAMINWATER
(territoire pertinent: Portugal) T-410/12
Étant donné que c’est la compréhension réelle du public pertinent qui importe, le simple fait qu’un terme soit l’équivalent objectif du premier terme dans une autre langue ne sera parfois pas du tout pris en compte dans la comparaison conceptuelle.
Marque antérieure Signe contesté Affaire nº
LE LANCIER T-265/09
Le territoire pertinent est l’Espagne. «El lancero» (en espagnol) signifie «le lancier» en français. Sur le plan conceptuel, le tribunal a conclu que l’espagnol moyen n’avait qu’une connaissance limitée du français, et que l’expression «le lancier» n’appartenait pas au vocabulaire de base de cette langue. Conceptuellement, les signes ne sont pas similaires.
3.6.2.3 Deux mots font référence au même terme sémantique ou à des variations de celui-ci
Il y a identité conceptuelle lorsque des synonymes sont concernés, c’est-à-dire lorsque deux mots existent pour la même signification sémantique (exemples inventés dont la langue de référence est l’anglais: bagages/valises; bicyclette/vélo; cheval/étalon).
Une similitude conceptuelle a été observée dans les cas suivants:
Marque antérieure Marque contestée Affaire nº
SECRET PLEASURES PRIVATE PLEASURES R 0616/1999-1
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ORPHAN INTERNATIONAL R 1142/2009-2
3.6.2.4 Deux signes figuratifs, symboles et/ou formes représentent le même objet ou la même idée
Lorsque deux marques sont composées d’éléments figuratifs et/ou de formes, ou contiennent des éléments figuratifs et/ou des formes, et qu’elles représentent les mêmes objets ou idées, ou bien des objets ou des idées similaires, les signes sont identiques ou similaires sur le plan conceptuel.
Dans les affaires suivantes, une identité ou une similitude conceptuelle a été constatée:
Marque antérieure Marque contestée Affaire nº
T-168/04 (confirmé C-488/06)
(similitude)
R0703/2011-2 (identité)
R1107/2010-2 (identité)
Toutefois, le fait que les deux signes contiennent le même objet ne permet pas de conclure à l’existence d’une similitude conceptuelle, dès lors que la manière dont l’objet est représenté dans les marques en conflit diffère:
Marque antérieure Marque contestée Affaire nº
T-593/10
Le tribunal a considéré que la chambre avait conclu, à juste titre, que les signes présentaient une différence conceptuelle dans la mesure où la marque antérieure pouvait évoquer un boomerang en raison de son élément figuratif et de la présence de la lettre «b», ce qui n’était pas le cas de la marque demandée (point 36).
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3.6.2.5 Lorsqu’il existe un mot par opposition à un signe figuratif, un symbole, une forme et/ou une couleur représentant le concept désigné par le mot
Une identité conceptuelle existe également entre un mot et une image montrant l’objet représenté par ce mot (exemples fictifs: la marque verbale «TIGER» comparée à une marque figurative représentant un tigre; ou la marque verbale «orange» et une marque représentant la couleur orange en tant que telle).
Marque antérieure Marque contestée Affaire nº
T-389/03 (UE, identité pour
une partie du public)
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 2
DOUBLE IDENTITÉ ET RISQUE DE CONFUSION
CHAPITRE 4
CARACTÈRE DISTINCTIF
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Sommaire
1 Remarques générales ............................................................................... 3
2 L’appréciation du caractère distinctif ...................................................... 5 2.1 L’examen du caractère distinctif: questions d’ordre général.................. 6
2.1.1 Qu’entend-on par «composant» ou «élément» d’un signe? .......................... 6 2.1.2 Qu’entend-on par caractère distinctif? ........................................................... 6 2.1.3 Les aspects du caractère distinctif à examiner .............................................. 8 2.1.4 La période pertinente...................................................................................... 9 2.1.5 Les produits et services pertinents ............................................................... 10
2.2 L’examen du caractère distinctif intrinsèque ......................................... 11 2.2.1 Principes généraux....................................................................................... 11
2.2.1.1 Exemples de composants descriptifs ........................................................13 2.2.1.2 Exemples de composants laudatifs ...........................................................14 2.2.1.3 Exemples de composants allusifs .............................................................15 2.2.1.4 Exemples de marques antérieures (considérées dans leur ensemble)
ayant un caractère distinctif intrinsèque faible...........................................15 2.2.2 Cas spécifiques ............................................................................................ 16
2.2.2.1 Les signes composés d’une lettre, les chiffres et les signes courts...........16 2.2.2.2 Les éléments banals et communément utilisés .........................................17 2.2.2.3 Les renonciations ......................................................................................18 2.2.2.4 Les marques collectives ............................................................................18
2.3 Examen du caractère distinctif accru ..................................................... 18
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1 Remarques générales
Il y a risque de confusion (qui inclut le risque d’association) s’il existe un risque que le public puisse croire que les produits ou services en cause, étant donné qu’ils portent les marques en litige, proviennent de la même entreprise ou, le cas échéant, d’entreprises liées économiquement.
L’existence d’un risque de confusion repose sur une appréciation globale de plusieurs facteurs interdépendants, y compris: i) la similitude des produits et services, ii) la similitude des signes, iii) les éléments distinctifs et dominants des signes en conflit, iv) le caractère distinctif de la marque antérieure, et v) le public pertinent et son niveau d’attention.
Pour apprécier l’existence d’un risque de confusion, il convient tout d’abord de statuer sur ces cinq facteurs, la deuxième étape consiste à évaluer leur pertinence.
Dans son arrêt du 29 septembre 1998, C-39/97, «Canon», points 18 et 24, la Cour de justice (ci-après la «Cour») a conclu comme suit:
«les marques qui ont un caractère distinctif élevé, soit intrinsèquement, soit en raison de la connaissance de celles-ci sur le marché, jouissent d’une protection plus étendue que celles dont le caractère distinctif est moindre».
«le caractère distinctif de la marque antérieure, et en particulier sa renommée, doit être pris en compte pour apprécier si la similitude entre les produits ou les services désignés par les deux marques est suffisante pour donner lieu à un risque de confusion».
Dans son arrêt du 11 novembre 1997, C-251/95, «Sabèl», point 23, la Cour a également retenu que:
«Cette appréciation globale doit, en ce qui concerne la similitude visuelle, auditive ou conceptuelle des marques en cause, être fondée sur l’impression d’ensemble produite par les marques, en tenant compte, notamment, des éléments distinctifs et dominants de celles-ci».
En conséquence, l’intensité du caractère distinctif de la marque antérieure, d’une part, et le caractère distinctif des divers composants des marques complexes, d’autre part, constituent des facteurs importants qu’il convient de déterminer avant de pouvoir procéder à une appréciation globale du risque de confusion.
Il est important, en premier lieu, d’établir une distinction entre i) l’analyse du caractère distinctif de la marque antérieure considérée dans son ensemble, qui permet de déterminer l’étendue de la protection conférée à ladite marque, et ii) l’analyse du caractère distinctif d’un composant d’une marque, qui permet de déterminer si les signes en litige ont en commun un composant présentant un caractère distinctif (et si la similitude porte, par conséquent, sur un composant important) ou un composant faiblement distinctif (et si la similitude porte, par conséquent, sur un composant moins important). Par exemple:
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Composants/Éléments d’une marque
Marque dans son ensemble (dans l’hypothèse où elle n’a pas acquis de caractère distinctif)
Virgin Cola (boissons sans alcool)
«Cola» est un élément possédant un faible caractère distinctif au regard des boissons ou mélanges à base de cola, étant donné qu’il décrit ou fait allusion auxdits produits.
L’élément «Virgin» possède un caractère distinctif normal au regard desdits produits.
Caractère distinctif normal car, en présence du composant «Virgin», la marque considérée dans son ensemble n’est pas descriptive, n’est pas de nature allusive, ni ne présente pour un autre motif un caractère distinctif faible.
(produits électroniques)
Le mot «Products», bien que légèrement stylisé, est un élément faiblement distinctif en ce qu’il est descriptif d’une vaste gamme de produits.
L’élément «Billy’s» tel qu’il est illustré possède un caractère distinctif normal vis-à-vis desdits produits.
Caractère distinctif normal car, en raison de l’élément «Billy’s» tel qu’il est illustré et de la disposition spécifique de la marque, la marque dans son ensemble n’est pas descriptive, n’est pas de nature allusive, ni ne présente pour un autre motif un caractère distinctif faible.
(préparations à base de céréales)
L’élément «Premium» est faible en raison de sa signification méliorative, qui renvoie à une chose excellente.
Le cadre gris foncé dont la partie centrale se prolonge sur le côté gauche produit l’impression générale d’une étiquette de forme simplifiée.
Dans le cas de préparations à base de céréales, l’image d’un épi de blé est descriptive ou possède un caractère allusif.
Caractère distinctif inférieur à la normale car tous ses composants sont faiblement distinctifs et car sa représentation globale est banale.
Si le caractère distinctif doit être apprécié pour les composants tant de la marque antérieure que des marques contestées, l’appréciation du caractère distinctif de la marque dans son ensemble ne se fonde que sur la marque antérieure1. Le caractère distinctif de la marque contestée dans son ensemble n’est pas pertinent en soi aux fins de l’appréciation du risque de confusion, comme expliqué de manière plus détaillée au paragraphe 2.1.3 ci-après. Aussi, dans les paragraphes qui suivent, toute référence au caractère distinctif de la marque dans son ensemble renvoie exclusivement à la marque antérieure.
L’approche progressive adoptée par l’Office dissocie dans un premier temps l’appréciation objective de la similitude entre les signes des appréciations du caractère distinctif de leurs composants2. Néanmoins, dans un deuxième temps, dans le cadre de l’appréciation globale, tous les facteurs sont pris en considération aux fins de
1 Voir également l’objectif 1 de la pratique commune sur l’impact des éléments non distinctifs/faiblement distinctifs sur le risque de confusion, convenue dans le cadre du Réseau européen des marques, dessins et modèles. 2 Voir les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 3, Comparaison des signes
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l’appréciation globale du risque de confusion3. Cette méthodologie contraste avec d’autres approches qui consistent à évaluer le caractère distinctif des divers éléments des marques en même temps qu’à apprécier la similitude entre les signes. Si cette différence n’est qu’affaire de méthode et ne doit pas, en principe, influer sur la conclusion relative au risque de confusion, l’Office a fait le choix d’adopter la première approche décrite.
En ce qui concerne l’incidence du caractère distinctif de la marque antérieure dans son ensemble, elle n’entre en ligne de compte que lors de l’appréciation globale. En effet, la Cour a statué qu’il n’y a pas lieu de prendre en considération le degré potentiellement faible ou élevé du caractère distinctif de la marque antérieure au stade de l’appréciation de la similitude entre les signes (arrêts du 23 janvier 2014, C-558/12 «Western Gold», points 42 à 45, du 25 mars 2010, T-5/08 à T-7/08 «Golden Eagle», point 65, et du 19 mai 2010, T-243/08 «EDUCA Memory game», point 27).
2 L’appréciation du caractère distinctif
Il est utile de rappeler que l’appréciation du caractère distinctif comporte deux étapes distinctes: i) le caractère distinctif des composants d’un signe et ii) le caractère distinctif de la marque antérieure dans son ensemble. Comme expliqué ci-dessous, ces deux appréciations distinctes ont des finalités différentes.
Caractère distinctif des composants
Lors de l’appréciation du risque de confusion, il est procédé à une analyse destinée à déterminer si les composants communs revêtent un caractère descriptif, allusif ou tout autre caractère distinctif faible afin d’évaluer dans quelle mesure lesdits composants communs sont susceptibles d’indiquer l’origine commerciale. Ceci met en lumière le fait qu’un consommateur est plus susceptible de considérer qu’un élément d’une marque qui est descriptif, allusif ou présente, pour un autre motif, un caractère distinctif faible, n’est pas utilisé pour identifier une entreprise donnée, ni, par conséquent, pour distinguer les produits ou services de ceux d’autres entreprises.
Par voie de conséquence, si les titulaires de marques emploient fréquemment dans leurs marques des éléments descriptifs, allusifs ou d’autres éléments ayant un faible caractère distinctif pour informer les consommateurs de certaines caractéristiques des produits ou services pertinents, il peut s’avérer plus difficile d’établir la possibilité d’un risque de confusion dans l’esprit du public quant à l’origine des produits et/ou services sur la base de similitudes concernant uniquement des éléments à faible caractère distinctif.
Le caractère distinctif des composants de la marque antérieure et de la marque contestée doit être examiné.
Caractère distinctif de la marque antérieure dans son ensemble
L’arrêt Canon stipule clairement que i) le risque de confusion est d’autant plus élevé que le caractère distinctif de la marque antérieure s’avère important et que ii) les
3 Voir les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 8, Appréciation globale
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marques antérieures qui ont un caractère distinctif élevé, soit intrinsèquement, soit en raison de la connaissance de celles-ci sur le marché, jouissent d’une protection plus étendue que celles dont le caractère distinctif est moindre. En conséquence, le caractère distinctif de la marque antérieure dans son ensemble détermine l’intensité et l’étendue de sa protection. Il doit en outre être pris en considération aux fins d’apprécier le risque de confusion (et non d’apprécier la similitude entre les marques – voir «Western Gold» et coll. ci-dessus).
2.1 L’examen du caractère distinctif: questions d’ordre général
2.1.1 Qu’entend-on par «composant» ou «élément» d’un signe?
Le Tribunal n’a pas défini ce qu’il convenait de considérer comme un «composant» ou un «élément» d’un signe. Il est aisé d’identifier des composants lorsque, sur le plan visuel, un signe est divisé en plusieurs parties (ex.: des composants verbaux et figuratifs distincts). Cependant, le terme «composant» désigne bien plus que de telles distinctions visuelles. En fin de compte, la perception du signe par le public pertinent est décisive, et un composant existe dès lors que le public pertinent le perçoit. À titre d’exemple, le public pertinent considérera souvent des signes composés d’un seul mot comme comportant plusieurs composants, notamment lorsqu’une de ses parties possède une signification claire et évidente alors que les autres sont dénuées de sens ou possèdent une signification différente (c’est le cas de la marque EUROFIRT, «Euro» étant compris comme une référence à l’Europe, tandis que «Firt» est dénué de sens, ce qui permet de considérer que cette marque verbale comporte deux composants: «Euro» et «Firt»). En pareils cas, les éléments des signes composés d’un seul mot pourraient être qualifiés de «composants» dans la terminologie du Tribunal.
Des marques verbales ne doivent toutefois pas être artificiellement disséquées. La dissection n’est pas appropriée, à moins que le public pertinent ne perçoive clairement les composants en question comme des éléments distincts. Une appréciation au cas par cas est nécessaire pour établir si la décomposition d’un signe est artificielle (ex.: si la décomposition du terme «LIMEON» en «LIME» et «ON» pour désigner un fruit serait artificielle ou non)4.
2.1.2 Qu’entend-on par caractère distinctif?
Le Tribunal a défini le caractère distinctif comme suit:
«Pour déterminer le caractère distinctif d’une marque et, partant, évaluer si elle a un caractère distinctif élevé, la juridiction nationale doit apprécier globalement l’aptitude plus ou moins grande de la marque à identifier les produits ou services pour lesquels elle a été enregistrée comme provenant d’une entreprise déterminée et donc à distinguer ces produits ou services de ceux d’autres entreprises» (soulignement ajouté).
(Voir l’arrêt du 22 juin 1999, C-342/97, «Lloyd Schuhfabrik Meyer», point 22).
Il est important de relever que l’appréciation du caractère distinctif est une question de degré. Aussi est-il fait usage, pour apprécier le caractère distinctif, d’une échelle
4 Ce point est expliqué de manière plus approfondie dans les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 3, Comparaison des signes.
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variable pour déterminer si un signe ou un élément d’un signe est dépourvu de caractère distinctif dans sa globalité, doté d’un caractère distinctif accru ou encore se situer entre les deux.
Un signe ou un élément d’un signe est dépourvu de caractère distinctif s’il est exclusivement descriptif des produits et services en eux-mêmes ou de leurs caractéristiques (leur qualité, leur valeur, leur finalité, leur origine, etc.) et/ou s’il est courant de l’employer dans le commerce pour désigner lesdits produits et services. De même, un signe ou un élément d’un signe qui est générique (un contenant ayant une forme commune ou une couleur commune par exemple), est également dépourvu de caractère distinctif.
Un signe ou un élément d’un signe peut posséder un caractère distinctif faible s’il fait allusion aux caractéristiques des produits et services (mais n’en est pas exclusivement descriptif). Si l’allusion aux produits et services est suffisamment imaginative ou astucieuse, le seul fait de faire allusion à des caractéristiques des produits ne saurait avoir une incidence sensible sur le caractère distinctif. À titre d’exemple:
le terme «billionnaire» (millionnaire) mis en rapport avec des services de jeu est une allusion qui aurait une incidence sur le caractère distinctif, en ce sens qu’il laisse entendre que l’on peut devenir millionnaire.
«Billy O’Naire», qui a la même sonorité que «billionaire» (millionnaire) en anglais, mis en rapport avec des services de jeu serait allusif en tant que jeu de mots astucieux portant sur des noms irlandais, mais n’aurait pas d’incidence sensible sur le caractère distinctif; le terme serait considéré comme ayant un caractère distinctif «normal».
Un signe ou un élément d’un signe qui n’est ni descriptif, ni allusif, est réputé posséder un caractère distinctif intrinsèque «normal». Cela signifie que le signe ou l’élément d’un signe en cause bénéficie d’un caractère distinctif élevé dès lors que son aptitude à identifier les produits et services pour lesquels il a été enregistré comme provenant d’une entreprise déterminée n’est en rien amoindrie ni altérée.
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Tout caractère distinctif accru que la marque antérieure a acquis par l’usage ou parce qu’elle est particulièrement originale, inhabituelle ou unique, doit être prouvé par son titulaire auquel il incombe de produire les pièces justificatives appropriées (voir également le paragraphe 2.3 ci-dessous). L’absence de lien conceptuel entre la marque et les produits ou les services couverts par celle-ci ne confère pas automatiquement à ladite marque un caractère distinctif intrinsèque plus élevé (ordonnance du 16 mai 2013, C-379/12 «H. Eich», point 71).
De la même manière, un demandeur sollicitant l’enregistrement d’une marque communautaire peut faire valoir que le signe antérieur ou qu’un élément d’un signe antérieur revêt un caractère distinctif faible. L’un des arguments les plus fréquemment avancés par les demandeurs est que la marque antérieure ou l’un de ses composants possède un caractère distinctif faible étant entendu que nombreuses sont les marques qui consistent en, ou incluent, l’élément concerné. Lorsque cet argument n’est soutenu que par le demandeur faisant référence à des enregistrements de marques, l’Office estime que l’existence de plusieurs enregistrements de marques n’est pas particulièrement probante en soi car elle ne reflète pas nécessairement la situation sur le marché. En d’autres termes, les données relatives aux enregistrements ne permettent pas à elles seules de présumer que toutes les marques ont été effectivement utilisées.
Les éléments de preuve produits doivent donc démontrer que les consommateurs ont été exposés à l’usage étendu des marques incluant l’élément en cause et qu’ils se sont familiarisés avec ces marques pour démontrer que ledit élément possède un caractère distinctif faible.
S’agissant du caractère distinctif de la marque antérieure dans son ensemble, celle- ci doit toujours être perçue comme possédant à tout le moins un caractère distinctif intrinsèque minimal. Les marques antérieures, qu’il s’agisse de marques communautaires ou de marques nationales, bénéficient d’une «présomption de validité». La Cour a clairement établi dans son arrêt du 24 mai 2012, C-196/11, «F1- LIVE», points 40 et 41, que «lors d’une procédure d’opposition à une demande d’enregistrement d’une marque communautaire, la validité des marques nationales ne peut être mise en cause». Et d’ajouter qu’«il convient de constater que la caractérisation d’un signe comme descriptif ou générique équivaut à nier le caractère distinctif de celui-ci». 5
2.1.3 Les aspects du caractère distinctif à examiner
Le caractère distinctif doit être apprécié au regard de toutes les caractéristiques pertinentes des marques et de leurs composants. En conséquence, l’appréciation doit porter sur l’aptitude des mots, des éléments figuratifs, des couleurs et/ou des aspects tridimensionnels des signes à identifier les produits ou services comme provenant d’une entreprise déterminée.
Pour examiner les principaux aspects du caractère distinctif, l’Office procède comme suit:
5 Voir également l’objectif 1 de la pratique commune sur l’impact des éléments non distinctifs/faiblement distinctifs sur le risque de confusion, convenue dans le cadre du Réseau européen des marques, dessins et modèles.
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1. Le premier aspect de l’examen consiste à déterminer si et dans quelle mesure les composants sont descriptifs, élogieux, ou sont dépourvus de caractère distinctif pour toute autre raison. L’objectif est de déterminer si les parties communes des signes constituent les éléments (les plus) distinctifs ou non (voir le paragraphe 2.2 ci-dessous).
2. Le deuxième aspect vise à vérifier le caractère distinctif de la marque antérieure, considérée dans son intégralité. À ce stade, l’Office doit d’abord établir le caractère distinctif intrinsèque global de la marque antérieure (voir paragraphe 2.2 ci-dessous), puis, si les parties en font la demande et si cela est pertinent aux fins de la solution du litige, déterminer si la marque antérieure a acquis un caractère distinctif accru suite à l’usage qui en a été fait par la partie opposante (voir le paragraphe 2.3 ci-dessous).
Le degré de caractère distinctif intrinsèque du signe antérieur constitue l’un des facteurs à prendre en considération dans le cadre de l’appréciation globale (arrêt du 11 novembre 1997, C-251/95, «Sabèl», point 23). Il s’agit d’une question de droit que l’Office se doit d’examiner même si les parties ne s’y arrêtent pas. Par opposition, le degré de caractère distinctif accru acquis par l’usage du signe antérieur est une question de droit et de fait, que l’Office ne peut examiner sauf si un opposant s’en prévaut et en apporte la preuve.
Le caractère distinctif intrinsèque de la marque contestée dans son ensemble n’est pas examiné dans le cadre de la procédure d’opposition étant donné que c’est l’étendue de la protection de la marque antérieure qui est pertinente aux fins de l’appréciation du risque de confusion. De même, le caractère distinctif accru du signe attaqué est inopérant dans la mesure où le risque de confusion requiert un examen de l’étendue de la protection de la marque antérieure et non de celle de la marque demandée. S’il est reconnu que la marque antérieure bénéficie d’une protection plus étendue du fait de son caractère distinctif accru, alors la notoriété acquise par la marque demandée est, en principe, dépourvue de toute pertinence aux fins de l’appréciation du risque de confusion (arrêt du 3 septembre 2009, C-498/07P, «La Española», point 84).
2.1.4 La période pertinente
Le caractère distinctif intrinsèque des signes (ou de leurs composants) doit être apprécié au moment de la décision. Le caractère distinctif accru de la ou des marque(s) antérieure(s) (pour autant qu’il soit revendiqué) doit exister i) au moment du dépôt (ou à la date de priorité) de la demande d’enregistrement de marque communautaire contestée et ii) au moment de la décision.
Dans le cadre de l’appréciation du caractère distinctif, il est essentiel de définir la période concernée exacte car le degré de caractère distinctif des marques n’est pas constant, mais varie au gré de la perception du public. Cette perception est susceptible de changer non seulement en raison de la nature de l’usage de la marque spécifique, mais également en raison d’autres facteurs (tous ces éléments ne peuvent être appréciés qu’à partir des éléments de preuve soumis par les parties). À titre d’exemple, la perception du public est susceptible de varier lorsqu’une marque ou l’un de ses composants a été utilisé(e) dans l’intervalle de façon similaire par plusieurs entreprises/commerçants dans le segment de marché pertinent. Cet usage courant d’un signe est susceptible d’altérer son caractère unique et, par voie de conséquence, son aptitude à indiquer l’origine des produits et services. Dans ce contexte, il est important d’évaluer soigneusement si la situation décrite est observée dans l’ensemble
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des régions géographiques pertinentes et si elle concerne l’ensemble des produits et services pertinents.
Á titre d’exemple, en raison de l’évolution technologique dans le domaine des technologies de l’information, on observe un accroissement des cas où des composants tels que «I» (pour internet), «E» (pour électronique) et «M» (pour mobile) sont utilisés juxtaposés à un terme significatif. Dans le contexte des communications électroniques, ils sont aujourd’hui jugés descriptifs (décision du 19 avril 2004, R 0758/2002-2, «ITUNES», paragraphe 11) alors qu’ils étaient auparavant qualifiés de distinctifs.
2.1.5 Les produits et services pertinents
Il n’est procédé à l’appréciation du caractère distinctif intrinsèque des signes (ou de leurs composants) qu’en présence de produits ou services jugés identiques ou similaires. En d’autres termes:
la marque antérieure est appréciée par rapport aux produits et services enregistrés qui ont été jugés identiques ou similaires aux produits et services contestés;
la marque contestée est appréciée par rapport aux produits et services contestés qui ont été jugés identiques ou similaires aux produits et services de la marque antérieure.
Si le degré de caractère distinctif du signe antérieur (ou d’un de ses composants) diffère selon les produits ou services qu’il désigne, il est possible que cet aspect doive être pris en considération pour établir l’étendue de la comparaison des produits et services en cause. Par exemple, même en cas d’identité entre les produits ou services contestés et certains des produits ou services de la marque antérieure, pour lesquels cette dernière (ou un élément commun aux deux signes en cause) revêt un caractère distinctif considéré comme inférieur à la normale, l’Office doit tenir compte des autres produits ou services de la marque antérieure qui sont similaires (et non identiques) à ceux de la marque contestée, mais pour lesquels la marque antérieure (ou le composant concerné) bénéficie d’un caractère distinctif normal (ou accru).
À titre d’exemple, une marque antérieure comprend l’élément «$tilettos» qui désigne des chaussures et chapeaux pour femmes, alors que les produits contestés sont des chaussures. L’élément «$tilettos» a une faible valeur distinctive au regard des chaussures pour femmes, qui sont identiques aux produits contestés. Néanmoins, l’élément «$tilettos» possède un caractère distinctif normal pour ce qui concerne les chapeaux de la marque antérieure, qui sont similaires aux produits contestés. L’Office doit examiner ces facteurs interdépendants dans le cadre de l’appréciation globale.
L’appréciation du caractère distinctif accru de la marque antérieure ne porte que sur les produits ou services protégés par le signe dont le caractère distinctif accru est revendiqué.
En outre, c’est la perception qu’a le public pertinent de ces produits et services qui importe (ex.: selon qu’un public spécialisé soit concerné ou non).
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2.2 L’examen du caractère distinctif intrinsèque
2.2.1 Principes généraux
La première étape pour examiner le caractère distinctif de la marque antérieure dans son ensemble et d’un composant des signes soumis à comparaison consiste à évaluer leur caractère distinctif intrinsèque.
L’examen du caractère distinctif intrinsèque est, quant à lui, réalisé en deux étapes: il y a lieu dans un premier temps de déterminer si le public pertinent reconnaît le contenu sémantique de la marque en cause puis, dans un deuxième temps, d’établir si le contenu sémantique perçu est lié ou non au commerce en rapport avec les produits et services identiques ou similaires et/ou si ce contenu sémantique est caractéristique dans ce contexte.
S’agissant de la première phase, à savoir la reconnaissance ou non du contenu sémantique par le public pertinent, elle est appréciée lors de la comparaison conceptuelle des signes, laquelle est décrite en détail dans un autre chapitre des présentes Directives6.
Le caractère distinctif intrinsèque des marques ou de leurs composants doit être apprécié en tenant compte de la ou de chacune des zone(s) géographique(s) pertinente(s) ainsi que de leur contexte linguistique et culturel spécifique. Dans ces circonstances, il est possible que le public résidant dans certaines parties du territoire pertinent ne saisisse pas le contenu descriptif qu’une marque est susceptible de présenter. En pareils cas, le caractère distinctif de la marque dans une région n’est pas affecté par le fait qu’elle puisse être perçue différemment dans d’autres régions.
Dans l’exemple ci-dessous, les considérations linguistiques se sont révélées essentielles pour statuer sur le caractère distinctif:
Signe antérieur Signe contesté Référence de l’affaire
FRUTISOL Solfrutta T-331/08
P&S: classes 29, 30 et 32. Territoire: UE. Appréciation des composants «frut» et «sol»: «…il convient d’établir une distinction entre la perception par le public dans ces États membres, en Italie et en Espagne par exemple, où les éléments «sol» et «frut» sont reconnaissables par tous et peuvent être compris comme une référence au «soleil» et au «fruit» respectivement, et la perception du public dans ces États membres, comme la Hongrie, la Finlande et la Lituanie, où ces éléments ne possèdent pas d’équivalents aussi proches dans leurs langues nationales. Dans la première catégorie d’Etats membres, les consommateurs sont susceptibles d’associer les deux marques avec les notions de «fruit» et de «soleil». En conséquence, il y aura un certain niveau de similarité conceptuelle entre elles. Dans les Etats membres de la deuxième catégorie, les consommateurs ne percevront aucune similarité conceptuelle entre les signes puisqu’ils n’attachent pas de signification particulière aux parties constituantes des deux signes» (points 21 à 24).
La deuxième phase consiste à mettre en corrélation toute signification que le public perçoit dans les marques avec les produits et services identiques ou similaires en cause. Si le public pertinent perçoit ladite signification comme descriptive, laudative ou allusive (d’une manière qui a une incidence sensible sur le caractère distinctif), etc.,
6 Voir les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 3, Comparaison des signes: Comparaison conceptuelle
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pour ces produits et services, le caractère distinctif sera amoindri en conséquence. Il peut s’avérer nécessaire d’établir une distinction entre les divers produits et services en cause dans la mesure où le constat de l’absence de caractère distinctif ou de l’existence d’un caractère distinctif limité peut ne concerner qu’une partie desdits produits et services.
Les critères appliqués à l’examen du caractère distinctif intrinsèque d’un signe ou d’un composant d’un signe sont identiques aux principes pertinents appliqués lors de l’examen des marques sur la base des motifs absolus7. Néanmoins, dans le cadre de litiges fondés sur des motifs relatifs, la question n’est pas simplement de savoir si un signe ou un composant présente un caractère distinctif ou non (en d’autres termes, s’il atteint le seuil de caractère distinctif minimum requis pour être enregistrable), mais également dans quelle mesure il est classé comme distinctif sur l’échelle variable mentionnée précédemment. Par conséquent, un terme qui, par exemple, n’est pas descriptif, mais uniquement allusif par rapport aux produits ou services en cause, peut se révéler suffisamment distinctif pour ne pas soulever d’objection dans le cadre de l’examen des motifs absolus tout en possédant un caractère distinctif inférieur à la normale dans le cadre de l’examen des motifs relatifs.
Il est attendu des marques antérieures qu’elles présentent au moins un caractère distinctif intrinsèque minimal8. Lorsque des preuves du contraire sont produites et s’avèrent concluantes, la marque antérieure peut ne se voir conférer qu’une protection très restreinte. La protection ne pourra toutefois lui être totalement refusée. Si le demandeur sollicitant l’enregistrement d’une marque communautaire démontre qu’il a engagé une action en annulation contre la marque antérieure, il peut être nécessaire de suspendre la procédure d’opposition dans l’attente du résultat de ladite action.
L’examen du caractère distinctif intrinsèque permettra d’aboutir à l’une des conclusions suivantes:
Composants
Le composant présente un caractère distinctif inférieur à la normale ou est dépourvu de caractère distinctif dans la mesure où il est descriptif, allusif ou laudatif des caractéristiques des produits ou services identiques ou similaires (ou parce qu’il présente une faible valeur distinctive pour un autre motif). Voir les exemples présentés ci-dessous.
Le composant présente un caractère distinctif normal car il n’est pas descriptif, évocateur, allusif ni élogieux (ou parce qu’il ne présente pas de caractère distinctif faible par ailleurs) pour ce qui concerne les produits ou services identiques ou similaires.
La marque antérieure considérée dans son ensemble
La marque antérieure présente un caractère distinctif inférieur à la normale dans la mesure où, dans son ensemble, elle est allusive (d’une manière qui a
7 Ces derniers sont décrits dans les Directives, partie B, Examen. Voir également l’objectif 2 de la pratique commune sur l’impact des éléments non distinctifs/faiblement distinctifs sur le risque de confusion, convenue dans le cadre du Réseau européen des marques, dessins et modèles 8 Voir l’arrêt C-196/11, «F1-LIVE», cité au paragraphe 2.1.2 ci-avant
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une incidence sensible sur le caractère distinctif) ou laudative des caractéristiques des produits ou services identiques ou similaires (ou parce qu’elle présente une faible valeur distinctive pour un autre motif). Comme mentionné ci-dessus, l’Office ne conclura pas au caractère descriptif et/ou non distinctif d’une marque antérieure dans son ensemble.
La marque antérieure présente un caractère distinctif normal car, dans son ensemble, elle n’est ni descriptive ni allusive (d’une manière qui a une incidence sensible sur le caractère distinctif) ni élogieuse (ou parce qu’elle ne présente pas de caractère distinctif faible pour tout autre motif) pour ce qui concerne les produits ou services identiques ou similaires.
Il convient de souligner que, dans sa pratique, l’Office considère que, lorsque la marque antérieure (ou le composant) n’est pas descriptive (ou n’est pas dépourvue de caractère distinctif pour tout autre motif), elle est réputée avoir un caractère distinctif intrinsèque normal. Comme mentionné plus haut, ce degré de caractère distinctif peut être requalifié sous réserve de la production d’éléments de preuve pertinents attestant que la marque antérieure présente un caractère distinctif accru acquis par l’usage, ou par son caractère hautement original, inhabituel ou unique.
Comme indiqué au paragraphe 2.1 ci-dessus, les marques verbales composées d’un seul mot peuvent néanmoins comporter plusieurs composants, certains pouvant être plus distinctifs que d’autres (voir l’arrêt T-331/08, «Solfrutta», précité).
2.2.1.1 Exemples de composants descriptifs
Signe antérieur Signe contesté Référence de l’affaire
BYLY T-514/08
P&S: classe 3. Territoire: UE. Appréciation de l’élément «products»: «le terme "products" ne dispose pas d’un caractère distinctif suffisant pour être pris en compte par le consommateur » (point 39).
Signe antérieur Signe contesté Référence de l’affaire
T-490/08
P&S: classe 36. Territoire: UE. Appréciation de «CAPITAL MARKETS»: «le public pertinent, qui est composé de consommateurs très attentifs, bien informés et familiers de la terminologie financière anglaise de base, n’attachera que très peu d’importance à la signification des termes ‘capital’ et ‘markets’, qui sont descriptifs desdits services et qui ne lui permettent pas d’identifier la provenance commerciale des marques en cause» (point 59).
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Signe antérieur Signe contesté Référence de l’affaire
R 0834/2009-1
P&S: classes 3 et 5. Territoire: UE. Appréciation du droit antérieur: même si les signes présentent quelques similitudes, l’expression «NATURAL BRONZE» est descriptive de la finalité des produits (à savoir, le bronzage) pour ce qui concerne les produits de la classe 3 (paragraphe 31).
Signes antérieurs Signe contesté Référence de l’affaire
(CINEDAY et al.) CINETAIN R 1306/2009-4
P&S: classes 38 et 41. Territoire: Espagne. Appréciation de l’élément «CINE»: le mot «cine» a une signification descriptive, dans le sens de «cinéma (film)». En conséquence, cette composante n’a qu’un impact limité dans la perception des signes (paragraphe 36).
Signe antérieur Signe contesté Référence de l’affaire
NATURAL BEAUTY FROM WITHIN R 0991/2010-2
P&S: classes 3 et 5. Territoire: Allemagne. Appréciation de l’élément «NATURAL BEAUTY»: l’élément «NATURAL BEAUTY» est une indication claire et essentielle du type et de la qualité des produits. Le public allemand comprend la signification de ces deux éléments du vocabulaire de base, mais également de la combinaison de ces deux termes (paragraphes 31 à 35).
2.2.1.2 Exemples de composants laudatifs
Signe antérieur Signe contesté Référence de l’affaire
MAGIC SEAT T-363/06
P&S: classe 12. Territoire: Espagne. Appréciation de l’élément «MAGIC»: «Le terme ‘magic’ sera perçu par le public pertinent comme qualifiant simplement le mot ‘seat’ en raison de sa ressemblance avec le terme espagnol "mágico", qui est purement laudatif» (point 39)
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Signe antérieur Signe contesté Référence de l’affaire
STAR SNACKS T-492/08
P&S: classes 29, 30 et 32. Territoire: UE. Appréciation de l’élément «STAR»: l’élément verbal «STAR» est un terme laudatif en ce qu’il constitue simplement (associé aux autres éléments des signes) une référence à la bonne qualité des produits alimentaires (point 52).
2.2.1.3 Exemples de composants allusifs
Signe antérieur Signe contesté Référence de l’affaire
EL COTO T-332/04
P&S: classes 33, 35, 39. Territoire: UE. Appréciation du caractère distinctif de l’image de la marque communautaire demandée contestée: l’élément figuratif de la marque évoque un vignoble; ce composant a une faible valeur distinctive pour des vins (point 38).
Signe antérieur Signe contesté Référence de l’affaire
WORLDLINK T-325/04
P&S: classe 36. Territoire: UE. Appréciation de l’élément «LINK»: l’élément «LiNK» n’est pas directement descriptif d’autres «services bancaires pour le retrait d’espèces, services de transfert de fonds et de paiement, services
d’informations financières» (classe 36) couverts par la marque antérieure, mais simplement allusif vis- à-vis desdits services.
2.2.1.4 Exemples de marques antérieures (considérées dans leur ensemble) ayant un caractère distinctif intrinsèque faible
Signe antérieur Signe contesté Référence de l’affaire
R 522/2010-1 (T-60/11 confirmé)
P&S: classes 30, 31 et 42. Territoire: UE.
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Appréciation du caractère distinctif du signe antérieur: «la chambre estime que le signe antérieur est une marque disposant d’un caractère distinctif très faible. Ainsi que cela a été décrit ci-dessus, l’impression globale que dégage ce signe se limite au dessin simplifié d’une étiquette dans laquelle le terme «PREMIUM» domine sur le plan visuel. Ce mot constitue une référence élogieuse à quelque chose d’excellent (par exemple, la qualité d’un produit), et du fait de son caractère répandu et de son emploi récurrent dans la commercialisation de divers produits et services, il sera compris par la majorité du public européen» (paragraphe 38).
Signe antérieur Signe contesté Référence de l’affaire
KID R 0249/2002-3
P&S: classe 28 Territoire: Espagne Appréciation du caractère distinctif du signe antérieur: la marque antérieure se compose du mot KID. Ce terme désigne une personne jeune, un enfant. Appliqué aux jeux et jouets de la classe 28, ce terme apparaît clairement descriptif. Il indique, de façon directe et immédiate, la destination des produits couverts par l’enregistrement antérieur. C’est la raison pour laquelle la marque de l’opposante possède un caractère distinctif très faible (paragraphe 16).
2.2.2 Cas spécifiques
2.2.2.1 Les signes composés d’une lettre, les chiffres et les signes courts
Dans son arrêt du 9 septembre 2010, C-265/09P «α», la Cour a retenu qu’il convient d’évaluer le caractère distinctif des marques composées d’une lettre unique dans le cadre d’un examen concret portant sur les produits et services visés et sur la base de critères identiques à ceux qui s’appliquent aux autres marques verbales (points 33-39). Bien que l’arrêt concerne des motifs absolus, l’Office estime que le principe établi par la Cour (à savoir que l’application du critère du caractère distinctif doit être identique pour toutes les marques) s’applique également aux affaires inter partes lorsqu’il s’agit de déterminer le caractère distinctif de marques composées d’une lettre unique.
Tout en admettant qu’il peut s’avérer plus ardu d’établir le caractère distinctif pour des marques composées d’une lettre unique que pour d’autres marques verbales, la Cour a retenu que ces circonstances ne justifient pas de prévoir des critères spécifiques complétant l’application du critère du caractère distinctif tel qu’il est interprété dans la jurisprudence ou dérogeant à celle-ci.
L’Office interprète cette conclusion de la Cour comme signifiant qu’il n’est pas correct, pour établir le caractère distinctif d’une marque antérieure, de se fonder sur: des postulats tels que des positions a priori selon lesquelles les consommateurs ne perçoivent pas habituellement les lettres uniques comme des marques ou des arguments génériques comme celui concernant la disponibilité des signes, motivé en l’occurrence par le nombre limité des lettres.
Le Tribunal a jugé depuis lors, dans un certain nombre d’affaires, qu’une marque contenant une lettre unique ou un chiffre unique peut en effet présenter un caractère distinctif intrinsèque (voir l’arrêt du 8 mai 2012, T-101/11 «G», point 50, l’arrêt du 6 octobre 2011, T-176/11 «Seven for all mankind», point 36 et l’arrêt du 5 novembre 2013, T-378/12 «X», points 37-51).
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Dans son arrêt du 10 mai 2011, T-187/10 «Ligne G», le Tribunal a rejeté l’argument du requérant selon lequel les lettres uniques sont généralement intrinsèquement dépourvues de caractère distinctif et selon lequel seule leur représentation graphique serait par conséquent protégée (voir points 38 et 49).
Par conséquent, si les marques antérieures enregistrées composées d’une lettre (ou d’un chiffre) unique représentés dans une police de caractères normale bénéficient d’une présomption de validité, leur degré de caractère distinctif inhérent devra en définitive être évalué par rapport aux produits et/ou services concernés.
Si le caractère distinctif est revendiqué, il conviendra de tenir compte des éléments de preuve produits par l’opposant montrant que sa marque enregistrée composée d’une lettre unique a acquis un caractère distinctif accru. Cette circonstance est susceptible de conférer une étendue de protection plus large à la marque antérieure.
Les considérations exposées ci-dessus s’appliquent tant aux marques composées d’une lettre unique ou d’un chiffre unique représentés en caractères standard (c’est-à- dire des marques verbales) qu’à des marques composées d’un chiffre unique ou d’une lettre unique stylisés.
En outre, conformément à l’arrêt prononcé dans l’affaire «α», en ce qui concerne les signes composés de deux lettres, à moins que la combinaison de lettres, en tant que telle, soit intrinsèquement dépourvue de caractère distinctif pour les produits et services (par exemple «XL» pour des produits de la classe 25), ces signes ne sont pas nécessairement seulement faiblement distinctifs. Les mêmes règles s’appliquent aux chiffres.
2.2.2.2 Les éléments banals et communément utilisés
Dans certains cas, les signes se composent d’un ou de plusieurs éléments verbaux distinctifs et d’un ou de plusieurs éléments figuratifs qui sont perçus par le public pertinent comme étant banals et communément utilisés. Lesdits éléments figuratifs se composent généralement d’une forme géométrique simple (ex.: des cadres, des étiquettes) ou de couleurs fréquemment employées dans le segment du marché concerné (ex.: le rouge pour les extincteurs de prévention des incendies, le jaune, le rouge ou l’orange pour le secteur des services postaux, selon l’État membre concerné). C’est la raison pour laquelle ces éléments banals et communément utilisés sont considérés comme dépourvus de caractère distinctif.
Signe antérieur Signe contesté Référence de l’affaire
ARCO R1929/2010-2
P&S: classe 9. Territoire: UE. Appréciation des éléments figuratifs: «les éléments verbaux des deux signes coïncident. Si sa taille n’est pas négligeable, l’élément figuratif de la marque communautaire contestée est néanmoins susceptible d’être essentiellement perçu par les consommateurs comme un élément purement décoratif, et non comme un élément indiquant l’origine commerciale des produits» (paragraphe 43).
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2.2.2.3 Les renonciations
Conformément à l’article 37 du RMC, l’Office a la possibilité d’imposer une renonciation si la marque comporte un élément qui est dépourvu de caractère distinctif et que l’inclusion de cet élément dans la marque est susceptible de susciter des doutes sur l’étendue de la protection de la marque. L’Office autorise également toute renonciation volontaire. Certains systèmes nationaux de marques prévoient également des renonciations.
De telles renonciations engagent l’Office et produisent un effet contraignant, même si une analyse indépendante devait révéler que l’élément est pourvu d’un caractère distinctif.
La renonciation a les conséquences suivantes:
si la marque antérieure fait l’objet d’une renonciation, il est alors interdit au titulaire d’invoquer des droits sur l’élément concerné. En conséquence, il n’existera aucun risque de confusion avec une marque communautaire ultérieure coïncidant uniquement par l’élément faisant l’objet de la renonciation (voir la décision du 6 octobre 2008, R 0021/2008-4 – «AUTENTICO JABUGO», paragraphe 17, où JABUGO a fait l’objet d’une renonciation);
si la marque antérieure figurative comporte deux mots et que tous deux sont concernés par une déclaration de renonciation, alors l’étendue de la protection est réduite à la manière et à l’ordre précis selon lesquels les deux termes sont combinés.
En ce qui concerne les renonciations dans la demande de marque communautaire contestée, elles ne peuvent produire d’effets sur le titulaire de la marque antérieure, c’est-à-dire que le demandeur ne peut unilatéralement réduire l’étendue de la protection de la marque antérieure (voir la décision du 11 février 2010, R 0229/2009-2 – «DOUGHNUT THEATER», paragraphe 58 ou la décision du 29 mars 2012, R 2499/2010-1 – «ACETAT Silicon 101E» [marque figurative], paragraphes 18 et 19).
2.2.2.4 Les marques collectives
Lorsque l’opposition se fonde sur une marque collective, le caractère distinctif intrinsèque de cette dernière doit être apprécié de la manière habituelle. La marque peut présenter un caractère distinctif intrinsèque faible, voire très faible, lorsqu’elle fait référence à la nature ou à d’autres caractéristiques des produits concernés. Le fait que la marque soit une marque collective n’implique pas que sa protection soit plus étendue (voir les arrêts du 13 juin 2012, T-534/10, «HELLIM», points 49 à 52, et du 5 décembre 2012, T-143/11, «F.F.R», point 61).
2.3 Examen du caractère distinctif accru
Au terme de l’examen obligatoire du caractère distinctif intrinsèque (voir point 2.1.3 ci-dessus), la deuxième étape consiste à vérifier, sous réserve que la partie opposante s’en prévale9, si la marque antérieure a acquis un caractère distinctif accru au moment
9 Voir les Directives, partie C, Opposition, section 1, Questions de procédure
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du dépôt (ou de la date de priorité) de la demande de marque communautaire contestée en raison de l’usage qui en a été fait par l’opposante.
Le caractère distinctif de la marque antérieure doit toujours être pris en considération au moment de statuer sur le risque de confusion. Le risque de confusion est d’autant plus élevé que le caractère distinctif de la marque antérieure s’avère important (arrêt du 11 novembre 1997, C-251/95, «Sabèl», point 24). En conséquence, les marques qui ont un caractère distinctif élevé, soit intrinsèquement, soit en raison de la connaissance de celles-ci sur le marché, jouissent d’une protection plus étendue que celles dont le caractère distinctif est moindre (arrêt du 29 septembre 1998, C-39/97, «Canon», point 18).
Dans la pratique, cela signifie que le fait qu’une marque antérieure jouisse d’un caractère distinctif accru ou d’une renommée accrue est un argument permettant de conclure à l’existence d’un risque de confusion.
Un caractère distinctif accru nécessite la reconnaissance de la marque par le public pertinent. Cette reconnaissance est susceptible de renforcer le caractère distinctif des marques ne présentant qu’un caractère distinctif intrinsèque faible ou dépourvues de caractère distinctif intrinsèque ou encore des marques pourvues d’un caractère distinctif intrinsèque.
Marque antérieure Signe contesté Référence de l’affaire
CRISTAL R 0037/2000-2
P&S: classe 33. Territoire: France. Appréciation de la marque antérieure «CRISTAL»: «S’agissant de l’allégation selon laquelle "Cristal" est un terme descriptif des produits en cause (vins pétillants au caractère cristallin), la chambre ne peut y faire droit. D’une part, il constitue un élément évocateur qui suggère le caractère cristallin des vins mais qui, en aucun cas, ne décrit le produit. D’autre part, [la chambre] estime que le caractère distinctif élevé de la marque CRISTAL sur le marché français a été établi» (paragraphe 31).
La Cour a fourni quelques directives pour l’évaluation du caractère distinctif acquis par l’usage de la marque antérieure ainsi qu’une liste non exhaustive de facteurs:
«Lors de cette appréciation, il convient de prendre en considération notamment les qualités intrinsèques de la marque, y compris le fait qu’elle est ou non dénuée de tout élément descriptif des produits ou services pour lesquels elle a été enregistrée, la part de marché détenue par la marque, l’intensité, l’étendue géographique et la durée de l’usage de cette marque, l’importance des investissements réalisés par l’entreprise pour la promouvoir, la proportion des milieux intéressés qui identifie les produits ou les services comme provenant d’une entreprise déterminée grâce à la marque ainsi que les déclarations de chambres de commerce et d’industrie ou d’autres associations professionnelles».
(Voir l’arrêt du 22 juin 1999, C-342/97, «Lloyd Schuhfabrik Meyer», point 23).
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Les éléments de preuve à l’appui du caractère distinctif accru acquis par l’usage doivent faire référence à la fois i) à la zone géographique pertinente et ii) aux produits et services pertinents. La partie opposante est susceptible de faire valoir le caractère distinctif accru de la marque antérieure pour une partie des produits et services enregistrés uniquement. Sur la base des éléments de preuve produits, il incombe à l’Office d’établir avec précision pour quels produits et services le caractère distinctif a été acquis.
La nature, les facteurs, les éléments de preuve10 et l’appréciation du caractère distinctif accru sont identiques à ceux employés pour l’examen de la renommée. Cependant, si la reconnaissance d’une renommée requiert qu’un certain seuil soit atteint, comme relevé ci-dessus, le seuil du caractère distinctif accru est susceptible d’être moins élevé. Le caractère distinctif accru se situe un niveau au-dessus du caractère distinctif intrinsèque.
Marque antérieure Signe contesté Référence de l’affaire
EL COTO T-332/04
P&S: classes 33, 35, 39. Territoire: UE. Appréciation du caractère distinctif accru de la marque «EL COTO»: «la chambre de recours a pris en compte la connaissance sur le marché de la marque antérieure EL COTO et elle a fait une correcte application de la jurisprudence […] en constatant le caractère distinctif élevé de la marque antérieure EL COTO […] au vu des éléments suivants: le certificat délivré par le secrétaire général du Consejo Regulador de la Denominación de Origen Calificada "Rioja" (Conseil régulateur de l’appellation d’origine contrôlée "rioja"), attestant que l’intervenante commercialise ses vins notamment sous les marques EL COTO et COTO DE IMAZ depuis 1977 et que ces marques "jouissent d’une notoriété significative" en Espagne; plusieurs décisions de l’OEPM reconnaissant que la marque EL COTO de l’intervenante "jouit de notoriété en Espagne"; le document relatif à l’évolution des ventes […], précisant que 339 852, 379 847, 435 857 et 464 080 caisses de douze bouteilles de vins avaient été vendues sous la marque EL COTO respectivement en 1995, en 1996, en 1997 et en 1998» (point 50).
Il est important de noter que la Cour a également estimé que l’acquisition du caractère distinctif d’une marque peut résulter de son usage en tant que partie d’une autre marque enregistrée (arrêts du 7 juillet 2005, C-353/03, «Have a break», points 30 et 32, et du 7 septembre 2006, T-168/04, «Aire Limpio», point 74). Il suffit que, en conséquence de cet usage, le public pertinent perçoive effectivement le produit ou le service désigné par les marques antérieures comme provenant d’une entreprise déterminée.
L’examen du caractère distinctif accru aboutira à l’une des conclusions suivantes:
En l’absence de preuve de caractère distinctif accru pour les produits et services concernés ou sur le territoire pertinent, ou en cas d’insuffisance des éléments de preuve produits, le caractère distinctif de la marque antérieure reposera sur son seul caractère distinctif intrinsèque (inférieur à la normale ou normal).
10 Pour de plus amples détails sur les éléments de preuve requis et leur appréciation, voir les Directives, partie C, Procédure d’opposition, section 5, article 8, paragraphe 5
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En présence d’éléments de preuve du caractère distinctif accru pour l’ensemble ou une partie des produits et services pertinents ou encore pour l’ensemble ou une partie du territoire pertinent, et si ces preuves s’avèrent suffisantes:
○ si la marque antérieure possède un caractère distinctif intrinsèque inférieur à la normale, la marque/le composant a pu acquérir un caractère distinctif normal, voire accru, selon les preuves soumises11; ou
○ si la marque antérieure présente un caractère distinctif intrinsèque normal, elle peut avoir acquis un caractère distinctif accru.
Il y a lieu de rappeler que si une marque dans son ensemble peut avoir acquis un caractère distinctif accru, certains de ses éléments descriptifs pourront présenter un caractère distinctif inférieur à la normale, voire ne présenter aucun caractère distinctif. Par exemple, le caractère distinctif accru de la marque «Coca Cola» considérée dans son ensemble ne change en rien le fait que l’élément «Cola» est totalement descriptif de certains produits.
11 Pour de plus amples détails sur les éléments de preuve requis et leur appréciation, voir les Directives, partie C, Opposition, section 5, article 8, paragraphe 5
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 2
DOUBLE IDENTITÉ ET RISQUE DE CONFUSION
CHAPITRE 5
CARACTÈRE DOMINANT
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Table des matières
1 Remarques générales ................................................................................3
2 Appréciation du caractère dominant.........................................................3
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1 Remarques générales
Un risque de confusion (y compris un risque d’association) existe lorsque le public est susceptible de croire que les produits ou services en cause, en supposant qu’ils portent la marque en question, proviennent de la même entreprise ou, le cas échéant, d’entreprises liées économiquement.
L’existence d’un risque de confusion dépend d’une appréciation globale de plusieurs facteurs interdépendants, dont i) la similitude entre les produits et services, ii) la similitude des signes, iii) les éléments distinctifs et dominants des signes en conflit, iv) le caractère distinctif de la marque antérieure, et v) le public concerné.
La première étape de l’appréciation de l’existence d’un risque de confusion consiste à établir ces cinq facteurs. La seconde étape consiste à déterminer leur pertinence.
Le présent chapitre a pour objectif d’expliquer de quelle manière il convient de déterminer si l’un des signes en conflit possède ou non un ou plusieurs composants dominants.
2 Appréciation du caractère dominant
L’Office a pour habitude de restreindre la notion d’élément dominant à l’impact visuel produit par les éléments d’un signe, c’est-à-dire de l’utiliser exclusivement pour signifier que ces éléments sont « visuellement remarquables ».
Pour pouvoir établir qu’un signe contient un élément dominant, ce signe doit au moins posséder deux composants identifiables1. Par conséquent, la première étape consiste à définir les composants d’un signe.
La Cour de justice de l’Union européenne (ci-après, la « Cour ») n’a pas défini ce qu’il convient de considérer comme un « composant » de signes, mais a fourni des indications. Les indications visuelles telles qu’un tiret ou l’utilisation de tailles de police et/ou de caractères ou de couleurs différents peuvent être considérées comme des « composants »2. C’est la perception du signe par le public pertinent qui est décisive, et non le fait qu’un signe puisse ou non être divisé en différentes parties.
La deuxième étape consiste à déterminer quel est, parmi les composants d’un signe, le composant dominant. Comme l’a indiqué la Cour :
Quant à l'appréciation du caractère dominant d'un ou plusieurs composants déterminés d’une marque complexe, il convient de prendre en compte, notamment, les qualités intrinsèques de chacun de ces composants en les comparant à celles des autres composants. En outre et de manière accessoire, peut être prise en compte la position relative des différents composants dans la configuration de la marque complexe.
(Voir l’arrêt du 23 octobre 2002, T-6/01, MATRATZEN, point 35, arrêt confirmé par l’ordonnance du 28 avril 2004, C-3/03 P)
1 Dans le présent texte, les mots « composant » et « élément » sont utilisés indifféremment. 2 Pour quelques exemples, voir les Directives relatives à l’opposition, partie 2, Double identité et risque de confusion, chapitre 3, Comparaison des signes.
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Bien que, conformément à une jurisprudence constante de la Cour, des aspects autres que visuels (tels qu’une éventuelle signification sémantique d’une partie d’un signe constitué d’un seul mot) puissent entrer en ligne de compte lorsqu’il s’agit de définir la notion de l’élément dominant d’un signe, l’Office a pour habitude de restreindre la notion d’élément dominant à l’impact visuel produit par les éléments d’un signe, c’est- à-dire de l’utiliser exclusivement pour signifier que ces éléments sont « visuellement remarquables » et de laisser toute autre considération pour l’appréciation globale. En conséquence, de l’avis de l’Office, le caractère dominant d’un composant d’un signe est principalement déterminé par sa position, sa taille, sa dimension et/ou l’utilisation des couleurs, dans la mesure où ces aspects ont une incidence sur l’impact visuel qu’il produit.
En outre, la Cour a considéré que :
[…] le caractère distinctif faible d’un élément d’une marque complexe n’implique pas nécessairement que celui-ci ne saurait constituer un élément dominant, dès lors que, en raison, notamment, de sa position dans le signe ou de sa dimension, il est susceptible de s’imposer à la perception du consommateur et d’être gardé en mémoire par celui-ci.
(Voir l’arrêt du 13 juin 2006, T-153/03, « Représentation d’une peau de vache en noir et blanc », point 32)
Par conséquent, le fait qu’un composant d’une marque puisse ou ne puisse pas être considéré comme non distinctif (ou comme ayant un caractère distinctif faible) n’a pas d’influence sur l’appréciation du caractère dominant.
En règle générale, il y lieu de tenir compte des principes suivants :
• l’appréciation du caractère dominant s’applique aux deux signes soumis à comparaison ;
• pour établir l’existence d’un composant dominant, le signe doit contenir au moins deux composants identifiables ;
• les signes verbaux ne possèdent pas d’éléments dominants car ils sont, par définition, écrits dans une police de caractères standard. La longueur des mots ou le nombre de lettres n’entre pas dans l’appréciation du caractère dominant, mais bien dans l’appréciation globale3 ;
• des éléments figuratifs peuvent être dominants dans des signes contenant également des éléments verbaux ;
• le caractère remarquable ou non d’un élément sur le plan visuel peut être déterminé dans le cadre de la comparaison visuelle des signes ; dans ce cas, cela doit être cohérent avec une évaluation ultérieure du caractère dominant ;
• enfin, s’il s’avère difficile de décider lequel des deux composants (au moins) est dominant, cela peut indiquer qu’il n’existe pas d’élément dominant. La détermination du caractère dominant implique qu’un composant soit visuellement remarquable par rapport aux autres composants de la marque ; si cette appréciation est difficile à réaliser, c’est en raison de l'absence d’élément dominant.
3 Voir les Directives relatives à l’opposition, double identité et risque de confusion, partie 8, Appréciation Globale, Signes courts.
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Exemples d’affaires :
Signe Composant dominant et raisonnement Affaire n°
RPT : « […] l’élément dominant des marques antérieures est le sigle RPT dans lequel la lettre "p" est prépondérante » (point 33).
T-168/07
Free : « […] le terme "free" domine l’impression visuelle créée par la marque dont il fait partie, en raison de sa taille nettement plus grande que celle des autres composants, caractéristique combinée avec le fait qu’il est bien plus facilement mémorisable et prononçable par rapport au slogan en question » (point 39).
T-365/09
Xtreme : « Sur le plan visuel, il y a lieu de considérer que, dans la marque demandée, le terme "XTREME" occupe une position centrale. En effet, la taille de ses lettres est plus grande que celle des autres composants verbaux, et le terme est mis en relief par un contour blanc. La lettre "X" est mise en exergue par une taille encore plus importante et par le fait qu’elle est entourée d’un cercle blanc. Les autres composants verbaux, "RIGHT GUARD" et "SPORT", sont écrits en caractères moins grands et sont décalés vers la droite et vers le bord du signe » (point 55).
T-286/03
(by missako)
GREEN by missako : « Tout d’abord, il convient de constater que la représentation du soleil occupe une place importante au sein de la marque demandée en ce qu’il est positionné au centre de celle-ci et qu’il en couvre près des deux tiers de la surface. Ensuite, la position de l’élément verbal "green" est, elle aussi, importante au sein de ladite marque en ce qu’il y est représenté en lettres majuscules noires et en gros caractères dans une police stylisée ainsi qu’en ce qu’il occupe environ le tiers de la surface. Ainsi que le souligne la chambre de recours au point 28 de la décision attaquée, ces deux éléments occupent ainsi la majeure partie de la marque demandée et ressortent donc de l’impression générale de celle-ci. […] Enfin, en ce qui concerne l’élément verbal "by missako", la chambre de recours a correctement estimé, au point 28 de la décision attaquée, que ces mots étaient presque illisibles en raison de leur taille et que l’écriture manuscrite les rendait difficiles à déchiffrer. Il en résulte, d’une part, que le caractère dominant du mot "green" et de la représentation du soleil s’en trouve davantage renforcé et, d’autre part, que l’élément verbal "by missako" présente un caractère négligeable » (points 37 et 39).
T-162/08
BÜRGER : « L’élément dominant de la marque demandée est incontestablement l’élément verbal figurant en caractères majuscules qui se détache, du fait même de sa position et de la taille extrêmement large de ses caractères, de l’ensemble des autres éléments composant cette étiquette » (point 38).
T-460/11
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 2
DOUBLE IDENTITÉ ET RISQUE DE CONFUSION
CHAPITRE 6
PUBLIC PERTINENT ET NIVEAU D’ATTENTION
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Table des matières
1 Introduction................................................................................................ 3
2 Définition du public pertinent................................................................... 4
3 Définir le degré d’attention ....................................................................... 9 3.1 Degré supérieur d’attention..................................................................... 10
3.1.1 Achats onéreux............................................................................................. 10 3.1.2 Achats potentiellement risqués..................................................................... 11 3.1.3 Fidélité à la marque ...................................................................................... 11 3.1.4 Produits pharmaceutiques............................................................................ 12
3.2 Degré moindre d’attention ....................................................................... 12
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1 Introduction
L’existence d’un risque de confusion dépend d’une évaluation globale de plusieurs facteurs interdépendants, notamment i) la similitude des produits et des services, ii) la similitude des signes, iii) les éléments distinctifs et dominants des signes en cause, iv) le caractère distinctif de la marque antérieure et v) le public pertinent, en particulier son degré d’attention et de sophistication.
La première étape pour évaluer l’existence d’un risque de confusion consiste à établir ces cinq facteurs. La deuxième étape consiste à déterminer leur pertinence et leur interaction.
En ce qui concerne le public pertinent, la Cour de justice a conclu qu’il existe un risque de confusion (et notamment de risque d’association) si le public peut croire que les produits ou services en cause proviennent de la même entreprise ou, le cas échéant, d’entreprises liées économiquement (arrêt du 29 septembre 1998, C-39/97, « Canon », point 29). La Cour a également conclu que la perception des marques qu’a le consommateur moyen du type de produit ou service en cause joue un rôle déterminant dans l’appréciation globale du risque de confusion (arrêt du 11 novembre 1997, C-251/95, « Sabèl », point 23, et arrêt du 22 juin 1999, C-342/97, « Lloyd Schuhfabrik Meyer », point 25).
La première tâche consiste donc à définir les cercles de consommateurs qui sont pertinents aux fins de l’affaire. La méthode d’identification du public pertinent est présentée au paragraphe 2. Par la suite, il convient d’établir le degré d’attention et de sophistication du public pertinent. L’incidence de l’attention et de la sophistication du public pertinent sur l’évaluation du risque de confusion est examinée au paragraphe 3.
En outre, le public pertinent joue un rôle important dans l’établissement d’un certain nombre d’autres facteurs qui sont pertinents pour l’évaluation du risque de confusion:
Comparaison des produits et services
Les clients existants et potentiels des produits et services en litige représentent l’un des facteurs à prendre en considération dans le cadre de l’analyse de leur similitude. Tandis qu’une coïncidence du point de vue du public pertinent ne représente pas nécessairement une indication de similitude, des publics très différents plaident fortement contre la similitude.1
Exemple
Le cuir et les peaux d’animaux sont des matières premières qui sont dirigées vers l’industrie en vue de leur transformation ultérieure, tandis que les produits en cuir sont destinés au public général. Le public pertinent est différent et cette différence constitue
1 Voir les Directives relatives à l’opposition, partie 2, Double identité et risque de confusion, chapitre 2, Comparaison des produits et des services
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un facteur fondamental pour déterminer que ces produits sont dissemblables. Un même raisonnement s’applique aux métaux précieux et aux bijoux.
Comparaison des signes
La question du public pertinent joue également un rôle dans la comparaison des signes. Le même mot peut être prononcé différemment en fonction du public pertinent. D’un point de vue conceptuel, le public dans une partie de l’Union européenne peut comprendre la signification du signe, tandis que les consommateurs d’autres parties de l’Union sont susceptibles de ne pas la comprendre.2
Exemple
Le Tribunal a déjà confirmé que le grand public dans les pays scandinaves, aux Pays- Bas et en Finlande a une compréhension de base de l’anglais (arrêt du 26 novembre 2008, T-435/07 « NEW LOOK », point 23).
Éléments distinctifs des signes / caractère distinctif de la marque antérieure
Le caractère distinctif intrinsèque d’un signe ou de l’un de ses éléments dépend également du public pertinent pour les produits et services. Par exemple, en fonction des connaissances, de l’expérience et de la langue du public pertinent, un élément figurant dans une marque peut être dépourvu de caractère distinctif ou avoir un faible caractère distinctif, ou il peut avoir un caractère distinctif parce qu’il est perçu, inter alia, comme un terme fantaisiste sans signification.3
Exemple
Le mot français « Cuisine » ne sera pas compris comme une indication descriptive pour les produits des classes 29 et 30 dans certains États membres (décision du 23 juin 2010, R 1201/2009-1 « GREEN CUISINE », paragraphes 29 à 33).
Exemple
Les professionnels dans le domaine de l’informatique et dans le domaine scientifique sont en général plus habitués à l’utilisation de mots en anglais technique et général que le public général : dans l’affaire Gateway/Activy Media Gateway, la Cour a statué que le terme commun « gateway » évoque directement, dans l’esprit du consommateur concerné, le concept d’une passerelle, qui est couramment utilisé dans le secteur informatique (arrêt du 27 novembre 2007, T-434/05, « ACTIVY Media Gateway », points 38 et 48, confirmé par le pourvoi C-57/08P).
2 Définition du public pertinent
Conformément à l’article 8, paragraphe 1, point b), du RMC, il faut déterminer si le risque de confusion existe «dans l’esprit du public du territoire dans lequel la marque antérieure est protégée».
2 Voir les Directives relatives à l'opposition, partie 2, Double identité et risque de confusion, chapitre 3, Comparaison des signes 3 Voir les Directives relatives à l'opposition, partie 2, Double identité et risque de confusion, chapitre 4, Caractère distinctif
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Selon la CJUE, cette formulation montre que la perception des marques dans l’esprit du consommateur moyen du type de produits ou de services en cause joue un rôle déterminant dans l’appréciation globale du risque de confusion (arrêt du 11 novembre 1997, C-251/95, « SABEL », point 23 et arrêt du 22 juin 1999, C-342/97, « Lloyd Schuhfabrik Meyer », point 25).
Le terme «consommateur moyen» est un concept juridique qui s’utilise pour désigner le «consommateur pertinent» ou le «public pertinent». Il convient d’éviter toute confusion avec le «public général» ou le «grand public», bien que les juridictions l’utilisent parfois dans ce sens. Dans le contexte des motifs relatifs cependant, le terme « consommateur moyen » ne saurait être utilisé en tant que synonyme de « public général », étant donné qu’il peut faire référence tant au public professionnel qu’au public général. À cet égard, dans les cas concernant le risque de confusion, la Cour établit normalement une distinction entre le public général (ou grand public) et le public professionnel ou spécialisé (ou entreprises clientes) sur la base des produits et services en question.
.
Afin de définir correctement le public pertinent dans le contexte des motifs relatifs, deux facteurs doivent être pris en considération:
le territoire défini par la marque antérieure: le public pertinent est toujours celui du ou des territoires sur lesquels le ou les droits antérieurs sont protégés. En conséquence, dans le cas d’un droit national antérieur, le public pertinent concerné est celui de cet État membre particulier de l’UE (ou des États membres dans le cas des marques Benelux). Pour un enregistrement international, il s’agit du public dans chacun des États membres dans lesquels la marque est protégée;
les produits et services jugés identiques ou similaires: le risque de confusion est toujours évalué par rapport à la perception que les consommateurs ont de produits et services jugés identiques ou similaires. En fonction des produits ou des services, le public pertinent est le public général ou un public professionnel.
Le terme «public pertinent» englobe à la fois les consommateurs réels et les consommateurs potentiels, c’est-à-dire les consommateurs qui achètent actuellement les produits et/ou services ou qui pourraient le faire à l’avenir.
PUBLIC PERTINENT Consommateur moyen
PUBLIC GÉNÉRAL Grand public
PUBLIC PROFESSIONNEL Clients professionnels
Public spécialisé
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Si une partie significative du public pertinent pour les produits ou services en question peut être désorientée quant à l’origine des produits, cet élément est suffisant pour établir l’existence d’un risque de confusion. Il n’est pas nécessaire d’établir que tous les consommateurs réels ou potentiels des produits ou des services concernés sont susceptibles d’être désorientés.
Comme énoncé par le Tribunal, le public pertinent pour l’appréciation du risque de confusion est constitué des utilisateurs susceptibles d’utiliser tant les produits et les services visés par la marque antérieure que le produit visé par la marque demandée qui ont été jugés identiques ou similaires (arrêt du 1er juillet 2008, T-328/05, « QUARTZ », point 23, C-416/08 P, pourvoi rejeté).
Les principes suivants s’appliquent pour définir la partie du public par rapport auquel un risque de confusion est évalué:
Si les produits ou les services des deux marques sont destinés au public général, le public pertinent par rapport auquel un risque de confusion est évalué est le public général.
Exemple
Dans une affaire où tant la marque antérieure que la marque contestée concernaient des vêtements, le Tribunal a conclu que les vêtements pour hommes et femmes sont des produits de consommation courante et que la marque sur laquelle l’opposition est fondée est issue d’un enregistrement communautaire. Il s’ensuit que le public par rapport auquel l’analyse du risque de confusion doit s’effectuer est constitué du grand public de l’Union européenne (arrêt du 6 octobre 2004, T-117/03 à T-119/03 et T-171/03, « New Look », point 25).
Si les produits et services des deux marques sont destinés au même public professionnel ou à un public professionnel similaire, le risque de confusion sera apprécié du point de vue de ces spécialistes.
Exemple
Les produits concernés tant de la marque antérieure que de la marque contestée sont des matières premières plastiques, des produits chimiques, des résines et d’autres produits. Ces produits sont destinés à un usage industriel. Les consommateurs ciblés sont, par conséquent, des ingénieurs, des chimistes, c’est-à-dire des professionnels hautement qualifiés qui traiteront ces produits et les utiliseront dans des activités de fabrication. Le public pertinent a été considéré comme étant constitué de professionnels (décision du 15 février 2012, R 2077/2010-1, « PEBAFLEX » paragraphe 18. Voir également la décision du 16 septembre 2010, R 1370/2009-1, « CALCIMATT », paragraphe 20, confirmée par l’arrêt T-547/10).
Si les produits ou les services des deux marques sont destinés à la fois au grand public et à des spécialistes, le risque de confusion sera apprécié par rapport à la
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perception qu’en a la partie du public qui manifeste le niveau d’attention le moins élevé, étant donné qu’elle sera plus encline à la confusion. Si cette partie du public ne s’expose pas à un risque de confusion, il est encore plus improbable que la partie du public qui est doté d’un degré plus élevé d’attention soit exposé à un tel risque.
Exemple
Dans une affaire où tant la marque antérieure que la marque contestée concernaient des produits relevant des classes 3 et 5 qui sont destinés à la fois au public général et aux professionnels (p. ex.: médecins) relativement à des produits pharmaceutiques relevant de la classe 5, le Tribunal a évalué le risque de confusion par rapport au public général uniquement, car il est celui qui affiche le plus faible niveau d’attention (voir à cet effet l’arrêt du 15 juillet 2011, T-220/09, « ERGO », point 21).
Si les produits et les services de la marque antérieure sont destinés au grand public et au public professionnel et les produits et les services contestés sont destinés exclusivement à un public professionnel (ou vice versa), le public pertinent pour l’appréciation du risque de confusion est le public professionnel uniquement.
Exemple
Les produits de la marque antérieure sont des produits pour polir les métaux, tandis que les produits de la demande sont des préparations pour déboucher les tuyaux d’écoulement pour l’industrie de transformation des métaux. Comme l’indique l’arrêt pertinent du Tribunal : « Or, si les "produits pour polir les métaux" peuvent constituer aussi bien des produits de consommation courante que des produits destinés à un public professionnel ou spécialisé, il n’est pas contesté que les produits visés par la demande d’enregistrement doivent être considérés comme s’adressant uniquement aux professionnels de l’industrie de transformation des métaux. Il en découle que le seul public susceptible de commettre une confusion entre les marques en cause est constitué par lesdits professionnels » (arrêt du 14 juillet 2005, T-126/03, « ALADIN », point 81).
Exemple
Les peintures en général sont vendues à la fois aux peintres professionnels (c’est-à-dire à des fins commerciales) et au grand public à des « fins de bricolage ». En revanche, les peintures pour l’industrie ne sont pas destinées au public général. Par conséquent, lorsque les spécifications des deux marques couvrent les peintures et les peintures pour l’industrie respectivement, seuls les professionnels constituent le public pertinent étant donné qu’ils sont susceptibles d’être les seuls consommateurs à rencontrer les deux marques.
Exemple
Les services de la marque antérieure sont les télécommunications. Les services contestés sont des télécommunications, à savoir services de colocation, d’hébergement en telehousing et d’interconnexion adressés à des professionnels uniquement. La définition du public pertinent doit être adaptée à la liste la plus
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spécifique, et le risque de confusion doit être évalué pour les professionnels uniquement (arrêt du 24 mai 2011, T-408/09, « ancotel », points 38 à 50).
Si les produits pertinents sont des produits pharmaceutiques, les principes suivants s’appliquent:
Le consommateur moyen de produits pharmaceutiques délivrés sans prescription (en vente libre) est le public général et le risque de confusion sera évalué par rapport à ce public.
Selon la jurisprudence, le public général ne saurait être exclu du public pertinent, y compris dans le cas de produits pharmaceutiques nécessitant une prescription d'un médecin avant leur vente à des consommateurs finaux dans les pharmacies. Le public pertinent est ainsi constitué à la fois du public général et de professionnels de la santé tels que les médecins et les pharmaciens. Par conséquent, même si le choix de ces produits est influencé ou déterminé par des intermédiaires, un risque de confusion peut également exister pour le public général, dès lors qu’il est susceptible d’être confronté à ces produits, fût-ce, lors d’opérations d’achat ayant lieu, pour chacun desdits produits pris individuellement, à des moments différents (arrêt du 9 février 2011, T-222/09, « ALPHAREN », points 42 à 45 et arrêt du 26 avril 2007, C-412/05 P, « TRAVATAN », points 56 à 63). Dans la pratique, ceci signifie que le risque de confusion sera évalué par rapport à la perception du public général qui est plus enclin à la confusion.
Dans le cas de produits pharmaceutiques destinés uniquement à des spécialistes en vue d’un usage professionnel (par exemple, solutions stériles pour la chirurgie ophtalmologique), le risque de confusion doit être évalué du point de vue de ce public spécialisé uniquement (voir arrêt du 26 avril 2007, C-412/05 P, «TRAVATAN», point 66).
Dans les cas où les produits pharmaceutiques de la demande de marque communautaire sont vendus sans ordonnance, alors que les produits pharmaceutiques couverts par l’enregistrement antérieur n’étaient disponibles que sur ordonnance, ou vice versa, l’Office doit partir du principe que le public pertinent est constitué à la fois de professionnels qualifiés et du public général sans connaissance médicale et pharmaceutique spécifique. Le risque de confusion sera évalué par rapport au public général qui est plus enclin à la confusion.
Exemple
Arrêt du 23 septembre 2009, dans les affaires jointes T-493/07, T-26/08 et T-27/08, « FAMOXIN », points 50 à 54 (C-461/09 P, pourvoi rejeté).
Dans l’affaire ci-dessus, les produits couverts par la marque antérieure étaient des produits pharmaceutiques à base de digoxine à usage humain pour les maladies cardiovasculaires, tandis que les produits contestés étaient des produits pharmaceutiques destinés au traitement de troubles du métabolisme administrables exclusivement par injection intraveineuse, intramusculaire ou sous-cutanée.
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Bien que les produits de la marque antérieure et les produits de la marque contestée soient tous deux prescrits par des professionnels des soins de santé et administrés sous leur supervision, le Tribunal a conclu que le public pertinent se compose à la fois de professionnels de la santé et du public général.
3 Définir le degré d’attention
La Cour a indiqué qu’aux fins de l’appréciation globale, le consommateur moyen des produits concernés est censé être normalement informé et raisonnablement attentif et avisé et que le degré d’attention du public pertinent est susceptible de varier en fonction de la catégorie de produits ou services en cause, (C-342/97, «Lloyd Schuhfabrik Meyer», point 26)
La détermination du degré d’attention plus ou moins élevé dépendra, entre autres, de la nature des produits et services pertinents et de la connaissance, de l’expérience et de l’implication dans l’achat du public pertinent.
Le fait que le public pertinent se compose du public général ne signifie pas forcément que le degré d’attention ne peut être élevé (par exemple, lors de l’achat de produits onéreux, potentiellement dangereux ou techniquement sophistiqués). De même, le fait que les articles en question sont destinés à des spécialistes ne signifie pas forcément que le degré d’attention est élevé. Dans certains cas, le public professionnel peut faire preuve d’un degré élevé d’attention lors de l’achat d’un produit spécifique. Tel est le cas lorsque ces consommateurs professionnels sont considérés comme ayant des connaissances de base ou de l’expérience en ce qui concerne les produits et les services spécifiques. De plus, les achats effectués par les consommateurs professionnels sont souvent plus systématiques que les achats effectués par le grand public. Toutefois, ce n’est pas toujours le cas. Par exemple, si les produits ou les services pertinents sont utilisés quotidiennement par un professionnel donné, le niveau d’attention peut être moyen, voire faible (voir, par analogie, l’arrêt du 15 septembre 2005, T-320/03 « LIVE RICHLY », point 74 : « ce niveau d’attention peut être relativement faible à l’égard d’indications à caractère promotionnel qui ne sont pas déterminantes pour un public avisé »).
Il est essentiel de bien définir le degré d’attention du public pertinent, étant donné que ce facteur peut peser en faveur ou en défaveur de la constatation d’un risque de confusion. Si le public pertinent n’a que rarement la possibilité de procéder à une comparaison directe entre les différentes marques mais doit se fier à l’image imparfaite qu’il a gardée en mémoire, un niveau d’attention élevé du public pertinent peut amener à conclure qu’il ne confondra pas les marques en cause malgré l’absence de comparaison directe entre les différentes marques (arrêt du 22 mars 2011, «CA», point 95).
Cependant, un degré élevé d’attention ne permet pas automatiquement de conclure à l’absence de risque de confusion. Tous les autres facteurs doivent être pris en considération (principe d’interdépendance)4. À titre d’exemple, compte tenu de la nature spécialisée des produits et/ou services concernés et du degré élevé d’attention du public pertinent, le risque de
4 Voir Directives relatives à l’opposition. Partie 2: Double identité et risque de confusion. Chapitre 8: appréciation globale
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confusion peut être écarté (arrêt du Tribunal du 26 juin 2008, «POLAR», points 50-51). Un risque de confusion peut toutefois exister malgré un degré élevé d’attention. Ainsi, lorsqu’un solide risque de confusion est créé par d’autres facteurs tels que l’identité ou la grande similitude existant entre les marques et l’identité des produits, on ne saurait se fonder sur la seule attention du public pertinent pour prévenir la confusion [arrêt du 21 novembre 2013, T-443/12, «ANCOTEL» (fig.), points 53 à 56, décision du 6 septembre 2010, R 1419/2009-4, «Hasi»].
3.1 Degré supérieur d’attention
Un degré supérieur d’attention est généralement lié aux types d’achats suivants: achats onéreux et achat de produits potentiellement risqués ou techniquement sophistiqués. Le consommateur moyen demande souvent une assistance ou des conseils professionnels lors du choix ou de l’achat de certains types de produits et services (par exemple, voitures, produits pharmaceutiques).
Un degré supérieur d’attention peut également s’appliquer aux produits pour lesquels la fidélité à la marque est importante pour le consommateur.
3.1.1 Achats onéreux
Lors de l’achat de produits onéreux, le consommateur mettra généralement en œuvre un niveau d’attention plus élevé et n’achètera les produits qu’après une évaluation attentive. Les consommateurs non spécialisés ou non professionnels demandent souvent une assistance ou des conseils professionnels lors du choix ou de l’achat de certains types de produits et services. L’attention peut être renforcée dans le cas des produits de luxe, et lorsque le produit spécifique est considéré comme reflétant la condition sociale de son propriétaire.
Exemples
Voitures: compte tenu de leur prix, les consommateurs sont susceptibles de leur porter un degré d’attention supérieur à celui qu’ils porteraient aux achats moins onéreux. Il faut s’attendre à ce que ces consommateurs n’achètent pas une voiture, qu’elle soit neuve ou d’occasion, de la même manière qu’ils achèteraient des articles de consommation courante. Le consommateur sera un acheteur averti, qui tiendra compte de tous les facteurs pertinents, par exemple le prix, la consommation, les coûts d’assurance, les besoins personnels ou même le prestige. Voir à cet égard l’arrêt du Tribunal du 22 mars 2011, T-486/07, « CA », points 27 à 38 et l’arrêt du Tribunal du 21 mars 2012, T-63/09 « SWIFT GTi », points 39 à 42.
Diamants, pierres précieuses et semi-précieuses: dans sa décision du 9 décembre 2010, R 900/20-10-1, « Leo Marco », paragraphe 22, la chambre de recours a conclu que, généralement, les consommateurs réfléchissent beaucoup lors du choix de ces produits. Dans de nombreux cas, les produits seront des articles de luxe ou des produits qui serviront de cadeaux. On peut supposer un degré relativement élevé d’attention de la part du consommateur.
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Services financiers: ces services sont destinés au public général, qui est normalement informé et raisonnablement attentif et avisé. Cependant, puisque de tels services constituent des services spécialisés qui peuvent avoir d’importantes conséquences financières pour leurs utilisateurs, le niveau d’attention des consommateurs serait plutôt élevé lors de leur choix (décision du 3 février 2011, R 719/2010-1, « f@ir credit », paragraphe 15) (Pourvoi devant le Tribunal, T-220/11, rejeté. Pourvoi C-524/12 P rejeté).
Dans l’impression d’ensemble produite par les signes en cause, les différences visuelles et conceptuelles existant entre les signes sont suffisantes pour neutraliser leur similitude phonétique limitée, en particulier dans la mesure où, en l’espèce, le public pertinent est très attentif et bien informé (arrêt du 22 juin 2010, T-563/08, « CARBON CAPITAL MARKETS », points 33 et 61).
Services immobiliers: l’achat et la vente de biens immobiliers sont des transactions commerciales qui comportent un risque et impliquent le transfert de grandes sommes d’argent. C’est pourquoi le consommateur concerné est réputé posséder un degré d’attention supérieur à la moyenne, étant donné que les conséquences d’un mauvais choix par manque de vigilance pourraient être extrêmement dommageables (décision du 17 février 2011, R 817/2010-2, « FIRST THE REAL ESTATE », paragraphe 21).
3.1.2 Achats potentiellement risqués
L'impact sur la sécurité des produits visés par une marque (par exemple, feux d’artifice, scies, accumulateurs électriques, disjoncteurs électriques, relais électriques, etc.) peut entraîner une augmentation du degré d’attention du consommateur pertinent (voir l’arrêt du 22 mars 2011, T-486/07 « CA », point 41).
3.1.3 Fidélité à la marque
Par ailleurs, un degré supérieur d’attention peut être la conséquence de la fidélité à la marque.
Exemple
Même si les produits du tabac sont des articles de grande consommation relativement bon marché, les fumeurs sont considérés comme particulièrement attentifs et sélectifs en ce qui concerne la marque de cigarettes qu’ils fument, on suppose par conséquent un degré de fidélité à la marque et d’attention plus élevé lorsqu’il s’agit de produits du tabac. Dans ces conditions, dans le cas des produits du tabac, un degré de similitude plus élevé entre les signes peut être nécessaire pour que la confusion se produise. Cela a été confirmé par plusieurs décisions de la chambre de recours: décision du 26 février 2010, R 1562/2008-2, « victory slims », où il a été établi que les consommateurs des produits de la classe 34 sont généralement très attentifs et fidèles à une marque, et la décision du 25 avril 2006, R 61/2005-2, « Granducato ».
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3.1.4 Produits pharmaceutiques
En ce qui concerne les préparations pharmaceutiques, il ressort de la jurisprudence que le degré d’attention du public pertinent est relativement élevé, que ces préparations soient délivrées sur prescription ou non (arrêt du 15 décembre 2010, T-331/09, «Tolposan», point 26, et arrêt du Tribunal du 15 mars 2012, T-288/08, «Zydus», point 36, et jurisprudence y citée).
En particulier, les professionnels de la santé ont un niveau d’attention élevé lorsqu’ils prescrivent des médicaments. S’agissant des non-professionnels, ils témoignent également d’un degré supérieur d’attention, que les produits pharmaceutiques soient vendus ou non sans prescription, étant donné que ces produits affectent leur état de santé.
3.2 Degré moindre d’attention
Un degré moindre d’attention peut être associé, en particulier, à un comportement d’achat habituel. Les décisions d’achat dans ce domaine concernent, par exemple, des produits peu coûteux achetés au quotidien (voir par analogie arrêt du 15 juin 2010, T-547/08, «Coloration orange de la pointe d’une chaussette», point 43).
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 2
DOUBLE IDENTITÉ ET RISQUE DE CONFUSION
CHAPITRE 7
AUTRES FACTEURS
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Table des matières
1. Introduction ................................................................................................3
2. Famille de marques/série de marques......................................................3
3. Coexistence de marques en conflit sur le marché d’un même territoire ......................................................................................................6 3.1. Coexistence des marques impliquées dans l’opposition................................ 6
4. Incidences d’une confusion effective .......................................................8
5. Décisions antérieures d’autorités communautaires ou nationales concernant des conflits entre des marques identiques (ou similaires) ...................................................................................................9 5.1. Décisions antérieures de l’Office.................................................................... 9 5.2. Décisions et arrêts nationaux antérieurs ...................................................... 10
6. Arguments non pertinents pour l’appréciation du risque de confusion ..................................................................................................12 6.1. Stratégies de commercialisation spécifiques ............................................... 12 6.2. Renommée de la marque communautaire demandée................................. 12
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1. Introduction
En principe, l’Office examine les facteurs les plus significatifs et habituellement pertinents relatifs au risque de confusion sous différentes rubriques1, avant la section contenant l’appréciation globale. Ces facteurs ont été traités dans les précédents chapitres des présentes directives.
Cependant, l’appréciation globale prend également en considération d’autres facteurs, sur la base des arguments et preuves présentés par les parties, qui sont pertinents pour statuer sur le risque de confusion. Le présent chapitre traite de ces arguments/affirmations fréquemment avancés par les parties.
2. Famille de marques/série de marques
Lorsqu’une opposition à une demande de marque communautaire est fondée sur plusieurs marques antérieures et que ces marques présentent des caractéristiques incitant à les considérer comme faisant partie d’une seule « série » ou « famille », un risque de confusion est susceptible d’être créé par la possibilité d’association entre la marque contestée et les marques antérieures faisant partie de la série. Les juridictions ont donné des indications claires sur les deux conditions cumulatives qui doivent être satisfaites (arrêt du 23 février 2006, T-194/03, « Bainbridge », points 123 à 127, confirmé par l’arrêt du 13 septembre 2007, C-234/06 P, « Bainbridge », point 63).
• En premier lieu, la titulaire d’une série de marques antérieures doit fournir la preuve de l’usage de l’ensemble des marques appartenant à la série ou, à tout le moins, d’un certain nombre de marques susceptibles de constituer une « série » (c’est-à-dire au moins trois).
• En second lieu, la marque demandée doit non seulement être semblable aux marques appartenant à la série, mais également présenter des caractéristiques capables de l’associer à la série. L’association doit amener le public à croire que la marque contestée fait également partie de la série, autrement dit, que les produits et services pourraient provenir de la même entreprise ou d’entreprises liées. Cela ne pourrait être le cas si, par exemple, l’élément commun à la série de marques antérieures était utilisé dans la marque contestée, soit à un emplacement différent de celui où il apparaît habituellement dans les marques appartenant à la série, soit avec un contenu sémantique différent.
L’ argument selon lequel il existe une famille de marques doit être revendiqué avant l’expiration du délai prévu pour étayer l’opposition.L’opposant doit apporter la preuve dans le même délai qu’il a utilisé les marques formant la famille supposée sur le marché dans une mesure telle que le public pertinent s’est familiarisé avec cette famille de marques en désignant les produits et/ou services d’une entreprise particulière.
Une conclusion positive selon laquelle l’opposant possède une famille de marques implique l’usage d’au moins trois marques, le seuil minimum pour qu’un tel
1 i) Similitude des produits et des services ; ii) similitude des signes ; iii) éléments distinctifs et dominants des signes en conflit ; iv) caractère distinctif de la marque antérieure ; v) public pertinent et niveau d’attention.
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argument soit dûment pris en considération. La preuve de l’usage de deux marques uniquement ne peut justifier l’existence d’une série de marques.
En principe, les marques constituant une «famille» et utilisées à ce titre sont toutes des marques enregistrées. Cependant, on ne peut exclure que la doctrine concernant la «famille de marques» inclue également des marques non enregistrées.
Si l’opposant a apporté la preuve de l’existence d’une famille de marques, il serait erroné de comparer individuellement la demande contestée à chacune des marques antérieures formant la famille. La comparaison devrait plutôt être effectuée entre la marque contestée et la famille dans son ensemble, en vue de déterminer si le signe contesté présente les caractéristiques susceptibles de faire naître dans l’esprit des consommateurs l’association avec la famille de marques de l’opposant. En fait, une comparaison individuelle entre les signes en conflit pourrait même donner lieu à un constat selon lequel les signes ne sont pas suffisamment similaires pour donner lieu à un risque de confusion, tandis que l’association du signe contesté et de la famille de marques antérieure pourrait être le facteur décisif faisant pencher la balance en faveur d’un constat de risque de confusion.
Une hypothèse d’une famille de marques de la part du public exige que le dénominateur commun de la demande contestée et de la famille de marques antérieure possède, par nature ou par l’usage, un caractère distinctif tel qu’il permette une association directe entre tous ces signes. De même, une hypothèse concernant une famille de marques sera écartée si les autres éléments des signes antérieurs ont un plus grand impact dans l’impression d’ensemble produite par ces signes.
Signes antérieurs Signe contesté Affaire nº Ophtal, Crom-Ophtal, Visc-
Ophtal, Pan-Ophtal ALERGOFTAL R 0838/2001-1
Produits et services : Classe 5 Territoire : Allemagne Appréciation : La chambre a conclu que les différences entre les signes étaient de nature à exclure le risque que la marque contestée soit perçue comme appartenant à la famille de marques de l’opposant (en supposant que son existence ait été établie). En particulier, la chambre a estimé que, alors que la «série» alléguée dépendait de la présence, dans chaque cas, du suffixe « -ophtal » (et non « oftal ») précédé par un trait d’union, le signe contesté ne contenait pas exactement le même suffixe ni ne présentait exactement les mêmes principes de construction. Lorsque « ophtal » est associé à « Pan- », « Crom- » et « Visc- », ces préfixes en partie disjoints acquièrent un caractère distinctif accru, modifiant de manière assez significative l’impression globale produite par chacune des marques dans leur ensemble, et fournissant dans chaque cas des éléments initiaux assez clairement différents de la première moitié, « Alerg », de la marque demandée. Le consommateur allemand voyant « Alergoftal » ne songerait pas à diviser ce nom en deux éléments, ce qu’il est invité à faire, au contraire, lorsqu’il rencontre des marques constituées de deux éléments séparés par un trait d’union (points 14 et 18).
Signes antérieurs Signe contesté Affaire nº
TIM OPHTAL, SIC OPHTAL, LAC OPHTAL, etc. OFTAL CUSI T-160/09
Produits et services : Classe 5. Territoire : UE. Appréciation : L’élément « Ophtal », qui désigne des préparations ophtalmologiques, est un élément faible dans la famille de marques. Les éléments TIM, SIC et LAC sont les éléments distinctifs (points 92 et 93).
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La conclusion qu’une marque particulière fasse partie d’une famille de marques exige que l’élément commun des signes soit identique ou très similaire. Les signes faisant l’objet de la comparaison doivent avoir en commun le même élément distinctif et cet élément doit jouer un rôle indépendant. Des différences graphiques mineures dans l'élément commun ne peuvent servir à écarter une hypothèse de série de marques, lorsque ces différences peuvent être perçues par le public comme étant une présentation moderne de la même gamme de produits. Par contre, l’existence de lettres différentes ou supplémentaires par rapport à l’élément commun ne permet généralement pas l’hypothèse d’une famille de marques.
Normalement, l’élément commun qui caractérise la famille occupe la même position dans les marques. Dès lors, un élément identique (ou très similaire) occupant la même position dans le signe contesté constituera un indicateur solide de l’association éventuelle de la marque postérieure à la famille de marques de l’opposant. À l’inverse, un élément commun occupant une position différente dans le signe contesté s’oppose fortement à l’établissement d’une telle association dans l’esprit des consommateurs. Par exemple, il est peu probable que le signe contesté ISENBECK soit associé à une famille de marques BECK- dans laquelle l’élément BECK figure au début des signes formant la famille.
Signes antérieurs Signe contesté Affaire n°
UNIZINS, UNIFONDS and UNIRAK UNIWEB C-317-10 P
G&S: Classe 36 (services financiers) Territoire: Allemagne Appréciation: Par le présent arrêt, la Cour annule une décision du Tribunal étant donné qu’il n’a pas dûment apprécié la structure des marques à comparer,ni l’influence de la position de leur élément commun sur la perception du public pertinent (paragraphe 57).
Exemples dans lesquels les chambres ont estimé qu’une famille de marques avait été établie :
Signes antérieurs Signe contesté Affaire nº
UniSECTOR uni-gateway R 31/2007-1
Produits et services : Classe 36 (services financiers). Territoire : Allemagne. Appréciation : La chambre a estimé que l’opposant avait, de fait, fourni des preuves suffisantes, en soumettant, en particulier, des références issues de la presse spécialisée pertinente, telle que FINANZtest, et en mentionnant sa part de marché considérable de 17,6 % dans les fonds d’investissement « Uni » parmi les sociétés de gestion de fonds allemandes, en vue de démontrer l’usage du préfixe « UNI » pour un grand nombre de fonds d’investissement notoires. Il existe un risque de confusion du point de vue de la famille de marques, étant donné que les milieux d’affaires pertinents pourraient inclure la marque demandée dans la série, car celle-ci est construite selon un principe comparable (points 43 et 44).
Signes antérieurs Signe contesté Affaire nº
UNIFIX, BRICOFIX, MULTIFIX, CONSTRUFIX, TRABAFIX, etc. ZENTRIFIX R 1514/2007-1
Produits et services : Classes 1, 17 et 19 (adhésifs). Territoire : Espagne. Appréciation : La chambre a estimé que l’opposant avait prouvé l’existence d’une famille de marques.
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En premier lieu, la chambre a rejeté le fait que l’élément commun «FIX» serait non distinctif, étant donné que ce n’est pas un mot espagnol et que même sa signification espagnole «fijar» n’évoque pas spontanément dans l’esprit du consommateur espagnol moyen un lien avec le contexte des colles et des adhésifs, étant donné que des verbes tels que «pegar», «encolar» ou «adherir» sont utilisés plus régulièrement dans ce contexte. En deuxième lieu, l’opposant a dûment prouvé que l’ensemble des marques formant la famille étaient utilisées. Les factures et la documentation publicitaire indiquent clairement que les produits portant ces marques sont proposés aux consommateurs sur le marché. Par conséquent, les consommateurs sont au fait de l’existence d’une famille de marques. En troisième lieu, ZENTRIFIX présente des caractéristiques identiques à celles des marques dans la famille. L’élément FIX est placé à la fin ; l’élément qui le précède évoque quelque chose ayant trait aux colles ; les deux éléments sont juxtaposés sans aucun signe de ponctuation, tiret ou séparation physique; la police utilisée pour les deux éléments est la même (points 43 et 44).
Signes antérieurs Signe contesté Affaire n º
CITIBANK, CITIGOLD, CITICORP, CITIBOND,
CITICARD, CITIEQUITY, etc. CITIGATE
R 821/2005-1 (confirmé par le Tribunal T-
301/09)
Produits et services : Classes 9, 16 (produits potentiellement liés au secteur financier). Territoire : UE. Appréciation : La chambre a estimé que les preuves, reposant en particulier sur des extraits de sites internet, de rapports annuels, d’annonces publicitaires, etc. des opposants, comportaient de nombreuses références aux marques CITICORP, CITIGROUP, CITICARD, CITIGOLD, CITIEQUITY. Les preuves indiquent que CITIBANK est une « marque de maison » ou une marque de base et que les opposants ont développé une série entière de sous-marques à partir du concept CITI. La marque contestée CITIGATE est le type de marque que les opposants pourraient ajouter à leur portefeuille de marques CITI, en particulier s’ils souhaitaient offrir un nouveau service aux consommateurs et mettre l’accent sur l’idée d’accès (points 23 et 24).
3. Coexistence de marques en conflit sur le marché d’un même territoire
Le demandeur de marque communautaire peut prétendre que les marques en conflit coexistent sur le territoire pertinent. D’ordinaire, l’argument de coexistence est avancé si le demandeur est titulaire d’une marque nationale correspondant à la demande de marque communautaire sur le territoire où la marque en conflit est protégée. Le demandeur peut également mentionner la coexistence avec une marque détenue par un tiers.
Par conséquent, deux situations différentes, chacune qualifiée de « coexistence » par les parties, doivent être distinguées :
• la coexistence des deux marques impliquées dans l’opposition peut constituer un argument convaincant en faveur de l’absence d’un risque de confusion dans l’esprit du public pertinent (voir ci-dessous) ;
• lorsque de nombreuses marques similaires (autres que les deux marques impliquées dans l’opposition) sont utilisées par des concurrents, la coexistence peut avoir une incidence sur l’étendue de la protection du droit antérieur. Voir les directives relatives à la procédure d’opposition, partie 2, chapitre 4, Caractère distinctif.
3.1. Coexistence des marques impliquées dans l’opposition
Au cours des procédures d’opposition, le demandeur de marque communautaire allègue le plus souvent que les marques en conflit coexistent à une échelle nationale et
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que la coexistence est tolérée par l’opposant. Il est parfois allégué que la coexistence est acceptée par les parties dans le cadre d’un accord de coexistence.
Il ne saurait être exclu que la coexistence sur un marché déterminé de deux marques puisse éventuellement contribuer, conjointement à d’autres éléments, à amoindrir le risque de confusion entre ces marques dans l’esprit du public pertinent (arrêt du 03 septembre 2009, C-498/07P, « La Española », point 82). Dans certains cas, la coexistence de marques antérieures sur le marché pourrait amoindrir le risque de confusion constaté par l’Office entre deux marques en conflit (arrêt du 11 mai 2005, T-31/03 « Grupo Sada », point 86).
Cependant, la valeur indicative de la coexistence doit être traitée avec prudence. Plusieurs raisons peuvent justifier la coexistence des deux signes sur un territoire national, par exemple une situation juridique ou factuelle différente dans le passé ou des accords sur les droits antérieurs conclus entre les parties impliquées.
Par conséquent, bien que l’incidence de la coexistence sur la conclusion de l’existence d’un risque de confusion soit en théorie acceptée, les conditions permettant à cette coexistence de constituer un argument convaincant en faveur de l’absence d’un risque de confusion sont, en pratique, très difficiles à établir et s’imposent rarement.
Certaines conditions doivent être remplies pour permettre au demandeur de marque communautaire de prouver que la coexistence était fondée sur l’absence de tout risque de confusion dans l’esprit du public pertinent :
• Situation comparable. Les marques antérieures (« coexistantes ») et les marques en conflit sont identiques à celles impliquées dans l’opposition devant l’Office (arrêt du 11 mai 2005, T-31/03 « Grupo Sada », point 86, arrêt du 18 septembre 2012, T-460/11 « Bürger », paragraphes 60 et 61) et désignent les mêmes produits ou services que ceux en conflit (décision du 30 mars 2010, R 1021/2009-1, « Eclipse », paragraphe 14).
• La coexistence concerne les pays pertinents en l’espèce (par exemple, une coexistence supposée au Danemark est dépourvue de pertinence si l’opposition est fondée sur une marque espagnole ; arrêt du 13 juillet 2005, T-40/03, « Julián Murúa Entrena », point 85). Si la marque antérieure est une marque communautaire, le demandeur de marque communautaire doit démontrer une coexistence dans l’ensemble de l’UE.
• Seule la coexistence sur le marché peut être prise en considération. Le simple fait que chacune des marques existe dans le registre national (coexistence formelle) est insuffisant. Le demandeur de marque communautaire doit prouver l’usage réel des marques (décision du 13 avril 2010, R 1094/2009-2, « Business Royals », paragraphe 34). Cette coexistence doit être comprise comme étant un « co-usage » de marques concurrentes et prétendument en conflit (décision du 08/01/2002, R 360/2000-4 « No Limits », paragraphe 13 ; décision du 05/09/2002, R 0001/2002-3 « Chee.Tos », paragraphe 22).
• La période de coexistence doit être prise en considération : dans l’arrêt du 1er mars 2005, T-185/03, « Enzo Fusco », la coexistence supposée de seulement quatre mois a été jugée comme étant clairement trop courte. Par ailleurs, la coexistence des marques doit correspondre à une période proche de la date de dépôt de la demande de marque communautaire (décision du 12 mai 2010, R 607/2009-1 « Elsa Zanella », paragraphe 39).
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• L’absence de risque de confusion peut uniquement être déduite du caractère « paisible » de la coexistence des marques en conflit sur le marché en cause (arrêt du 3 septembre 2009, C-498/07P, « La Española », point 82 ; arrêt du 8 décembre 2005, T-29/04, « Cristal Castellblanch », point 74 ; arrêt du 24 novembre 2005, T-346/04 « Arthur et Felicie », point 64). Cela n’est pas le cas lorsque le conflit a été porté devant les tribunaux nationaux ou les instances administratives (affaires de contrefaçon, oppositions ou demandes d’annulation d’une marque).
• Par ailleurs, la coexistence paisible des marques sur le marché national pertinent ne supprime pas le risque de confusion si elle repose sur des accords sur des droits antérieurs conclus entre les parties, y compris des accords réglant des litiges portés devant les tribunaux nationaux, puisque ces accords, même s’ils sont fondés sur l’appréciation de la situation juridique par les parties, peuvent avoir des raisons purement économiques ou stratégiques.
Cependant, des situations exceptionnelles peuvent se présenter. Dans sa décision préjudicielle du 22 septembre 2011 (C-482/09 « BUD »), la Cour de justice a conclu que deux marques identiques désignant des produits identiques peuvent coexister sur le marché dans la mesure où il y a eu un usage simultané honnête et de longue durée de ces marques et où cet usage ne porte pas atteinte ou n’est pas susceptible de porter atteinte à la fonction essentielle de la marque qui est de garantir aux consommateurs la provenance des produits et des services.
S’agissant des accords de coexistence entre les parties, la politique de l’Office, eu égard à l’appréciation du risque de confusion, est de considérer que de tels accords peuvent être pris en considération à l’instar de tout autre facteur pertinent, mais qu’ils ne sont en aucun cas contraignants pour l’Office. Cela est particulièrement vrai lorsque l’application des dispositions pertinentes du RMC et de la jurisprudence constante donne lieu à une conclusion qui n’est pas conforme au contenu de l’accord.
Si un accord est contesté devant des instances nationales ou si des procédures sont pendantes devant une juridiction, et si l’Office estime que l’issue pourrait être pertinente pour l’affaire en question, il peut décider de suspendre les procédures.
Par ailleurs, en règle générale, rien n’empêche l’opposant de former une opposition contre une demande de marque communautaire, qu’elle se soit déjà opposée ou non à d’autres marques (nationales) du demandeur. Cela ne saurait être considéré comme un « comportement contradictoire » et interprété au détriment de l’opposant, d’autant plus que, dans le cadre des procédures d’opposition, contrairement aux procédures en nullité, la « tolérance » utilisée comme argument de défense est irrecevable (les règles concernant les procédures d’opposition ne contiennent aucune disposition équivalente à l’article 54 du RMC, selon lequel le titulaire d’une marque communautaire peut invoquer le fait que le demandeur en nullité a toléré l’usage de la marque communautaire pendant plus de cinq ans, et s’en servir comme argument de défense).
4. Incidences d’une confusion effective
Le risque de confusion implique une probabilité de confusion dans l’esprit du consommateur pertinent et n’exige aucune confusion effective. Ainsi que le Tribunal l’a expressément confirmé: « […] il n’est pas nécessaire d’établir l’existence d’une
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confusion effective, mais l’existence d’un risque de confusion » (arrêt du 24 novembre 2005, T-346/04, « Arthur et Felicie », point 69).
Lors de l’appréciation globale du risque de confusion, tous les facteurs pertinents doivent être pris en considération. La preuve d’une confusion effective est un facteur susceptible de plaider en faveur d’un risque de confusion ; cependant, sa valeur indicative ne doit pas être surestimée pour les raisons suivantes :
• il y a lieu de supposer que, dans la vie quotidienne réelle, il y aura toujours des personnes qui confondent et interprètent mal chaque chose, et d’autres personnes qui sont extrêmement attentives et connaissent parfaitement chaque marque. Par conséquent, le fait d’attirer l’attention sur l’existence de chacune de ces catégories de personnes n’a aucune valeur juridique, étant donné que cela se traduirait par des résultats subjectifs ;
• dès lors que la perception du consommateur visé est concernée, l’appréciation est normative. Le consommateur moyen est censé être « normalement informé et raisonnablement attentif et avisé », bien qu’en termes purement factuels, certains consommateurs soient extrêmement attentifs et bien informés, alors que d’autres sont négligents et crédules (décision du 10 juillet 2007, R 0040/2006-4 ‘SDZ’, « Direct World », paragraphe 32).
Par conséquent, les incidences d’une confusion effective ne peuvent peser sur le constat d’un risque de confusion que s’il est prouvé que de telles incidences accompagnent généralement l’existence des marques en conflit sur le marché dans une situation commerciale habituelle impliquant les produits et/ou services concernés.
Afin d’accorder le poids qui convient aux preuves concernant le nombre de cas où il y a eu confusion effective, l’appréciation doit tenir compte du nombre d’occasions de confusion. En effet, si le volume des transactions commerciales est important mais que les cas de confusion sont rares, ces preuves auront peu de poids dans l’appréciation du risque de confusion.
L’absence de confusion effective a été traitée ci-dessus dans le contexte de la coexistence au paragraphe 4 ci-dessus.
5. Décisions antérieures d’autorités communautaires ou nationales concernant des conflits entre des marques identiques (ou similaires)
5.1. Décisions antérieures de l’Office
S’agissant des décisions antérieures prises par l’Office dans le cadre de conflits entre des marques identiques ou similaires, le Tribunal a déclaré que :
[…] selon une jurisprudence bien établie […], la légalité des décisions [de l’Office] s’apprécie uniquement sur la base du [RMC] et non sur la base d’une pratique décisionnelle antérieure de l’OHMI.
(Voir l’arrêt du 30 juin 2004, T-281/02, « Mehr für Ihr Geld », point 35.)
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Par conséquent, l’Office n’est pas lié par ses décisions antérieures, étant donné que chaque affaire doit être jugée séparément et en fonction de ses particularités.
Indépendamment du caractère non contraignant des décisions antérieures de l’Office, leur raisonnement et leur issue doivent toujours être dûment pris en considération au moment de statuer sur l’affaire en question, ce qui a été de nouveau souligné dans l’arrêt du 10 mars 2011, C-51/10 P, « 1000 », points 73 à 75 :
« L’OHMI est tenu d’exercer ses compétences en conformité avec les principes généraux du droit de l’Union, tels que le principe d’égalité de traitement et le principe de bonne administration.
Eu égard à ces deux derniers principes, l’OHMI doit, dans le cadre de l’instruction d’une demande d’enregistrement d’une marque communautaire, prendre en considération les décisions déjà prises sur des demandes similaires et s’interroger avec une attention particulière sur le point de savoir s’il y a lieu ou non de décider dans le même sens […].
Cela étant, les principes d’égalité de traitement et de bonne administration doivent se concilier avec le respect de la légalité. »
La valeur indicative des décisions antérieures sera, en principe, limitée aux affaires présentant une ressemblance suffisante avec l’affaire en question. Cependant, conformément à l’article 76, paragraphe 1, du RMC, dans une procédure d’opposition, l’examen de l’Office est limité aux faits, aux preuves et aux arguments invoqués par les parties. Ainsi, même dans le cadre d’affaires fondées sur des faits comparables et impliquant des problèmes juridiques similaires, l’issue peut toujours varier du fait des différentes observations formulées par les parties et des éléments de preuve qu’elles produisent.
5.2. Décisions et arrêts nationaux antérieurs
Les décisions rendues par les tribunaux nationaux ainsi que par les offices nationaux dans le cadre d’affaires concernant des conflits entre des marques identiques ou similaires à l’échelle nationale n’ont pas d’effet contraignant sur l’Office. Conformément à la jurisprudence, le régime communautaire des marques est un système autonome, constitué d’un ensemble de règles et poursuivant des objectifs qui lui sont spécifiques, son application étant indépendante de tout système national. En conséquence, le caractère enregistrable d’un signe en tant que marque communautaire ne doit être apprécié que sur le fondement de la réglementation pertinente (arrêt du 13 septembre 2010, T-292/08 « Often », point 84 ; arrêt du 25 octobre 2006, T-13/05 « Oda », point 59).
Par conséquent, l’Office n’est pas lié par les décisions intervenues au niveau des États membres ou des États tiers à l’Union (voir l’arrêt du 24 mars 2010, T-363/08 « Nollie », point 52).
Il n’en demeure pas moins que le raisonnement et l’issue de ces décisions doivent être dûment pris en considération, en particulier lorsque la décision a été rendue dans l'État membre concerné par la procédure. En effet, les tribunaux nationaux ont une connaissance approfondie des spécificités de leur État membre, notamment quant à la réalité du marché sur lequel les produits et services sont commercialisés et de la
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perception que les consommateurs ont des signes. Cela peut, dans certains cas, être pertinent pour l’appréciation réalisée par l’Office.
Signe antérieur Signe contesté Affaire nº
MURUA T-40/03
Produits et services : Classe 33 Territoire : Espagne Appréciation : Le Tribunal a pris en considération le raisonnement d’un arrêt rendu par le tribunal national dans la mesure où il a expliqué la perception des noms de famille par le public dans le pays pertinent : pour ce qui concerne la question de savoir si, en Espagne, le public pertinent attribuera généralement plus d’attention au nom de famille « Murúa » qu’au nom de famille « Entrena » dans la marque demandée, le Tribunal considère que la jurisprudence espagnole, bien qu’elle ne soit pas contraignante pour les instances communautaires, peut fournir des indications utiles (point 69).
Signe antérieur Signe contesté Affaire nº
OFTEN T-292/08
Produits et services : Classe 14 Territoire : Espagne Appréciation : Le Tribunal n’a pas jugé pertinente, pour l’appréciation de l’affaire en question, la jurisprudence espagnole selon laquelle le public moyen espagnol possède une certaine connaissance de la langue anglaise :
en l’espèce, la requérante n’invoque aucune considération factuelle ou juridique, tirée de la jurisprudence nationale invoquée, susceptible de fournir une indication utile pour la résolution de l’affaire […] En effet, la seule considération que certains mots anglais soient connus d’un consommateur espagnol, à savoir les mots « master », « easy » et « food », même à supposer qu’elle ressorte de la jurisprudence nationale en question, ne permet pas de tirer la même conclusion en ce qui concerne le mot « often » (point 85).
Même si, en principe, il est loisible de tenir compte des décisions des tribunaux nationaux et des autorités nationales, ces décisions doivent être examinées avec tout le soin requis et de manière diligente (arrêt du 15 juillet 2011, T-108/08 « Good Life », point 23). En règle générale, la prise en considération d’une telle décision nécessitera la présentation d’informations suffisantes, en particulier en ce qui concerne les faits sur lesquels se fonde la décision. Leur valeur indicative sera par conséquent limitée aux rares cas dans lesquels le contexte factuel et juridique de l’affaire a été entièrement présenté au cours de la procédure d’opposition et s’avère déterminant, clair et non contesté par les parties.
Les directives ci-dessus ne portent pas préjudice aux effets des arrêts des tribunaux de marques communautaires traitant des demandes reconventionnelles en déchéances ou en nullité de MCs.
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6. Arguments non pertinents pour l’appréciation du risque de confusion
6.1. Stratégies de commercialisation spécifiques
L’examen du risque de confusion réalisé par l’Office est un examen prospectif. Contrairement à ce qui se passe pour les cas de contrefaçon de marques – les tribunaux examinant alors les circonstances spécifiques dans lesquelles les faits particuliers et la nature spécifique de l’usage de la marque sont déterminants –, les délibérations de l’Office sur le risque de confusion s’effectuent d’une manière plus abstraite.
Pour cette raison, les stratégies de commercialisation spécifiques ne sont pas pertinentes. L’Office doit prendre comme référence les modalités habituelles de commercialisation des produits couverts par les marques, autrement dit, les modalités habituellement attendues pour la catégorie de produits couverts par les marques. Les modalités particulières selon lesquelles les produits couverts par les marques sont réellement commercialisés n’ont, en principe, aucune incidence sur l’appréciation du risque de confusion car elles peuvent varier dans le temps et selon la volonté des titulaires des marques (arrêt du 15 mars 2007, C-171/06 P, « Quantum », point 59 ; arrêt du 22 mars 2012, C-354/11 P, « G », point 73 ; arrêt du 21 juin 2012, T-276/09, « Yakut », point 58).
Par exemple, le fait qu’une partie offre à la vente ses produits de consommation courante (vins) à des prix plus élevés que ses concurrents est un facteur de commercialisation purement subjectif qui, en tant que tel, n’est pas pertinent pour l’appréciation du risque de confusion (arrêt du 14 novembre 2007, T-101/06, « Castell del Remei ODA », point 52).
6.2. Renommée de la marque communautaire demandée
Les demandeurs prétendent parfois qu’il n’y aura aucun risque de confusion avec la marque antérieure car la marque communautaire demandée jouit d’une renommée. Un tel argument ne peut être retenu, car le droit à une marque communautaire prend naissance à compter de la date de dépôt de la demande de marque et non auparavant, et c’est à partir de cette date qu’il convient d’examiner ce droit dans le cadre d’une procédure d’opposition. Dès lors, pour déterminer si la marque communautaire tombe ou non sous le coup d’un motif relatif de refus, les événements ou les faits qui se sont produits avant la date de dépôt de ladite marque sont dénués de pertinence parce que les droits de l’opposant, dans la mesure où ils précèdent la marque communautaire, sont antérieurs à la marque communautaire du demandeur.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 2
DOUBLE IDENTITÉ ET RISQUE DE CONFUSION
CHAPITRE 8
APPRÉCIATION GLOBALE
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Table des matières 1 Introduction ................................................................................................ 3
1.1 Nature de l'appréciation globale ..................................................................... 3
2 Principe d'interdépendance.......................................................................3 3 Souvenir imparfait ...................................................................................... 4 4 Impact du mode d'achat de produits et services .....................................4
4.1 Similitude visuelle ........................................................................................... 5 4.2 Similitude auditive........................................................................................... 7 4.3 Conclusion ...................................................................................................... 9
5 Impact de la similitude conceptuelle des signes sur le risque de confusion ....................................................................................................9
6 Impact des éléments à faible caractère distinctif ou dépourvus de caractère distinctif sur le risque de confusion....................................... 10 6.1 Éléments communs faiblement distinctifs .................................................... 11 6.2. Éléments communs dépourvus de caractère distinctif ................................. 12
7 Cas particuliers ........................................................................................ 13 7.1 Signes courts ................................................................................................ 13 7.2 Prénoms/noms de famille ............................................................................. 19
7.2.1 Prénoms....................................................................................................19 7.2.2 Noms commerciaux associés à d'autres éléments....................................20 .2.3 Prénoms et noms de famille ......................................................................20
7.3 Début de marques ........................................................................................ 25 7.4 Signes composés ......................................................................................... 27
7.4.1 Signes comportant des éléments figuratifs et verbaux ..............................27 7.4.2 Signes verbaux “en plusieurs parties” .......................................................33
7.5. Marques de couleur en tant que telle ........................................................... 38
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1 Introduction
1.1 Nature de l'appréciation globale
Un risque de confusion (y compris un risque d'association) existe s'il y a un risque que le public puisse croire que les produits ou les services en cause, dans l'hypothèse où ils portent les marques en question, proviennent de la même entreprise ou, le cas échéant, d'entreprises liées économiquement. Il suffit qu'une partie significative du public pertinent des produits ou des services en cause puisse confondre leur origine. Il n'est dès lors pas nécessaire d'établir qu’il existe un risque de confusion dans l’esprit de tous les consommateurs effectifs ou potentiels des produits ou des services concernés.
La Cour a déclaré que le risque de confusion doit être apprécié globalement en tenant compte de tous les facteurs pertinents du cas d'espèce; cette appréciation dépend de nombreux éléments et notamment, du degré de reconnaissance de la marque sur le marché, de l'association que le public pourrait faire entre les deux marques et du degré de similitude entre les signes, ainsi qu’entre les produits et services (voir l’arrêt du 11/11/1997, “Sabèl”, C-251/95, point 22).
La Cour a également jugé que l'appréciation globale doit, en ce qui concerne la similitude visuelle, auditive ou conceptuelle des marques en cause, être fondée sur l'impression d'ensemble produite par les marques, en tenant compte, notamment, des éléments distinctifs et dominants de celles-ci (voir l’arrêt du 11/11/1997, “SABEL”, C-251/95, point 23).
L'Office examine normalement les facteurs les plus saillants et généralement pertinents relatifs au risque de confusion sous des rubriques distinctes1 avant la section consacrée à l'appréciation globale. Toutefois, l'appréciation globale peut inclure et mettre en balance de nombreux autres facteurs pertinents pour la prise de décision concernant le risque de confusion.
2 Principe d'interdépendance
La Cour a établi le principe essentiel selon lequel l'appréciation du risque de confusion implique une certaine interdépendance entre les facteurs pris en compte, et notamment la similitude des marques et celle des produits ou des services désignés. Ainsi, un faible degré de similitude entre les produits ou services désignés peut être compensé par un degré élevé de similitude entre les marques, et inversement (voir l’arrêt du 29/09/1998, “Canon”, C-39/97, point 17). Ce principe d'interdépendance s'avère crucial pour l'analyse du risque de confusion.
L'interdépendance entre ces facteurs trouve son expression au huitième considérant du préambule du RMC, selon lequel il y a lieu d'interpréter la notion de similitude en relation avec le risque de confusion, dont l'appréciation dépend de nombreux facteurs, notamment, de la connaissance de la marque sur le marché, de l'association qui peut en être faite avec le signe utilisé ou enregistré, du degré de similitude entre la marque
1 i) Similitude des produits et des services; ii) similitude des signes; iii) éléments distinctifs et dominants des signes en conflit; iv) caractère distinctif de la marque antérieure; v) public pertinent et niveau d'attention.
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et le signe ainsi qu'entre les produits ou les services désignés (voir l’arrêt du 10/09/2008, “CAPIO”, T-325/06, point 72 et la jurisprudence citée). L'exigence d'une appréciation globale et le principe d'interdépendance signifient que dès lors qu'il existe au moins un certain degré de similitude entre les signes et les produits/services concernés, il y a une appréciation du risque de confusion sous la forme d’un processus itératif tenant compte de tous les facteurs pertinents. Ce processus est mis en œuvre dans la section Appréciation globale.
En d'autres termes, dans la pratique, l'Office apprécie, entre autres, le degré de similitude entre les produits et les services ainsi que le niveau d'attention que le public pertinent porte à ces produits et services, le degré de similitude entre les signes et la question de savoir si l'impression produite par l'un quelconque des niveaux de comparaison (visuelle/auditive/conceptuelle) est plus importante. L’Office examine également si la similitude entre les signes est attribuable à un élément identique ou similaire, et si cet élément est dominant et/ou distinctif, s'il existe des éléments dominants et/ou distinctifs supplémentaires qui pourraient neutraliser les similitudes et si la marque antérieure présente un caractère distinctif élevé.
En outre, les facteurs évalués dans la section Appréciation globale varient selon les circonstances. Par exemple, s’il est évident que les produits et/ou services et les signes sont fortement similaires ou identiques, l'Office peut conclure qu’il y existe un risque de confusion sans évaluer tous les facteurs (comme le caractère distinctif élevé, la famille de marques, etc.).
Il convient de souligner qu'il n'est pas possible de définir de manière abstraite si un facteur a plus de poids qu'un autre dans la mesure où le degré d’importance relative de ces facteurs varie selon les circonstances. Par exemple, le degré de similitude visuelle peut prévaloir en ce qui concerne des produits qui sont habituellement examinés visuellement, tandis que le degré de similitude auditif est peut-être plus pertinent pour les produits que l’on commande généralement oralement.
3 Souvenir imparfait
Bien que le consommateur moyen de la catégorie de produits concernée soit censé être normalement informé et raisonnablement attentif et avisé, il est tenu compte du fait que le consommateur moyen n'a que rarement la possibilité de procéder à une comparaison directe des différentes marques mais doit se fier à l'image non parfaite qu'il en a gardée en mémoire. Il échet également de prendre en considération le fait que le niveau d'attention du consommateur moyen est susceptible de varier en fonction de la catégorie de produits ou services en cause (voir l’arrêt du 22/06/1999, “Lloyd Schuhfabrik Meyer”, C-342/97, point 26).
4 Impact du mode d'achat de produits et services
La Cour a retenu que, afin d'évaluer l'importance attachée au degré de similitude visuelle, auditive et conceptuelle entre les signes, il convient de tenir compte de la catégorie des produits ou services en cause et des conditions dans lesquelles ils sont commercialisés (voir l’arrêt du 22/09/1999, “Lloyd Schuhfabrik Meyer”, C-342/97, point 27).
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La catégorie de produits et de services concernés peut accroître l'importance de l'un des différents aspects de similitude entre les signes (visuelle, phonétique et conceptuelle) en raison des modalités de commande et/ou d'achat des produits et des services. Une similitude auditive ou conceptuelle entre les signes peut présenter une importance moindre dans le cas de produits et de services qui sont habituellement examinés visuellement ou peuvent être essayés avant leur achat. Dans pareils cas, l'impression visuelle des signes revêt davantage d’importance dans l'appréciation du risque de confusion.
Toutefois, il convient de souligner que, comme pour tous les facteurs pertinents quant à l’appréciation du risque de confusion, ces facteurs sont interdépendants et chaque ensemble de circonstances doit être examiné au cas par cas. Dès lors, aucune règle générale ne doit être appliquée aux catégories plus générales de produits ou de services.
4.1 Similitude visuelle
L’habillement constitue un bon exemple de secteur dans le cadre duquel la similitude visuelle est susceptible de jouer un rôle plus important – mais non exclusif – dans le cadre de l'appréciation globale du risque de confusion. Généralement, dans les magasins de vêtements, les clients peuvent soit choisir eux-mêmes les vêtements qu’ils souhaitent acheter, soit se faire assister par les vendeurs du magasin. Si une communication orale concernant le produit et la marque n’est pas exclue, le choix du vêtement se fait, généralement, de manière visuelle. Partant, la perception visuelle des marques en cause aura lieu généralement avant l’acte d’achat. L’aspect visuel revêt dès lors plus d’importance dans l’appréciation globale du risque de confusion (voir l’arrêt du 14/10/2003, “Bass”, T-292/01, point 55; l’arrêt du 06/10/2004, affaires jointes “NLSPORT”, T-117/03, T-119/03 et T-171/03, point 50; l’arrêt du 18/05/2011, “McKENZIE”, T-502/07, point 50; et l’arrêt du 24/01/2012, “B”, C-593/10, point 47). Le Tribunal a tenu compte de ces considérations lorsqu’il a conclu à l'absence d’un risque de confusion entre les marques ci-dessous pour, entre autres, certains produits de la classe 25:
Signe antérieur Signe contesté Affaire n°
McKENZIE
T-502/07
T-593/10
Les mêmes considérations ont joué un rôle clé pour conclure à l’existence d’un risque de confusion dans les affaires suivantes:
Signe antérieur Signe contesté Affaire n°
ICEBERG ICEBREAKER T-112/09
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R 1050/2008-4
PETER STORM PEERSTORM T-30/09
T-376/09
Toutefois, le fait d’accorder une attention supérieure à la perception visuelle ne signifie pas que les éléments verbaux identiques peuvent être négligés au motif de la présence d'éléments figuratifs frappants, ainsi que cela ressort du cas ci-dessous où le risque de confusion a été établi:
Signe antérieur Signe contesté Affaire n°
FISHBONE T-415/09(recours rejeté C-621/11P)
De même, l'impression visuelle des marques désignant des “jeux vidéo” a également été jugée particulièrement pertinente, étant donné que ces produits sont normalement achetés après un examen exhaustif de leurs spécifications et de leurs caractéristiques techniques respectives, d'abord sur la base des informations figurant dans des catalogues spécialisés ou sur internet, puis dans les points de vente. Pour ces raisons, les différences visuelles ont joué un rôle clé pour motiver la conclusion d’une absence de risque de confusion dans l’affaire ci-dessous (voir l’arrêt du 08/09/2011, “Metronia”, T-525/09, points 38 à 47):
Signe antérieur Signe contesté Affaire n°
T-525/09
La similitude visuelle entre les signes peut également avoir une importance accrue lorsque les produits sont des produits de consommation ordinaires le plus souvent achetés dans des supermarchés ou des établissements dans lesquels les produits sont exposés sur des rayonnages et où les consommateurs sont davantage guidés par l'impact visuel de la marque qu'ils recherchent. Par conséquent, pour ces produits, les différences visuelles ont joué un rôle crucial, au Royaume-Uni, pour motiver la conclusion d’une absence de risque de confusion entre les marques ci-dessous.
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Signe antérieur Signe contesté Affaire n°
EGLÉFRUIT T-488/07
Toutefois, le principe de portée générale énoncé ci-dessus ne signifie pas que l'impression phonétique peut être négligée pour les produits qui sont habituellement achetés après un examen visuel. Ce dernier point a été mis en exergue dans une affaire opposant les marques ci-dessous, dans laquelle le Tribunal, confirmant la constatation d’un risque de confusion, a retenu que, bien que les ordinateurs et accessoires informatiques soient vendus aux consommateurs tels que ceux-ci les voient sur les rayonnages des zones de libre-service, l'identité phonétique entre les marques en cause était, en l'espèce, au moins aussi importante que leur similitude visuelle, étant donné qu'une discussion orale quant aux caractéristiques des produits et à leur marque était également susceptible d'avoir lieu au moment de l'achat. En outre, la publicité de ces produits pourrait être faite oralement, à la radio ou par d'autres consommateurs:
Signe antérieur Signe contesté Affaire n°
CMORE T-501/08
4.2 Similitude auditive
Contrairement aux affaires ci-dessus où la similitude visuelle a joué un rôle plus important, la similitude phonétique peut peser davantage que la similitude visuelle lorsque les produits en cause sont d’ordinaire commandés oralement. Le Tribunal a tenu compte de cette considération lorsqu’il a conclu à l’existence d’un risque de confusion dans l'affaire ci-dessous, laquelle portait sur des services de location de véhicules et des services associés, qui sont recommandés et choisis oralement dans un nombre important de cas.
Signe antérieur Signe contesté Affaire n°
CICAR ZIPCAR T-36/07
Lorsque les produits sont commandés oralement, la perception phonétique du signe peut également être influencée par des facteurs tels que la présence probable de divers autres sons perçus au même moment par la personne recevant la commande. Ces considérations sont pertinentes dès lors que les produits en cause sont généralement commandés dans des points de vente se caractérisant par un niveau sonore ambiant élevé, tels que des bars ou des boîtes de nuit. Dans de tels cas, il peut s’avérer approprié d'accorder une importance particulière à la similitude
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phonétique entre les signes en cause. Le Tribunal a tenu compte de ces considérations lorsqu’il a conclu à l’existence d'un risque de confusion entre les marques ci-dessous pour certains produits de la classe 33 (voir l’arrêt du 15/01/2003, “Mystery”, T-99/01, point 48).
Signe antérieur Signe contesté Affaire n°
MIXERY T-99/01
De même, le fait que des produits sont commandés d’une façon particulière ou selon des modalités ancrées dans les habitudes peut conduire à ce qu’une importance accrue soit accordée à la similitude phonétique entre les signes. Par exemple, le Tribunal a jugé que, dans le secteur des vins, les consommateurs de vins les désignent et les reconnaissent habituellement sur la base de l'élément verbal qui les identifie, en particulier dans les bars ou les restaurants, où les vins sont commandés oralement après que leur nom ait été lu sur la carte (voir l’arrêt du 23/11/2010, “Artesa Napa Valley”, T-35/08, point 62; l’arrêt du 13/07/2005, “Julián Murúa Entrena”, T-40/03, point 56; et l’arrêt du 12/03/2008, “Coto d'Arcis”, T-332/04, point 38). En conséquence, dans de tels cas, il peut s'avérer approprié d'accorder une importance particulière à la similitude phonétique entre les signes en cause. Le Tribunal a tenu compte de ces considérations lorsqu’il a conclu à l’existence d'un risque de confusion entre les marques de vin ci-dessous en dépit de leurs différences visuelles significatives.
Signe antérieur Signe contesté Affaire n°
MURÚA T-40/03
T-35/08
Toutefois, le principe de portée générale exposé ci-dessus ne signifie pas que l'impression visuelle peut être négligée lorsque les produits sont habituellement achetés oralement. En effet, le Tribunal a estimé que, bien qu’une importance prépondérante ait parfois été accordée à la perception phonétique de marques de boissons, les différences phonétiques entre les marques ne méritent pas que l'on y attache une importance particulière lorsque les boissons spécifiques font l’objet d’une large diffusion et sont vendues non seulement dans des magasins spécialisés, où elles
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sont commandées oralement, mais encore dans les grandes surfaces commerciales, où elles sont achetées après examen visuel (voir l’arrêt du 03/09/2010, “61 a nossa alegria”, T-472/08, point 106).
4.3 Conclusion
Les circonstances énoncées ci-dessus démontrent que l'Office devrait, dans certaines situations, accorder une importance privilégiée à la perception visuelle ou auditive de marques en fonction des modalités de commande ou d’achat des produits et des services en cause. Toutefois, même dans de tels cas de figure, les éléments visuels ou auditifs identiques ou fortement similaires ne sauraient être totalement négligés dans la mesure où tous les facteurs pertinents sont liés et interdépendants, et où il y a lieu d'examiner chaque ensemble de circonstances au cas par cas.
5 Impact de la similitude conceptuelle des signes sur le risque de confusion
Une similitude conceptuelle entre des signes présentant un contenu sémantique analogue peut engendrer un risque de confusion lorsque la marque antérieure est particulièrement distinctive, soit intrinsèquement, soit grâce à la notoriété dont elle jouit auprès du public (voir l’arrêt du 11/11/1997, “SABEL”, C251/95, point 24, où les signes partageaient le concept plus large de «félin bondissant», sans utiliser le même animal: un puma pour la marque antérieure et un guépard pour la marque contestée).
Toutefois, exceptionnellement, lorsque les signes ont le même concept distinctif en commun accompagné de similitudes visuelles entre les signes, cela peut conduire à un risque de confusion, même en l’absence d’un caractère distinctif particulièrement marqué de la marque antérieure (soit intrinsèquement, soit en raison de sa renommée sur le marché), comme l’illustre l’exemple suivant:
Signe antérieur Signe contesté Affaire n°
Affaires jointes T-81/03, T-82/03 et T-103/03
Produits et services: Classes 32, 33 Territoire: Espagne (où «venado» signifie «cerf») Appréciation: Le Tribunal a estimé que les signes partageaient le même concept et qu’il y avait une similitude visuelle significative. En l’absence d’un lien sémantique clair entre un cerf ou la tête d’un cerf et des boissons alcoolisées ou non alcoolisées, le Tribunal a conclu qu’il était impossible de nier que le concept d’une tête de cerf représentée de face à l’intérieur d’un cercle jouissait au minimum d’un caractère distinctif moyen pour la désignation de boissons (point 110.). Il n’a cependant pas reconnu de caractère distinctif élevé. (risque de confusion pour le public espagnol).
Une similitude sur le plan conceptuel entre les signes peut être insuffisante pour l’emporter sur les différences visuelles et phonétiques, lorsque le concept en commun n’est pas distinctif:
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Signe antérieur Signe contesté Affaire n°
K2 SPORTS T-54/12
Produits et services: Classes 18, 25, 28 Territoire: Allemagne et Royaume-Uni Appréciation: Contrairement à la conclusion de la chambre de recours selon laquelle il n'y a pas de similitude conceptuelle, le terme “sport”, en dépit de son caractère descriptif, renvoie au même concept et permet de conclure à un certain degré de similitude conceptuelle. Le Tribunal a conclu que cette similitude restait faible dans le cadre de l'impression d'ensemble des signes et en particulier du très faible caractère distinctif de ce terme. Toutefois, la faible similitude constatée sur le plan conceptuel n'a pas permis de neutraliser les différences importantes entre les signes sur les plans visuel et phonétique (point 49) (absence de risque de confusion).
La différence sur le plan conceptuel entre les signes peut être insuffisante pour neutraliser les similitudes visuelles et phonétiques:
Signe antérieur Signe contesté Affaire n°
MUNDICOLOR MUNDICOR Affaires jointes T-183/02 etT-184/02
Produits et services: Classe 2 Territoire: Espagne Appréciation: Bien que «MUNDICOLOR» évoque dans une certaine mesure «des couleurs du monde» ou «le monde en couleurs» au public espagnol, ce nom ne peut pas être considéré comme ayant une signification claire et spécifique. Dans la marque demandée, le même préfixe est accompagné du suffixe «cor», un terme n’ayant aucune signification en espagnol. Dès lors, en dépit du caractère évocateur du préfixe «mundi» (monde), ce dernier est finalement dépourvu de concept pour ce public. Aucun des signes n’ayant une signification claire et spécifique susceptible d’être comprise immédiatement par le public, toute différence conceptuelle entre ceux-ci n’est pas de nature à neutraliser leurs similitudes visuelles et auditives (points 90-99) (risque de confusion).
La conclusion selon laquelle il existe une similitude conceptuelle doit donc être suivie d'une appréciation minutieuse du caractère distinctif intrinsèque et du caractère distinctif acquis de la marque antérieure.
6 Impact des éléments à faible caractère distinctif ou dépourvus de caractère distinctif sur le risque de confusion
Lors de l’appréciation du risque de confusion, il est procédé à une analyse destinée à déterminer si les composants communs revêtent un caractère descriptif, allusif ou tout autre caractère distinctif faible afin d’évaluer dans quelle mesure lesdits composants communs sont susceptibles d’indiquer l’origine commerciale. Il peut s’avérer plus difficile d’établir la possibilité d’un risque de confusion dans l’esprit du public quant à l’origine des produits et/ou services sur la base de similitudes concernant uniquement des éléments à faible caractère distinctif ou dépourvus de caractère distinctif. .2
2 Voir les Directives relatives aux procédures devant l’Office, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 4, Caractère distinctif.
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L’Office et un certain nombre d’offices des marques de l’Union européenne ont convenu d’une pratique commune, dans le cadre du réseau des marques, dessins et modèles, en ce qui concerne l’impact des éléments à faible caractère distinctif ou dépourvus de caractère distinctif sur la constatation d’un risque de confusion.
6.1 Éléments communs faiblement distinctifs
Conformément à la pratique commune, lorsque les marques ont en commun un élément faiblement distinctif, l’appréciation du risque de confusion mettra l’accent sur l’impact des éléments non coïncidents sur l’impression d’ensemble suscitée par les marques. Cette appréciation tiendra compte des similitudes/différences et du caractère distinctif des éléments non coïncidents.
La présence commune d’un élément faiblement distinctif ne conduira pas, en principe, en tant que telle, à reconnaître un risque de confusion. Cependant, il peut y avoir un risque de confusion si les autres éléments ont un degré de caractère distinctif inférieur (ou aussi faible) ou ont un impact visuel insignifiant et si l’impression d’ensemble suscitée par les marques est similaire. Il peut également y avoir un risque de confusion si l’impression d’ensemble suscitée par les marques est hautement similaire, voire identique.
Dans les exemples ci-après, convenus dans le cadre de la pratique commune, l’élément ou les éléments commun(s) est/sont considéré(s) comme possédant un faible caractère distinctif3:
Marque antérieure Marque contestée Produits/services Résultat
MORELUX INLUX Classe 44: soins debeauté Pas de risque de
confusion
DURALUX VITALUX Classe 44: soins debeauté Pas de risque de
confusion
Classe 32: jus de fruits Pas de risque deconfusion
Classe 9: cartes de crédit Pas de risque deconfusion
Classe 32: jus de fruits Pas de risque deconfusion
3 Aux fins de la pratique commune, tous les autres facteurs susceptibles d’être pertinents dans l’appréciation globale du risque de confusion sont réputés ne pas influer sur le résultat. En outre, il est considéré que les produits et services sont identiques.
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Classe 30: thé Pas de risque deconfusion
Classe 9: cartes de crédit Pas de risque deconfusion
COSMEGLOW COSMESHOW Classe 3: cosmétiques Risque deconfusion
Classe 11: appareils de réfrigération
Risque de confusion
Classe 43: hébergement temporaire
Risque de confusion
6.2. Éléments communs dépourvus de caractère distinctif
Conformément à la pratique commune, lorsque les marques ont en commun un élément dépourvu de caractère distinctif, l’appréciation du risque de confusion mettra l’accent sur l’impact des éléments non coïncidents sur l’impression d’ensemble suscitée par les marques. Cette appréciation tiendra compte des similitudes/différences et du caractère distinctif des éléments non coïncidents.
La seule présence commune d’éléments dépourvus de tout caractère distinctif n’entraîne pas la reconnaissance d’un risque de confusion. Cependant, lorsque des marques contiennent également d'autres éléments figuratifs et/ou verbaux similaires, un risque de confusion sera reconnu si l’Impression d’ensemble suscitée par les marques est hautement similaire, voire identique.
Dans les exemples ci-après, convenus dans le cadre de la pratique commune, l’élément ou les éléments commun(s) est/sont considéré(s) comme dépourvus de caractère distinctif4:
4.Aux fins de la pratique commune, tous les autres facteurs susceptibles d’être pertinents dans l’appréciation globale du risque de confusion sont réputés ne pas influer sur le résultat. En outre, il est considéré que les produits et services sont identiques.
Marque antérieure Marque contestée Produits/services Résultat
GREENGRO GREENFLUX
Classe 19: matériaux de construction Classe 37:
construction
Pas de risque de confusion
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7 Cas particuliers
7.1 Signes courts
Comme ceci a déjà été indiqué dans ce chapitre, la Cour a retenu que le risque de confusion doit être apprécié globalement, en tenant compte de tous les facteurs pertinents du cas d’espèce, notamment le degré de similitude entre les signes. La Cour a également précisé que l’appréciation globale doit, en ce qui concerne la similitude visuelle, auditive ou conceptuelle des marques en cause, être fondée sur l’impression d’ensemble produite par les marques.
La longueur des signes peut avoir une incidence sur l’impression d’ensemble et, partant, sur l’impact des différences entre les signes. En principe, plus un signe est court, plus le public sera à même de percevoir tous ses divers éléments. En revanche, le public se rend généralement moins compte des différences entre des signes plus longs. Cependant, chaque cas doit être apprécié sur la base de ses caractéristiques propres, en tenant compte de tous les facteurs pertinents.
La Cour n’a pas exactement défini ce qu’est un signe court. Néanmoins, les signes consistant en trois lettres ou trois chiffres ou moins sont considérés comme des signes
BUILDGRO BUILDFLUX
Classe 19: matériaux de construction Classe 37:
construction
Pas de risque de confusion
Classe 9: téléphones portables
Pas de risque de confusion
Classe 36: services financiers
Pas de risque de confusion
Classe 29: poisson Pas de risquede confusion
CRE-ART PRE-ART Classe 41: activités culturelles (galerie
d’art)
Risque de confusion
TRADENERGY TRACENERGY
Classe 9: collecteurs d’énergie
solaire pour la génération d’électricité
Risque de confusion
Classe 9: collecteurs d’énergie
solaire pour la génération d’électricité
Risque de confusion
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courts par l’Office. Les paragraphes qui suivent analysent le risque de confusion dans le cas de signes composés d’une seule lettre ou d’un seul chiffre, de deux lettres ou de deux chiffres et de trois lettres ou de trois chiffres.
7.1.1 Signes composés d’une seule lettre ou d’un seul chiffre
Il y a lieu d’observer que le Tribunal a déclaré que l’appréciation globale du risque de confusion entre des signes consistant en une seule lettre (ou une combinaison de lettres non reconnaissables en tant que mot) suit les mêmes règles que celles concernant des signes verbaux comprenant un mot, un nom ou un terme fantaisiste (voir l’arrêt du 06/10/2004, NL SPORT, NL JEANS, NL ACTIVE, NL Collection, affaires jointes T-117/03, T-118/03, T-119/03 et T-171/03, points 47 et 48, et l’arrêt du 10/05/2011, G, T-187/10, point 49).
Dans l’appréciation du risque de confusion, il importe d’établir le degré de caractère distinctif intrinsèque de la marque antérieure et, partant, l’étendue de sa protection. Voir, à cet égard, les Directives, Partie C, Opposition, Chapitre 2, Identité et risque de confusion, Chapitre 4, Caractère distinctif, et la section spécifique consacrée aux signes courts.
S’agissant de l’appréciation globale du risque de confusion, la Cour a clairement indiqué que le fait que des marques composées d’une même lettre, ou d’une même série de lettres, soient identiques phonétiquement et conceptuellement n’est nullement dépourvu de pertinence dans l’examen de la similitude aux fins de l’appréciation du risque de confusion. Dans de tels cas, c’est uniquement quand la marque demandée se distingue suffisamment nettement, sur le plan visuel, de la marque antérieure que tout risque de confusion peut être totalement exclu (voir l’arrêt précité, G, T-187/10, point 60).
Par conséquent, tout risque de confusion peut être exclu sans risque d’erreur lorsque les deux signes en conflit, quoique consistant ou étant composés de la même lettre, sont stylisés de façon suffisamment différente ou contiennent un élément figuratif suffisamment différent pour que leurs représentations graphiques globales différentes éclipsent l’élément verbal commun.
Lorsque l’opposant a démontré avec succès que sa marque composée d’une seule lettre a acquis un caractère distinctif élevé en raison d’une utilisation intensive ou de sa renommée, l’impact sur le résultat final doit être évalué minutieusement. Tout d’abord, le caractère distinctif élevé de la part de la marque antérieure composée d’une seule lettre ne peut justifier une conclusion de risque de confusion si l’impression d’ensemble des signes sur le plan visuel est différente au point de pouvoir les distinguer sans risque. Deuxièmement, si les preuves indiquent l’utilisation d’une marque composée d’une seule lettre stylisée ou accompagnée d’éléments figuratifs supplémentaires, le bénéfice de l’étendue plus large de la protection en résultant est réservé à la forme dans laquelle elle a été utilisée, et non à la seule lettre en tant que telle ou à toute autre variation stylisée.
Dans les exemples suivants, il a été conclu à l’existence d’un risque de confusion en raison de la similitude entre les représentations graphiques générales des signes:
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Signe antérieur Signe contesté Affaire n°
T-115/02
P&S: Classes 9, 16, 25, 35, 41 Territoire: UE Appréciation: En tenant compte, d’une part, de la forte similitude entre les signes en conflit et, d’autre part, de la similitude entre les produits en cause, quoique faible s’agissant des chaussures et des vêtements, la chambre de recours a pu conclure, à juste titre, qu’il existait un risque de confusion dans l’esprit du public pertinent (point 27) (risque de confusion).
Signe antérieur Signe contesté Affaire n°
A R 1508/2010-2
P&S: Classes 9, 18, 24, 25, 28 Territoire: Allemagne Appréciation: Il y a lieu de supposer que la marque allemande antérieure possède le caractère distinctif requis pour bénéficier de la protection conférée par la marque. Les signes sont similaires et les produits sont identiques (paragraphes 18 et suivants) (risque de confusion)
Signe antérieur Signe contesté Affaire n° (i)
(ii) T-187/10 (pourvoi rejeté C-354/11 P)
P&S: Classes 9, 18, 25 Territoire: UE, Italie Appréciation: L’impression d’ensemble produite par les signes en conflit a été jugée similaire. Étant donné la similitude des signes, la renommée du signe antérieur en tant qu’abréviation de la marque Gucci et l’identité des produits, il a été conclu à l’existence d’un risque de confusion.
Par ailleurs, dans les exemples suivants, le risque de confusion a été écarté en raison de la stylisation différente ou des éléments graphiques différents des signes composés d’une seule lettre:
Signe antérieur Signe contesté Affaire n°
R 1655/2006-4
P&S: Classe 25 Territoire: Espagne Appréciation: La chambre a considéré que les consommateurs espagnols verraient la lettre “M” comme une référence à la taille d’un vêtement. Son caractère distinctif a été jugé faible (paragraphe 21) (absence de risque de confusion)
Signe antérieur Signe contesté Affaire n°
A T-174/10(pourvoi rejeté C-611/11 P)
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P&S: Classes 18, 25 Territoire: Allemagne Appréciation: Le Tribunal a conclu à l’absence de risque de confusion en raison de l’élément figuratif particulier de la marque contestée et du fait que le public ne prononcerait pas la marque contestée en raison de l’élément figuratif particulier (absence de risque de confusion)
Signe antérieur Signe contesté Affaire n°
F R 1418/2006-2
P&S: Classe 25 Territoire: UE Appréciation: La chambre a conclu que les différences visuelles entre les signes compensent l’identité des produits (paragraphe 26) (absence de risque de confusion)
Signe antérieur Signe contesté Affaire n°
R 576/2010-2 (confirmé par T-593/10)
P&S: Classes 25, 41, 43 Territoire: Allemagne Appréciation: La chambre a conclu que l’impression d’ensemble différente produite par les signes sur le plan visuel compense l’identité des produits (paragraphes 19 à 21) (absence de risque de confusion)
Enfin, il convient de préciser que la représentation verbale d’un “signe composé d’une seule lettre ou d’un seul chiffre” ne doit pas être considérée comme équivalente au signe (par exemple, “UN” n’est pas équivalent à “1” ou “EM” à “M”). Par conséquent, les arguments susmentionnés ne sont pas directement applicables dans ces cas5.
7.1.2 Signes composés de deux lettres ou de deux chiffres
À moins qu’en tant que telle, la combinaison de lettres ne soit intrinsèquement faible pour les produits et services concernés (par exemple, “XL” pour des produits de la classe 25), les signes composés de deux lettres ou de deux chiffres n’ont pas nécessairement un caractère distinctif faible. Il convient toutefois de tenir compte du fait que les consommateurs rencontrent souvent des abréviations et des combinaisons de lettres de tout type dans la vie quotidienne et dans la vie des affaires.
Les règles susmentionnées relatives aux marques composées d’une seule lettre ou d’un seul chiffre s’appliquent également aux signes composés de deux lettres ou de deux chiffres. De manière générale, il n’y aura pas de risque de confusion entre des signes composés de deux lettres ou de deux chiffres stylisés différemment ou consistant en des représentations graphiques différentes des mêmes lettres ou chiffres, pour autant qu’ils se distinguent suffisamment sur le plan visuel.
5 Voir les Directives, partie C, Opposition, section 2, Double identité et risque de confusion, chapitre 3,
Comparaison des signes.
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Par conséquent, tout risque de confusion peut être exclu sans risque d’erreur lorsque les deux signes en conflit, quoique consistant en ou étant composés de la même combinaison de deux lettres, sont stylisés de façon suffisamment différente ou contiennent un élément figuratif suffisamment différent pour que leurs représentations graphiques globales différentes éclipsent l’élément verbal commun.
Dans les exemples suivants, il a été conclu à l’existence d’un risque de confusion en raison de l’impression visuelle globale similaire produite par la même combinaison de deux lettres:
Signe antérieur Signe contesté Affaire n°
(i)
(ii) B 61 046
P&S: Classe 36 Territoire: Espagne Appréciation: Sur le plan visuel, l’impression d’ensemble des marques en conflit est qu’elles se composent de deux lettres dans une représentation figurative arbitraire produisant la même impression. Les marques sont considérées comme similaires et les services identiques (risque de confusion)
Signe antérieur Signe contesté Affaire n°
GE T-520/11
P&S: Classes 6, 7, 9. 11, 17 Territoire: Royaume-Uni Appréciation: Il ne peut pas être exclu qu’une partie du public pertinent interprétera la marque contestée comme étant la combinaison de lettres «GE» (points 33-35). Étant donné que les produits sont identiques et que les marques sont identiques sur le plan auditif et présentent une similitude visuelle moyenne, il existe un risque de confusion ne pouvant être exclu même pour un public informé ayant un niveau d’attention élevé (point 60) (risque de confusion).
Dans l’exemple suivant, aucun risque de confusion n’a été constaté en raison de la représentation graphique différente des mêmes lettres:
Signe antérieur Signe contesté Affaire n°
(i)
(ii) R 0082/2011-4
P&S: Classe 33 Territoire: UE Appréciation: L’élément graphique dans lequel les combinaisons de lettres apparaissent influence fortement la perception du consommateur. Le caractère distinctif des marques en conflit repose dans une large mesure sur leurs éléments graphiques respectifs (paragraphe 16) (absence de risque de confusion)
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Une différence d’une lettre aboutit normalement à une constatation d’absence de risque de confusion:
Signe antérieur Signe contesté Affaire n°
(i) CX
(ii) KX R 0864/2010-2
P&S: Classe 7 Territoire: UE Appréciation: En ce qui concerne l’impression d’ensemble et en application du principe de l’interdépendance, la chambre a confirmé que la différence au niveau de la première lettre suffit à exclure un risque de confusion dans l’esprit du public pertinent, compte tenu du fait que celui-ci est particulièrement attentif (paragraphe 28) (absence de risque de confusion)
Signe antérieur Signe contesté Affaire n°
KA T-486/07
P&S: Classes 9, 11, 12 Territoire: UE Appréciation: Alors que le consommateur pertinent n’a que rarement la possibilité de procéder à une comparaison directe entre les différents signes, mais doit se fier à l’image imparfaite qu’il en a gardée en mémoire, en l’espèce, étant donné les importantes différences visuelles entre les marques en question, le fait que les produits en cause sont généralement achetés après qu’ils ont été vus et le niveau d’attention élevé du consommateur pertinent, il y a lieu de considérer que ce dernier ne confondra pas les marques en cause malgré l’absence de comparaison directe entre les différentes marques (point 95) (absence de risque de confusion)
7.1.3 Signes composés de trois lettres ou de trois chiffres
Lorsque les signes en conflit sont des signes composés de trois lettres ou de trois chiffres, il semble qu’il y ait une tendance à constater l’existence d’un risque de confusion lorsque la seule différence tient à une lettre phonétiquement similaire, de sorte que l’impression d’ensemble produite par les signes demeure similaire.
Dans les affaires suivantes, l’existence d’un risque de confusion a été établie:
Signe antérieur Signe contesté Affaire n°
ELS T-388/00
P&S: Classes 16, 35, 41 Territoire: Allemagne Appréciation: Deux des trois lettres sont identiques et placées dans le même ordre; la différence d’une seule lettre ne constitue pas une différence significative sur les plans visuel et phonétique. Les lettres “E” et “I” en allemand sont prononcées de façon similaire (points 66 à 71) (risque de confusion)
Signe antérieur Signe contesté Affaire n°
Ran R.U.N. T-490/07
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P&S: Classes 35, 38, 42 Territoire: UE, Allemagne Appréciation: Le Tribunal a jugé que dans l’esprit des consommateurs pertinents ayant une bonne maîtrise de l’anglais, les signes en cause étaient similaires (point 55) et que, en raison de la similitude entre les signes et entre certains produits et services, il existait un risque de confusion dans l’esprit du public pertinent (point 71) (risque de confusion)
En revanche, dans les affaires suivantes, il a été conclu à l’absence de risque de confusion:
Signe antérieur Signe contesté Affaire n°
(i)
(ii)
(iii)
R 0393/1999-2
P&S: Classe 25 Territoire: Benelux, Allemagne, Espagne, France, Italie, Portugal, Autriche Appréciation: Lorsque des marques ne se composent que de trois lettres, dénuées de signification, la différence d’une lettre peut suffire à les rendre dissemblables, en particulier lorsque la première lettre est différente et que les marques en conflit contiennent des éléments figuratifs différents sur le plan visuel. En l’espèce, la prononciation des premières lettres des marques en cause, à savoir le “J” et le “T”, est différente dans toutes les langues pertinentes. Ces lettres sont aussi dissemblables sur le plan visuel. Par ailleurs, les éléments figuratifs des marques comparées ne se ressemblent pas (paragraphes 17 et 18) (absence de risque de confusion)
Signe antérieur Signe contesté Affaire n°
COR T-342/05
P&S: Classe 3 Territoire: Allemagne Appréciation: La grande chambre a jugé que les signes n’étaient que faiblement similaires sur le plan auditif (points 47 et 50). Le public pertinent en Allemagne remarquera certainement les différences dans le début des signes (absence de risque de confusion)
7.2 Prénoms/noms de famille
7.2.1 Prénoms
En principe, il n'y a pas de critères spécifiques à prendre en considération lors de l'appréciation du risque de confusion entre les prénoms. Toutefois, étant donné la nature même des prénoms et des noms de famille, il y a lieu d’examiner et de mettre en balance de façon minutieuse un certain nombre d'aspects qui (comme nous le
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verrons ci-dessous) entrent en ligne de compte, tels que le caractère courant ou non d'un prénom et/ou d'un nom de famille donné sur le territoire concerné.
7.2.2 Noms commerciaux associés à d'autres éléments
Lors de l'appréciation du risque de confusion relativement à des signes composés comportant plusieurs éléments verbaux, dont l'un pourrait être considéré comme étant un nom commercial, c’est-à-dire comme indiquant la société “exploitant” la marque, une appréciation globale doit être réalisée afin d'identifier l'élément qui joue le rôle de marque des produits et des services concernés. Les facteurs dont il faut tenir compte incluent le caractère distinctif de chaque élément ainsi que la taille et/ou l'espace qu'ils occupent dans une marque figurative, lesquels déterminent l'élément dominant des signes en conflit.
Si le nom commercial n'est pas l'élément dominant, bien que chacun des éléments qui composent le signe soit susceptible d'avoir son propre rôle distinctif autonome, les consommateurs sont susceptibles de se focaliser davantage sur l'élément qui serait considéré comme identifiant la gamme de produits spécifique plutôt que sur l'élément qui serait perçu (du fait qu'il est précédé du terme “by” (“par”) ou de tout autre terme équivalent) comme identifiant soit l'entreprise propriétaire des produits concernés, soit le concepteur à l'origine de la gamme de produits.
Par conséquent, chaque fois qu'il existe un degré suffisant de similitude entre l'élément qui serait perçu comme la marque et un signe en conflit, il y aura, en principe, un risque de confusion (sous réserve que d'autres facteurs pertinents soient présents).
Signe antérieur Signe contesté Affaire n°
T-43/05
Produits et services: Classe 25 Territoire: Danemark, Finlande, Suède Appréciation: L'élément “by CAMPER” sera perçu comme secondaire, notamment en raison du fait que le public pertinent le percevra comme une simple indication de l’entreprise produisant les produits en cause. Partant, le consommateur pertinent focalisera son attention sur le terme “BROTHERS” et pourrait attribuer une origine commune aux produits concernés (points 65 et 86) (risque de confusion).
7.2.3 Prénoms et noms de famille
La perception des signes constitués de noms de personne peut varier dans les différents pays de l'Union européenne. Les noms de famille ont, en principe, une valeur intrinsèque supérieure à celle des prénoms en tant qu’indicateurs de l'origine des produits ou des services. Il en est ainsi parce que l'expérience commune démontre que les mêmes prénoms peuvent appartenir à un grand nombre de personnes qui n'ont rien en commun, alors que la présence du même nom de famille (sous réserve qu'il ne soit pas courant dans le territoire concerné) peut faire supposer l'existence d'un lien particulier entre eux (identité des personnes ou lien de parenté). Pour déterminer si, dans un pays déterminé, le public pertinent attribue généralement plus de caractère distinctif au nom de famille qu’au prénom, la jurisprudence de ce pays, bien qu’elle ne soit contraignante ni pour l'OHMI ni pour les instances communautaires, peut fournir des indications utiles (voir l’arrêt du 01/03/2005, “Enzo Fusco”, T-185/03, point 52).
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Il existe des cas où les demanderesses invoquent, comme moyen de défense, leur droit d'utiliser leur nom. Toutefois, ces arguments ne sont pas valables dans les procédures d'opposition, car ils n'influent pas sur la question de savoir s'il y aura un risque de confusion dans l'esprit du public. En outre, l'enregistrement des marques n'empêche pas l'utilisation des noms de personnes en raison de la protection spéciale prévue à l'article 12, point a), du RMC et dans les lois nationales pertinentes relatives aux marques conformément à l'article 6, paragraphe 1, point a) de la directive sur les marques.
Comparaison entre un prénom et un prénom identique ou de légères variantes dudit prénom
Selon la règle empirique, lorsque deux signes en conflit se composent exclusivement du même prénom, les consommateurs sont susceptibles de percevoir les produits/services similaires/identiques commercialisés sous ces marques comme ayant la même origine. Il ne fait aucun doute qu'en l'absence de tout élément de différenciation, le risque de confusion est la conclusion qui s'impose.
Signe antérieur Signe contesté Affaire n°
GIORDANO GIORDANO T-483/08
Produits et services: Classes 18, 25 Territoire: Portugal Appréciation: Les deux marques verbales en cause sont identiques, ce qui accroît le risque que les consommateurs puissent percevoir les produits commercialisés sous ces marques comme ayant la même origine. Par ailleurs, la demanderesse n'a pas démontré le caractère courant au Portugal du prénom italien “Giordano”, qui compose les deux marques (point 32) (risque de confusion).
Signe antérieur Signe contesté Affaire n°
ELISE T-130/09
Produits et services: Classes 9, 42 Territoire: Portugal Appréciation: Le Tribunal estime que, même si l'on ne peut affirmer avec certitude que le public pertinent de toute l'Union européenne percevra nécessairement les signes en cause comme étant des diminutifs propres au nom “Elizabeth”, le public pertinent les considérera certainement comme des noms féminins fortement similaires ayant la même racine. Dans certains États membres, notamment au Royaume-Uni, en Irlande, en Allemagne et en Autriche, ils seront certainement perçus par le public pertinent comme étant des diminutifs du prénom complet Elizabeth (point 36) (risque de confusion).
Signe antérieur Signe contesté Affaire n°
GISELA GISELE R 1515/2010-4
Produits et services: Classe 25 Territoire: UE Appréciation: Les marques comparées sont toutes deux des variantes du prénom féminin “Giselle”, qui a une origine ancienne tant en allemand qu’en français, et sont globalement très similaires, de telle sorte qu'un risque de confusion existe (paragraphes 14, 15 et 20) (risque de confusion).
Comparaison entre un prénom et un prénom identique associé à un nom de famille
Lorsque deux signes partagent le même prénom et que l'un des deux comporte également un nom de famille, et que le prénom est susceptible d'être perçu comme
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étant courant (et a fortiori comme très courant) dans le territoire concerné, la règle empirique veut qu'il y ait absence de risque de confusion, étant donné que les consommateurs seront conscients du fait qu’un grand nombre de personnes portent ce nom.
Signe antérieur Signe contesté Affaire n°
LAURA LAURA MERCIER R 0095/2000-2
Produits et services: Classe 3 Territoire: Espagne Appréciation: De l'avis de la chambre, le consommateur moyen espagnol qui connaît la marque “LAURA” pour des parfums ne confondra pas les marques. Sur le plan conceptuel, “LAURA” sera considéré comme un prénom courant en Espagne. Il est très improbable que le consommateur moyen espagnol en vienne à établir une association entre le nom “LAURA MERCIER”, moins générique, et “LAURA” (paragraphe 16) (absence de risque de confusion).
Une exception s'applique lorsqu’un prénom déterminé est susceptible d'être perçu comme rare dans le territoire concerné. Dans de tels cas, la présence de cet élément rare est susceptible d'attirer l'attention des consommateurs, lesquels pourraient être conduits à attribuer erronément une origine commune aux produits/services concernés.
Signe antérieur Signe contesté Affaire n°
AMANDA AMANDA SMITH R 1892/2007-2
Produits et services: Classes 29, 30 Territoire: Espagne Appréciation: Le terme “SMITH” dans la marque demandée sera perçu par les consommateurs espagnols comme un nom de famille anglo-saxon courant et aura moins de poids que le prénom “AMANDA” (lequel est moins courant en Espagne) (point 31) (risque de confusion).
Signe antérieur Signe contesté Affaire n°
ROSALIA ROSALIA DE CASTRO T-421/10
(pourvoi rejeté C-649/11P)
Produits et services: Classes 32, 33, 35 Territoire: Espagne Appréciation: Les signes sont visuellement et conceptuellement similaires, et très similaires sur le plan phonétique. Les produits sont identiques. Les services sont similaires. Ni le prénom “ROSALIA”, ni le nom de famille “DE CASTRO” ne sont courants en Espagne. Aucun des éléments n’a un caractère distinctif plus élevé que l'autre (points 50 et 51) (risque de confusion).
Une autre exception s'applique dans les cas où le public prendrait/utiliserait le prénom d'une personne célèbre comme nom complet et où les produits/services seraient liés au domaine d'activité de cette personne, ou dans les cas où la marque antérieure, uniquement composée d'un prénom, a acquis un caractère distinctif élevé.
Signe antérieur Signe contesté Affaire n°
KENZO KENZO TAKADA R 643/2003-1
Produits et services: Classes 3, 25, 42 Territoire: UE Appréciation: Le consommateur moyen, qui se souviendra du mot “KENZO”, lequel est particulièrement distinctif étant donné sa forte notoriété, aura tendance, lorsqu’il sera confronté à des produits ou à des services désignés par la marque “KENZO TAKADA”, à leur attribuer la même origine commerciale que celle des produits ou services vendus sous la marque “KENZO”. Ce risque est d'autant plus réel qu'il est courant, dans les secteurs de la mode, des cosmétiques et de la parfumerie, qu'une même marque soit
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utilisée selon différentes configurations en fonction du type de produit qu'elle désigne (p. 22) (risque de confusion).
Comparaison entre un prénom associé à un nom de famille et un prénom identique associé à un nom de famille différent
Lorsque deux signes en conflit comportent le même prénom, mais sont suivis de noms de famille nettement différents, la règle empirique veut qu'il y ait absence de risque de confusion. Les consommateurs se rendront compte qu'ils servent à faire la distinction entre des produits/services d'entreprises distinctes et sans lien entre elles.
Exemple fictif: “Michael Schumacher”/”Michael Ballack” (absence de risque de confusion).
Toutefois, lorsque l'impression d'ensemble produite par les signes est celle d’une similitude évidente, c’est-à-dire que les différences entre les signes sont dissipées dans la perception globale produite par les signes, l’application des critères habituels conduira à conclure à l’existence d’un risque de confusion.
Signe antérieur Signe contesté Affaire n°
(marque figurative Emidio Tucci)
T-8/03 et affaires jointes R 700/2000-4 et
R 746/2000-4 confirmées par C-104/05 P
Produits et services: Classes 3, 18, 24, 25 Territoire: Espagne Appréciation: Les deux marques consistent en l'association d'un prénom et d'un nom de famille, et donnent une impression d'ensemble similaire (risque de confusion).
Comparaison entre un prénom associé à un nom de famille et un prénom différent associé à un nom de famille identique
Lorsque les signes en conflit comportent le même nom de famille précédé de prénoms différents, le résultat dépendra considérablement de la perception du nom de famille dans le territoire concerné. Plus un nom de famille est rare, plus il est probable qu’il attire l'attention des consommateurs (indépendamment du fait que les prénoms soient courants ou non).
Signe antérieur Signe contesté Affaire n°
ANTONIO FUSCO ENZO FUSCO T-185/03
Produits et services: Classes 18, 25 Territoire: Italie Appréciation: Étant donné qu’il a été contesté que “Fusco” ne compte pas parmi les noms les plus communs en Italie, le Tribunal a considéré que comme le consommateur italien attribue généralement un caractère distinctif plus important au nom de famille qu’au prénom, il gardera à l’esprit le nom de famille “Fusco” (qui n’est ni rare ni commun), plutôt que les prénoms (communs) “Antonio” ou “Enzo”. Par conséquent, le consommateur confronté à un produit pourvu de la marque demandée, “ENZO FUSCO”, pourrait confondre celle-ci avec la marque antérieure, “ANTONIO FUSCO”, de telle sorte qu'il existe un risque de confusion (points 53 et 67) (risque de confusion).
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En revanche, lorsque deux marques comportent le même nom de famille et que celui- ci est susceptible d'être perçu comme courant (et a fortiori comme très courant) dans le territoire concerné, les consommateurs ne seront normalement pas amenés à attribuer à tort une origine commune aux produits/services concernés (voir l’arrêt du 01/03/2005, “Sissi Rossi”, T-169/03, points 82 et 83; l’arrêt du 24/06/2010, “Barbara Becker”, C-51/09 P, point 36). Les consommateurs sont habitués aux marques comportant des noms de famille courants et ne supposeront pas aveuglément que, chaque fois qu'un nom de famille courant apparaît dans deux signes en conflit, les produits/services en cause ont tous la même origine.
Signe antérieur Signe contesté Affaire n°
VITTORIO ROSSI R 0547/2010-2
Produits et services: Classes 18, 25 Territoire: UE Appréciation: Les consommateurs de l’Union sont non seulement conscients du fait que des personnes portent le même nom de famille sans être nécessairement voir de lien de parenté, mais seront également en mesure de faire la distinction, dans le domaine de la mode, entre le nom de famille italien “ROSSI” associé à un prénom déterminé et ce même nom de famille associé à un autre prénom (paragraphes 33 à 35) (absence de risque de confusion).
Comparaison entre un prénom associé à un nom de famille et un prénom différent associé à un nom de famille identique et écrit en un seul mot avec ce dernier.
Dans les cas où l'un des signes en conflit se compose d'un prénom et d'un nom de famille et que l'autre ne comporte qu'un seul mot qui sera toutefois décomposé en éléments distincts par au moins une partie du public pertinent, la présence reconnaissable d'un prénom et d'un nom de famille combinés pour former le mot unique composant ce signe, aura pour conséquence un risque de confusion lorsque l'impression d'ensemble produite par les marques sera une similitude.
Signe antérieur Signe contesté Affaire n°
PETER STORM Peerstorm T-30/09
Produits et services: Classe 25 Territoire: UE Appréciation: Les deux marques en cause sont constituées d'un prénom et d’un patronyme. En effet, s’agissant de l'élément “storm” contenu dans les deux marques en cause, il est constant que celui-ci peut constituer un patronyme. Les éléments “peer” et “peter” figurant respectivement dans la marque demandée et dans la marque antérieure sont des prénoms. Notamment dans les pays nordiques et en Allemagne, Peer est un prénom. Le fait que la marque demandée s’écrit en un seul mot ne saurait remettre en cause le constat selon lequel les deux marques en cause sont constituées d'un prénom et d'un patronyme (point 66) (risque de confusion).
Comparaison entre un nom de famille et un prénom associé à un nom de famille identique
Lorsque deux signes comportent le même nom de famille, mais que seul l'un d'entre eux comporte également un prénom, la règle empirique veut, en principe, qu'il y ait un risque de confusion. Les consommateurs pourraient être induits en erreur et attribuer une origine commune aux produits/services concernés. La présence d'un prénom dans l'un des signes en conflit ne suffira pas à établir une stricte distinction entre les signes
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dans l'esprit des consommateurs. Le nom de famille seul sera perçu comme la version courte du nom complet, ce qui conduira à l’attribution d’une origine commune.
Signe antérieur Signe contesté Affaire n°
MURÚA T-40/03
Produits et services: Classe 33 Territoire: Espagne Appréciation: Il est constant que le public espagnol percevra l'élément verbal composant la marque demandée comme étant un nom propre (prénom plus noms de famille) et la marque antérieure comme un nom de famille. Il est très probable que le public concerné ne verra dans l’adjonction du prénom “Julián” et du nom de famille “Entrena” dans la marque demandée que la façon de distinguer une gamme de vins provenant de l'entreprise titulaire de la marque antérieure ou, à tout le moins, d’une entreprise liée économiquement à l’intervenante (points 42 et 78) (risque de confusion).
Signes antérieurs Signe contesté Affaire n°
BRADLEY VERA BRADLEY R 1918/2010-1
Produits et services: Classe 11 Territoire: UE Appréciation: Le signe dont la protection est sollicitée pour la marque communautaire demandée se compose du terme “Vera Bradley”, qui sera probablement considéré comme le nom (prénom et nom de famille) d'une personne fictive ou réelle. Il est composé du prénom “VERA”, qui est un prénom de femme courant dans de nombreux pays de l'UE, par exemple en République tchèque, en Allemagne, en Irlande, aux Pays-Bas, en Autriche, en Slovénie et au Royaume-Uni, ainsi que du nom de famille “BRADLEY”, qui est un nom de famille anglais. Ce nom de famille n'est un nom de famille courant ni dans les pays anglophones, ni dans aucun autre pays de l'Union européenne. Même dans l’hypothèse où les consommateurs seraient en mesure de faire la distinction entre les signes en raison de l'élément “Vera”, lequel n'a aucun équivalent dans la marque antérieure, ils y verront une gamme de produits spécifique ou une forme développée de la marque. Par conséquent, les consommateurs pourraient croire que les marques appartiennent aux mêmes entreprises ou à des entreprises liées économiquement (paragraphes 36, 37 et 52) (risque de confusion).
7.3 Début de marques
Dans les signes verbaux, le consommateur prête généralement une plus grande attention à la première partie et s’en souviendra plus clairement que du reste du signe. Cela signifie que le début d'un signe influence en général grandement l'impression d’ensemble produite par la marque (voir l’arrêt du 15/12/2009, “Trubion”, T-412/08, point 40 et l’arrêt du 25/03/2009, “Spa Therapy”, T-109/07, point 30).
Néanmoins, la notion de “début du signe” est vague, dans la mesure où il n'est pas indiqué de façon particulière ce qui constitue le début du signe, ce qui en constitue la fin, voire s'il comprend ou non une partie intermédiaire. Encore une fois, cette perception dépend principalement des circonstances de l'espèce (longueur du signe, structure syllabique, utilisation de polices, etc.) et non d'une règle établie. Il se pourrait même qu'un signe soit perçu comme ayant un début court et une fin courte mais une partie intermédiaire ou centrale proportionnellement bien plus longue. Par conséquent, selon les circonstances, la règle du caractère prépondérant du début du signe pourrait avoir moins de poids, ce qui conférerait un caractère prédominant à la partie centrale.
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Étant donné que c'est généralement le début d'un signe qui accapare l'attention des consommateurs, la différence entre les signes est souvent insuffisante pour exclure toute similitude lorsque seules leurs terminaisons diffèrent. Toutefois, il ne s'agit pas d'une règle immuable, le résultat dépendant des circonstances de l'espèce. En outre, cette règle ne s'applique que lorsque le signe comporte un élément verbal (justifiant la lecture de gauche à droite) et que cet élément verbal n'est pas très court (à défaut de quoi, le signe sera immédiatement perçu dans son intégralité). Les signes très courts sont les signes constitués d'au plus trois lettres/chiffres (voir le paragraphe 6.1 ci- dessus).
Dans les exemples suivants, le risque de confusion a été établi:
Signe antérieur Signe contesté Affaire n°
ALENTIS ALENSYS R 1243/2010-1
Produits et services: Classe 42 Territoire: Espagne Appréciation: Les marques sont très similaires sur les plans visuel et phonétique, notamment parce que leurs quatre premières lettres “ALEN” sont identiques. Il est généralement admis que le public accorde davantage d'attention à la première partie d'une marque, du moins lorsqu'il perçoit la marque visuellement (paragraphe 33) (risque de confusion).
Signe antérieur Signe contesté Affaire n°
AZURIL AZULIB R 1543/2010-1
Produits et services: Classe 5 Territoire: Grèce Appréciation: Les signes ont en commun cinq lettres sur six et les deux premières syllabes sont identiques. Il y a un certain degré de similitude visuelle. Sur le plan auditif, les signes sont très similaires, étant donné que leur première partie, laquelle est normalement la plus importante, est identique. Aucun des deux signes n'a de signification en grec. La similitude des signes, conjuguée à l'identité ou à la similitude des “produits pharmaceutiques”, engendre la confusion (paragraphes 35 et 36) (risque de confusion).
Dans les exemples suivants, il a été conclu à l’absence de risque de confusion en dépit de débuts identiques. Dans certains de ces cas, les débuts identiques constituaient en fait un élément faible des signes; dans d'autres cas, en dépit de débuts identiques, les différences conceptuelles l'ont emporté sur les similitudes, entraînant une décision concluant à l'absence de risque de confusion.
Signe antérieur Signe contesté Affaire n°
CALSURA CALSORIN R 0484/2010-2
Produits et services: Classe 5 Territoire: UE Appréciation: L’élément “CALS” initial (évoquant le terme “calcium”) n’est pas particulièrement distinctif, mais doit être considéré comme un élément faible de la marque relativement aux produits en cause (paragraphe 24) (absence de risque de confusion).
Signe antérieur Signe contesté Affaire n°
NOBLESSE NOBLISSIMA R 1257/2010-4
Produits et services: Classe 30 Territoire: Danemark, Finlande, Suède Appréciation: Les signes diffèrent au niveau de la cinquième lettre et de leur terminaison. Ils présentent un degré moyen de similitude visuelle. Compte tenu de la longueur de la marque communautaire demandée, les signes diffèrent en termes de rythme et d'intonation et présentent de ce fait un faible degré de similitude auditive. Les signes antérieurs “NOBLESSE” ont une connotation bien marquée en
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Finlande et en Suède. Dans ces territoires, le mot “NOBLISSIMA” est dépourvu de toute signification. Ils sont par conséquent conceptuellement différents. Les marques antérieures sont de nature élogieuse et, dans une certaine mesure, descriptives des caractéristiques des produits “chocolat”, en ce sens qu’elles décrivent leur supériorité. Le caractère distinctif est inférieur à la moyenne. Compte tenu du faible niveau de similitude entre les produits “chocolat” et “glaces alimentaires” (classe 30), du faible niveau de similitude auditive et de la différence conceptuelle, il n'existe aucun risque de confusion (paragraphe 36) (absence de risque de confusion).
Signe antérieur Signe contesté Affaire n°
ALBUMAN ALBUNORM R 0489/2010-2
Produits et services: Classe 5 Territoire: UE Appréciation: Sur les plans visuel, phonétique et conceptuel, les signes sont similaires dans la mesure où ils ont en commun le préfixe “ALBU” (abréviation d'“albumine” ou d'“albumen”). Toutefois, cette similitude n'a que peu d'importance, étant donné que le préfixe est générique et donc dépourvu de caractère distinctif. Le deuxième élément de la marque antérieure, “MAN”, est, sur les plans visuel, phonétique et conceptuel, complètement différent du deuxième élément de la marque contestée, à savoir “NORM”. Étant donné que les consommateurs guidés par des professionnels du secteur médical sont censés être hautement attentifs et très bien informés, il n'existe aucun risque de confusion, même en ce qui concerne les produits identiques de la classe 5 (paragraphe 41) (absence de risque de confusion).
7.4 Signes composés
Pour les signes “composés” (signes comportant plus d'un élément, par exemple des éléments verbaux et figuratifs, des signes verbaux en plusieurs parties), la règle générale devrait consister à comparer ces signes dans leur intégralité, en tenant compte avant toute chose de l'impression d'ensemble qu'ils produisent. Le consommateur moyen perçoit normalement une marque comme un tout et ne se livre pas à un examen de ses différents détails (voir l’arrêt du 12/06/2007, “Limoncello”, C-334/05 P, point 35).
Cette règle s'applique dès lors qu'un signe ou l'un de ses éléments est inclus en tout ou partie dans l'autre signe:
... l’appréciation de la similitude entre deux marques ne peut se limiter à prendre en considération uniquement un composant d’une marque complexe et à le comparer avec une autre marque. Il y a lieu, au contraire, d’opérer la comparaison en examinant les marques en cause, considérées chacune dans son ensemble (“Limoncello”, C-334/05 P, point 41).
Il n’en reste pas moins que l'impression d'ensemble produite dans l'esprit du public pertinent par une marque complexe peut, dans certaines circonstances, être dominée par un ou plusieurs de ses éléments.
En outre, le caractère distinctif des éléments coïncidant/communs a un impact décisif sur la similitude des signes dans le cadre de l'appréciation générale du risque de confusion (pour plus de détails, voir le paragraphe 6 ci-dessus).
7.4.1 Signes comportant des éléments figuratifs et verbaux
Lorsque les signes sont constitués d’éléments à la fois verbaux et figuratifs, en principe l’élément verbal du signe a généralement davantage d’impact sur le consommateur que l'élément figuratif. Il en est ainsi car le public n'a pas tendance à examiner les
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signes et fera plus facilement référence aux signes en cause en citant leur élément verbal qu’en décrivant l’élément figuratif (voir l’arrêt du 14/07/2005, “Selenium-Ace”, T-312/03, point 37; la décision du 19/12/2011, “Best Tone”, R0233/2011-4, paragraphe 24; la décision du 13/12/2011, “Jumbo”, R 0053/2011-5, paragraphe 59).
Toutefois, l'élément verbal d'un signe n'a pas systématiquement davantage d'impact (voir l'arrêt du 31/01/2013, “K2 SPORTS”, T-54/12, point 40). L'impression visuelle produite par un signe peut jouer un rôle important dans la perception qu'en a le public pertinent, par exemple lorsque des produits de la classe 25 sont en cause.
Par ailleurs, le fait que l'élément verbal puisse avoir davantage d'impact est un aspect distinct de celui de la nature dominante. L'élément verbal d'un signe complexe n'est pas systématiquement dominant. Il s’agit d’un élément dominant s'il est visuellement remarquable.6
Par ailleurs, pour évaluer l'impact de l'élément verbal d'une marque complexe, il y a lieu de tenir compte du caractère distinctif de cet élément7.
Signes comportant des éléments verbaux identiques ou très similaires, ainsi que des éléments figuratifs différents
Il est en principe conclu à l’existence d’un risque de confusion lorsque les éléments verbaux sont identiques ou similaires et que l'élément figuratif n'a ni signification sémantique ni stylisation frappante. Dans ce scénario, l'élément figuratif sera considéré comme n'ayant pas une influence significative sur la manière dont le public pertinent perçoit le signe.
Dans les exemples suivants, un risque de confusion a été établi, étant donné que les éléments verbaux étaient identiques ou similaires et que les éléments figuratifs étaient faibles ou n’étaient pas particulièrement fantaisistes.
Signe antérieur Signe contesté Affaire n°
COTO DE IMAZ EL COTO
T-276/10 (procédure en nullité)
Produits et services: Classe 33 Territoire: UE Appréciation: Le Tribunal a estimé que l'élément figuratif du signe contesté était faiblement distinctif pour les produits concernés et qu'il ne revêtait pas, de ce fait, une grande importance dans l’appréciation d’ensemble du signe (point 45) (risque de confusion).
6 Voir les Directives, Opposition, partie 2: Double identité et risque de confusion, chapitre 5: Éléments
dominants. 7 Voir les Dispositions, Opposition, partie 2: Double identité et risque de confusion, chapitre 4: Caractère
distinctif.
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Signe antérieur Signe contesté Affaire n°
i)
ii) PUKKA T-483/10
Produits et services: Classe 18 Territoire: Espagne, Union européenne Appréciation: Les éléments figuratifs de la marque communautaire antérieure, à savoir, l'ovale et la forme géométrique rappelant vaguement une étoile à cinq branches qui lui est superposée, ne véhiculent aucun contenu conceptuel identifiable. Par conséquent, il est peu probable que ces éléments figuratifs retiennent l'attention du consommateur pertinent. En revanche, si l'élément verbal ne véhicule pas, lui non plus, de contenu conceptuel, il n’en reste pas moins qu'il peut être lu et prononcé et qu'il est, dès lors, susceptible d'être retenu par les consommateurs. Partant, l'élément verbal de la marque communautaire antérieure doit être considéré comme dominant l'impression visuelle de cette marque (point 47) (risque de confusion).
En revanche, lorsque les éléments verbaux communs sont aussi peu voire moins distinctifs que les éléments figuratifs, les différences dans les éléments figuratifs peuvent faire pencher la balance en faveur du constat d'une absence de risque de confusion:
Signe antérieur Signe contesté Affaire n°
T-60/11
Produits et services: Classes 30, 31, 42 Territoire: UE Appréciation: L'élément verbal “premium” ne permet pas, en l’espèce, de conclure à l’existence d’un risque de confusion, même en ce qui concerne les produits identiques. La similitude des marques repose exclusivement sur un terme dépourvu de caractère distinctif intrinsèque, qui ne sera pas mémorisé par les consommateurs comme l'élément clé des marques en cause (point 53) (absence de risque de confusion).
(i)
(ii) THE NATURAL CONFECTIONERY
CO.
R 1285/2009-1 (procédure en nullité)
Produits et services: Classe 29 (confiseries et sucreries) Territoire: UE
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Appréciation: Bien que le terme “NATURAL” occupe une partie importante des marques, les consommateurs ne l'assimileront pas à un élément distinctif (paragraphe 25). Bien que les produits en cause soient identiques, l'impression d'ensemble produite par les marques en cause ne créerait aucun risque de confusion dans l'esprit du public pertinent. Face aux deux signes en cause, il serait absolument impossible que le public pertinent établisse entre eux un lien donnant lieu à un risque de confusion en raison de la présence, dans les deux signes, du mot descriptif “NATURAL”, ce qui conduirait le public à croire que les produits concernés proviennent de la même entreprise ou d'entreprises liées économiquement (paragraphe 33) (absence de risque de confusion).
Signe antérieur Signe contesté Affaire n°
(i)
(ii) R 0745/2009-2
Produits et services: Classes 3, 9, 35 Territoire: Espagne Appréciation: Les différences conceptuelles l'emportent sur les similitudes visuelles et auditives. En outre, la chambre de recours a estimé que le terme “AROMA” était générique pour les produits concernés (paragraphe 31) (absence de risque de confusion).
Signe antérieur Signe contesté Affaire n°
R 1321/2009-1
Produits et services: Classes 19, 35 Territoire: UE Appréciation: Le faible caractère distinctif de l'élément verbal “PreTech” de la marque antérieure et les différences visuelles significatives entre les deux signes en conflit atténuent l'effet de similitude auditive. En outre, le degré de similitude auditive entre deux signes est de moindre importance dès lors que le public pertinent voit le nom d'une marque sur les produits et les services qu'il achète, comme on peut le prévoir en l'espèce (paragraphe 27) (absence de risque de confusion).
Signe antérieur Signe contesté Affaire n°
R 1357/2009-2
Produits et services: 5, 29, 30, 32 Territoire: UE Appréciation: La chambre de recours a tenu compte du caractère non distinctif et descriptif du mot “Lactofree” pour les produits concernés. La chambre a conclu que les différences visuelles et conceptuelles notables entre les signes compenseraient la nature en partie identique et en partie similaire des produits (paragraphe 98) (absence de risque de confusion).
Signes comportant des éléments figuratifs identiques ou très similaires, ainsi que des éléments verbaux différents
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En général, l'identité ou la similitude de l'élément figuratif des signes ne suffit pas à établir la similitude dans les cas où au moins l’un des signes comporte un élément verbal supplémentaire qui ne figure pas dans l'autre signe. Le résultat dépendra toutefois des circonstances particulières propres à chaque cas.
Dans les exemples suivants, en raison des différences auditives et conceptuelles, il a été conclu à l’absence de risque de confusion malgré les similitudes visuelles des signes.
Signe antérieur Signe contesté Affaire n°
(IBIZA REPUBLIC)
T-311/08
Produits et services: Classes 25, 41, 43 Territoire: France Appréciation: Eu égard à l’absence de similitudes phonétique et conceptuelle et à la faible similitude visuelle entre les signes, ensuite, à l'absence de caractère distinctif accru de la marque antérieure et, enfin, au caractère dominant de l'élément verbal de la marque demandée, la chambre de recours n’a pas commis d’erreur en considérant qu'il n'existait aucun risque de confusion, même en présence de produits identiques (point 58) (absence de risque de confusion).
Signe antérieur Signe contesté Affaire n°
R 0280/2009-4
Produits et services: Classes 16, 36, 41 Territoire: Allemagne Appréciation: Les deux signes ont pour seul point commun le fait qu'ils représentent une croix à huit pointes caractéristiques, connue sous le nom de “croix de Malte”, faisant référence à l'Ordre de Malte. Même dans le domaine en question, “collecte de fonds de bienfaisance; éducation, périodiques, services médicaux” (classes 16, 36, 41, 45), la forme particulière de la croix de Malte n'est pas exclusivement utilisée par la demanderesse. La marque communautaire demandée comporte la séquence verbale indéniablement distinctive “Pro concordatia populorum” et ne saurait être réduite à son élément figuratif. Les signes sont aussi dissemblables phonétiquement dans la mesure où le signe sur lequel repose l’opposition ne présente aucun élément verbal. Il n'y a aucune similitude conceptuelle, étant donné que la marque communautaire demandée signifie “pour la compréhension des peuples”, une locution qui n'a aucun point commun avec le signe antérieur. Par conséquent, il ne peut y avoir de risque de confusion, même pour les produits identiques figurant uniquement dans la classe 16 (absence de risque de confusion).
Signe antérieur Signe contesté Affaire n°
R 1373/2009-2
Produits et services: Classes 9, 12, 14, 18, 22, 25, 28 Territoire: UE Appréciation: De l'avis de la chambre, en tenant compte du faible pouvoir distinctif des éléments figuratifs similaires des marques, ainsi que du rôle distinctif principal joué par l'élément verbal dans le signe du demandeur, il n'y a aucun risque de confusion malgré l'identité ou la similitude des produits contestés dans les classes 9, 12, 14, 18, 22, 25 et 28 (absence de risque de confusion).
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Toutefois, il est possible de conclure à un risque de confusion en cas de caractère dominant manifeste de l'élément figuratif commun et d’importance négligeable de l'élément verbal différent ou en raison du caractère distinctif limité de l'élément verbal:
Signe antérieur Signe contesté Affaire jointes n°
R 0068/2001-4 et R 0285/2001-4
Produits et services: Classes 18, 24, 25, 28 Territoire: Benelux, Allemagne, Espagne, France, Italie, Autriche Appréciation: Les marques respectives coïncident en ce que l'une est constituée d'une empreinte de patte d'animal et l'autre comprend une empreinte de patte d'animal. Il existe des différences entre les deux éléments figuratifs, par exemple en ce que les enregistrements de l'opposante comprennent des griffes. Toutefois, l'impression d'ensemble est celle d'une empreinte de patte noire. L'élément verbal de la demande contestée n'est pas présent dans la marque de l'opposante. Dans un contexte linguistique français, l'élément verbal de la demande contestée sera perçu comme signifiant, comme l’a indiqué la demanderesse, “la maison de la fausse fourrure”. Ce faisant, il s'agit d'un élément au caractère distinctif intrinsèquement très limité (risque de confusion).
Dans d'autres cas, l'élément figuratif peut “coopérer” avec la partie verbale afin de définir un concept particulier et peut même favoriser la compréhension de mots qui, en principe, pourraient ne pas être très connus des consommateurs. Par conséquent, dans les exemples suivants, un risque de confusion a été constaté en dépit de la présence de l'élément verbal dans un seul des deux signes:
Signe antérieur Signe contesté Affaire n°
B 210 379
Produits et services: Classe 3 Territoire: Allemagne, Espagne Appréciation: Les signes ont été jugés suffisamment similaires pour créer un risque de confusion fondé sur l'identité des produits étant donné que le dessin d'une lune, présent dans les deux signes, a permis de faire ressortir l'équivalence entre le mot espagnol “LUNA” et le mot en anglais “MOON” pour les consommateurs espagnols (risque de confusion).
Signe antérieur Signe contesté Affaire n°
R 1409/2008-2
Produits et services: Classes 18, 25, 35 Territoire: UE Appréciation: Visuellement, les marques sont très similaires. Une comparaison auditive est impossible. Conceptuellement, le mot “horse” signifie “cheval” dans la langue de l'espèce (le français). Cet élément sera compris par des consommateurs parlant l'anglais comme une référence directe à l'élément figuratif de la marque communautaire contestée. Par conséquent, les marques sont conceptuellement identiques. Compte tenu du fait que le consommateur moyen n'a pas, en règle générale, la possibilité de faire une comparaison directe entre les marques et compte tenu du principe de l'interdépendance des facteurs, il existe un risque de confusion entre les signes lorsqu'ils sont appliqués à des produits identiques des classes 18 et 25 (risque de confusion).
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7.4.2 Signes verbaux “en plusieurs parties”
Dans ces cas, le signe entier ou l’un seulement de ses éléments est entièrement intégré dans l'autre signe, c’est-à-dire que le signe antérieur (ou l’un de ses composants) est entièrement inclus dans le signe contesté ou inversement.
Le type d'affaire le plus fréquent et le plus problématique porte sur un seul mot opposé à deux mots. Cela peut conduire à une similitude des marques et se traduire, conjointement à d'autres facteurs, par un risque de confusion, comme indiqué par les juridictions dans les affaires suivantes:
[...] la circonstance selon laquelle [la marque] est constituée exclusivement par la marque antérieure [...], à laquelle un autre mot [...] est accolé, constitue une indication de la similitude entre les deux marques.
(Voir l’arrêt du 04/05/2005, C-22/04, “Westlife”, point 40.)
[...] dans le cas où l’un des deux seuls termes constituant une marque verbale est identique, sur le plan visuel et sur le plan auditif, à l’unique terme constituant une marque verbale antérieure, et où ces termes, pris ensemble ou isolément, n’ont, sur le plan conceptuel, aucune signification pour le public concerné, les marques en cause, considérées chacune dans leur ensemble, sont normalement à considérer comme similaires.
(Voir l'arrêt du 25/11/2003, “KIAP MOU”, T-286/02, point 39.)
Dans l'arrêt suivant, il a été fait mention d'un critère supplémentaire (une position distinctive autonome de l'élément commun):
[...] un risque de confusion peut exister dans l’esprit du public en cas d’identité des produits ou des services, lorsque le signe contesté est constitué au moyen de la juxtaposition, d’une part, de la dénomination de l’entreprise du tiers et, d’autre part, de la marque enregistrée, dotée d’un pouvoir distinctif normal, et que celle-ci, sans créer à elle seule l’impression d’ensemble du signe composé, conserve dans ce dernier une position distinctive autonome.
(Voir l'arrêt du 06/10/2005, “Thomson Life”, C-120/04, point 37.)
Pour déterminer si la coïncidence au niveau d’un élément verbal peut conduire à une similitude des signes et (conjointement à d'autres facteurs pertinents) au risque de confusion, deux facteurs sont importants; à savoir, a) si l'élément commun est reconnaissable et b) s’il occupe une position distinctive autonome.
Élément reconnaissable
Il est particulièrement important de savoir si le mot commun peut être identifié de manière isolée dans la marque composée, soit parce qu'il est séparé par un espace ou par un tiret, soit parce qu'il est identifié d'une autre manière (en raison de l'évidence de sa signification) en tant qu'élément individuel.
Un consommateur moyen, en percevant un signe verbal, le décomposera en des éléments verbaux qui suggèrent une signification concrète ou qui ressemblent à des
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mots qu'il connaît (voir l’arrêt du 06/10/2004, “Vitakraft”, T-356/02, point 51, confirmé dans l'affaire C-512/04 P).
D'autre part, une simple coïncidence au niveau d’une séquence de lettres n'est pas suffisante pour établir une similitude. Les décisions ne doivent pas être fondées sur le simple fait qu'un signe est “contenu” dans l'autre.
Dans les exemples suivants, la coïncidence est clairement perçue, étant donné que la partie commune est un mot distinct:
Signe antérieur Signe contesté Motif Affaire n°
CENTER CENTER SHOCK La marque antérieure correspond au premier mot de la marque communautaire demandée (risque de confusion).
C-353/09
SCHUHPARK JELLOSCHUHPARK
La marque antérieure est identique au deuxième mot de la marque communautaire demandée (risque de confusion).
T-32/03
FLEX FLEXI AIR
La marque communautaire demandée est essentiellement constituée du terme “flex” (point 64) (risque de confusion).
T-112/03 (confirmé dans l'affaire C-235/05P)
Dans les exemples suivants, l'élément commun est une partie d'un mot, mais pourrait être identifié dans la mesure où le public découpera logiquement le mot en fonction du sens de ses éléments:
Signe antérieur Signe contesté Motif Affaire n°
CADENACOR COR
Le public hispanophone identifiera les éléments “cadena” et “cor” dans la marque antérieure (point 47) (risque de confusion).
T-214/09
BLUE ECOBLUE
Le public pertinent découpera la marque communautaire demandée en deux mots, le préfixe couramment utilisé “eco” et le mot “blue” (point 30) (risque de confusion).
T-281/07 confirmé dans l'affaire C-23/09 P)
Dans les exemples suivants, la coïncidence n'était pas reconnaissable:
Signe antérieur Signe contesté Motif Affaire n°
ARAVA PARAVAC
Simple coïncidence au niveau d’une séquence de lettres où la première et la dernière lettre de la marque communautaire demandée changent l’impression d'ensemble produite (absence de risque de confusion).
R 1398/2006-4
LUX LUXINIA Simple coïncidence au niveau d’une séquence de lettres (absence de risque de confusion).
R 347/2009-2
CS CScreen
Le signe contesté sera probablement décomposé en deux éléments, à savoir “C” et “Screen” (écran), lequel est totalement pertinent concernant
R 545/2009-4
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les ordinateurs et leurs périphériques. Il ne sera pas perçu comme comportant l'entité distinctive séparée “CS” (absence de risque de confusion).
VALDO VAL DO INFERNO Les éléments “VAL” et “DO” sont séparés (absence de risque de confusion).
R 1515/2008-4
Bien que l’on accorde normalement davantage d'attention au début d'un mot, peu importe en général que l'élément commun constitue le premier ou le deuxième élément de la marque composée. En particulier, lorsque la marque contestée est la marque composée, le fait que la marque contestée comprenne la marque antérieure en tant que premier ou deuxième élément ne devrait avoir que peu d’incidence. La protection contre le risque de confusion s'applique dans les deux sens: le titulaire de la marque antérieure est protégé non seulement contre le fait que la marque contestée soit perçue comme faisant référence à ses produits/services, mais également contre le fait que sa marque soit considérée comme faisant référence aux produits/services du demandeur.
Rôle distinctif autonome
La constatation de l’existence d'un risque de confusion ne saurait être subordonnée à la condition que l'impression d'ensemble produite par le signe composé soit dominée par la partie de celui-ci constituée par la marque antérieure (voir l’arrêt du 11/12/2008, “ACTIVY Media Gateway”, C-57/08 P, point 53; l’arrêt du 06/10/2005, “Thomson Life”, C-120/04, point 32).
D'autre part, une coïncidence au niveau d’un élément faible ou négligeable visuellement ne conduira généralement pas à un risque de confusion. Le fait que le signe constituant la marque antérieure soit reproduit dans la marque demandée ne conduit pas à un risque de confusion si cet élément commun est dépourvu de caractère distinctif ou si des éléments supplémentaires l'emportent sur cet élément commun.
Pour la comparaison de signes composés à des signes constitués d'un seul mot, le niveau de caractère distinctif des éléments communs ou différents revêt une importance particulière. Une coïncidence au niveau d’un élément faible ne conduira généralement pas à un risque de confusion. Pour plus de détails et d’exemples concernant l’impact des éléments faiblement distinctifs ou dépourvus de caractère distinctif sur le risque de confusion, voir le paragraphe 6 ci-dessus. :
Signe antérieur Signe contesté Affaire n°
GATEWAY, et al ACTIVY Media Gateway T-434/05
(confirmé par l'affaire C-57/08 P)
Produits et services: Classes 9, 35, 38, 42 Territoire: UE Appréciation: “[...] tant l’élément “media gateway” que l’élément “gateway”, dans la marque demandée, renverront respectivement, dans l’esprit du consommateur pertinent, directement aux concepts de passerelle média et de passerelle, lesquels sont d’un usage courant dans le secteur de l’informatique. Ces éléments de la marque demandée comportent donc un caractère fortement descriptif des produits et des services couverts par la marque demandée» (point 48) (absence de risque de confusion).
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Signe antérieur Signe contesté Affaire n°
P&G PRESTIGE BEAUTÉ T-366/07
Produits et services: Classe 3 Territoire: Italie Appréciation: Le Tribunal a considéré que, étant donné que l'élément “prestige” de la marque demandée revêt un caractère élogieux, celui-ci est dans une certaine mesure descriptif des caractéristiques et de la destination revendiquées des produits en cause (point 65) (absence de risque de confusion).
Toutefois, le Tribunal se prononce en faveur du risque de confusion si l'élément au niveau duquel les marques diffèrent présente un caractère distinctif inhérent moins important que l'élément commun:
Signe antérieur Signe contesté Affaire n°
(NEGRA MODELO)
T-169/02
Produits et services: Classes 25, 32, 42 Territoire: Portugal Appréciation: “Negra” est un élément descriptif, puisqu’il peut être utilisé en portugais pour désigner la bière brune, à savoir le type de bière commercialisé sous la marque “NEGRA MODELO”. L'attention du consommateur moyen portugais sera focalisée sur le terme “modelo” (points 36 et 37) (risque de confusion).
Il est également possible que l'élément commun ait acquis un degré de caractère distinctif supérieur par l'usage:
Signe antérieur Signe contesté Affaire n°
CRISTAL R 0037/2000-4
T-29/04 (C-131/06 P)
Produits et services: Classe 33 Territoire: France Appréciation de la marque antérieure “CRISTAL”: La chambre de recours a rejeté l'argument selon lequel “Cristal” est un mot descriptif pour les produits en cause (vins mousseux à caractère cristallin). D'une part, il s'agit d'une indication évocatrice suggérant le caractère cristallin des vins, mais qui ne décrit nullement le produit. D'autre part, [la chambre de recours] considère que le caractère distinctif élevé de la marque “CRISTAL” sur le marché français avait été démontré (paragraphe 31) (risque de confusion). Le Tribunal a confirmé le risque de confusion mais a constaté la notoriété de “CRISTAL” seulement pour une partie du public concerné (les professionnels) (paragraphe 67).
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Importance des éléments supplémentaires (non communs)
Le facteur suivant à prendre en compte dans l'examen est l'importance et le poids des éléments supplémentaires (non communs) dans l'impression d'ensemble produite par les deux signes. Les éléments comme la longueur, la structure et la configuration des signes sont entrés en ligne de compte dans les exemples suivants:
Signe antérieur Signe contesté Affaire n°
LOFT ANN TAYLOR LOFT T-385/09
Produits et services: Classes 18, 25, 35 Territoire: France Appréciation: Le mot “loft” n'est pas l'élément distinctif de la marque demandée. Par ailleurs, il ressort également de ces mêmes constatations que c'est l'élément “ann taylor”, du fait de son absence de signification à l’égard du public visé, qui doit être considéré comme étant plus distinctif que le mot “loft” dans la marque demandée, dans la mesure où ce dernier a une signification précise à l’égard dudit public (points 43 à 49) (absence de risque de confusion).
Signe antérieur Signe contesté Affaire n°
P&G PRESTIGE BEAUTÉ T-366/07
Produits et services: Classe 3 Territoire: Italie Appréciation: Les marques contiennent toutes deux le mot “prestige” (qui apparaît dans la marque antérieure dans une police de caractère spécifique, sans autre élément figuratif). Toutefois, cette coïncidence est compensée en particulier par la différence de longueur et de configuration des signes dans leur ensemble. La marque communautaire demandée est plus longue que la marque antérieure, et l'élément “p&g” du début attirera l'attention du public. Le mot “prestige” revêt également un caractère élogieux (points 62 à 68) (absence de risque de confusion).
Suggestions concrètes
En règle générale, lorsque tout ou partie d’une des marques en conflit est reproduit dans l'autre marque, il y aura une similitude des signes, qui, conjointement à d'autres facteurs, pourra conduire à un risque de confusion, à moins que:
l'élément commun ne soit plus reconnaissable en tant que tel dans l'autre marque (PARAVAC/ARAVA);
les éléments ajoutés dans l'autre marque soient clairement prépondérants (P&G PRESTIGE BEAUTÉ/Prestige);
du fait de l'ajout d'autres éléments, l'autre marque devienne conceptuellement différente (exemple fictif: Line/Skyline)8;
l'élément commun présente un faible degré de caractère distinctif inhérent ou soit proche d'un terme descriptif (ACTIVY Media Gateway/GATEWAY).
Dans tous les autres cas, la règle empirique générale veut que les signes soient similaires lorsqu’un signe dans son ensemble est complètement repris dans l'autre signe. En outre, lorsque les produits sont identiques ou très similaires, en l'absence d'autres facteurs spécifiques, il y aura un risque de confusion.
8 Voir les Directives, Opposition, partie 2: Double identité et risque de confusion, chapitre 3: Comparaison
de signes, Comparaison conceptuelle.
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Comme on le voit, ces deux règles s'appliquent lorsque les deux signes comportent des éléments en plus de l'élément commun. Toutefois, la coïncidence au niveau d’un mot n'est généralement pas suffisante en soi pour établir un risque de confusion: l'impact de l'élément commun sur l'impression d'ensemble des deux signes doit être comparé à l'impact des parties qui diffèrent. Dans ce contexte, l'existence d'un élément supplémentaire dans chacun des signes comparés est davantage susceptible de l'emporter sur la coïncidence au niveau d’un élément commun que lorsqu'une marque formée d’un seul mot figure dans une autre marque verbale.
7.5. Marques de couleur en tant que telle
En cas d'évaluation du risque de confusion de deux marques de couleur en tant que telle, une comparaison phonétique ou conceptuelle des signes ne peut être réalisée et les similitudes visuelles dépendront de la couleur des signes.
Dans l'appréciation d'ensemble, l'Office tient compte du fait qu'il existe un “intérêt général à ne pas restreindre indûment la disponibilité des couleurs pour les autres opérateurs offrant des produits ou des services du type de ceux pour lesquels l’enregistrement est demandé (voir l’arrêt du 24/06/2004, C-49/02 “Heidelberger Bauchemie”, point 41 et l’arrêt du 06/05/2003, “Libertel”, C-104/01, points 52 à 56). Le caractère distinctif inhérent des marques de couleur per se est limité. L'étendue de la protection devrait être limitée aux associations de couleurs identiques ou quasi- identiques.
Signe antérieur Signe contesté Affaire n°
R 0755/2009-4
Produits et services: Classe 8 Territoire: UE Appréciation: En l’espèce, les associations de couleurs, identifiées par des codes de couleur différents, ne sont pas suffisamment proches pour conduire à un risque de confusion, en tenant compte du fait que le caractère distinctif inhérent est limité (paragraphe 18). La chambre de recours s'est fondée sur les arrêts de la CJCE et l'intérêt général en veillant à ce que les couleurs demeurent à la disposition des concurrents (paragraphe 19). L'opposante n'a pas prouvé le caractère distinctif accru (paragraphe 25) (absence de risque de confusion).
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES)SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 6
LA PREUVE DE L’USAGE
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Table des matières
1 Généralités ................................................................................................. 5 1.1 La fonction de la preuve de l’usage .......................................................... 5 1.2 Le cadre législatif ....................................................................................... 5
1.2.1 Le RMC et le REMC ....................................................................................... 5 1.2.1.1 L’article 15 du RMC – L’obligation d’utiliser les marques enregistrées........5 1.2.1.2 L’article 42 du RMC – Les conséquences du non-usage ............................6 1.2.1.3 La règle 22 du REMC – Les règles de procédure, les preuves et la
langue de procédure ...................................................................................7 1.2.2 La directive sur les marques et le droit national adopté pour sa mise en
œuvre ............................................................................................................. 8
2 Le droit matériel......................................................................................... 8 2.1 L’usage sérieux: les principes de la Cour de justice ............................... 8 2.2 L’usage sérieux: le niveau de preuve appliqué par l’Office..................... 9 2.3 La nature de l’usage: l’utilisation en tant que marque dans la vie des
affaires ...................................................................................................... 11 2.3.1 L’expression «nature de l’usage»................................................................. 11 2.3.2 L’utilisation en tant que marque.................................................................... 11 2.3.3 L’usage public dans la vie des affaires......................................................... 14
2.3.3.1 Usage public et usage interne ...................................................................14 2.3.3.2 Activité commerciale et activité promotionnelle .........................................14
2.3.4 L’utilisation pour des produits ou des services............................................. 15 2.3.4.1 L’utilisation pour des produits ....................................................................15 2.3.4.2 L’utilisation pour des services....................................................................16 2.3.4.3 L’utilisation dans les publicités ..................................................................16 2.3.4.4 L’utilisation sur internet..............................................................................18
2.4 Le lieu de l’usage...................................................................................... 20 2.4.1 L’usage sur le marché «national»................................................................. 20 2.4.2 Les marques communautaires: l’usage dans l’Union européenne .............. 20 2.4.3 Les marques nationales: l’usage dans l’État membre concerné.................. 21 2.4.4 L’usage dans les échanges à l’importation et à l’exportation ....................... 21
2.5 La période de l’usage............................................................................... 22 2.5.1 La marque antérieure doit être enregistrée depuis plus de cinq ans ........... 22
2.5.1.1 Les marques communautaires ..................................................................22 2.5.1.2 Les marques nationales ............................................................................23 2.5.1.3 Les enregistrements internationaux désignant un État membre................23 2.5.1.4 Les enregistrements internationaux désignant l’Union européenne ..........25
2.5.2 Le calendrier pertinent .................................................................................. 26 2.5.3 Synthèse....................................................................................................... 27
2.6 L’importance de l’usage........................................................................... 27 2.6.1 Les critères ................................................................................................... 27 2.6.2 Exemples d’usage insuffisant ....................................................................... 29 2.6.3 Exemples d’usage suffisant.......................................................................... 30
2.7 L’usage de la marque sous des formes différentes de celle enregistrée................................................................................................ 32 2.7.1 Introduction ................................................................................................... 32
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2.7.2 Les critères de la Cour ................................................................................. 33 2.7.3 La pratique de l’Office................................................................................... 33
2.7.3.1 Les ajouts ..................................................................................................34 2.7.3.2 Les suppressions ......................................................................................41 2.7.3.3 Autres modifications ..................................................................................45
2.8 L’usage pour les produits ou les services pour lesquels la marque est enregistrée.......................................................................................... 51 2.8.1 Comparaison entre les produits et/ou services utilisés et la liste des
produits et/ou services.................................................................................. 52 2.8.2 La pertinence de la classification.................................................................. 53 2.8.3 L’usage et l’enregistrement pour des indications générales des «intitulés
de classe»..................................................................................................... 54 2.8.4 L’usage pour des sous-catégories de produits et/ou services et des
produits et/ou services similaires.................................................................. 54 2.8.4.1 La marque antérieure est enregistrée pour une catégorie plus générale
de produits ou de services.........................................................................54 2.8.4.2 La marque antérieure est enregistrée pour des produits et/ou services
précis.........................................................................................................56 2.8.4.3 Exemples...................................................................................................56
2.8.5 L’usage de la marque concernant les pièces détachées et les services après-vente des produits enregistrés ........................................................... 59
2.9 L’usage par le titulaire ou pour son compte........................................... 60 2.9.1 L’usage par le titulaire .................................................................................. 60 2.9.2 L’usage par des tiers autorisés..................................................................... 60 2.9.3 L’usage de marques collectives ................................................................... 61
2.10 L’usage légal............................................................................................. 61 2.11 La justification du non-usage.................................................................. 61
2.11.1 Les risques liés à l’activité ............................................................................ 62 2.11.2 L’intervention des pouvoirs publics ou de la justice ..................................... 62 2.11.3 Les enregistrements défensifs...................................................................... 64 2.11.4 La force majeure........................................................................................... 64 2.11.5 Les conséquences de la justification du non-usage..................................... 64
3 La procédure............................................................................................ 65 3.1 La requête du demandeur........................................................................ 65
3.1.1 La date de la requête.................................................................................... 65 3.1.2 La requête doit être explicite, claire et inconditionnelle................................ 65 3.1.3 L’intérêt du demandeur à traiter la preuve de l’usage en premier lieu ......... 67 3.1.4 Réaction en cas de nullité de la requête ...................................................... 67
3.2 L’invitation expresse de l’Office.............................................................. 67 3.3 La réaction de l’opposant: la preuve de l’usage .................................... 68
3.3.1 Le délai imparti pour apporter la preuve de l’usage ..................................... 68 3.3.2 Les moyens de preuve ................................................................................. 69
3.3.2.1 Les principes .............................................................................................69 3.3.2.2 Les références...........................................................................................71 3.3.2.3 Les déclarations ........................................................................................71
3.4 La réaction du demandeur....................................................................... 74 3.4.1 La transmission des éléments de preuve..................................................... 74 3.4.2 Le caractère insuffisant de la preuve de l’usage .......................................... 74
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3.4.3 L’absence de réaction du demandeur .......................................................... 74 3.4.4 Le retrait officiel de la requête ...................................................................... 74
3.5 Nouvelle réaction de l’opposant.............................................................. 75 3.6 Les langues utilisées dans les procédures relatives à la preuve de
l’usage....................................................................................................... 75 3.7 La décision................................................................................................ 76
3.7.1 La compétence de l’Office ............................................................................ 76 3.7.2 La nécessité de statuer ................................................................................ 76 3.7.3 L’appréciation globale des preuves produites .............................................. 77 3.7.4 Exemples ...................................................................................................... 77
3.7.4.1 L’usage sérieux a été accepté...................................................................78 3.7.4.2 L’usage sérieux n’a pas été accepté .........................................................79
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1 Généralités
1.1 La fonction de la preuve de l’usage
La législation communautaire sur les marques prévoit l’«obligation» pour le titulaire d’une marque enregistrée de faire de cette marque un usage sérieux. Cette obligation liée à l’usage n’est pas applicable dès l’enregistrement de la marque antérieure. En effet, le titulaire d’une marque enregistrée dispose d’un «délai de grâce» de cinq ans pendant lequel il n’est pas nécessaire d’apporter la preuve de l’usage de la marque pour pouvoir l’invoquer, y compris dans une procédure d’opposition devant l’Office. À l’expiration de ce délai de grâce, le titulaire peut être invité à faire la preuve de l’usage de la marque antérieure sur les produits et services concernés. Avant l’expiration de ce délai, la marque est pleinement protégée du seul fait de son enregistrement formel.
La ratio legis de l’exigence selon laquelle le titulaire d’une marque antérieure peut être tenu de prouver qu’elle a fait l’objet d’un usage sérieux consiste à limiter le nombre de marques enregistrées et protégées et, partant, les conflits entre celles-ci. Cette interprétation est corroborée par le huitième considérant de la directive 89/104 qui se réfère expressément à cet objectif (arrêt du 12 mars 2003, «Silk Cocoon», T-174/01, point 38).
Quant à l’exigence d’apporter une preuve de l’usage dans une procédure d’opposition devant l’Office, il convient de garder à l’esprit que l’article 42, paragraphes 2 et 3, du RMC ne vise ni à évaluer la réussite commerciale ni à contrôler la stratégie économique d’une entreprise ou encore à réserver la protection des marques à leurs seules exploitations commerciales quantitativement importantes (arrêt du 8 juillet 2004, «HIPOVITON», T-334/01, point 32, et arrêt du 8 juillet 2004, «VITAFRUIT», T-203/02, point 38).
L’Office ne recherche pas d’office si la marque antérieure a fait ou non l’objet d’un usage. Cet examen n’a lieu que lorsque le demandeur d’une marque communautaire demande expressément que la preuve de l’usage soit apportée. Sous réserve que les conditions légales soient remplies, cette requête déclenche les conséquences procédurales et matérielles prévues par le RMC et le REMC.
1.2 Le cadre législatif
Le cadre législatif comprend les dispositions du RMC, du REMC et de la directive sur les marques telles qu’elles ont été transposées dans le droit national des États membres.
1.2.1 Le RMC et le REMC
1.2.1.1 L’article 15 du RMC – L’obligation d’utiliser les marques enregistrées
L’article 15 du RMC prévoit les conditions matérielles liées à l’obligation d’utiliser les marques enregistrées. L’article 15, paragraphe 1, du RMC dispose que:
«Si, dans un délai de cinq ans à compter de l’enregistrement, la marque communautaire n’a pas fait l’objet par le titulaire d’un usage sérieux dans la Communauté pour les produits ou les services pour lesquels elle est
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enregistrée, ou si un tel usage a été suspendu pendant un délai ininterrompu de cinq ans, la marque communautaire est soumise aux sanctions prévues au présent règlement, sauf juste motif pour le non- usage.»
Aux termes de l’article 15, paragraphe 1, points a) et b), du RMC, sont également considérés comme usage au sens du paragraphe 1: a) l’usage de la marque communautaire sous une forme qui diffère par des éléments n’altérant pas le caractère distinctif de la marque dans la forme sous laquelle elle a été enregistrée ; b) l’apposition de la marque communautaire sur les produits ou sur leur conditionnement dans la Communauté dans le seul but de l’exportation.
Aux termes de l’article 15, paragraphe 2, du RMC, l’usage de la marque communautaire avec le consentement du titulaire est considéré comme fait par le titulaire.
1.2.1.2 L’article 42 du RMC – Les conséquences du non-usage
Les conséquences du non-usage dans une procédure d’opposition sont exposées à l’article 42, paragraphes 2 et 3, du RMC. Aux termes de l’article 42, paragraphe 2, du RMC:
«Sur requête du demandeur, le titulaire d’une marque communautaire antérieure qui a formé opposition apporte la preuve que, au cours des cinq années qui précèdent la publication de la demande de marque communautaire, la marque communautaire antérieure a fait l’objet d’un usage sérieux dans la Communauté pour les produits ou les services pour lesquels elle est enregistrée et sur lesquels l’opposition est fondée, ou qu’il existe de justes motifs pour le non-usage, pour autant qu’à cette date la marque antérieure était enregistrée depuis cinq ans au moins. À défaut d’une telle preuve, l’opposition est rejetée. Si la marque communautaire antérieure n’a été utilisée que pour une partie des produits ou des services pour lesquels elle est enregistrée, elle n’est réputée enregistrée, aux fins de l’examen de l’opposition, que pour cette partie des produits ou services.»
Aux termes de l’article 42, paragraphe 3, du RMC:
«Le paragraphe 2 s’applique aux marques nationales antérieures visées à l’article 8, paragraphe 2, point a), étant entendu que l’usage dans la Communauté est remplacé par l’usage dans l’État membre où la marque nationale antérieure est protégée.»
Le RMC ne contient aucune disposition expresse indiquant que les formes d’usage mentionnées à l’article 15, paragraphes 1 et 2, du RMC peuvent également être considérées comme un usage de marques nationales. Toutefois, la notion d’obligation d’utiliser la marque enregistrée est harmonisée en raison de l’article 10, paragraphes 2 et 3, de la directive 2008/95/CE du Parlement européen et du Conseil du 22 octobre 2008 rapprochant les législations des États membres sur les marques (ci-après la «directive»). Il convient donc d’appliquer la même disposition matérielle que celle visée à l’article 15, paragraphes 1 et 2, du RMC, à l'usage des marques nationales antérieures, la seule différence étant que cet usage doit avoir lieu dans l'État membre dans lequel la marque nationale est enregistrée.
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En outre, il résulte du libellé de l’article 42, paragraphes 2 et 3, du RMC que la preuve de l’usage ne peut être demandée que si le droit antérieur est une marque communautaire ou une autre marque produisant un effet dans l’UE ou dans un État membre de l’UE, comme défini à l’article 8, paragraphe 2, point a), du RMC. Étant donné que les oppositions formées en application de l’article 8, paragraphe 4, du RMC ne peuvent être fondées sur des marques communautaires ou d’autres marques visées à l’article 8, paragraphe 2, point a), du RMC, le demandeur d’une marque communautaire n’est pas habilité à demander une preuve de l’usage pour des droits antérieurs invoqués au titre de cette disposition. L’article 8, paragraphe 4, du RMC requiert néanmoins que l’opposant apporte une preuve que les droits antérieurs en cause sont utilisés dans la vie des affaires dont la portée n’est pas seulement locale.
Quant à l’article 8, paragraphe 3, du RMC, selon la pratique de l’Office, la preuve de l’usage du droit antérieur ne peut pas être demandée. La raison en est que ces droits antérieurs incluent à la fois des marques produisant des effets dans l’UE ou les États membres de l’UE (marques communautaires, marques nationales, enregistrements internationaux) et des marques nationales non communautaires et que le RMC ne permet pas de demander la preuve de l’usage de ces dernières. Il serait discriminatoire d'exiger des preuves de l’usage pour les marques de certains pays, mais pas pour les autres. En conséquence et vu l’objet spécifique de la protection au titre de l’article 8, paragraphe 3, du RMC, alors que l’usage ou le non-usage des droits antérieurs peut avoir une influence sur les arguments concernant la justification de la demande de marque communautaire, l’opposant ne saurait être tenu de fournir une preuve de l’usage au titre de l’article 42, paragraphe 3, du RMC pour tout droit antérieur qu’il invoque.
1.2.1.3 La règle 22 du REMC – Les règles de procédure, les preuves et la langue de procédure
Aux termes de la règle 22, paragraphe 2, du REMC, si, en application de l’article 42, paragraphe 2 ou 3, du RMC, l’opposant doit apporter la preuve de l’usage de la marque ou de l’existence de justes motifs pour son non-usage, l’Office l’invite à le faire dans un délai qu’il lui impartit. Si l’opposant ne fournit pas cette preuve dans le délai imparti, l’Office rejette l’opposition.
Aux termes de la règle 22, paragraphe 3, du REMC, les indications et les preuves à produire afin de prouver l’usage de la marque comprennent des indications sur le lieu, la durée, l’importance et la nature de l’usage qui a été fait de la marque antérieure pour les produits et services pour lesquels elle est enregistrée et sur lesquels l’opposition est fondée, ces indications devant être fournies, preuves à l’appui, conformément au paragraphe 4.
Aux termes de la règle 22, paragraphe 4, du REMC, les preuves doivent être des documents écrits et se limitent, en principe, à la production de pièces justificatives comme des emballages, des étiquettes, des barèmes de prix, des catalogues, des factures, des photographies, des annonces dans les journaux, ainsi qu’aux déclarations écrites visées à l’article 78, paragraphe 1, point f), du RMC.
Aux termes de la règle 22, paragraphe 5, du REMC, une demande de preuve de l’usage peut être accompagnée ou non des observations sur les motifs sur lesquels l’opposition est fondée. Ces observations peuvent être déposées en même temps que les observations en réponse à la preuve de l’usage.
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Aux termes de la règle 22, paragraphe 6, du REMC, si les preuves produites par l’opposant en application des paragraphes 1, 2 et 3 ne sont pas rédigées dans la langue de la procédure d’opposition, l’Office peut inviter l’opposant à produire, dans le délai qu’il lui impartit, une traduction dans cette langue.
1.2.2 La directive sur les marques et le droit national adopté pour sa mise en œuvre
L’article 10 de la directive contient des dispositions identiques à celles de l’article 15 du RMC, à ceci près que l’«usage sérieux dans la Communauté» est remplacé par l’«usage sérieux dans l’État membre concerné».
2 Le droit matériel
2.1 L’usage sérieux: les principes de la Cour de justice
Ni le RMC ni le REMC ne définissent l’«usage sérieux». Toutefois, la Cour de justice (ci-après la «Cour») a établi plusieurs principes importants concernant l’interprétation de cette expression.
Minimax 2003 (arrêt du 11 mars 2003, «Minimax», C-40/01): la Cour a établi les principes suivants:
l’usage sérieux est un usage effectif de la marque (point 35) ;
l’usage sérieux doit ainsi s’entendre d’un usage qui n’est pas effectué à titre symbolique, aux seules fins du maintien des droits conférés par la marque (point 36) ;
l’usage sérieux doit être conforme à la fonction essentielle de la marque, qui est de garantir au consommateur ou à l’utilisateur final l’identité d’origine d’un produit ou d’un service, en lui permettant de distinguer, sans confusion possible, ce produit ou ce service de ceux qui ont une autre provenance (point 36) ;
l’usage sérieux suppose une utilisation de la marque sur le marché des produits ou des services protégés par la marque et pas seulement au sein de l’entreprise concernée (point 37) ;
l’usage sérieux doit porter sur des produits et des services qui sont déjà commercialisés ou dont la commercialisation, préparée par l’entreprise en vue de la conquête d’une clientèle, notamment dans le cadre de campagnes publicitaires, est imminente (point 37) ;
il convient de prendre en considération, dans l’appréciation du caractère sérieux de l’usage de la marque, l’ensemble des faits et circonstances propres à établir la réalité de son exploitation commerciale, en particulier les usages considérés comme justifiés dans le secteur économique concerné pour maintenir ou créer des parts de marché au profit des produits ou des services protégés par la marque (point 38) ;
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les circonstances de l’espèce peuvent ainsi justifier la prise en compte, notamment, de la nature du produit ou du service en cause, des caractéristiques du marché concerné, de l’étendue et de la fréquence de l’usage de la marque (point 39) ;
ainsi, il n’est pas nécessaire que l’usage de la marque soit toujours quantitativement important pour être qualifié de sérieux, car une telle qualification dépend des caractéristiques du produit ou du service concerné sur le marché correspondant (point 39).
La Mer 2004 (ordonnance du 27 janvier 2004, «Laboratoire de la mer», C-259/02) ; la Cour a développé les critères «Minimax» comme suit:
la question de savoir si un usage est quantitativement suffisant pour maintenir ou créer des parts de marché pour les produits ou services protégés par la marque dépend de plusieurs facteurs et d’une appréciation d’espèce. Les caractéristiques de ces produits ou de ces services, la fréquence et la régularité de l’usage de la marque, le fait que la marque est utilisée pour commercialiser l’ensemble des produits ou des services identiques de l’entreprise titulaire ou simplement certains d’entre eux, ou encore les preuves relatives à l’usage de la marque que le titulaire est à même de fournir, sont au nombre des facteurs qui peuvent être pris en considération (point 22) ;
l’utilisation de la marque par un seul client, importateur des produits pour lesquels celle-ci est enregistrée, peut suffire pour démontrer qu’un tel usage est sérieux s’il apparaît que l’opération d’importation a une réelle justification commerciale pour le titulaire de la marque (point 24) ;
une règle de minimis ne peut être fixée (point 25).
2.2 L’usage sérieux: le niveau de preuve appliqué par l’Office
L’article 42 du RMC exige une preuve de l’usage sérieux de la marque antérieure. La preuve doit reposer sur des éléments concrets et objectifs qui prouvent une utilisation effective et suffisante de la marque (arrêt du 18 janvier 2011, «Vogue», T-382/08, point 22). Il ne suffit pas de présenter des éléments à première vue probants.
En outre, l’Office ne peut pas déterminer d’office l’usage sérieux des marques antérieures. Même les titulaires de marques prétendument renommées doivent présenter des preuves de l’usage sérieux de leur(s) marque(s) antérieure(s).
L’Office n’exige pas nécessairement un seuil élevé de preuve de l’usage sérieux. La Cour a indiqué qu’il n’est pas possible de fixer, de façon abstraite, quel seuil quantitatif devrait être retenu pour déterminer si l’usage avait ou non un caractère sérieux, de sorte qu’aucune règle de minimis objective ne peut être fixée pour établir a priori le niveau d’usage nécessaire pour être qualifié de «sérieux». Ainsi, bien qu’un niveau minimal d’usage doive être démontré, ce qui constitue précisément ce niveau minimal dépend des circonstances de l’espèce. La règle générale veut que, lorsqu’il répond à une réelle justification commerciale, un usage même minime peut être suffisant pour établir l’existence d’un caractère sérieux, compte tenu des produits et des
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services concernés et du marché pertinent (arrêt du 23 septembre 2009, «Acopat», T-409/07, point 35 et la jurisprudence citée ; arrêt du 2 février 2012, «Arantax», T-387/10, point 42).
En d’autres termes, il suffit que la preuve de l’usage démontre que le titulaire de la marque s’est sérieusement efforcé d'acquérir ou de maintenir une position commerciale sur le marché en cause, et n’a pas utilisé la marque dans le seul but de préserver les droits conférés par celle-ci (usage symbolique). Par exemple, dans certains cas, des ventes relativement peu importantes pourraient suffire à conclure que l’usage n’est pas purement symbolique, notamment en ce qui concerne des produits onéreux (décision du 4 septembre 2007, R 0035/2007-2, «DINKY», paragraphe 22). Néanmoins, même si un niveau d’utilisation minime peut notamment suffire dans certaines circonstances, les titulaires doivent apporter des preuves exhaustives de l’usage.
Conformément à la règle 22, paragraphe 3, du REMC, les indications et les preuves à produire afin de prouver l’usage doivent consister en des indications sur le lieu, la durée, l’importance et la nature de l’usage qui a été fait de la marque antérieure pour les produits et services en cause.
Ces exigences en matière de preuve de l’usage sont cumulatives (arrêt du 5 octobre 2010, «STRATEGI», T-92/09, point 43). Cela signifie que l’opposant est tenu non seulement de fournir des indications, mais aussi de répondre par des preuves à chacune de ces exigences. Le caractère suffisant de l’indication et de la preuve concernant le lieu, la durée, l’importance et la nature de l’usage doit être apprécié en tenant compte de l’ensemble des preuves produites. Une appréciation séparée des divers facteurs pertinents, chacun considéré isolément, n’est pas appropriée (arrêt du 17 février 2011, «Friboi», T-324/09, point 31).
L’Office évalue donc les preuves présentées dans le cadre d’une appréciation globale. Toutes les circonstances du cas d’espèce doivent être prises en compte et toutes les pièces présentées doivent être examinées conjointement. Par conséquent, bien que des éléments de preuve puissent être, en soi, insuffisants pour établir l’usage d’une marque antérieure, ils peuvent contribuer à prouver l’usage en combinaison avec d’autres documents et informations.
La preuve de l’usage peut être indirecte ou circonstancielle, comme les preuves relatives à la part de marché sur le marché en cause, l’importation des produits concernés, la fourniture des matières premières ou du conditionnement nécessaires au titulaire de la marque, ou encore la date d’expiration des produits concernés. Ces preuves indirectes peuvent jouer un rôle déterminant dans l’appréciation globale des preuves produites. Leur valeur probante doit être soigneusement appréciée. Ainsi, dans l’arrêt du 8 juillet 2010, «peerstorm», T-30/09, points 42 et suivants, le Tribunal a jugé que des catalogues pouvaient, en soi, dans certaines circonstances, constituer des preuves concluantes du caractère suffisant de l’importance de l’usage.
Il y a lieu de tenir compte du type spécifique de produits et services concernés lors de l’appréciation de la valeur probante des preuves produites. Ainsi, dans un secteur particulier du marché, il peut être courant que les échantillons de produits et de services ne portent pas d’indications sur le lieu, la durée, l’importance et la nature de l’usage. Dans ces cas, il est manifestement inapproprié d’écarter cette preuve de l’usage si des indications à ce sujet figurent dans les autres éléments de preuve produits.
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Chacune des pièces produites doit être évaluée soigneusement afin de déterminer si elle reflète effectivement un usage au cours des cinq ans qui précèdent la publication de la demande de marque communautaire (voir le paragraphe 2.5 ci-dessous) ou un usage sur le territoire pertinent (voir le paragraphe 2.4 ci-dessous). En particulier, les dates et le lieu de l’usage mentionnés sur les commandes, les factures et les catalogues doivent être soigneusement examinés.
Les pièces produites qui ne contiennent pas d’indication de la date de l’usage peuvent néanmoins, dans le cadre d’une appréciation globale, être pertinentes et prises en considération en combinaison avec d’autres éléments de preuve datés (arrêt du 17 février 2011, «Friboi», T-324/09, point 33). C’est notamment le cas lorsqu’il est courant, dans un secteur particulier du marché, que les échantillons de produits et de services ne portent pas d’indications de date (décision du 5 septembre 2001, R 0608/2000-4, «Palazzo», paragraphe 16, dans laquelle il a été observé que les cartes des glaciers sont rarement datées).
Pour l’application des principes généraux susvisés, voir les exemples au paragraphe 3.7.4 ci-dessous.
2.3 La nature de l’usage: l’utilisation en tant que marque dans la vie des affaires
2.3.1 L’expression «nature de l’usage»
La «nature de l’usage» du signe requise est son usage en tant que marque dans la vie des affaires.
Toutefois, il importe de noter que l’expression «nature de l’usage» employée à la règle 22, paragraphe 3, du REMC, comprend également la nécessité de prouver:
l’usage de la marque dans la forme dans laquelle elle a été enregistrée, ou d’une variante de celle-ci, conformément à l’article 15, paragraphe 1, point a), du RMC (paragraphe 2.7 ci-dessous) ;
l’usage pour les produits et services pour lesquels la marque est enregistrée (paragraphe 2.8 ci-dessous).
2.3.2 L’utilisation en tant que marque
L’article 15 et l’article 42, paragraphe 2, du RMC exigent la preuve d’un usage sérieux pour les produits ou services pour lesquels la marque est enregistrée et sur lesquels l’opposition est fondée. L’opposant doit donc prouver que la marque a été utilisée en tant que telle sur le marché.
Étant donné que la marque a notamment pour fonction d’établir un lien entre les produits et services et la personne qui les commercialise, la preuve de l’usage doit mettre en évidence un lien manifeste entre l’usage de la marque et les produits ou services concernés. Ainsi qu’il ressort clairement de la règle 22, paragraphe 4, du REMC, il n’est pas nécessaire que la marque soit apposée sur les produits eux- mêmes. Sa représentation sur les emballages, les catalogues, le support publicitaire
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ou sur les factures concernant les produits et services en cause peut suffire (voir aussi le paragraphe 2.3.3.2 ci-dessous).
L’utilisation d’un signe en tant que nom commercial ne saurait être considérée comme une utilisation en tant que marque, à moins que les produits ou services concernés ne soient identifiés et mis en vente sous ce signe (arrêt du 13 avril 2011, «Adler Capital», T-209/09, points 55 et 56). En règle générale, tel n’est pas le cas lorsque le nom commercial est simplement utilisé comme une enseigne (hormis pour prouver l’usage pour des services de détail) ou apparaît au verso d’un catalogue ou comme une indication accessoire sur une étiquette (arrêt du 18 janvier 2011, «Vogue», T-382/08, point 47).
L’usage sérieux impose que le signe soit utilisé en tant que marque:
pas à des fins purement illustratives ou sur des produits ou services purement promotionnels ;
conformément à sa fonction essentielle, qui est de garantir l’identité d’origine des produits ou services pour lesquels elle a été enregistrée (arrêt du 11 mars 2003, «Minimax», C-40/01, point 43).
Par conséquent, les éléments suivants ne se prêtent pas à établir un usage sérieux de la marque:
l’utilisation en tant que marque de certification. Les marques de certification peuvent être obtenues dans certaines juridictions dans un but de mise en conformité avec les normes définies. Le titulaire d’une marque de certification n’est pas l’utilisateur, le producteur ou le fournisseur autorisé des produits ou services certifiés, mais le certificateur, qui exerce un contrôle légitime sur l’usage de la marque de certification. Les marques de certification peuvent être utilisées avec la marque individuelle du producteur des produits certifiés ou du fournisseur des services certifiés. La fonction essentielle d’une marque de certification est différente de celle d’une marque individuelle: si cette dernière sert principalement à identifier l’origine des produits et services, la première sert à certifier que les produits ou services satisfont à certaines normes établies et possèdent des caractéristiques particulières. Par conséquent, un usage en tant que marque de certification ne saurait être considéré comme un usage en tant que marque individuelle, qui est l’usage requis par l’article 42, paragraphes 2 et 3, du RMC (décision du 16 août 2011, «DVC-DVB», R 87/2010-2, paragraphe 32) ;
l’utilisation en tant qu’indication géographique protégée (IGP)/appellation d'origine protégée (AOP). La fonction essentielle d’une IGP/AOP est de désigner l’origine des produits comme provenant d’une région ou d’une localité donnée, contrairement à la fonction principale d’une marque individuelle, qui est de servir d’indicateur de l’origine commerciale. Lorsqu’une IGP/AOP a été enregistrée en tant que marque individuelle (et non pas, par exemple, en tant que marque collective), l’opposant doit présenter des preuves d’un usage en tant que marque individuelle. Les preuves de l’usage en tant qu'IGP/AOP (p.ex. des déclarations générales de conseils régulateurs) ne peuvent servir à démontrer un usage en tant que marque individuelle. Si l’IGP/AOP a été enregistrée en tant que marque collective, il convient de fournir des preuves de l’usage démontrant que l’IGP/AOP est utilisée pour remplir la fonction
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essentielle des marques collectives, qui est de distinguer les produits ou services des membres de l'association titulaire de la marque de ceux d’autres entreprises (voir la décision du 23 novembre 2011, «YECLA», R 1497/2010-2 p paragraphes 34 et 45) ;
l’utilisation du signe en tant que dénomination sociale ou nom commercial, parce qu’une dénomination sociale, un nom commercial ou une enseigne n’a pas, en soi, pour finalité de distinguer des produits ou des services. En effet, une dénomination sociale a pour objet d’identifier une société, tandis qu’un nom commercial ou une enseigne a pour objet de signaler un fonds de commerce ; Dès lors, lorsque l’usage d’une dénomination sociale, d’un nom commercial ou d’une enseigne se limite à identifier une société ou à signaler un fonds de commerce, il ne saurait être considéré comme étant fait «pour des produits ou des services» (arrêt du 11 septembre 2007, «Céline», C-17/06, point 21 ; arrêt du 13 mai 2009, «Jello Schuhpark II», T-183/08, points 31 et 32).
L’utilisation d’une dénomination sociale ou d’un nom commercial peut être considérée comme une utilisation «pour des produits»:
lorsqu’un tiers appose le signe constituant sa dénomination sociale, son nom commercial ou son enseigne sur les produits qu’il commercialise ; ou
même en l’absence d’apposition du signe, lorsque ce tiers utilise ledit signe de telle façon qu’il s’établit un lien entre la dénomination sociale, le nom commercial ou l’enseigne et les produits ou les services (arrêt du 11 septembre 2007, «Céline», C-17/06, points 21 à 23).
Si l’une ou l’autre de ces deux conditions est remplie, le fait qu’un élément verbal soit utilisé en tant que nom commercial de l’entreprise n’exclut pas qu’il puisse être utilisé en tant que marque pour désigner des produits ou des services (arrêt du 30 novembre 2009, «Coloris», T-353/07, point 38).
Selon les circonstances, les éléments suivants peuvent se prêter à l’établissement d’un usage sérieux de la marque enregistrée:
la mention du nom commercial dans l’en-tête des bons de commande ou des factures, selon les modalités de présentation du signe. Cependant, la simple utilisation d’une dénomination sociale dans l’en-tête de factures sans référence claire à des produits ou services spécifiques n’est pas suffisante ;
l’utilisation d’un signe en tant que nom de domaine ou en tant qu’élément d’un nom de domaine sert principalement à identifier le propriétaire du site (par exemple www.trademark.com). Toutefois, selon les circonstances, cette utilisation peut aussi constituer un usage d’une marque enregistrée (ce qui présuppose qu’il permet d’accéder à un site sur lequel apparaissent les produits et services).
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2.3.3 L’usage public dans la vie des affaires
2.3.3.1 Usage public et usage interne
L’usage doit être public en ce sens qu’il doit être externe et manifeste pour les clients effectifs ou potentiels des produits ou des services. L’usage à titre privé ou l’utilisation purement interne au sein d’une entreprise ou d’un groupe d’entreprises ne constitue pas un usage sérieux (arrêt du 9 décembre 2008, «Verein Radetzky-Orden», C-442/07, point 22 ; arrêt du 11 mars 2003, «Minimax», C-40/01, point 37).
La marque doit être utilisée publiquement et vers l’extérieur dans le cadre d’une activité commerciale exercée en vue d’obtenir un avantage économique pour assurer un débouché aux produits ou aux services qu’elle représente (arrêt du 12 mars 2003, «Silk Cocoon», T-174/01, point 39 ; arrêt du 30 avril 2008, «Sonia Sonia Rykiel», T-131/06, point 38). Un usage extérieur ne signifie pas nécessairement un usage orienté vers les consommateurs finaux, étant donné que les éléments de preuve pertinents peuvent valablement provenir d’un intermédiaire, dont l’activité consiste à identifier des acheteurs professionnels, tels que des sociétés de distribution, auxquelles il vend les produits qu’il a fait fabriquer par des producteurs (voir l’arrêt du 21 novembre 2013, «RECARO», T-524/12, points 25 et 26).
Les preuves pertinentes peuvent également valablement provenir d’une société de distribution faisant partie d’un groupe. La distribution est un mode d’organisation commerciale courant dans la vie des affaires, impliquant un usage de la marque qui ne saurait être considéré comme étant un usage purement interne par un groupe de sociétés, dès lors que la marque est également utilisée vers l’extérieur et publiquement (arrêt du 17 février 2011, «Friboi», T-324/09, point 32).
L’usage de la marque doit porter sur des produits ou des services qui sont déjà commercialisés ou dont la commercialisation, préparée par l’entreprise en vue de la conquête d’une clientèle, est imminente. Les préparatifs effectués en vue d’une utilisation – tels que l’impression d’étiquettes, la production de conteneurs, etc. – correspondent à un usage interne et, partant, ne constituent pas un usage dans la vie des affaires aux fins des présentes Directives (arrêt du 11 mars 2003, «Minimax», C-40/01, point 37).
2.3.3.2 Activité commerciale et activité promotionnelle
Lorsque la marque est protégée pour les produits ou services d’entreprises à but non lucratif et qu’elle a fait l’objet d’un usage, la circonstance qu’il n’existe pas de but lucratif à l’usage n’est pas pertinente: «Le fait qu’une association caritative ne poursuit pas un but lucratif n’exclut pas qu’elle puisse avoir pour objectif de créer et, par la suite, de conserver un débouché pour ses produits ou ses services» (arrêt du 9 décembre 2008, «Verein Radetzky-Orden», C-442/07, point 17).
Des produits et des services offerts gratuitement peuvent constituer un usage sérieux lorsqu’ils sont proposés dans le circuit commercial, c’est-à-dire avec l’intention de créer ou de conserver un débouché pour ces produits ou services dans l’UE par rapport aux produits ou services d’autres entreprises, et sont donc en concurrence avec ces derniers (arrêt du 9 septembre 2011, «Omnicare Clinical Research», T-289/09, points 67 et 68).
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Normalement, l’utilisation de la marque sur des supports publicitaires pour d’autres produits ne saurait, à elle seule, être considérée comme une preuve (indirecte) suffisante de l’usage au sens de la législation sur les marques pour le type d’éléments promotionnels sur lesquels elles sont ou ont été utilisées. Par exemple, le fait de donner des vêtements, comme des T-shirts et des casquettes de base-ball, lors de manifestations promotionnelles dans le but de commercialiser un autre produit, une boisson par exemple, ne peut être considéré comme un usage sérieux de la marque de vêtements en question.
La pratique de l’Office en matière d’«usage sérieux» concernant des articles promotionnels a été confirmée par la Cour:
Signe antérieur Affaire n°
WELLNESS C-495/07(décision préjudicielle)
L’opposante était titulaire de la marque «WELLNESS» pour des produits des classes 25 et 32. Dans le cadre de la vente de ses vêtements «WELLNESS», elle a également utilisé la marque pour désigner une boisson sans alcool, qui a été distribuée dans de petites bouteilles à titre de cadeau avec les vêtements vendus. Aucune boisson n’a été vendue séparément sous la marque «WELLNESS».
La Cour a déclaré que, lorsque des articles promotionnels sont offerts gratuitement à l’achat d’autres produits et pour encourager la vente de ces derniers, la marque perd sa raison d’être commerciale pour les produits promotionnels et ne saurait être considérée comme ayant fait l’objet d’un usage sérieux sur le marché pour la classe dont relèvent les produits (point 22) .
2.3.4 L’utilisation pour des produits ou des services
2.3.4.1 L’utilisation pour des produits
En règle générale, les marques sont utilisées sur des produits (imprimées sur les produits, les étiquettes, etc.) ou sur leur conditionnement. Toutefois, leur apposition sur les produits ou leur conditionnement n’est pas la seule manière d’établir une utilisation pour des produits. Il suffit, s’il existe un lien adéquat entre la marque et les produits, que la marque soit utilisée «pour» des produits ou des services, par exemple sur des brochures, des prospectus, des autocollants, des signes à l’intérieur des points de vente, etc.
Signe antérieur Affaire n°
Schuhpark T-183/08
Le Tribunal a conclu que l’utilisation du signe Schuhpark pour des chaussures sur des publicités, des sacs et des factures n’avait pas pour objet d’identifier l’origine des chaussures (qui portaient leur propre marque ou aucune marque du tout), mais bien la dénomination sociale ou le nom commercial du détaillant de chaussures. Cela a été jugé insuffisant pour établir un lien entre le signe Schuhpark et les chaussures. En d’autres termes, Schuhpark peut effectivement être une marque pour la vente au détail de chaussures, mais elle n’a pas été utilisée en tant que marque pour des produits (points 31 et 32).
Lorsque l’opposant vend ses produits exclusivement sur catalogue (vente par correspondance) ou sur internet, la marque ne figure pas toujours sur l’emballage ni même sur les produits eux-mêmes. Dans de tels cas, on estime généralement qu’une utilisation sur les pages internet où les produits sont présentés est suffisante, dès lors qu’elle correspond à un usage sérieux en termes de durée, de lieu, d’importance et de
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nature (voir le paragraphe 2.3.4.4). Le titulaire de la marque n’aura pas à démontrer qu’elle figurait effectivement sur les produits en tant que tels.
Des catalogues ne peuvent, en tant que tels, constituer des preuves concluantes de l’importance non négligeable de l’usage que dans des circonstances exceptionnelles:
Signe antérieur Affaire n°
PETER STORM T-30/09
Le Tribunal a admis que des catalogues pouvaient corroborer l’importance de l’usage d’une marque alors qu’«un grand nombre d’articles désignés par la marque PETER STORM a été proposé dans les catalogues et que ces articles étaient disponibles dans plus de 240 magasins au Royaume-Uni pendant une partie importante de la période pertinente. Ces éléments permettent […] de conclure à une certaine importance de cet usage» (point 43 ; voir aussi les points 38 à 45).
Signe antérieur Affaire n°
CATAMARAN R 0566/2010-2
La chambre de recours a conclu qu’en dépit du fait que les preuves ne comprenaient pas de factures, les catalogues de vente (printemps/été 2001 à automne/hiver 2006), combinés aux différents échantillons de vêtements et à la déclaration sous serment (avec des chiffres de vente), constituaient une preuve suffisante de l’importance de l’usage des marques antérieures (paragraphes 31 et 32).
2.3.4.2 L’utilisation pour des services
Les marques ne peuvent pas être directement utilisées «sur» des services. Par conséquent, en ce qui concerne les marques enregistrées pour des services, l’usage a généralement lieu sur des documents commerciaux, dans des publicités ou sur tout autre support lié directement ou indirectement aux services. L’utilisation sur ces documents est suffisante dès lors qu’elle atteste un usage sérieux.
Signe antérieur Affaire n°
STRATEGIES T-92/09
Lorsqu’une marque antérieure a été enregistrée pour des services de «gestion d’entreprises» et utilisée comme titre d’un magazine destiné aux entreprises, le Tribunal n’a pas exclu que cette utilisation puisse être considérée comme un usage sérieux des services en cause. Cela pourrait être le cas s’il est démontré que le magazine soutient la fourniture de services de «gestion d’entreprises», c’est-à-dire si ces services sont fournis par le biais d’un magazine. Le fait qu’il n’existe pas de «lien bilatéral direct» entre l’éditeur et le destinataire des services n’affecte pas cette constatation d’usage sérieux. En effet, le magazine n’est pas distribué gratuitement, ce qui pourrait rendre crédible l’allégation selon laquelle le paiement du prix du magazine constitue une rémunération pour le service fourni.
2.3.4.3 L’utilisation dans les publicités
Les marques remplissent leur fonction d’indicateur de l’origine commerciale des produits ou services et de symboles de l’image de marque de leur titulaire non seulement en cas d’utilisation effective sur ou pour les produits ou les services, mais aussi en cas d’utilisation dans les publicités. En fait, la fonction publicitaire ou de communication au marché est l’une des fonctions les plus importantes des marques.
Par conséquent, on estime généralement que l’utilisation dans les publicités correspond à un usage sérieux:
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si le volume de publicité est suffisant pour constituer un usage public sérieux de la marque ;
si un lien peut être établi entre la marque et les produits ou services pour lesquels elle est enregistrée.
La Cour a confirmé cette approche dans l’affaire «Minimax», dans laquelle elle a déclaré que «l’usage de la marque doit ainsi porter sur des produits et des services qui sont déjà commercialisés ou dont la commercialisation, préparée par l’entreprise en vue de la conquête d’une clientèle, notamment dans le cadre de campagnes publicitaires, est imminente» (arrêt du 11 mars 2003, «Minimax», C-40/01, point 37).
Toutefois, la solution adoptée dans chaque cas d’espèce dépend pour une large part des circonstances spécifiques de l’affaire. Il est particulièrement important dans ce contexte que la preuve apportée indique clairement l’étendue de l’utilisation (volume et période de distribution du matériel publicitaire):
Signe antérieur Affaire n°
BLUME R 0681/2001-1
Services: services d’une société d’édition compris dans la classe 41.
La chambre de recours a confirmé que les preuves (composées de catalogues, de communiqués de presse et de publicités), examinées conjointement, suffisaient à prouver un usage sérieux de la marque.
«Bien que le livre des commandes et l’extrait de compte bancaire ne fournissent pas d’informations sur la mesure dans laquelle la marque a été utilisée en Espagne, les autres documents, à savoir les catalogues, les communiqués de presse et les publicités, examinés conjointement, prouvent qu’au cours de la période pertinente, l’opposante a publié en Espagne des livres et des magazines sous la marque BLUME. Même si l’opposante ne fournit ni factures, ni commandes ni chiffres de vente, il y a lieu de supposer qu’elle a fait de la publicité pour ses livres et ses magazines, en a fait la promotion et les a vendus sous la marque BLUME. Bien que les documents publicitaires et les communiqués de presse aient été identifiés et datés par l’opposante, la marque BLUME est toujours mentionnée dans les communiqués de presse et sur la page de couverture des livres cités. En outre, le texte est en espagnol et le prix est libellé en pesetas. Lus conjointement avec les catalogues, ces communiqués de presse prouvent qu’ils font référence à certains livres expressément mentionnés dans les catalogues» (paragraphe 23).
Signe antérieur Affaire n°
BIODANZA R 1149/2009-2(confirmé par l’arrêt T-298/10)
P&S: Classes 16 et 41.
La chambre de recours a rejeté la conclusion de la division d’opposition selon laquelle les preuves (uniquement composées de publicités) prouvaient l’usage sérieux.
«Il résulte clairement de la […] conclusion de la décision [de la division d’opposition] que la preuve de l’usage produite par l’opposante consiste uniquement en publicités pouvant simplement prouver que l’opposante a fait de la publicité pour un festival «BIODANZA» annuel pendant toute la période pertinente et pour des ateliers de manière régulière et irrégulière depuis 2002.»
«Toutefois, contrairement à la conclusion de la [division d’opposition], ces publicités ne peuvent prouver le fait qu’elles aient été distribuées à une clientèle allemande potentielle, ni l’importance d’une distribution, ni le nombre de ventes ou de contrats réalisés pour les services protégés par la marque. La simple existence des publicités pourrait, tout au plus, rendre probable ou plausible le fait que les services faisant l’objet d’une publicité sous la marque antérieure aient été vendus ou, à tout le moins, proposés à la vente sur le territoire pertinent, mais elle ne peut prouver ce fait comme l’a supposé indûment la décision attaquée.»
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Lorsque la publicité s’accompagne simultanément d’une commercialisation des produits et services et qu’il existe des preuves tant de la commercialisation que de la publicité, celle-ci plaide en faveur du caractère sérieux de l’usage.
La publicité réalisée avant la commercialisation effective des produits et services est généralement assimilée à un usage sérieux dès lors qu’elle vise à créer des débouchés pour les produits ou services.
Il est contestable que la publicité réalisée sans projet actuel ou futur de commercialisation effective des produits ou des services constitue un usage sérieux. Dans la plupart des cas, la réponse dépend des circonstances de l’espèce. Par exemple, lorsque l’on peut trouver les produits ou les services à l’étranger, comme des lieux de séjour pour vacanciers ou des produits particuliers, la publicité peut être suffisante à elle seule pour constituer un usage sérieux.
2.3.4.4 L’utilisation sur internet
Le critère utilisé pour l’appréciation des preuves présentées sous la forme d’impressions de pages internet n’est pas plus strict que pour l’appréciation d’autres formes de preuve. Ainsi, la présence de la marque sur un site internet peut notamment indiquer la nature de son utilisation ou le fait que des produits ou services portant la marque ont été proposés au public. Cependant, la simple présence de la marque sur un site internet n’est pas suffisante en soi pour prouver l’usage sérieux, à moins que le site internet ne précise également le lieu, la durée et l’importance de l’usage ou à moins que ces informations ne soient fournies par ailleurs.
Signe antérieur Affaire n°
SHARP R 1809/2010-4
L’opposante a présenté des «extraits des sites web de l’opposante pour différents pays». La chambre de recours a considéré que «de simples impressions de la page internet d’une entreprise ne sont pas aptes à prouver l’usage d’une marque pour certains produits en l’absence d’informations complémentaires sur l’utilisation effective du site internet par des clients potentiels et pertinents ou en l’absence de publicité complémentaire et de chiffres de vente relatifs aux différents produits, de photos des produits arborant la marque correspondante, etc.» (paragraphe 33).
Signe antérieur Affaire n°
WALZERTRAUM T-355/09 (pourvoi pendant sous le numéroC-141/13 P)
L’opposante, une boulangerie, qui est titulaire de la marque allemande «WALZERTRAUM» pour des produits relevant de la classe 30, a présenté, aux fins de prouver l’importance de l’usage de sa marque, des preuves relatives à une brochure publicitaire publiée sur internet, qui fournit des informations générales sur ses méthodes de travail, les ingrédients entrant dans la composition de ses produits et sa gamme de produits, dont son chocolat «WALZERTRAUM». Les produits ne pouvaient toutefois pas être commandés en ligne sur la page internet. Le Tribunal a donc conclu qu’il n’était pas possible d’établir un lien entre le site internet et le nombre d’articles vendus (point 47).
En particulier, la valeur probante des extraits d’internet peut être renforcée en produisant des preuves que le site internet concerné a été consulté et, notamment, que des commandes ont été passées sur le site pour les produits et services en cause par un certain nombre de clients au cours de la période concernée. Des preuves utiles à cet égard pourraient être, par exemple, des registres qui sont généralement tenus lorsque l’on exploite une page internet commerciale, comme le nombre de visites
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effectuées à différents moments ou, parfois, les pays à partir desquels la page internet a été consultée.
Quant à la période concernée, les informations recueillies sur internet ou dans des bases de données en ligne sont considérées comme étant datées du jour où les informations ont été publiées. Les sites internet contiennent souvent des informations extrêmement pertinentes. Il est même possible que certaines informations ne soient disponibles que sur des sites internet. C’est le cas, par exemple, de catalogues en ligne qui n’existent pas en version imprimée.
La nature d’internet peut rendre difficile l’établissement de la date réelle à laquelle des informations ont été publiées. Par exemple, toutes les pages internet ne mentionnent pas quand elles ont été publiées. En outre, si les sites internet sont aisément mis à jour, la plupart d’entre eux ne disposent pas d’archives du matériel publié antérieurement et n’affichent pas de registre permettant au public de déterminer avec précision ce qui a été publié et à quel moment.
Dans ce contexte, la date d’utilisation sur internet sera jugée fiable notamment lorsque:
le site internet précise la date de chaque entrée et fournit donc des informations sur l’historique des modifications d’un fichier ou d’une page internet (comme dans le cas de Wikipedia ou lorsque la date est automatiquement jointe au contenu, par exemple dans les forums et sur les blogs) ; ou
des dates d’indexation sont attribuées à la page internet par des moteurs de recherche (par exemple, par le cache de Google™) ; ou
une impression d’écran d’une page internet mentionne une date.
Les preuves produites doivent démontrer que les transactions effectuées en ligne étaient liées aux produits ou aux services que la marque désigne.
Signe antérieur Affaire n°
ANTAX T-387/10
L’opposante a, notamment, présenté des extraits d’internet provenant des pages d’accueil de plusieurs sociétés de conseil fiscal utilisant la marque antérieure. Le Tribunal a estimé que les indications apparaissant sur les pages internet ont permis au lecteur d’établir un lien entre la marque et les services fournis (points 39 et 40).
Si la nature de la marque et, dans une certaine mesure, la durée (voir ci-dessus) et le lieu sont des éléments moins difficiles à démontrer, l’importance de l’usage présente davantage de difficultés lorsque seules des preuves de l’usage sur internet sont fournies. Il faut tenir compte du fait que les transactions effectuées en ligne tendent à éliminer la plupart des preuves «traditionnelles» de la vente, telles que les factures, le chiffre d’affaires, les documents fiscaux, etc. De nouvelles preuves «électroniques», comme les moyens de paiement certifiés, les commandes et leurs confirmations, l’enregistrement des transactions sécurisées, etc., tendent à les remplacer ou les ont déjà remplacées.
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Signe antérieur Affaire n°
Skunk funk (fig.) R 1464/2010-2
«des extraits de sites web de tiers, bien qu’ils aient été imprimés le 10 juin 2008, contiennent des commentaires de clients sur les vêtements et les boutiques «SKUNKFUNK» datés de la période pertinente. En particulier, les documents présentent plusieurs commentaires de consommateurs espagnols datés de décembre 2004 et de février-mars-avril-mai-juillet 2007. En outre, comme l’a souligné la division d’opposition, un commentaire de blog (daté du 4 mars 2007) sur la page internet www.cybereuskadi.com indique que l’opposante («créateur de Skunkfunk») exporte des vêtements de surf dans le monde entier et réalise un chiffre d’affaires de près de 7 millions d’euros par an» (paragraphe 21).
2.4 Le lieu de l’usage
2.4.1 L’usage sur le marché «national»
Les marques doivent faire l’objet d’un usage sur le territoire dans lequel elles sont protégées (l’Union européenne pour les marques communautaires, le territoire de l’État membre pour les marques nationales ou le Benelux pour les marques Benelux et les territoires des pays concernés pour les enregistrements internationaux).
Comme l’a affirmé la Cour dans l’affaire «Leno Merken», «l’importance territoriale de l’usage n’est que l’un des facteurs, parmi d’autres, devant être pris en compte pour déterminer si cet usage est sérieux ou non» (arrêt du 19 décembre 2012, «Leno Merken», C-149/11, point 30). La Cour a également observé que l’usage de la marque dans des États tiers ne peut pas être pris en compte (point 38).
Compte tenu de la mondialisation des échanges commerciaux, le siège du titulaire de la marque ne saurait être considéré comme une indication suffisante pour démontrer l’usage dans le pays concerné. Bien qu’aux termes de l’article 15, paragraphe 1, point b), du RMC, l’apposition de la marque sur les produits ou leur conditionnement dans l’Union européenne dans le seul but de l’exportation soit considérée comme un usage de la marque, la simple mention du siège de l’opposant ne constitue pas en soi une preuve à cet égard. D’autre part, le fait que des clients ayant leur siège en dehors du territoire pertinent soient mentionnés dans les documents destinés à prouver l’usage de la marque antérieure n’est pas, en soi, suffisant pour exclure que des services (par exemple, des services promotionnels) ont effectivement pu être fournis dans le territoire pertinent à ces entreprises établies dans d’autres territoires (décision du 9 juin 2010 dans l’affaire R 0952/2009-1, «Global Tabacos», paragraphe 16).
2.4.2 Les marques communautaires: l’usage dans l’Union européenne
Lorsque la marque antérieure est une marque communautaire, elle doit faire l’objet d’un usage «dans la Communauté» (article 15, paragraphe 1, et article 42, paragraphe 2, du RMC). Conformément à l’arrêt «Leno Merken», l’article 15, paragraphe 1, du RMC doit être interprété en ce sens qu’il doit être fait abstraction des frontières territoriales des États membres pour apprécier l’existence d’un «usage sérieux» dans la Communauté (point 44).
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Sur le plan territorial et compte tenu du caractère unitaire de la marque communautaire, l’approche appropriée n’est pas celle des frontières politiques, mais bien celle du ou des marchés. De plus, un des objectifs poursuivis par le système de la marque communautaire est d’être accessible à toutes les entreprises, quels qu’en soient le type et la taille. Donc, la taille d’une entreprise n’est pas un facteur pertinent pour y établir l’usage sérieux.
Comme l’a observé la Cour dans l’affaire «Leno Merken», il est impossible de déterminer a priori, de façon abstraite, quelle étendue territoriale devrait être retenue pour déterminer si l’usage de la marque a ou non un caractère sérieux (point 55). Il y a lieu de tenir compte de l’ensemble des faits et des circonstances pertinents, tels que notamment, les caractéristiques du marché en cause, la nature des produits ou des services protégés par la marque, l’étendue territoriale et quantitative de l’usage ainsi que la fréquence et la régularité de ce dernier (point 58).
L’Office doit déterminer au cas par cas si les différentes indications et preuves peuvent être combinées aux fins d’apprécier le caractère sérieux de l’usage, dont l’étendue territoriale n’est qu’un des aspects à prendre en compte.
En tout état de cause, il convient de souligner que ce sont les exigences ou les normes européennes relatives à l’usage sérieux qui sont applicables (à savoir les conditions énoncées à l’article 15 du RMC) et non les normes ou pratiques nationales appliquées aux marques communautaires.
2.4.3 Les marques nationales: l’usage dans l’État membre concerné
Lorsque la marque antérieure est une marque nationale qui ne produit ses effets que dans un seul État membre de l’Union européenne, la marque doit avoir fait l’objet d’un usage sérieux dans le pays dans lequel elle est protégée (article 42, paragraphe 3, du RMC). L’usage dans une partie de l’État membre peut être considéré comme étant suffisant dès lors qu’il est sérieux:
Affaire n° Marque antérieure Commentaire
C-416/04 P VITAFRUT
Usage jugé suffisant, même si la marque espagnole antérieure n’était pas présente dans une partie substantielle du territoire espagnol, étant donné que les preuves concernaient la vente de produits de consommation courante (jus de fruit concentrés) à un seul client en Espagne (points 60, 66 et 76).
2.4.4 L’usage dans les échanges à l’importation et à l’exportation
Conformément à l’article 15, paragraphe 1, point b), du RMC, l’apposition de la marque communautaire sur les produits ou sur leur conditionnement dans la Communauté dans le seul but de l’exportation constitue également un usage au sens de l’article 15, paragraphe 1, du RMC.
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Affaire n° Marque antérieure Commentaire
T-34/12 Herba Shine
Le Tribunal a estimé que la chambre de recours aurait dû justifier sa décision de ne pas tenir compte des preuves de ventes en dehors du territoire pertinent (des factures adressées à des clients en dehors de l’UE). De fait, ces ventes en dehors de l’UE ne peuvent être écartées sur la seule base de ce motif (points 48-49 et 54).
R 0602/2009-2 RED BARON
La chambre de recours a observé que les ventes en Autriche et en Grande-Bretagne depuis les Pays-Bas constituaient également un usage sérieux au sens de l’article 15, paragraphe 1, point b), du RMC (paragraphe 42).
La marque doit avoir fait l’objet d’un usage (ce qui implique d'avoir été apposée sur les produits ou sur leur emballage) sur le marché en cause, c’est-à-dire dans la zone géographique dans laquelle elle est enregistrée. Les preuves qui se rapportent uniquement à l’importation des produits dans la zone pertinente peuvent suffire, selon les circonstances de l’espèce, à prouver l’usage dans cette zone (voir, par analogie, l’arrêt du 9 juillet 2010, «Grain Millers», T-430/08, points 33, 40 et suivants concernant la preuve de l’usage d’un signe dans la vie des affaires sur la base d’importations de Roumanie vers l’Allemagne). Le Tribunal a jugé qu’un transit, qui consiste à transporter des marchandises légalement fabriquées dans un État membre vers un État tiers en traversant le territoire d’un ou de plusieurs États membres, n’implique aucune commercialisation des marchandises concernées et n’est donc pas susceptible de porter atteinte à l’objet spécifique du droit de la marque (concernant le transit par la France de produits originaires d’Espagne et destinés à la Pologne, voir l’arrêt du 23 octobre 2003, «Rioglass et Transremar», C-115/02, point 27, et l’arrêt du 9 novembre 2006, «Diesel», C-281/05, point 19). Le simple transit au travers d’un État membre ne saurait dès lors constituer un usage sérieux de la marque antérieure dans ce territoire.
2.5 La période de l’usage
2.5.1 La marque antérieure doit être enregistrée depuis plus de cinq ans
Conformément à l’article 42, paragraphe 2, du RMC, l’obligation d’apporter la preuve de l’usage implique qu’à la date de publication de la demande de marque communautaire, la marque antérieure ait été enregistrée depuis au moins cinq ans.
En ce qui concerne les oppositions formées à l’encontre d’enregistrements internationaux désignant l’UE, la marque de l’opposant est soumise à une obligation d’usage si, au début du délai d’opposition, à savoir six mois à compter de la date de la première republication de l’enregistrement international, elle était enregistrée depuis au moins cinq ans.
2.5.1.1 Les marques communautaires
Conformément à l’article 15 et à l’article 42, paragraphe 2, du RMC, la date déterminante pour établir si une marque est enregistrée depuis au moins cinq ans à la date de publication de la demande contestée est celle de l’enregistrement de la marque communautaire antérieure. Si cinq ans ou davantage se sont écoulés entre la date d’enregistrement de la marque communautaire antérieure et la date de publication de la demande de marque communautaire (ou, dans le cas d’un enregistrement
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international contesté, six mois après la date de la première republication de l’enregistrement international), le demandeur (ou, dans le cas d’un enregistrement international contesté, le titulaire) est en droit de demander une preuve de l’usage.
2.5.1.2 Les marques nationales
Pour les marques nationales, il y a lieu de déterminer la date équivalente à la date d’enregistrement des marques communautaires. Aux fins de l’interprétation de cette règle, il convient de tenir compte de l’existence, dans certains systèmes de marque nationaux, d’une procédure d’opposition postérieure à l’enregistrement.
Compte tenu de ces disparités entre les procédures nationales, l’article 10, paragraphe 1, de la directive (qui correspond à l’article 42 du RMC) fait référence, en ce qui concerne l’obligation d’usage des marques nationales, au délai de «cinq ans à compter de la date à laquelle la procédure d’enregistrement est terminée».
La date à laquelle la procédure d’enregistrement est terminée (article 10, paragraphe 1, de la directive 2008/95) qui sert à calculer le point de départ de l’obligation d’usage pour les marques nationales et les enregistrements internationaux (article 42, paragraphes 2 et 3, du RMC) est déterminée par chaque État membre en fonction de ses propres règles de procédure (arrêt du 14 juin 2007, «Le Chef DE CUISINE», C-246/05, points 26 à 28).
On n’attend pas du titulaire d’une marque qu’il fasse un usage sérieux de celle-ci malgré l’examen ou la procédure d’opposition dont elle fait l’objet avant l’expiration du délai de grâce de cinq ans susvisé. Ceci est conforme à l’approche adoptée pour les marques communautaires antérieures, puisque la date d’enregistrement d’une marque communautaire qui, selon l’article 42, paragraphe 2, du RMC, constitue le point de départ du délai de grâce, correspond toujours à la date de clôture de la procédure d’enregistrement. Par ailleurs, cette interprétation permet de conserver l’harmonisation de l’exigence d’usage posée par le RMC et par les législations nationales en vigueur (décision du 6 mai 2004 dans l’affaire R 0463/2003-1, «Wrap House», paragraphe 19 ; décision du 18 juin 2010 dans l’affaire R 0236/2008-4, «RENO»).
La clôture de la procédure d’enregistrement survient après une opposition préalable à l’enregistrement ou, dans certains États membres, même après la clôture d’une opposition postérieure à l’enregistrement. Les dates pertinentes exactes sont celles publiées au chapitre 12 de la brochure «Droit national et marque communautaire» de l’Office, p. 177 (http://oami.europa.eu/en/office/diff/pdf/National_law.pdf).
L’Office ne recherche pas, de sa propre initiative, la date de clôture effective de la procédure d’enregistrement. À défaut de preuve du contraire, il présume que cette procédure a pris fin à la date d’enregistrement indiquée dans les pièces produites. Il appartient à l’opposant de réfuter cette présomption en apportant la preuve de la date exacte à laquelle la procédure d’enregistrement a pris fin.
2.5.1.3 Les enregistrements internationaux désignant un État membre
Conformément à l’article 5, paragraphe 2, points a) et b), du protocole de Madrid, les offices désignés disposent d’un délai de 12 ou 18 mois à compter de la date de notification de la désignation pour prononcer un refus provisoire.
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Lorsque l’État membre n’a pas été désigné dans la demande internationale mais dans une désignation postérieure, le délai de 12 ou 18 mois commence à courir à compter de la date à laquelle la désignation postérieure a été notifiée aux offices désignés.
Les États membres suivants appliquent le délai de 12 mois pour prononcer un refus provisoire au titre du protocole lorsqu’ils agissent en qualité de partie désignée: Benelux, République tchèque, Allemagne, Espagne, France, Lettonie, Hongrie, Autriche, Portugal, Roumanie et Slovénie.
Les États membres suivants ont opté pour le délai de 18 mois pour prononcer un refus provisoire au titre du protocole lorsqu’ils agissent en qualité de partie désignée: Danemark, Estonie, Irlande, Grèce, Lituanie, Finlande, Suède et Royaume-Uni.
Le délai applicable (12 ou 18 mois) pour la Bulgarie, l’Italie, Chypre, la Pologne et la Slovaquie, lorsque ces pays agissent en qualité de partie désignée, dépend de la question de savoir si: (i) ce pays a été désigné ou a fait l’objet d’une désignation postérieure avant ou après le 1er septembre 2008 et (ii) l’Office d’origine est partie tant à l’arrangement qu’au protocole de Madrid (délai: 12 mois) ou uniquement au protocole (délai: 18 mois).
Pour une vue d’ensemble, voir le tableau ci-dessous:
Pays désigné1 Pays d’origine Délai pour prononcer un refus
Benelux, République tchèque, Allemagne, Espagne, France, Lettonie, Hongrie, Autriche, Portugal, Roumanie et Slovénie (parties contractantes de l’UE liées à la fois par l’arrangement et par le protocole).
Toutes les parties contractantes [Situation au 15/01/2013: 89 États membres]2 (indépendamment du fait qu’ils soient liés à la fois par l’arrangement et par le protocole ou uniquement par le protocole).
12 mois
Danemark, Estonie, Irlande, Grèce, Lituanie, Finlande, Suède, Royaume-Uni (parties contractantes de l’UE uniquement liées par le protocole).
Toutes les parties contractantes [Situation au 15/01/2013: 89 États membres] ; (indépendamment du fait qu’ils soient liés à la fois par l’arrangement et par le protocole ou uniquement par le protocole).
18 mois
Bulgarie, Italie, Chypre, Pologne, Slovaquie ; en cas de désignation ou de désignation postérieure avant le 01/09/20083
(parties contractantes de l’UE liées à la fois par l’arrangement et par le protocole qui ont opté pour un délai étendu).
Toutes les parties contractantes [Situation au 15/01/2013: 89 États membres] ; (indépendamment du fait qu’ils soient liés à la fois par l’arrangement et par le protocole ou uniquement par le protocole).
18 mois
Bulgarie, Italie, Chypre, Pologne, Slovaquie ; en cas de désignation ou de
Parties contractantes de l’UE liées à la fois par l’arrangement et par le protocole 12 mois
1 Malte n’est pas partie au système de Madrid. 2 Pour la liste complète des États membres parties à l’arrangement de Madrid et au protocole de Madrid, voir: https://www.wipo.int/export/sites/www/treaties/fr/documents/pdf/madrid_marks.pdf. 3 Date d’entrée en vigueur de l’article 9 sexies, paragraphe 1, point b), du protocole, qui rend inopérante toute déclaration au titre de l’article 5, paragraphe 2, point b) ou c), du protocole (extension du délai pour la notification d’un refus provisoire) entre des parties contractantes liées à la fois par l’arrangement et par le protocole.
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désignation postérieure le 01/09/2008 ou après (parties contractantes de l’UE liées à la fois par l’arrangement et par le protocole qui ont opté pour un délai étendu).
[Situation au 15/01/2013: 55 États membres].
Parties contractantes uniquement liées par le protocole [Situation au 15/01/2013: 33 États membres] ;
18 mois
L’Office applique automatiquement le délai de 12 ou 18 mois conformément aux règles ci-dessus. Les délais sont calculés en ajoutant le délai pertinent à la date de notification à partir de laquelle le délai de notification du refus commence à courir, indiqué par le code INID 580 sur l’extrait ROMARIN (et non pas la date de l’enregistrement international ou de la désignation postérieure) (règle 18, paragraphe 1, point a), iii), et règle 18, paragraphe 2, point a), du règlement d’exécution commun).
C’est uniquement lorsqu’il est capital de déterminer si la marque antérieure est soumise à l’obligation d’apporter une preuve de l’usage qu’il appartient à l’opposant de revendiquer une date postérieure (par exemple, lorsqu’un refus provisoire a été levé après ces dates ou si le pays désigné a opté pour un délai encore plus long que 18 mois pour la notification d’un refus fondé sur une opposition selon l’article 5, paragraphe 2, point c), du protocole, et au demandeur ou au titulaire de revendiquer une date antérieure à ces dates (par exemple, lorsqu’une déclaration d’octroi de protection a été émise avant ces dates) et de fournir à l’Office des pièces probantes à cet égard.
En particulier, la Cour a confirmé, au sujet d’un enregistrement international antérieur désignant l’Allemagne, que la date à laquelle un enregistrement international antérieur est réputé avoir été «enregistré» doit être déterminée selon la législation allemande qui donne effet au droit antérieur et non par référence à la date d’enregistrement auprès du Bureau international de l’OMPI. En vertu de la législation allemande sur la marque, lorsque la protection d’une marque inscrite au registre international est provisoirement refusée et ensuite octroyée, l’enregistrement est considéré comme ayant eu lieu à la date de réception par le Bureau international de l’OMPI de la notification finale que la protection a été octroyée. Une interprétation correcte de l’article 42, paragraphes 2 et 3, du RMC et de l’article 4, paragraphe 1, de l’arrangement de Madrid ne saurait aboutir à une violation du principe de non-discrimination (ordonnance du 16 septembre 2010, «Atoz», C-559/08 P, points 44 et 53 à 56).
2.5.1.4 Les enregistrements internationaux désignant l’Union européenne
Pour les enregistrements internationaux désignant l’Union européenne, l’article 160 du RMC prévoit que:
«Aux fins de l’article 15, paragraphe 1, de l’article 42, paragraphe 2, de l’article 51, paragraphe 1, point a), et de l’article 57, paragraphe 2, la date de publication prévue à l’article 152, paragraphe 2, tient lieu de date d’enregistrement en vue de l’établissement de la date à partir de laquelle doit commencer l’usage sérieux dans la Communauté de la marque qui fait l’objet de l’enregistrement international désignant l’Union européenne.»
La preuve de l’usage
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À compter de cette publication, l’enregistrement international produit les mêmes effets qu’une marque communautaire enregistrée conformément à l’article 151, paragraphe 2, du RMC.
2.5.2 Le calendrier pertinent
Si la marque antérieure est soumise à une obligation d’usage (enregistrée depuis cinq ans au moins), la période effective pour laquelle celui-ci doit être démontré peut simplement être calculée à partir de la date de publication.
Ainsi, si la demande de marque communautaire contestée a été publiée le 15 juin 2012 et que la marque antérieure ait été enregistrée le 1er avril 2000, l’opposant doit prouver un usage sérieux de sa marque au cours de la période comprise entre le 15 juin 2007 le 14 juin 2012.
Pour les oppositions formées à l’encontre d’enregistrements internationaux désignant l’UE, la marque de l’opposant est soumise à l’obligation d’usage si, au début du délai d’opposition (à savoir six mois après la date de la première republication de l’enregistrement international), elle est enregistrée depuis cinq ans au moins. Ainsi, si l’enregistrement international contesté a été publié le 15 juin 2009 et que la marque antérieure ait été enregistrée le 1er avril 1996, l’opposant devra apporter la preuve d’un usage sérieux de sa marque au cours de la période comprise entre le 15 décembre 2004 et le 14 décembre 2009.
Dans l’éventualité où l’Union européenne n’a pas été désignée dans la demande internationale, mais a fait l’objet d’une désignation postérieure, les 18 mois commencent à courir à compter de la date à laquelle la désignation postérieure a été notifiée à l’Office (voir la décision du 20 décembre 2010 dans l’affaire R 0215/2010 4, « Purgator»).
À compter du jour de la désignation postérieure de la Communauté européenne, un enregistrement international produit les mêmes effets que la demande de marque communautaire contre laquelle une opposition peut être formée. La publication de la date de la désignation postérieure remplacera la publication de la demande de marque communautaire (article 152 du RMC). En l’espèce, la date de la désignation postérieure de la Communauté européenne a été publiée le 8 octobre 2007. À ce moment, les marques antérieures dont la date d’enregistrement était le 14 juin 2005 n’étaient pas enregistrées depuis cinq ans et n’étaient pas soumises à l’obligation d’usage.
Tout usage ou non-usage antérieur ou postérieur aux cinq dernières années n’a généralement pas d’importance. Les preuves relatives à l’usage effectué en dehors de cette période ne sont pas prises en considération, à moins qu’elles ne constituent un élément probant indirect montrant que la marque doit avoir fait l’objet d’un usage sérieux également au cours de la période pertinente. Dans ce contexte, la Cour a estimé que des circonstances postérieures à la date pertinente peuvent permettre de confirmer ou de mieux apprécier la portée de l’utilisation de la marque au cours de la période pertinente ainsi que les intentions réelles du titulaire au cours de la même période (ordonnance du 27 janvier 2004, «Laboratoire de la mer», C-259/02, point 31).
Lorsqu’une marque n’a pas fait l’objet d’un usage sérieux pendant plus de cinq ans avant la date de publication, le fait qu’il puisse subsister une certaine image de marque
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ou une connaissance résiduelle de la marque dans l’esprit des professionnels ou des clients ne permet pas de «sauver» la marque.
Il n’est pas nécessaire que l’usage ait eu lieu tout au long de la période de cinq ans, mais plutôt au cours de cette période. Les dispositions relatives à l’usage ne posent aucune condition concernant son caractère continu (arrêt du 16 décembre 2008, «DEITECH», T-86/07, point 52).
2.5.3 Synthèse
Marque antérieure Calcul du début de la période de cinq ans (délai de grâce)
Marque communautaire Date d’enregistrement.
Marque nationale Par défaut, date d’enregistrement ou de clôture de la procédure d’enregistrementsi elle est démontrée par l’opposant.
Enregistrement international désignant des États membres
Par défaut, 12 ou 18 mois à compter de la date de notification à partir de laquelle le délai de notification du refus commence à courir (code INID 580). Peut être antérieure ou postérieure, sur présentation de la preuve par les parties.
Enregistrement international désignant l’UE
Date de la deuxième republication de la désignation de l’UE dans la partie M.3. du Bulletin.
Marque contestée Calcul de la période de cinq ans pour apporter la preuve de l’usage sérieuxde la marque antérieure (date pertinente)
Demande de marque communautaire
5 ans à compter de la date de publication de la demande de marque communautaire dans la partie A du Bulletin des marques communautaires.
Enregistrement international désignant l’UE
5 ans à compter de la date de republication de l’enregistrement international (ou de la désignation postérieure de l’UE) dans la partie M.1. du Bulletin des marques communautaires + 6 mois (correspondant au début de la période d’opposition. Deuxième date publiée sous le code INID 441).
2.6 L’importance de l’usage
2.6.1 Les critères
À cet égard, il y a lieu d’évaluer si, compte tenu des conditions du marché dans le secteur spécifique concerné, il ressort des preuves produites que le titulaire s’est sérieusement efforcé d’acquérir une position commerciale sur le marché en cause. L’usage de la marque doit porter sur des produits et des services qui sont déjà commercialisés ou dont la commercialisation, préparée par l’entreprise en vue de la conquête d’une clientèle, notamment dans le cadre de campagnes publicitaires, est imminente (arrêt du 11 mars 2003, «Minimax», C-40/01, point 37). Cela ne veut pas dire que l’opposant doit révéler le volume total des ventes ou de son chiffre d’affaires.
Quant à l’importance de l’usage qui a été fait de la marque antérieure, il convient de tenir compte, notamment, du volume commercial de l’ensemble des actes d’usage, d’une part, et de la durée de la période pendant laquelle des actes d’usage ont été accomplis ainsi que de la fréquence de ces actes, d’autre part (arrêt du 8 juillet 2004, «HIPOVITON», T-334/01, point 35).
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L’appréciation implique une certaine interdépendance entre les facteurs pris en compte. Ainsi, un faible volume de produits commercialisés sous ladite marque peut être compensé par une forte intensité ou une grande constance dans le temps de l’usage de cette marque et inversement (arrêt du 8 juillet 2004, «VITAFRUIT», T-203/02, point 42).
Dans certaines circonstances, même des preuves circonstancielles telles que des catalogues mentionnant la marque, malgré qu’elles ne fournissent pas d’informations directes sur la quantité de produits réellement vendue, peuvent suffire, par elles- mêmes, à démontrer l’importance de l’usage dans le cadre d’une appréciation globale (arrêt du 8 juillet 2010, «peerstorm», T-30/09, points 42 et suivants).
Pour être qualifié de «sérieux», l’usage ne doit pas s’étendre sur une période minimale. En particulier, l’usage ne doit pas avoir été continu pendant la période pertinente de cinq ans. Il suffit qu’il ait eu lieu au tout début ou à la fin de cette période, dès lors qu’il était sérieux (arrêt du 16 décembre 2008, «DEITECH», T-86/07).
Il n’est pas possible de définir in abstracto un seuil exact et déterminant attestant l’usage sérieux. Le chiffre d’affaires et le volume des ventes du produit doivent toujours être appréciés par rapport à l’ensemble des autres facteurs pertinents, tels que le volume de l’activité commerciale, les capacités de production ou de commercialisation ou le degré de diversification de l’entreprise qui exploite la marque, ainsi que les caractéristiques des produits ou des services sur le marché concerné. Il n’est pas nécessaire que l’usage de la marque soit toujours quantitativement important pour être qualifié de sérieux, car une telle qualification dépend des caractéristiques du produit ou du service concerné sur le marché correspondant (arrêt du 11 mars 2003, «Minimax», C-40/01, point 39 ; arrêt du 8 juillet 2004, «VITAFRUIT», T-203/02, point 42).
De faibles chiffres et chiffres de ventes, exprimés en valeur absolue, d’un produit de prix moyen ou peu élevé permet de conclure à un usage non sérieux de la marque en cause. Cependant, pour les produits onéreux ou un marché exclusif, un chiffre d’affaires peu élevé peut être suffisant (décision du 4 septembre 2007 dans l’affaire R 0035/2007-2, «Dinky», paragraphe 22). Il convient toutefois de toujours prendre en considération les caractéristiques du marché concerné (arrêt du 8 juillet 2004, «HIPOVITON», T-334/01, point 51).
Une règle de minimis ne peut être fixée. L’utilisation de la marque par un seul client, importateur des produits pour lesquels celle-ci est enregistrée, peut suffire pour démontrer qu’un tel usage est sérieux, s’il apparaît que l’opération d’importation a une réelle justification commerciale pour le titulaire de la marque (ordonnance du 27 janvier 2004, «Laboratoire de la mer», C-259/02, points 24 et suivant).
Peu importe si l’usage de la marque a été fait auprès du même client, tant qu’il est fait publiquement et vers l’extérieur et non uniquement à l’intérieur de l’entreprise titulaire de la marque antérieure ou dans un réseau de distribution possédé ou contrôlé par celle-ci (arrêt du 8 juillet 2004, «VITRAFRUIT», T-203/02, point 50).
Toutefois, plus le volume commercial de l’exploitation de la marque est limité, plus il est nécessaire que la partie ayant formé l’opposition apporte des indications supplémentaires permettant d’écarter d’éventuels doutes quant au caractère sérieux de l’usage de la marque concernée (arrêt du 8 juillet 2004, «HIPOVITON», T-334/01, point 37).
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S’agissant du rapport entre le chiffre d’affaires généré par les ventes de produits sous la marque antérieure et le chiffre d’affaires annuel de la requérante, il convient de relever que le degré de diversification des activités des entreprises opérant sur un même marché est variable. De plus, l’obligation d’apporter la preuve d’un usage sérieux d’une marque antérieure ne vise pas à contrôler la stratégie commerciale d’une entreprise. Il n’est pas exclu qu’il soit économiquement et objectivement justifié pour une entreprise de commercialiser un produit ou une gamme de produits même si la part de ceux-ci dans le chiffre d’affaires annuel de l’entreprise en cause est minime (arrêt du 8 juillet 2004, «HIPOVITON», T-334/01, point 49).
Des circonstances particulières, comme des chiffres de vente inférieurs durant la phase initiale de commercialisation d’un produit, peuvent être pertinentes pour évaluer le caractère sérieux de l’usage (arrêt du 8 juillet 2004, «HIPOVITON», T-334/01, point 53).
2.6.2 Exemples d’usage insuffisant
Affaire n° Commentaire
«WALZERTRAUM», points 32 et suivants (pourvoi pendant C-141/13 P)
L’opposante, une boulangerie allemande située dans une ville de 18 000 habitants, a prouvé des ventes mensuelles constantes d’environ 3,6 kg de chocolats artisanaux exclusifs pendant 22 mois. En dépit d’une publicité sur internet accessible dans le monde entier, les chocolats ne pouvaient être commandés et achetés que dans la boulangerie de l’opposante. Compte tenu des limites territoriales et quantitatives, le Tribunal a considéré que la preuve de l’usage était insuffisante.
Arrêt du 30 avril 2008, «SONIA SONIA RYKIEL», T-131/06
54 unités de slips de femmes et 31 unités de jupons ont été vendues sur une période de 13 mois, pour un montant total de 432 EUR. Le Tribunal a considéré que ces quantités modestes étaient insuffisantes compte tenu du marché pertinent (produits de consommation courante vendus à un prix très raisonnable).
Décision du 27 février 2009, R 0249/2008-4, «AMAZING ELASTIC PLASTIC II»
La distribution gratuite à titre d’«échantillons» de 500 kits de ballons en plastique ne saurait constituer un usage sérieux.
Décision du 20 avril 2001, R 0378/2000-1, «Renacimiento»
La chambre de recours a confirmé la décision de la division d’opposition selon laquelle la présentation d’un connaissement attestant la livraison de 40 colis de sherry est insuffisante pour établir un usage sérieux.
Décision du 9 février 2012, R 0239/2011-1, «GOLF WORLD» (B 1 456 443, Golf World)
Comme unique preuve de l’usage de matériel imprimé, l’opposante a produit des preuves attestant que 14 personnes s’étaient abonnées à un magazine en Suède. La division d’opposition a conclu que cela ne suffisait pas à établir la preuve d’un usage sérieux en Suède, en particulier en raison du fait que les magazines ne sont pas des articles onéreux.
R 2132/2010-2, «SUSURRO» (fig.)
Neuf factures relatives à la vente de vin en 2005, en 2006, en 2007 et en 2008 prouvant qu’au cours d’une période de 36 mois, des produits commercialisés sous la marque antérieure et d’une valeur de 4 286,36 EUR ont été vendus, ainsi qu’un échantillon non daté d’une étiquette de produit n’ont pas été considérés comme une preuve suffisante d’un usage sérieux d’une marque espagnole enregistrée pour des «boissons alcooliques (à l’exception des bières)» relevant de la classe 33. Les preuves ont montré que les ventes de vin avaient eu lieu dans une petite partie très provinciale d’Espagne. Pour un pays comptant plus de 40 millions d’habitants, la quantité vendue d’un vin relativement bon marché a été jugée trop faible pour créer ou maintenir un débouché en faveur de produits (vin) consommés en grandes quantités par le consommateur espagnol moyen.
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Affaire n° Commentaire
Décision du 7 juillet 2011, R 0908/2010-2, «ALFA-REN»
Un tableau des chiffres de ventes de produits ALFACALCIDOL en Lituanie, entre 2005 et 2008, mentionnant des produits vendus par Teva Corp. sous la marque «ALPHA D3» (source: base de données d’IMS Health pour la Lituanie), un exemplaire de l’emballage d’un produit «ALPHA D3» (non daté) et une copie d’une publicité pour des produits «ALPHA D3» vendus en Lituanie (non traduite) ont été jugés insuffisants pour démontrer un usage sérieux de la marque en Lituanie. Les preuves produites ne montraient pas si les produits revêtus de la marque ont été effectivement distribués et, dans l’affirmative, dans quelles quantités.
Décision du 16 mars 2011, R 0820/2010-1, «BE YOU»
Des ventes de produits pour un bénéfice inférieur à 200 EUR au cours de la période d’usage de 9 mois n’ont pas été jugées suffisantes pour prouver un usage sérieux de la marque antérieure pour les produits relevant de la classe 14.
Décision du 6 avril 2011, R 0999/2010-1, «TAUTROPFEN CHARISMA (fig.)»
Onze factures montrant que 13 unités de produits de «parfumerie» ont été vendues en Espagne entre 2003 et 2005 pour un montant total de 84,63 EUR ont été jugées insuffisantes pour prouver un usage sérieux du signe. Il a été tenu compte du fait que les produits étaient destinés à un usage quotidien et étaient proposés à des prix très abordables.
Décision du 27 octobre 2008, B 1 118 605, «Viña la Rosa»
Des photocopies de trois guides des vins indépendants mentionnant la marque de l’opposante (sans autres explications concernant le volume, l’édition, l’éditeur, etc.) n’ont pas été jugées suffisantes pour prouver l’usage de la marque pour des vins.
Décision du 21 juin 1999, B 70 716, «Oregon»
La division d’opposition a jugé qu’une facture relative à 180 paires de chaussures n’était pas une preuve suffisante d’un usage sérieux.
Décision du 30 janvier 2001, B 193 716, «Lynx»
Comme preuve de l’usage, l’opposante a présenté deux factures relatives à 122 articles d’habillement et quatre étiquettes non datées sans indication des produits sur lesquels elles devaient être apposées. La division d’opposition a jugé ces preuves insuffisantes.
2.6.3 Exemples d’usage suffisant
Affaire n° Commentaire
Arrêt du 16 novembre 2011, T-308/06, «BUFFALO MILKE Automotive Polishing Products», point 68
Neuf factures datées d’avril 2001 à mars 2002 représentant des ventes de quelque 1 600 EUR (avec un chiffre d’affaires à peine supérieur à 1 000 000 EUR par an) et mentionnant que les articles ont été livrés à différents clients en petites quantités (12, 24, 36, 48, 60, 72 ou 144 pièces), pour des produits largement utilisés, tels que le cirage, sur le plus grand marché européen, c’est-à-dire l’Allemagne, qui compte environ 80 millions de consommateurs potentiels, ont été jugées suffisantes pour prouver un usage étant objectivement de nature à créer ou à maintenir un débouché pour des crèmes à polir et des crèmes pour le cuir. De plus, le volume des ventes par rapport à la durée et à la fréquence de l’usage a été jugé suffisamment significatif pour ne pas conclure à un usage purement symbolique, minime ou fictif dans le seul but de maintenir la protection du droit à la marque. Confirmé par le Tribunal.
Arrêt du 10 septembre 2008, T-325/06, «CAPIO», points 48 et 60
Les éléments (factures, liste des ventes) prouvant que l’intervenante a vendu 4 oxygénateurs à fibres creuses avec réservoir amovible à enveloppe rigide en Finlande en 1998, 105 en 1999 et 12 en 2001, pour un montant total de 19 901,76 EUR ont été jugés suffisants pour démontrer un usage sérieux de la marque communautaire enregistrée pour des «oxygénateurs avec pompe intégrée ; contrôleurs pour pompes intégrées ; dispositifs de régulation de la pression d’air pour pompes intégrées ; pompes aspirantes ; débitmètres sanguins» compris dans la classe 10.
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Affaire n° Commentaire
Arrêt du 27 septembre 2007, T-418/03, «LA MER», points 87 à 90
Dix factures couvrant une période de 33 mois, concernant plusieurs gammes de produits dont les emballages sont revêtus de la marque concernée, portant des numéros très espacés (22 214 pour la facture du 3 janvier 1995, 24 085 pour celle du 4 mai 1995, 24 135 pour celle du 10 mai 1995 et 31 348 pour celle du 26 mars 1997) et montrant que les ventes ont été faites à différentes personnes, ont été jugées suffisantes pour déduire qu’elles avaient été présentées à titre d’illustration des ventes totales et non comme preuve que l’usage de la marque s’est fait publiquement et vers l’extérieur et non uniquement à l’intérieur de l’entreprise titulaire de la marque antérieure ou d’un réseau de distribution possédé ou contrôlé par celle-ci. Néanmoins, les ventes effectuées, même si elles n’étaient pas importantes, ont été considérées comme constituant des actes d’usage objectivement propres à créer ou à conserver un débouché pour les produits en question dont le volume commercial, par rapport à la durée et à la fréquence de l’usage, n’est pas si faible qu’il amène à conclure qu’il s’agit d’un usage purement symbolique, minime ou fictif dans le seul but de maintenir la protection du droit à la marque.
Arrêt du 25 mars 2009, T-191/07, «BUDWEISER»
La chambre de recours (décision du mars 2007, R 0299/2006-2, «BUDWEISER / marque verbale internationale antérieure BUDWEISER», paragraphe 26) a conclu que les documents qui lui avaient été présentés au cours de la procédure administrative – des factures attestant la vente de plus de 40 000 litres de bière en France entre octobre 1997 et avril 1999, 23 factures émises en Autriche entre 1993 et 2000 à un acheteur unique en Autriche et 14 factures émises en Allemagne entre 1993 et 1997 – suffisaient à démontrer l’importance de l’usage de la marque verbale internationale antérieure BUDWEISER (Enregistrement international n° 238 203) dans ces pays. Les conclusions de la chambre ont été confirmées par le Tribunal.
Arrêt du 11 mai 2006, C-416/04 P, «VITAFRUIT», points 68 à 77
La preuve de la vente à un client unique en Espagne de jus de fruit concentrés durant une période de onze mois et demi pour un chiffre d’affaires total de 4 800 EUR, correspondant à la vente de 293 caisses de douze pièces chacune, a été jugée suffisante pour démontrer l’usage de la marque espagnole antérieure.
Arrêt du 8 juillet 2010, T-30/09, «peerstorm», points 42 et 43
Comme preuve de l’usage, l’opposante a (simplement) fourni plusieurs catalogues destinés aux consommateurs finaux, mentionnant la marque concernée sur des articles d’habillement. Le Tribunal a déclaré que «il est vrai que ces catalogues ne fournissent pas d’informations sur la quantité de produits effectivement vendus par l’intervenante sous la marque PETER STORM. Cependant, il y a lieu de prendre en compte […] le fait qu’un grand nombre d’articles désignés par la marque PETER STORM ont été proposés dans les catalogues et que ces articles étaient disponibles dans plus de 240 magasins au Royaume-Uni pendant une partie importante de la période pertinente. Ces éléments permettent, dans le cadre de l’appréciation globale […], de conclure à une certaine importance de cet usage».
Décision du 04 septembre 2007, R 0035/2007-2, «DINKY»
La vente d’environ un millier de voitures miniatures a été jugée suffisante pour démontrer l’importance de l’usage eu égard au fait que les produits étaient essentiellement vendus à des collectionneurs, à un prix élevé sur un marché particulier.
Décision du 11 octobre 2010, R 0571/2009-1, «VitAmour»
La vente de 500 kg de protéines de lait pour une valeur totale de 11 000 EUR a été jugée suffisante pour prouver l’usage sérieux de protéines de lait destinées à la consommation humaine. Compte tenu de la nature des produits, qui ne sont pas des produits de consommation, mais des ingrédients utilisés dans l’industrie agroalimentaire, la quantité et le montant prouvaient une présence sur le marché supérieure au seuil requis.
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Affaire n° Commentaire
Décision du 27 juillet 2011, R 1123/2010-4, «Duracryl»
Onze factures adressées à des entreprises différentes dans plusieurs régions d’Espagne, montrant que le titulaire de la marque a vendu au cours de la période pertinente et sous cette marque 311 conteneurs du produit, de différentes tailles, pour un montant net de 2 684 EUR, ont été jugées suffisantes pour prouver l’usage sérieux de la marque enregistrée pour des «préservatifs contre la détérioration du bois» compris dans la classe 2.
Décision du 01 février 2011, B 1 563 066
Un chiffre d’affaires annuel de plus de 10 millions d’euros sur plusieurs années était revendiqué pour des préparations médicales. Les factures correspondantes (une par année pertinente) ne prouvaient que des ventes effectives d’environ 20 EUR par an. Dans le cadre d’une appréciation globale et sur la base des autres pièces fournies telles que des barèmes de prix, une déclaration sous serment, du matériel d’emballage et publicitaire, l’Office a conclu que cela suffisait à prouver un usage sérieux.
Décision du 26 janvier2001, B 150 039
La division d’opposition a jugé suffisante la preuve de la vente d’environ 2 000 animaux en peluche dans un segment de marché haut de gamme.
Décision du 18 juin 2001, B 167 488
L’opposante a présenté une facture relative à la vente d’une machine de découpe laser de haute précision pour un montant de 565 000 FRF, un catalogue décrivant ses fonctionnalités et quelques photographies représentant le produit. La division d’opposition a considéré qu’il s’agissait d’une preuve suffisante, compte tenu de la nature du produit, du marché spécifique et de son prix extrêmement élevé.
2.7 L’usage de la marque sous des formes différentes de celle enregistrée
2.7.1 Introduction
L’article 15 du RMC dispose que l’usage de la marque sous une forme différente de celle sous laquelle celle-ci a été enregistrée constitue également un usage dès lors que les éléments qui diffèrent n’altèrent pas le caractère distinctif de la marque.
L’objet de cette disposition est de permettre au titulaire d’apporter au signe les variations qui, sans en modifier le caractère distinctif, permettent de mieux l’adapter aux exigences de commercialisation et de promotion des produits ou des services concernés (arrêt du 23 février 2006, «Bainbridge», T-194/03, point 50).
Le Tribunal a également précisé que la conformité stricte entre la forme utilisée et le signe enregistré n’est pas nécessaire. Cependant, la différence doit résider dans des éléments négligeables et les signes tels qu’ils sont utilisés et ont été enregistrés doivent être globalement équivalents (arrêt du 23 février 2006, «Bainbridge», T-194/03, point 50).
Pour déterminer si le signe tel qu’il est utilisé est globalement équivalent au signe tel qu’il a été enregistré, il convient tout d’abord d’établir quels sont les éléments négligeables. Le Tribunal a élaboré des critères pour ce faire dans plusieurs arrêts.
Le paragraphe 2.7.2 traite de ces critères. Le paragraphe 2.7.3 décrit la pratique de l’Office en ce qui concerne les «variantes» d’une marque, les «ajouts» d’éléments aux marques et les «suppressions» d’éléments des marques.
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Enfin, il convient de souligner qu’aux fins d’établir l’usage de la marque au sens de l’article 15, paragraphe 1, point a), du RMC, rien ne s’oppose à ce que le titulaire d’une marque enregistrée puisse se prévaloir de son utilisation dans une forme qui diffère de celle sous laquelle cette marque a été enregistrée sans que les différences entre ces deux formes altèrent le caractère distinctif de cette marque, et ce nonobstant le fait que cette forme différente est elle-même enregistrée en tant que marque (arrêt du 25 octobre 2012, «Rintisch», C-553/11, point 30).
2.7.2 Les critères de la Cour
En résumé, le critère établi par la Cour consiste à déterminer d’abord les éléments distinctifs et dominants du signe enregistré et à vérifier ensuite s’ils sont également présents dans le signe tel qu’il est utilisé.
Le Tribunal a déclaré que:
«l’appréciation du caractère distinctif et dominant d’un ou de plusieurs composants d’une marque complexe doit être fondée sur les qualités intrinsèques de chacun de ces composants, ainsi que sur la position relative des différents composants dans la configuration de la marque» (arrêt du 24 novembre 2005, «Online Bus», T-135/04, point 36).
S’agissant des ajouts:
Plusieurs signes peuvent être utilisés simultanément sans altérer le caractère distinctif du signe enregistré (arrêt du 8 décembre 2005, «CRISTAL CASTELLBLANCH», T-29/04, point 34).
Si l’ajout n’est pas distinctif, est faible et/ou n’est pas dominant, il n’altère pas le caractère distinctif de la marque enregistrée (arrêt du 30 novembre 2009, «Coloris», T-353/07, points 29 à 33 et suivants ; arrêt du 10 juin 2010, «Atlas Transport», T-482/08, points 36 et suivants).
S’agissant des suppressions:
Si l’élément omis occupe une position secondaire et n’est pas distinctif, son omission n’altère pas le caractère distinctif de la marque (arrêt du 24 novembre 2005, «Online Bus», T-135/04, point 36).
2.7.3 La pratique de l’Office
En règle générale, il convient d’apprécier si l’usage de la marque constitue une «variante» acceptable ou inacceptable de la forme sous laquelle elle a été enregistrée.
Il y a donc lieu de répondre à deux questions. Tout d’abord, il est nécessaire de clarifier ce qu’il faut entendre par caractère distinctif de la marque telle qu’elle a été
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enregistrée4. Ensuite, il convient d’évaluer si la marque telle qu’elle est utilisée altère ce caractère distinctif. Ces questions doivent être appréciées au cas par cas.
Il existe un lien d’interdépendance entre le degré de caractère distinctif d’une marque et l’effet des modifications apportées. Cet effet sera peut-être moindre lorsque le caractère distinctif de la marque est prononcé que lorsqu’il est limité. En revanche, il est probable que l’ajout ou l’omission d’éléments porte davantage atteinte au caractère distinctif des marques lorsque celui-ci est limité.
Lorsqu’une marque est composée de plusieurs éléments, dont un ou quelques-uns seulement sont distinctifs et ont permis l’enregistrement de la marque dans son ensemble, la modification d’un ou de ces éléments distinctifs, son/leur omission ou son/leur remplacement par un autre élément aura généralement pour effet d’altérer le caractère distinctif de la marque.
Pour déterminer s’il y a lieu d’accepter l’utilisation d’une variante de la marque ou si le caractère distinctif est altéré, il convient de tenir compte des usages dans la branche ou le secteur d’activité concerné et du public pertinent.
Les sections suivantes énoncent un certain nombre de directives pratiques pour déterminer si des ajouts (paragraphe 2.7.3.1), des suppressions (paragraphe 2.7.3.2) et des modifications (paragraphe 2.7.3.3) dans la forme du signe tel qu’il est utilisé altèrent le caractère distinctif de la marque enregistrée.
2.7.3.1 Les ajouts
Comme indiqué ci-dessus, en ce qui concerne les ajouts, (i) plusieurs signes peuvent être utilisés simultanément sans altérer le caractère distinctif du signe enregistré et (ii) si l’ajout n’est pas un élément distinctif, est faible et/ou n’est pas dominant, il n’altère pas le caractère distinctif de la marque enregistrée.
Les sections suivantes présentent des exemples de ces deux types de scénarios:
utilisation simultanée de plusieurs signes ;
ajouts d’autres éléments verbaux ;
ajouts d’éléments figuratifs.
L’utilisation simultanée de plusieurs marques ou signes
Dans certains segments du marché, il est très courant que les produits et services soient revêtus non seulement de leur marque individuelle, mais aussi de la marque du groupe d’entreprises ou de produits (marque d’entreprise). Dans ce cas, ce n’est pas la marque enregistrée qui est utilisée sous une forme différente, mais deux marques indépendantes qui sont valablement utilisées simultanément.
4 Voir Directives, partie C,Opposition, section 2, Identité et risque de confusion, chapitre 4,Caractère distinctif.
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Dans le système de la marque communautaire, aucun principe juridique n’oblige l’opposant à apporter une preuve de l’usage sérieux de la marque antérieure à moins que cette preuve ne soit requise en application de l’article 42 du RMC. Deux ou plusieurs marques peuvent être utilisées ensemble de manière autonome, avec ou sans mention du nom de l’entreprise, sans altérer le caractère distinctif de la marque enregistrée antérieure.
La Cour a confirmé que la condition d’usage sérieux d’une marque enregistrée peut être satisfaite lorsque celle-ci est utilisée en tant que partie d’une autre marque complexe ou lorsqu’elle est utilisée conjointement avec une autre marque, la combinaison de ces marques étant, de surcroît, elle-même enregistrée comme marque (arrêt du 18 avril 2013, «SM JEANS/LEVI’S», C-12/12, point 36). De même, la Cour a précisé que la condition d’usage sérieux pouvait être satisfaite lorsqu’une marque figurative est utilisée en combinaison avec une marque verbale qui lui est surimposée, même si la combinaison de ces deux marques est elle-même enregistrée, pour autant que les différences entre la forme sous laquelle la marque est utilisée et celle sous laquelle cette marque a été enregistrée n’altèrent pas le caractère distinctif de ladite marque telle qu’enregistrée (voir l’arrêt du 18 juillet 2013, «Specsavers», C-252/12, point 31).
Forme enregistrée Usage effectif Affaire n°
CRISTAL T-29/04
«En l’espèce, la marque CRISTAL apparaît clairement quatre fois sur le goulot de la bouteille commercialisée par l’intervenante et deux fois sur l’étiquette principale, accompagnée du symbole ®. Sur le goulot, elle se trouve à l’écart des autres éléments. Par ailleurs, sur les coffrets dans lesquels les bouteilles de la marque CRISTAL sont commercialisées, la marque CRISTAL apparaît seule. De même, sur les factures produites par l’intervenante, il est fait référence au terme «cristal» avec la mention «1990 coffret». Il y a lieu de relever que la marque CRISTAL identifie ainsi le produit commercialisé par l’intervenante» (point 35).
«En ce qui concerne la mention "Louis Roederer" figurant sur l’étiquette principale, elle indique simplement le nom de la société du fabricant, ce qui peut créer un lien direct entre une ou plusieurs gammes de produits et une entreprise déterminée. Le même raisonnement vaut pour le groupe de lettres "lr" qui représente les initiales du nom de l’intervenante. Comme l’OHMI l’a indiqué, l’emploi conjoint de ces éléments sur une même bouteille ne porte pas atteinte à la fonction d’identification remplie par la marque CRISTAL à l’égard des produits en cause» (point 36). «En outre, l’appréciation de l’OHMI, selon laquelle l’emploi d’une marque verbale combinée avec l’indication géographique "Champagne" ne peut être considéré comme un ajout susceptible d’altérer le
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caractère distinctif de la marque lorsque celle-ci est utilisée pour du champagne, doit être approuvée. En effet, dans le secteur du vin, le consommateur a souvent un intérêt particulier pour l’origine géographique précise du produit et l’identité du producteur du vin, étant donné que la renommée de ces produits est souvent liée au fait qu’ils sont produits dans une région géographique déterminée par un établissement vinicole déterminé» (point 37).
«Dans ces circonstances, il y a lieu de constater que l’emploi de la marque verbale CRISTAL en combinaison avec d’autres indications est sans pertinence et que la chambre de recours n’a violé ni l’article 15, paragraphe 2, sous a), du règlement n° 40/94, ni son article 43, paragraphes 2 et 3, ni la règle 22, paragraphe 2, du règlement d’exécution» (point 38).
Forme enregistrée Usage effectif Affaire n°
L.114 Lehning L114 T-77/10 et T-78/10
L.114 est une marque française enregistrée pour des «produits pharmaceutiques» relevant de la classe 5.
Le Tribunal a jugé que: 1) l’absence de point entre la lettre majuscule «L» et le nombre 114 constitue une différence mineure
qui ne prive pas la marque antérieure L.114 de son caractère distinctif (point 53) ; 2) le fait que la marque antérieure «L.114» ait été utilisée avec la marque d’entreprise «Lehning»
n’était pas important et n’altérait pas son caractère distinctif au sens de l’article 15, paragraphe 1, point a), du RMC (point 53).
Forme enregistrée Usage effectif Affaire n°
YGAY YGAY avec plusieurs autreséléments verbaux et figuratifs R 1695/2007-1
(confirmé par l’arrêt T-546/08)
Dans sa décision (confirmée par le Tribunal dans l’affaire T-546/08, points 19 et 20 des motifs), la chambre de recours a souligné que la marque YGAY apparaît sur de nombreuses photographies à la fois sur l’étiquette et sur le coffret dans lequel la bouteille est vendue. Sur certaines étiquettes, la marque en cause est séparée des autres éléments. Sur certaines étiquettes, elle apparaît seule, en dessous de l’expression MARQUES DE MURRIETA, écrite en grands caractères gras. Sur d’autres, l’expression BODEGAS MARQUES DE MURRIETA est écrite en petits caractères dans la partie supérieure, tandis que les éléments CASTILLO YGAY sont écrits en grands caractères stylisés en travers de l’étiquette. La marque YGAY apparaît également seule ou en combinaison avec l’expression CASTILLO YGAY sur les coffrets dans lesquels les bouteilles sont vendues. Les factures produites par l’opposante font également référence à la marque YGAY, ainsi qu’à des informations générales telles que l’année de production et l’origine, etc. Il s’ensuit que le signe YGAY remplit la fonction d’une marque en identifiant les produits, «vin», vendus par l’opposante (paragraphe 15).
Dans ce contexte, la mention MARQUES DE MURRIETA pourrait simplement être une indication du nom de l’entreprise ou du vignoble du fabricant qui produit et vend le vin, ce qui pourrait établir un lien direct entre une ou plusieurs gammes de produits et une entreprise déterminée (voir l’arrêt du Tribunal du 8 décembre 2005, «Cristal Castellblanch», T-29/04, point 36) (paragraphe 16).
Forme enregistrée Usage effectif Affaire n°
Marque n° 1 Marque n° 2
C-12/12
Levi Strauss est le titulaire des deux marques communautaires reproduites ci-dessus. La marque n° 1 est toujours utilisée en conjonction avec la marque verbale LEVI’S, c’est-à-dire comme dans la marque n° 2. La CJUE a jugéque la condition d’usage sérieux peut être remplie lorsqu'une marque communautaire figurative est uniquement utilisée en conjonction avec une marque communautaire verbale qui lui est surimposée et que la combinaison de ces deux marques est, en outre, elle-même enregistrée en tant que marque communautaire, pour autant que les différences entre la forme sous laquelle la marque est
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utilisée et celle sous laquelle cette marque a été enregistrée n’altèrent pas le caractère distinctif de ladite marque telle qu’enregistrée.
Forme enregistrée Usage effectif Affaire n°
C-252/12
Specsavers a engagé une action en contrefaçon de marque et en usurpation d’appellation (passing-off) sur la base des marques communautaires antérieures SPECSAVERS (marque verbale), et des signes
figuratifs , et , à l’encontre d’ASDA, une chaîne de supermarchés qui a relancé ses activités dans le domaine de l’optique et ciblé Specsavers dans sa campagne de commercialisation. Specsavers a utilisé, en couleur, ses enregistrements en noir et blanc et a acquis une
renommée au Royaume-Uni pour la couleur verte, en utilisant son signe comme suit: . ASDA a également acquis une renommée au Royaume-Uni pour une autre nuance de vert dans le cadre de son
activité de supermarché, qu’elle a appliquée à son activité dans le domaine de l’optique: .
La CJUE a estimé que l’usage de avec le signe verbal surimposé pouvait être considéré comme étant un usage sérieux de la marque au logo muet dans la mesure où celle-ci, telle qu’elle a été enregistrée, renvoie toujours sous cette forme aux produits de Specsavers (qu’il appartient à la juridiction de renvoi d’apprécier).
Cependant, l’opposant doit apporter la preuve que le signe additionnel est en fait une marque ou un signe indépendant, qui fait référence, par exemple, à la marque de l’entreprise, au fabricant, etc.
Forme enregistrée Usage effectif Affaire n°
MINUTO DUBOIS MINUTO R 0206/2000-3
La chambre de recours a considéré que la présentation des deux mots équivalait à l’usage de deux marques séparées, car il ressortait des pièces produites par l’opposante que l’une d’elles était une vieille marque de l’opposante, dotée d’une identité propre, et que cette marque était présente sur le marché avec un certain nombre de signes accompagnateurs, ce qui correspond à une pratique courante en matière d’étiquetage des produits concernés (vin).
«DUBOIS» et «MINUTO» sont des marques séparées qui sont apposées ensemble sur le produit concerné, ce qui est une pratique courante dans l’étiquetage de vins (nom du vignoble et nom du produit). S’agissant des marques espagnoles, voir par exemple «TORRES» - «Sangre de Toro», «TORRES» - «Acqua d’Or». Lorsqu’il demande du vin «MINUTO», le consommateur pertinent saura que ce vin fait partie de la gamme de produits «DUBOIS». Cependant, «MINUTO» sera perçu comme une marque individuelle, même s’il est possible qu’elle apparaisse à côté du signe «DUBOIS» sur les factures, dans les brochures et/ou sur les étiquettes de produits (paragraphe 18).
Par ailleurs, le caractère sérieux de l’usage pourrait être mis en doute lorsque la marque enregistrée peut être perçue comme un simple élément décoratif en raison de l’utilisation supplémentaire très dominante d’autres marques.
L’ajout d’autres éléments verbaux
En principe, une différence au niveau des mots, voire des lettres, équivaut à une altération du caractère distinctif de la marque. Cependant, les trois paragraphes
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suivants décrivent plusieurs situations dans lesquelles des ajouts sont acceptables. Le quatrième paragraphe présente des exemples d’ajouts inacceptables.
Ajouts d’éléments non dominants
Forme enregistrée Usage effectif Affaire n°
COLORIS
INTERNATIONAL TRADEMARK ASSOCIATION
Use as registered - case law
COLORIS
T-353/07
INTERNATIONAL TRADEMARK ASSOCIATION
Use as registered - case law
COLORIS
T-353/07T-353/07
Le Tribunal a confirmé que l’usage de la marque Coloris accompagnée d’éléments verbaux supplémentaires tels que «global coloring concept» ou «gcc» n’altérait pas son caractère distinctif, car ces éléments additionnels étaient simplement utilisés avec la marque Coloris, étaient positionnés en dessous de celle-ci et n’étaient pas dominants dans cette marque.
La même conclusion s’applique d’autant plus aux mots additionnels (global coloring concept) qu’il s’agit de termes ayant une signification générale et que le terme «coloring» fait référence aux produits en cause et a, par conséquent, un certain caractère descriptif.
Ajouts ayant un sens générique ou descriptif
Lorsqu’une marque verbale (ou toute autre marque) enregistrée est utilisée avec une indication générique concernant le produit ou avec un terme descriptif, cette utilisation constitue un usage de la marque enregistrée. Les ajouts qui consistent en de simples indications concernant les caractéristiques des produits et services, comme l’espèce, la qualité, la quantité, la destination, la valeur, l’origine géographique, la date de fabrication des produits ou de prestation des services, ne constituent pas, en règle générale, l’usage d’une variante, mais l’usage de la marque elle-même.
Exemple:
Forme enregistrée Usage effectif Affaire n°
FANTASIA FANTASIA 2000 R 1335/2006-2
«Il ressort clairement des preuves (notamment de l’article Film Journal International) que "Fantasia 2000" est une nouvelle version du film original "Fantasia" de Walt Disney, produit en 1940, créé dans l’esprit de l’original, à savoir une séquence de scènes d’animation sur de la musique classique. Par conséquent, le nombre "2000" est une simple référence à la nouvelle édition du film et, en tant que tel, il ne constitue pas une modification qui exclurait, en soi, que ce titre soit pris en compte comme preuve de l’usage du mot "Fantasia" protégé par l’enregistrement antérieur, conformément à l’article 15, paragraphe 2, point a), du RMC» (paragraphe 22).
Autres ajouts acceptables
L’ajout d’éléments sans importance comme des signes de ponctuation n’altère pas le caractère distinctif:
Forme enregistrée Usage effectif Affaire n°
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PELASPAN-PAC PELASPAN PAC R 1986/2011-4
L’usage de la marque antérieure «PELASPAN-PAC» sans le trait d’union reliant les éléments «PELASPAN» et «PAC» n'altère pas le caractère distinctif de la marque antérieure telle qu'elle a été enregistrée et doit donc être pris en considération dans l'appréciation de l'existence d'un usage sérieux.
De même, l’utilisation du singulier ou du pluriel, ou inversement, dans des mots ayant une signification (p.ex. en ajoutant ou enlevant une lettre «s» en anglais ou dans d'autres langues) n’altère normalement pas le caractère distinctif:
Forme enregistrée Usage effectif Affaire n°
Tentation Tentations R 1939/2007-1
«En l’espèce et après examen des preuves produites, qui concernent essentiellement le marché espagnol, la chambre de recours est d’avis que l’utilisation de la marque enregistrée "TENTATION" par l’usage du signe "TENTATIONS" n’altère pas le caractère distinctif de la marque enregistrée originale. En particulier, le simple ajout de la lettre "S" à la fin de la marque n’altère pas substantiellement l’aspect visuel ou la prononciation de la marque enregistrée et ne crée pas une impression conceptuelle différente sur le marché espagnol. La marque en cause sera simplement perçue comme étant au pluriel plutôt qu’au singulier. Par conséquent, ce changement n’altère pas le caractère distinctif du signe» (paragraphe 17).
L’ajout du «type d’entreprise» est également acceptable:
Forme enregistrée Usage effectif Affaire n°
La forme utilisée contenait le logo plus les mots
«SOCIEDAD LIMITADA» (en petits caractères) sous le terme «SISTEMAS» et/ou l’élément
figuratif «E» avec les mots «epco SISTEMAS, S.L.» en
gras
R 1088/2008-2 Confirmé par T-132/09
«ces signes ne constituent pas, comme la demanderesse semble le suggérer, des modifications significatives du caractère distinctif de la marque antérieure telle qu’elle a été enregistrée» (paragraphe 24).
Ajouts inacceptables
Forme enregistrée Usage effectif Affaire n°
Captain Captain Birds Eye R 0089/2000-1
«On ne saurait considérer […] que l’utilisation de CAPTAIN BIRDS EYE constitue un usage de la marque CAPTAIN sous une forme qui n’altère pas le caractère distinctif de la marque telle qu’elle a été enregistrée, étant donné que les deux signes sont fondamentalement différents» (paragraphe 20).
Forme enregistrée Usage effectif Affaire n°
ECO ECOORD-ECO, ECOCOM-ECO, ECOSEM-ECO R 0634/2009-4
«L’opposante invoque également une série de 75 factures dans lesquelles ce n’est pas la marque de l’opposante en tant que telle qui apparaît, mais bien les expressions ECOORD-ECO, ECOSEM-ECO et ECOCOM-ECO. Aucune d’entre elles n’est la forme sous laquelle la marque a été enregistrée. […] L’argument de l’opposante selon lequel les termes ECOORD, ECOSEM et ECOCOM sont des éléments
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descriptifs et négligeables ne saurait être retenu. Il n’est pas pertinent que l’opposante ait eu l’intention de mettre des éléments descriptifs devant sa marque. L’élément déterminant est celui de savoir si les consommateurs perçoivent ses éléments supplémentaires comme de simples préfixes descriptifs ou plutôt comme des éléments véritablement distinctifs. […] Les termes en tant que tels n’ont pas de signification en italien et les explications fournies par l’opposante pour résoudre ces abréviations assez complexes ne sauraient être considérées comme allant de soi pour les consommateurs italiens. Ils paraissent fantaisistes et distinctifs et semblent faire partie intégrante des marques» (paragraphes 17 à 20).
«Enfin, les termes utilisés dans les factures ont des préfixes différents et sont trois fois plus longs que la marque originale. En outre, les combinaisons utilisées, ECOORD, ECOSEM et ECOCOM, ont leur caractère distinctif propre et sont placés au début des marques, une position à laquelle le consommateur accorde généralement plus d’attention. C’est pourquoi l’utilisation des termes ECOORD-ECO, ECOSEM- ECO et ECOCOM-ECO ne saurait être considérée comme un usage légèrement différent de la marque antérieure» (paragraphe 21).
L’ajout d’éléments figuratifs
Lorsque l’élément figuratif ne joue qu’un rôle mineur, le caractère distinctif du signe tel qu’il a été enregistré n’est pas altéré.
Forme enregistrée Usage effectif Affaire n°
BIONSEN R 1236/2007-2
«De plus, cette pièce montre que les produits de la défenderesse contiennent également d’autres éléments, notamment un caractère japonais à l’intérieur d’un petit rond, qui est reproduit soit au-dessus, soit au-dessous du mot "BIONSEN"» (paragraphe 19).
«Toutefois, en l’espèce, la combinaison de la forme stylisée du mot "BIONSEN" et du caractère japonais, indépendamment de la question de savoir s’il est placé au-dessus ou au-dessous du mot "BIONSEN", constitue, au mieux, un usage qui ne diffère de la forme sous laquelle la marque a été enregistrée que par des éléments négligeables. Le mot "BIONSEN" tel qu’il est utilisé est simplement une légère stylisation banale du mot "BIONSEN". Quant à l’ajout de l’élément figuratif sous la forme d’un élément circulaire comportant un caractère japonais, il sera à peine remarqué par le consommateur moyen en raison de sa dimension relativement petite et de sa position, soit sous le mot "BIONSEN", soit à la droite de celui-ci» (paragraphe 23).
Forme enregistrée Usage effectif Affaire n°
BLUME
Signe utilisé avec l’élément figuratif suivant:
R 0681/2001-1
«S’agissant de la marque BLUME n° 1 518 211, la division d’opposition a conclu à bon droit que l’ajout de l’élément figuratif […] n’altère pas le caractère distinctif de la marque BLUME, car le mot "BLUME" est séparé de l’élément figuratif, qui est clairement lisible et écrit en lettres majuscules» (paragraphe 22).
Par ailleurs, l’ajout d’un élément figuratif peut altérer le caractère distinctif d’une marque lorsqu’il n’est pas considéré comme un simple élément décoratif, mais est dominant et distinctif dans l’impression d’ensemble produite par la marque.
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 41
FINAL VERSION 1.0 01/02/2015
Forme enregistrée Usage effectif Affaire n°
R 0275/2006-2
«La chambre est d’accord avec le titulaire de la marque communautaire pour dire que le signe [effectivement utilisé] ne saurait être simplement considéré comme une légère variante de la marque antérieure […] telle qu’elle est enregistrée. Indépendamment du fait que les signes ont en commun l’élément verbal "HYBRIS", l’élément figuratif supplémentaire – un "y" inversé dans des crochets à la forme particulière – ne saurait être considéré comme un "élément négligeable". L’élément figuratif en cause est assez inhabituel et frappant. Ce n’est pas un simple élément décoratif. En outre, il occupe la première position prédominante au sein du signe tel qu’il est utilisé et en fait partie intégrante. Il ne sera pas négligé dans l’impression d’ensemble produite par le signe» (paragraphe 23).
2.7.3.2 Les suppressions
Lors de l’examen des «suppressions» d’éléments d’une marque, il convient de vérifier que le caractère distinctif de la marque n’a pas été altéré.
Si l’élément supprimé occupe une position secondaire et n’est pas distinctif, sa suppression n’altère pas la marque (arrêt du 24 novembre 2005, «Online Bus», T-135/04).
Suppressions d’éléments non dominants
Forme enregistrée Usage effectif Affaire n°
T-135/04
Le Tribunal a considéré que les deux formes de la marque antérieure, à savoir celle enregistrée et celle utilisée, incluent l’élément verbal «BUS» et un élément figuratif composé de «trois triangles entrelacés». La présentation de ces éléments n’est pas particulièrement originale ou inhabituelle dans chacune des deux formes. Leur variation n’est donc pas de nature à affecter le caractère distinctif de cette marque. En ce qui concerne la suppression de l’expression «Betreuungsverbund für Unternehmer und Selbständige e.V.», il s’agit d’un «élément verbal long, écrit en petits caractères et occupant une position secondaire, au bas du signe. Sa signification (Association d’assistance aux entrepreneurs et indépendants, association déclarée) fait référence aux services en cause. Dès lors, eu égard au contenu descriptif de l’élément en cause, ainsi qu’à sa position accessoire dans la présentation du signe, il y a lieu de considérer qu’il n’est pas distinctif. […] Il résulte de ce qui précède que la forme utilisée de la marque antérieure ne revêt pas de différences de nature à altérer le caractère distinctif de cette marque» (points 34 et suivants).
Suppressions d’éléments génériques ou descriptifs
Lorsqu’une marque enregistrée est utilisée avec une indication générique du produit ou avec un terme descriptif et que ce terme est supprimé dans la forme utilisée du signe, cette utilisation est considérée comme un usage de la marque enregistrée.
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 42
FINAL VERSION 1.0 01/02/2015
Des suppressions qui consistent en de simples indications concernant les caractéristiques des produits et des services, comme l’espèce, la qualité, la quantité, la destination, la valeur, l’origine géographique ou la date de fabrication des produits ou la date des services, constituent, généralement, un usage d’une variante acceptable.
Forme enregistrée Usage effectif Affaire n°
T-415/09 (confirmé par C-621/11 P)
La chambre de recours a considéré qu’alors que dans certains éléments de preuve, la marque antérieure n’incluait pas le mot «beachwear», «cela n’altère pas le caractère distinctif de la marque antérieure, parce qu’elle est essentiellement descriptive de la nature des produits» («T-shirts, vêtements de plage»). Le Tribunal a déclaré: «En l’espèce, la marque antérieure est une marque complexe, représentant un gouvernail de bateau, soit un signe de forme arrondie. Au centre de ce signe figure un squelette de poisson, en haut duquel est inscrit le terme "fishbone", et en bas le terme "beachwear". […] [b]ien que l’usage de la marque antérieure varie dans certains éléments de preuve et que celle-ci est utilisée sous une forme qui diffère de celle sous laquelle elle a été enregistrée, en ce sens que le signe n’inclut pas le terme "beachwear", une telle circonstance n’affecte pas son caractère distinctif. En effet, le terme "beachwear", qui signifie "vêtement de plage" en langue anglaise, est descriptif de la nature des produits désignés par la marque antérieure [caractères gras ajoutés]. Ce caractère descriptif est évident pour les "vêtements de plage" visés par la marque antérieure, mais également pour les "T-shirts", pour lesquels le terme "beachwear" sera immédiatement perçu comme indiquant qu’il s’agit d’un T-shirt à porter dans une ambiance décontractée, par exemple l’été sur la plage. Le consommateur comprendra ainsi ce terme comme désignant le type de produit et il ne le percevra pas comme une indication de son origine commerciale. Le fait que le terme "beachwear" est écrit avec une police de caractères plus fantaisiste que celle du terme "fishbone", écrit en caractères majuscules ordinaires, ne saurait modifier une telle appréciation. De plus, la police du premier terme ne peut être considérée comme peu commune, puisqu’il s’agit de caractères d’imprimerie en lettres minuscules. Quant à la position horizontale du terme "beachwear" dans la marque antérieure, qui traverse perpendiculairement le bas d’un gouvernail de bateau, elle n’est pas graphiquement plus incisive que celle du terme "fishbone", qui, également écrit à l’horizontale, suit la forme arrondie de ce même gouvernail» (points 62-63).
Forme enregistrée Usage effectif Affaire n°
R 1190/2011-4
Les signes figuratifs reproduits dans les preuves de l’usage contiennent les éléments distinctifs de la marque antérieure et ces éléments sont clairement visibles sur les étiquettes. L’inversion des éléments figuratifs et verbaux du signe et l’indication supplémentaire des appelations d’origine respectives (Soave, Soave Superior et Chianti) n’altèrent pas le caractère distinctif de la marque antérieure, qui est reproduite dans le signe avec tous ses éléments distinctifs. Les consommateurs de vins cherchent particulièrement à
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 43
FINAL VERSION 1.0 01/02/2015
connaître l’origine géographique précise de ces produits; toutefois, l’ajout de ces informations sur l’origine géographique des produits ne saurait altérer le caractère distinctif d’une marque dans le cadre de sa fonction essentielle d’identification d’une origine commerciale donnée (voir l’arrêt du 8 décembre 2005, «Cristal Castellblanch», T-29/04, point 19).
Autres suppressions acceptables
La suppression de prépositions sans importance n’altère pas le caractère distinctif:
Forme enregistrée Usage effectif Affaire n°
CASTILLO DE PERELADA CASTILLO PERELADA B 103 046
La suppression du mot «de» n’est pas considérée comme altérant le caractère distinctif de la marque.
Dans certains cas, le signe antérieur est composé d’un élément verbal distinctif (ou plusieurs) et d’un élément figuratif (ou plusieurs), ce dernier étant jugé banal par le public pertinent. Ces éléments banals sont considérés comme non distinctifs et leur suppression n’altère pas le caractère distinctif du signe. Il y a donc lieu de déterminer quels sont les éléments qui influencent le caractère distinctif de la marque et comment les consommateurs les percevront.
Forme enregistrée Usage effectif Affaire n°
ROYAL
R 214/2012-1
Les signes reproduits ci-dessus diffèrent uniquement des marques verbales antérieures «ROYAL» dans la mesure où les mots sont incurvés et, dans le cas du signe utilisé pour des produits autres que de la poudre à lever, sont accompagnés d’une bannière rouge à l’arrière-plan. Du point de vue du public pertinent, cette banale représentation graphique sera perçue comme étant uniquement décorative et destinée à adapter les signes à la présentation de l'emballage du produit. Cette représentation graphique ne confère à elle seule aucun caractère distinctif aux signes tels qu’ils sont utilisés et n'altère donc pas le caractère distinctif de la marque verbale antérieure. Le même raisonnement peut être appliqué à la marque figurative antérieure qui, selon sa revendication de couleur, est colorée en rouge et blanc et dont l’élément verbal «Royal» est représenté en diagonale. Cette marque correspond donc au signe utilisé dans la vie des affaires pour des produits autres que de la poudre à lever (pparagraphes 33 et 34).
La suppression de la translittération d’un terme est généralement considérée comme une modification acceptable.
Forme enregistrée Usage effectif Affaire n°
APALIA-ΑΠΑΛΙΑ APALIA R 2001/2010-1
La suppression de la translittération du terme en caractères grecs n’altère pas le caractère distinctif de la marque, étant donné que la forme utilisée contient le terme APALIA, qui est distinctif et dominant.
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 44
FINAL VERSION 1.0 01/02/2015
Suppressions inacceptables
En principe, une différence au niveau des mots, voire des lettres, équivaut à une altération du caractère distinctif de la marque.
Forme enregistrée Usage effectif Affaire n°
TONY HAWK
HAWK
B 1 034 208
«l’absence de l’élément verbal "TONY" dans les deux premières marques altère de façon significative le caractère distinctif de la marque antérieure enregistrée "TONY HAWK". Par conséquent, ces marques seront perçues comme des marques séparées et leur utilisation ne pourra être considérée comme un usage de la marque verbale "TONY HAWK"
Forme enregistrée Usage effectif Affaire n°
(en Espagne)
Forme figurative (sans «Light Technology» ou uniquement
avec le mot «Light» et d’autres éléments verbaux) ou forme
verbale
R 1625/2008-4 (le recours T-143/10 ne faisait pas
référence aux marques espagnoles)
«En l’espèce, la chambre de recours a pu vérifier qu’aucun des éléments de preuve de l’usage fournis ne reproduit les signes espagnols antérieurs dans la forme sous laquelle ils ont été enregistrés, étant donné que la marque est représentée sous sa forme purement graphique, c’est-à-dire sans l’expression "light technology", ou l’élément graphique est uniquement accompagné du terme "Light" et d’autres éléments verbaux, ou l’expression "LT Light-Technology" également sous forme verbale sans l’élément figuratif qui caractérise manifestement les marques espagnoles antérieures sur lesquelles l’opposition est fondée. […] Dans ces circonstances et compte tenu du fait que les modifications apportées à la représentation des marques antérieures altèrent leur caractère distinctif, la chambre de recours considère qu’en tout état de cause, la preuve apportée ne démontre pas un usage des marques espagnoles sur lesquelles l’opposition est fondée» (paragraphes 15 et 16).
Forme enregistrée Usage effectif Affaire n°
SP LA SPOSA LA SPOSALA SPOSA COLLECTION R 1566/2008-4
«La marque antérieure est enregistrée comme "SP LA SPOSA". Les documents présentés comme preuve de l’usage ne font référence qu’à des robes de mariée. L’élément "LA SPOSA" est une expression courante, qui sera compris par le public italien et espagnol comme signifiant «la mariée» et elle a un faible caractère distinctif pour les produits en cause, à savoir des robes de mariée. L’opposante, elle-même, dans sa liste de prix "tarifa de precios" rédigée dans plusieurs langues officielles de la CE, a traduit cette expression dans les différentes langues ; sous l’expression "LA SPOSA", sont mentionnés les mots "novia" dans la version portugaise de la liste, "bride" dans la version anglaise, "Braut" dans la version allemande, etc. Ceci montre que la défenderesse considère elle-même que l’expression "LA SPOSA" fait référence au consommateur ciblé, à savoir la future mariée» (paragraphe 18).
«Par conséquent, l’élément "SP" au début de la marque antérieure est un élément distinctif et ne saurait être ignoré. Cet élément ne peut pas être négligé, d’abord et surtout parce qu’il est placé au début de la marque. De plus, il n’a pas de signification et a un caractère distinctif intrinsèque, dans toutes les langues de la Communauté européenne» (paragraphe 19).
«La suppression des lettres "SP" dans l’expression "LA SPOSA" ou "LA SPOSA COLLECTION" n’est pas une variante acceptable de la marque antérieure, mais constitue une modification significative apportée au caractère distinctif de la marque. Les documents produits par la défenderesse ne suffisent pas à prouver que la marque "SP LA SPOSA" a fait l’objet d’un usage sérieux (paragraphe 26).
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 45
FINAL VERSION 1.0 01/02/2015
Lorsque l’élément figuratif est l’élément distinctif ou dominant et n’est pas purement décoratif ou banal, sa suppression peut altérer le caractère distinctif du signe.
Forme enregistrée Usage effectif Affaire n°
ESCORPION R 1140/2006-2
«Les marques antérieures sont fortement dominées par la présence de l’élément figuratif. Cependant, les pièces produites au cours de la procédure d’opposition et, même si elles devaient être prises en compte lors de la procédure de recours, ne prouvent pas l’usage de l’élément figuratif contenu dans les marques antérieures» (paragraphe 19).
«Par conséquent, l’Office considère que la modification apportée à la marque de l’opposante qui apparaît dans la forme sous laquelle elle est actuellement utilisée n’est pas une modification acceptable et, partant, l’usage de la marque enregistrée n’est pas démontré. L’opposante n’a pas satisfait aux exigences de l’article 43, paragraphes 2 et 3, du RMC, et l’opposition doit dès lors être rejetée en ce qu’elle était fondée sur les enregistrements de marques espagnoles» (paragraphe 20).
2.7.3.3 Autres modifications
Modifications acceptables
Marques verbales
Les marques verbales sont réputées être utilisées telles qu’elles ont été enregistrées, indépendamment de la police de caractères, de l’utilisation de majuscules ou de minuscules ou de couleurs. Il ne serait pas justifié d’examiner ce type d’usage sous l’angle d’une altération éventuelle du caractère distinctif. Cependant, une police de caractères très particulière (extrêmement stylisée) pourrait conduire à une conclusion différente.
Il est courant de changer la taille des caractères ou de passer de la majuscule à la minuscule, ou inversement, lorsque l’on utilise des marques verbales. Cette utilisation est donc considérée comme un usage de la marque enregistrée.
Forme enregistrée Usage effectif Affaire n°
MILENARIO R 0289/2008-4
La chambre de recours a confirmé le point de vue de la division d’opposition, selon lequel l’utilisation de la marque verbale «MILENARIO» en caractères gras stylisés n’altérait pas le caractère distinctif de la marque, étant donné que le mot «MILENARIO» était considéré comme l’élément dominant de la marque enregistrée pour des «vins pétillants et liqueurs» de la classe 33 (paragraphe 13).
Forme enregistrée Usage effectif Affaire n°
AMYCOR R 1344/2008-2
La représentation de la marque verbale, enregistrée pour des «produits pharmaceutiques et produits
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 46
FINAL VERSION 1.0 01/02/2015
hygiéniques ; emplâtres ; matériel pour pansements ; fongicides ; désinfectants» couverts par la marque antérieure et relevant de la classe 5, sous une forme stylisée accompagnée d’éléments figuratifs, n’a pas été considérée comme altérant de façon significative le caractère distinctif de la marque verbale «AMYCOR» telle qu’elle est enregistrée.
Forme enregistrée Usage effectif Affaire n°
THE ECONOMIST R 0056/2011-4
«L’argument de la demanderesse selon lequel la preuve de l’usage n’est pas suffisante parce qu’elle fait référence à la marque figurative […] et non à la marque verbale "THE ECONOMIST" échoue. Premièrement, les preuves produites font référence aux deux marques antérieures (à savoir à la fois la marque verbale et la marque figurative). En outre, l’utilisation de la marque figurative antérieure constitue un usage de la marque verbale antérieure. À cet égard, il convient d’observer que les marques verbales sont réputées utilisées telles qu’elles ont été enregistrées, même si la police de caractères est différente (il peut en aller autrement si la police de caractères est tout à fait particulière), si un changement habituel a été apporté à la taille des caractères ou entre des lettres majuscules et minuscules, si la marque est utilisée dans une couleur spécifique ou en combinaison avec des ajouts génériques. L’usage de l’expression "THE ECONOMIST" dans une police de caractères standard, avec l’utilisation habituelle des majuscules au début des mots "The" et "Economist", en blanc sur un fond contrasté est considéré comme un usage non seulement de la marque figurative antérieure, mais également de la marque verbale antérieure» (paragraphe 14).
Les marques verbales sont enregistrées en noir et blanc. Cependant, l’utilisation de marques en couleur est courante. Elle ne constitue pas une variante, mais un usage de la marque enregistrée.
Forme enregistrée Usage effectif Affaire n°
BIOTEX (divers) R 0812/2000-1
«La marque, telle que reproduite dans ces documents, a été diversement représentée dans les styles suivants: – le mot BIOTEX en lettres majuscules blanches sur fond noir dans des publicités ; – une référence dans des articles de journaux au mot BIOTEX en caractères ordinaires ; – le mot BIOTEX en lettres majuscules blanches avec le point sur la lettre «I» en couleur plus foncée ; – le mot BIOTEX en lettres majuscules blanches ordinaires sur les étiquettes et les emballages des détergents ; – le mot BIOTEX en caractères ordinaires sur les factures d’expédition ; – le mot BIOTEX en lettres majuscules et minuscules blanches sur un fond plus foncé avec l’élément figuratif d’une "vague"» (paragraphe 14).
«La preuve de l’usage montre que, sur le fond, la marque est restée, en dépit de divers changements stylistiques, BIOTEX. Les lettres qui composent la marque ont généralement été de simples majuscules, dénuées de toute fantaisie. Parfois, les majuscules sont des caractères ordinaires en deux dimensions et, en d’autres occasions, ils sont ombrés pour donner l’impression d’être tridimensionnels. Parfois le haut de la lettre «I» a une couleur différente. La chambre de recours considère que ces variantes sont minimes et habituelles et qu’elles font état d’une pratique courante non seulement dans le domaine d’activité concerné en l’espèce, mais aussi dans d’autres domaines. La chambre ne considère pas que ces variations infirment l’usage de la marque BIOTEX et la décision attaquée doit dès lors être annulée sur ce point» (paragraphe 17).
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 47
FINAL VERSION 1.0 01/02/2015
Forme enregistrée Usage effectif Affaire n°
SILVER
Mot SILVER en majuscules blanches sur une bannière rouge
qui chevauche un cercle doré contenant d’autres éléments
verbaux
B 61 368
«L’usage effectif de la marque que l’on peut voir sur le paquet de bières, l’extrait de journal et le calendrier n’est pas l’utilisation de la marque verbale enregistrée SILVER, mais bien de la marque figurative en couleur, à savoir une étiquette de bière sur laquelle le mot SILVER est écrit en lettres majuscules blanches sur une bannière rouge qui chevauche un cercle doré contenant les éléments verbaux "Bière sans alcool", "Bière de haute qualité", "pur malt" et "Brassée par les Brasseries Kronenbourg". Ceci ne veut pas nécessairement dire que la marque n’a pas été utilisée sous la forme dans laquelle elle a été enregistrée. Chaque affaire doit être examinée sur la base de ses mérites propres. En l’espèce, l’Office constate que la marque SILVER est la marque effective. L’apparence des autres éléments verbaux "Bière sans alcool", "Bière de haute qualité", "pur malt" et "Brassée par les Brasseries Kronenbourg" et de l’élément figuratif n’est que secondaire par rapport à la marque SILVER. Il ressort également clairement de l’étude de marché, de la coupure de journal et des factures que la marque effective est SILVER. L’Office conclut que l’usage de la marque SILVER est tellement dominant dans la marque figurative qu’il remplit les exigences d’utilisation de la marque telle qu’elle a été enregistrée.»
Marques figuratives
L’utilisation d’une marque purement figurative (sans éléments verbaux) sous une forme autre que celle sous laquelle elle est enregistrée constitue généralement une modification inacceptable.
En ce qui concerne plus particulièrement les modifications de couleur, la principale question à aborder est celle de savoir si la marque telle qu’elle est utilisée altère le caractère distinctif de la marque enregistrée, c’est-à-dire si l’usage de la marque en couleur, alors que cette marque est enregistrée en noir et blanc ou en nuances de gris (et inversement) constitue une altération de la forme enregistrée. L’Office et plusieurs offices des marques de l’Union européenne se sont mis d’accord sur une pratique commune dans le cadre du réseau européen des marques, dessins et modèles, selon laquelle une modification au niveau de la couleur uniquement n'altère pas le caractère distinctif de la marque pour autant que:
les éléments verbaux/figuratifs soient identiques et constituent les principaux éléments distinctifs ;
le contraste de nuances soit respecté ;
la couleur ou la combinaison de couleurs soit dépourvue de caractère distinctif;
la couleur ne soit pas l’un des principaux éléments contribuant au caractère distinctif global du signe.
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 48
FINAL VERSION 1.0 01/02/2015
Forme enregistrée Usage effectif Affaire n°
T-152/11
Le Tribunal a considéré qu’ « en l’absence de revendication d’une couleur déterminée, l’usage de différentes combinaisons de couleurs doit être admis, à condition que les lettres ressortent sur le fond ». Le Tribunal a également constaté que les lettres M, A et D étaient disposées d’une façon particulière dans la marque communautaire. Par conséquent, les représentations du signe qui n’altèrent pas la disposition des lettres ou le contraste de couleurs, constituent un usage sérieux (points 41 et 45).
Forme enregistrée Usage effectif Affaire n°
R 1479/2010-2
L’élément verbal a été considéré comme l’élément dominant de la marque figurative, étant donné qu’il occupe une position centrale et est rédigé en lettres de grande dimension. Il a été jugé que le caractère distinctif de la marque n’était pas altéré (paragraphe 15).
Forme enregistrée Usage effectif Affaire n°
R 0877/2009-1
«Le fond orange est la couleur de l’emballage des produits. La marque est utilisée en lettres noires sur fond blanc, soulignées en argent, tout comme la marque antérieure enregistrée. La police de caractères est légèrement plus moderne et le trait d’union entre «Bi» et «Fi» a été supprimé. Néanmoins, ces changements peuvent être considérés comme mineurs et n’altèrent pas le caractère distinctif de la marque dans la forme sous laquelle elle est enregistrée au sens de l’article 15, paragraphe 1, point a), du RMC. La police de caractères a été modernisée, mais les lettres conservent leur forme arrondie et la suppression du trait d’union peut passer inaperçue. Le caractère distinctif de la marque antérieure repose toujours sur les grandes lettres noires «Bi Fi», le «B» et le «F» étant des majuscules et les deux «i» des minuscules, sur un fond blanc entouré d’argent (paragraphe 45).
Dans le cas de marques complexes (c’est-à-dire de marques composées d’éléments verbaux et figuratifs), les modifications apportées à certains éléments figuratifs n’altèrent normalement pas le caractère distinctif des marques.
Forme enregistrée Usage effectif Affaire n°
T-147/03 (pourvoi rejeté par l’arrêt C-171/06 P)
«les seuls éléments qui différencient la marque nationale antérieure, telle qu’elle a été enregistrée, du signe utilisé par la requérante sont, d’une part, la stylisation de la lettre "q", suggérant le cadran d’une montre et, d’autre part, l’emploi des majuscules dans la désignation de l’élément verbal de la marque nationale antérieure. […] Or, premièrement, s’il est vrai que la stylisation de la lettre "q" est plus marquée
La preuve de l’usage
Directives relatives à l’examen devant l'Office, Partie C: Opposition Page 49
FINAL VERSION 1.0 01/02/2015
dans la représentation du signe utilisé que dans celle de la marque nationale antérieure, le caractère distinctif de la marque antérieure repose cependant toujours sur l’intégralité de l’élément verbal de cette marque. Au demeurant, il y a lieu de préciser que la stylisation de la lettre "q", suggérant, comme il vient d’être dit, le cadran d’une montre, ne présente pas un caractère particulièrement distinctif des produits de la classe 14, seuls produits pour lesquels la requérante a fourni des preuves de l’usage de la marque antérieure. Deuxièmement, en ce qui concerne l’emploi des majuscules, il suffit de relever que celui-ci est sans aucune originalité et n’altère pas non plus le caractère distinctif de la marque nationale antérieure […] Il s’ensuit que les éléments de preuve fournis par la requérante qui se réfèrent au signe reproduit au point 10 ci-dessus pour les produits de la classe 14 «montres et bracelets de montres» ont pu valablement être pris en considération par la chambre de recours aux fins d’apprécier si la requérante avait démontré l’usage sérieux de la marque nationale antérieure» (points 28 à 30).
Ceci vaut particulièrement dans les cas où l’élément figuratif est essentiellement descriptif des produits et services en cause.
Forme enregistrée Usage effectif Affaire n°
GRECO TAVERNA R 2604/2011-1
S’agissant du produit «FETA», en ce qui concerne les deux drapeaux grecs situés près du mot «TAVERNA», il convient de noter que l'obligation d'utiliser une marque telle qu'elle a été enregistrée n'oblige pas son titulaire à l'utiliser isolément dans la vie des affaires. L’article 15, paragraphe 1, du RMC n’exclut pas la possibilité que le titulaire de la marque ajoute des éléments supplémentaires (décoratifs ou descriptifs), voire même d'autres marques, comme sa marque d’entreprise, sur l’emballage du produit, pour autant que la marque «telle qu’enregistrée» reste clairement reconnaissable et sous forme individuelle. Les deux drapeaux grecs ne possèdent aucun caractère distinctif pour les produits en cause, qui sont connus comme étant des spécialités alimentaires d’origine grecque. La présentation globale du produit, en bleu et blanc comme les couleurs du drapeau grec, dépeignant un paysage rappelant une scène méditerranéenne et incluant le symbole d’une appellation d’origine protégée sous l'image, étaie cette appréciation (paragraphe 39).
Cela vaut également lorsque les éléments dominants restent inchangés (voir l’arrêt T 135/04, «Online Bus», précité).
Marques tridimensionnelles
L’utilisation d’une marque tridimensionnelle de taille variable équivaut généralement à un usage de la marque dans la forme sous laquelle elle a été enregistrée. En règle générale, l’ajout d’un élément verbal ou figuratif à cette marque n’altère pas le caractère distinctif du signe.
Marques de couleur
Les marques de couleur sont des marques composées d’une ou de plusieurs couleurs en tant que telles. Lorsque la marque consiste en une combinaison de couleurs,
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l’enregistrement doit indiquer la proportion de chaque couleur et préciser leur répartition.
Les marques de couleur doivent être utilisées avec les couleurs qui ont été enregistrées. Des variations insignifiantes de la nuance ou de l’intensité des couleurs n’altéreront pas le caractère distinctif de la marque.
Lorsqu’une combinaison de couleurs est enregistrée sans préciser les proportions respectives de chaque couleur, l’usage dans des proportions différentes n’affectera pas le caractère distinctif de la marque. Il en va autrement lorsque des proportions particulières sont revendiquées et qu’elles sont fortement modifiées dans la variante utilisée.
Lorsqu’une couleur ou une combinaison de couleurs est enregistrée, l’usage du signe en combinaison avec un mot distinctif ou descriptif n’affectera pas son caractère distinctif. Voir, par analogie, l’arrêt du Tribunal ci-dessous, qui concerne la preuve du caractère distinctif acquis d’une marque (examen):
Forme enregistrée Usage effectif Affaire n°
(avec la marque verbale John Deere)
T-137/08 (affaire AG )
«Les couleurs visées par la demande d’enregistrement ont été désignées suivant le système de Munsell: 9.47 GY3.57/7.45 (vert) et 5.06 Y7.63/10.66 (jaune). La description précise que "le corps du véhicule est vert [et que] les roues sont jaunes", comme l’illustre une vue jointe à la demande et reproduite ci-après:
» (point 3).
«Il découle de ce qui précède que, s’il est vrai que la marque contestée a été utilisée et promue en combinaison avec la marque verbale John Deere et que les dépenses publicitaires de l’intervenante dans l’Union européenne ont été présentées en bloc et non individuellement pour chaque pays, c’est à tort que la requérante prétend qu’il n’a pas été prouvé, à suffisance de droit, que l’intervenante avait utilisé la combinaison des couleurs verte et jaune sur ses produits en tant que marque et que la diffusion de ses produits avait été profonde et durable dans tous les États membres de l’Union européenne au 1er avril 1996» (point 46).
Modifications inacceptables
Lorsqu’une marque est composée de plusieurs éléments, dont un ou quelques-uns seulement sont distinctifs et ont permis l’enregistrement de la marque dans son ensemble, la modification de ces éléments, leur suppression ou leur remplacement par un autre élément aura généralement pour effet d’altérer le caractère distinctif de la marque.
Forme enregistrée Usage effectif Affaire n°
MEXAVIT MEXA-VIT C R 0159/2005-4
En l’espèce, l’usage de la marque avec une orthographe différente et l’ajout de la lettre «C» altèrent le caractère distinctif du signe enregistré, parce que les lettres «VIT» sont désormais considérées comme un élément descriptif, à savoir «VIT C» (faisant référence à la «vitamine C»).
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Forme enregistrée Usage effectif Affaire n°
R 2066/2010-4
«les catalogues "NOVEDADES" datés de 2004 à 2009 reproduisent de manière constante la
marque et uniquement cette version du signe. Ceci ne constitue pas un usage de la marque [telle qu’elle a été enregistrée] (avec ou sans couleur) acceptable au titre de l’article 15, paragraphe 1, point a), du RMC. Le simple fait que les deux marques ont en commun l’élément verbal LLOYD’S ne suffit pas à cet égard ; par ailleurs, les éléments figuratifs de la marque antérieure doivent apparaître sous la forme utilisée. La forme utilisée a une police de caractères différente, ne contient pas la lettre L à la fin entourée d’un élément figuratif orbital et ne comporte pas d’élément figuratif circulaire ou orbital autour du mot "LLOYD’S". En d’autres termes, tous ses éléments figuratifs sont absents dans la forme utilisée. En outre, la forme utilisée contient l’élément figuratif manifeste d’un oiseau au long bec en plein vol. La suppression de tous les éléments figuratifs de la marque telle qu’elle a été enregistrée et l’ajout d’un autre élément figuratif altèrent le caractère distinctif de la marque sous sa forme utilisée et est plus qu’une simple variante ou modernisation du signe» (paragraphe 35).
Modification d’un signe occupant une position dominante
Voir p.ex. l’affaire «HYBRIS», R 0275/2006-2, précitée au paragraphe 2.7.3.1.
2.8 L’usage pour les produits ou les services pour lesquels la marque est enregistrée
Conformément à l’article 15 du RMC, la marque doit être utilisée pour les produits ou les services pour lesquels elle est enregistrée afin de bénéficier d’une protection. Aux termes de l’article 42, paragraphe 2, première phrase, du RMC, la marque enregistrée antérieure doit avoir fait l’objet d’un usage sérieux pour les produits ou les services pour lesquels elle est enregistrée et sur lesquels l’opposition est fondée. L’article 42, paragraphe 2, troisième phrase, du RMC dispose que si la marque antérieure n’a été utilisée que pour une partie des produits ou des services pour lesquels elle est enregistrée, elle n’est réputée enregistrée aux fins de l’examen de l’opposition que pour cette partie des produits ou services.
Comme l’a déclaré le Tribunal dans l’affaire «Aladin»:
«[les dispositions de l’article 42 du RMC] permettant de réputer la marque antérieure enregistrée pour la seule partie des produits et services pour laquelle la preuve de l’usage sérieux de la marque a été établie, d’une part, constituent une limitation apportée aux droits que tire le titulaire de la marque antérieure de son enregistrement […] et d’autre part, doivent être conciliées avec l’intérêt légitime dudit titulaire à pouvoir, à l’avenir, étendre sa gamme de produits ou de services, dans la limite des termes visant les produits ou services pour lesquels la marque a été enregistrée, en bénéficiant de la protection que l’enregistrement de ladite marque lui confère. Tel est d’autant plus le cas lorsque, comme en l’espèce, les produits et services pour lesquels la marque a été enregistrée constituent une catégorie suffisamment circonscrite».
(Voir l’arrêt du 14 juillet 2005, «Aladin», T-126/03, point 51, caractères gras ajoutés).
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L’analyse de l’usage sérieux doit, en principe, couvrir l’ensemble des produits et services enregistrés sur lesquels l’opposition est fondée et pour lesquels le demandeur de marque communautaire a présenté une demande expresse de preuve de l’usage. Cependant, dans des situations où un risque de confusion peut clairement être établi sur la base de certains des produits et/ou services antérieurs, l’analyse par l’Office de l’usage sérieux ne doit pas nécessairement couvrir l’ensemble des produits et/ou services désignés par la marque antérieure, mais peut se centrer uniquement sur les produits et/ou services qui sont suffisants pour établir une identité ou une similitude avec les produits et/ou services contestés.
En d’autres termes, si le risque de confusion peut être établi sur la base d’une constatation d’usage sérieux pour certains produits et/ou services couverts par la marque antérieure, il est inutile d’examiner la preuve de l’usage produite par l’opposante pour les autres produits et/ou services couverts par la marque antérieure.
Les sections suivantes présentent une série de directives sur lesquelles s’appuyer pour déterminer si la marque antérieure a fait l’objet d’un usage effectif pour les produits et services enregistrés. Pour plus de détails, voir les Directives, Opposition, partie 2.2, Comparaison des produits et des services, et en particulier la pratique relative à l’utilisation de toutes les indications générales dans l’intitulé des classes, et les Directives, Examen, partie B.3, Classification des produits et des services.
2.8.1 Comparaison entre les produits et/ou services utilisés et la liste des produits et/ou services
Il importe de toujours vérifier attentivement si les produits et services pour lesquels la marque a fait l’objet d’un usage relèvent bien des catégories de produits et services enregistrés.
Exemples:
Affaire n° P&S enregistrés P&S utilisés Commentaire
T-382/08 VOGUE Chaussures
Commerce de détail de chaussures
Non conforme (points 47 et 48).
T-183/08 SCHUHPARK Chaussures
Services de détail relatif à des chaussures
Non conforme (point 32).
R 0807/2000-3 – Demara
Produits pharmaceutiques, produits vétérinaires et désinfectants
Langes, couches- culottes pour incontinence
Non conforme, même si les produits spécifiques peuvent être vendus en pharmacie (paragraphes 14 à 16).
R 1533/2007-4 – GEO MADRID
Services de télécommunication de la classe 38
Fourniture d’une plate-forme d’achat sur internet
Non conforme (paragraphe 16).
R 0068/2003-2 – Sweetie
Fruits et légumes en conserve, séchés et cuits ; extraits concentrés de fruits et d’agrumes ; confitures ; sucre, biscuits, gâteaux, pâtisseries et confiserie
Crèmes pour desserts aromatisées à la fraise, au caramel ou au chocolat
Non conforme (paragraphe 20).
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Affaire n° P&S enregistrés P&S utilisés Commentaire
R 1519/2008-1 – DODOT e.a.
Langes en textile pour bébés de la classe 25
Langes jetables en papier et cellulose (classe 16)
Non conforme (paragraphe 29).
R 0594/2009-2 – BANIF
Administration, représentation et conseils généraux de la classe 35 et projets techniques, économiques et administratifs de la classe 42
Administration de fonds et d’actifs personnels ou affaires immobilières (classe 36)
Non conforme (paragraphe 39).
B 1 589 871 OXIL
Commutateurs électriques et «parties de lampes»
Appareils d’éclairage Non conforme.
B 253 494 CAI/Kay Services d’éducation
Services de divertissement Non conforme.
B 1 259 136, LUPA
Services de transport et de distribution de la classe 39
Livraison à domicile de produits achetés dans un magasin de détail
Non conforme, car les services enregistrés sont fournis par des sociétés de transport spécialisées dont l’activité n’est pas la fourniture d’autres services, tandis que la livraison à domicile de produits achetés dans un magasin de détail n’est qu’un simple service auxiliaire supplémentaire faisant partie des services de vente au détail.
R1330/2011-4 – AF (fig)
Publicité, gestion des affaires commerciales, administration commerciale, travaux de bureau de la classe 35
Services de vente au détail
Non conforme. Lorsqu’une marque est enregistrée pour les indications générales de la classe 35, mais qu’un usage n’est établi que pour des «services de vente au détail» pour des produits particuliers, cela ne saurait constituer une preuve valable de l’usage de l’une des indications spécifiques de la classe 35 ou de l’intitulé de classe dans son ensemble (paragraphe 25 par analogie).
2.8.2 La pertinence de la classification
Il n’est pas sans intérêt de déterminer si les produits ou services spécifiques pour lesquels une marque a fait l’objet d’un usage relèvent d’une indication générale mentionnée dans l’intitulé d’une classe particulière de produits ou de services et, si tel est le cas, laquelle.
Par exemple, l’intitulé de la classe 25 est «vêtements, chaussures et chapellerie» et chacun de ces trois éléments constitue une «indication générale». Si, en règle générale, une classification sert uniquement à des fins administratives, il est utile, aux fins d’apprécier la nature de l’usage, d’établir si les produits pour lesquels la marque a été utilisée relèvent de l’indication générale «vêtements», «chaussures», ou «chapellerie».
Ceci est évident lorsque des catégories de produits similaires ont été classées différemment pour certaines raisons. Ainsi, des chaussures ont été placées dans différentes classes en fonction de leur destination: les «chaussures orthopédiques» dans la classe 10 et les chaussures «ordinaires» dans la classe 25. Compte tenu des
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preuves fournies, il y a lieu de déterminer à quel type de chaussures se rapporte l’usage.
2.8.3 L’usage et l’enregistrement pour des indications générales des «intitulés de classe»
Lorsqu’une marque est enregistrée sous l’ensemble ou une partie des indications générales énumérées dans l’intitulé d’une classe particulière et qu’elle a été utilisée pour plusieurs produits ou services correctement classés dans la même classe sous l’une de ces indications générales, la marque sera considérée comme ayant fait l’objet d’un usage pour cette indication générale spécifique.
Exemple: La marque antérieure est enregistrée pour des vêtements, chaussures, chapellerie de la classe 25. Les preuves concernent des «jupes», «pantalons» et «T-shirts».
Conclusion: La marque a été utilisée pour des vêtements.
En revanche, lorsqu’une marque n’est enregistrée que pour une partie des indications générales énumérées dans l’intitulé d’une classe donnée, mais n’a été utilisée que pour des produits ou services qui relèvent d’une autre indication générale de la même classe, la marque ne sera pas considérée comme ayant fait l’objet d’un usage pour les produits ou les services enregistrés (voir également le paragraphe 2.8.4 ci-dessous).
Exemple: La marque antérieure est enregistrée pour des vêtements de la classe 25. Les preuves ne portent que sur des «bottes».
Conclusion: La marque n’a pas été utilisée pour les produits pour lesquels elle est enregistrée.
2.8.4 L’usage pour des sous-catégories de produits et/ou services et des produits et/ou services similaires
Cette section traite de l’étendue de la protection accordée en cas d’utilisation pour des sous-catégories de produits et des produits (ou services) «similaires».
En règle générale, il n’est pas opportun d’accepter que la preuve concernant l’usage de produits ou de services «différents», mais «liés» d’une certaine façon, couvre automatiquement des produits ou des services enregistrés. En particulier, la notion de similitude des produits et services n’est pas valable dans ce contexte. L’article 42, paragraphe 2, troisième phrase, du RMC ne prévoit aucune exception à cet égard.
Exemple: La marque antérieure est enregistrée pour des vêtements de la classe 25. Les preuves ne portent que sur des «bottes».
Conclusion: La marque n’a pas été utilisée pour les produits pour lesquels elle est enregistrée.
2.8.4.1 La marque antérieure est enregistrée pour une catégorie plus générale de produits ou de services
Dans l’affaire Aladin, le Tribunal a déclaré:
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«si une marque a été enregistrée pour une catégorie de produits ou de services suffisamment large pour que puissent être distinguées, en son sein, plusieurs sous-catégories susceptibles d’être envisagées de manière autonome, la preuve de l’usage sérieux de la marque pour une partie de ces produits ou services n’emporte protection, dans une procédure d’opposition, que pour la ou les sous-catégories dont relèvent les produits ou services pour lesquels la marque a été effectivement utilisée.»
(Voir l’arrêt du 14 juillet 2005, T-126/03, «Aladin», point 45).
En conséquence, si la marque antérieure a été enregistrée pour une catégorie plus générale de produits ou de services, mais que l’opposant n’apporte la preuve de l’usage que pour certains produits ou services spécifiques relevant de cette catégorie, la question se pose de savoir si la preuve produite doit être considérée stricto sensu comme une preuve de l’usage uniquement pour les produits ou services spécifiques, qui ne sont pas mentionnés en tant que tels dans la liste des produits ou services, ou pour la catégorie plus générale de produits ou services figurant dans l’enregistrement.
Le Tribunal a également souligné qu’il y a lieu d’interpréter l’article 42, paragraphe 2, dernière phrase, du RMC comme visant à éviter qu’une marque utilisée de manière partielle jouisse d’une protection étendue au seul motif qu’elle a été enregistrée pour une large gamme de produits ou services. Ainsi, il convient de tenir compte de l’étendue des catégories de produits ou de services pour lesquelles la marque antérieure a été enregistrée, notamment de la généralité des termes employés à cette fin pour décrire lesdites catégories, et ce au regard des produits ou des services dont l’usage sérieux a effectivement été établi (point 44).
En revanche, l’opposant ne doit pas apporter la preuve de toutes les déclinaisons commerciales de produits ou de services analogues, mais seulement de produits ou de services suffisamment différenciés pour pouvoir constituer des catégories ou sous-catégories cohérentes (point 46). La raison en est qu’il est en pratique impossible au titulaire d’une marque d’apporter la preuve de l’usage de celle-ci pour toutes les variantes imaginables des produits concernés par l’enregistrement.
Par conséquent, la protection n’est disponible que pour la ou les sous-catégories dont relèvent les produits ou services utilisés si:
1. une marque a été enregistrée pour une catégorie de produits ou de services:
(a) suffisamment large pour couvrir un certain nombre de sous-catégories autrement que de façon arbitraire ;
(b) susceptibles d’être perçus comme indépendants les uns des autres ;
et
2. qu’il puisse être démontré que la marque a fait l’objet d’un usage sérieux pour une partie seulement de la spécification initiale plus générale.
Il convient de dûment motiver la définition des sous-catégories et d’expliquer, sur la base des preuves produites par l’opposant, si l’usage a été établi pour une partie seulement de la spécification/de la ou des catégories initiales plus générales. Voir les exemples au paragraphe 2.8.4.3 ci-dessous.
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Ceci est particulièrement important dans le cas de marques enregistrées pour des «produits pharmaceutiques», qui ne sont généralement utilisés que pour un type de médicament destiné au traitement d’une affection déterminée (voir les exemples de produits pharmaceutiques au paragraphe 2.8.4.3 ci-dessous).
En revanche, l’utilisation pour l’ensemble d’une catégorie doit être acceptée s’il existe des exemples de différents types de produits appartenant à cette catégorie et si aucune autre sous-catégorie ne couvre les différents produits.
Signe contesté Affaire n°
CARRERA R 0260/2009-4(déchéance)
L’usage avéré d’une marque pour:
lettrage décoratif ; ensembles de performances améliorés ; couvercles pour rangements ; jeux de pneumatiques et jeux de pneumatiques complets pour l’été et l’hiver ; plaques de seuil de porte.
a été considéré comme une preuve d’usage suffisante pour des «automobiles et leurs pièces, véhicules terrestres et leurs pièces», pour lesquels la marque a été enregistrée. Les principaux arguments étaient que la marque était utilisée pour de nombreuses pièces automobiles différentes et que les produits pour lesquels l’usage avait été prouvé couvraient donc une large gamme de pièces automobiles: éléments du châssis, de la carrosserie, du moteur, du design intérieur et éléments décoratifs.
2.8.4.2 La marque antérieure est enregistrée pour des produits et/ou services précis
En revanche, la preuve de l’usage sérieux d’une marque pour certains produits ou services qu’elle désigne couvre nécessairement toute la catégorie de produits ou services si:
(1) une marque a été enregistrée pour des produits ou services définis de façon relativement précise de sorte
(2) qu’il n’est pas possible d’opérer des divisions significatives à l’intérieur de la catégorie concernée sans que ce soit artificiel (voir l’arrêt du 14 juillet 2005, «Aladin», T-126/03, point 45).
La décision doit dûment indiquer dans quel cas il est jugé impossible de procéder à des subdivisions et, si nécessaire, pourquoi.
2.8.4.3 Exemples
Le critère de finalité ou de destination du produit ou service en cause est un critère primordial dans la définition des sous-catégories adéquates d’indications générales, étant donné que les consommateurs y recourent avant d’effectuer un achat (arrêt du 13 février 2007, «RESPICUR», T-256/04, points 29 et 30 ; arrêt du 23 septembre 2009, «FAMOXIN», T-493/07, point 37). D’autres critères sont applicables pour la définition des sous-catégories adéquates, parmi lesquels figurent les caractéristiques du produit ou service, par exemple la nature du produit ou service, ou le consommateur ciblé pour le produit ou le service.
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Signe antérieur Affaire n°
ALADIN T-126/03
P&S: Produits pour polir les métaux de la classe 3.
Appréciation de la preuve de l’usage: la marque antérieure a été enregistrée pour des «produits pour polir les métaux» de la classe 3, mais a fait l’objet d’un usage effectif sérieux uniquement pour le «coton magique» (un produit pour polir les métaux consistant en du coton imprégné d’un agent polissant). Le Tribunal a jugé que la catégorie «produits pour polir les métaux», qui est déjà en soi une sous-catégorie de l’intitulé de classe «préparations pour polir» est suffisamment précise et définie de façon étroite en ce qui concerne la fonction et la finalité des produits revendiqués. Aucune autre sous-catégorie ne peut être établie sans être artificielle et, partant, l’usage a été présumé pour l’ensemble de la catégorie «produits pour polir les métaux».
Signe contesté Affaire n°
Turbo R 0378/2006-2Déchéance
P&S: Vêtements de la classe 25.
Appréciation de la preuve de l’usage: la chambre de recours a constaté qu’outre les maillots de bain, d’autres types de vêtements étaient mentionnés dans les factures et pouvaient être trouvés dans les catalogues. Elle a donc conclu que l’usage de la marque contestée avait été prouvé pour des «vêtements» (paragraphe 22). La chambre a également jugé qu’il était quasiment impossible et certainement indûment onéreux d’imposer au titulaire d’une marque communautaire enregistrée pour des «vêtements» l’obligation d’apporter la preuve de l’usage dans toutes les sous-catégories possibles qui pourraient être subdivisées à l’infini par la demanderesse (paragraphe 25).
Signe antérieur Affaire n°
R 1088/2008-2 (confirmé par T-132/09)
P&S: Appareils et instruments de mesure de la classe 9.
Appréciation de la preuve de l’usage: la marque a été utilisée pour des appareils de mesure de la température, de la pression et du niveau et leurs pièces. La décision attaquée a considéré que la spécification originale de la marque antérieure pour des «appareils et instruments de mesure» était «très large» et a conclu, en application du critère énoncé dans l’arrêt Aladin, que l’usage n’avait en fait été démontré que pour une sous-catégorie de produits, à savoir les «appareils de mesure, tous pour la mesure de la température, de la pression et du niveau ; pièces desdits appareils». La chambre de recours a conclu que cette approche était raisonnable compte tenu des circonstances de l’espèce et a confirmé la motivation et les conclusions de la décision attaquée à cet égard (paragraphe 29).
Signe contesté Affaire n°
ICEBERG R 1166/2008-1Déchéance
P&S: Appareils de chauffage, de génération de vapeur, de réfrigération, de séchage, de ventilation et d’approvisionnement en eau de la classe 11.
Appréciation de la preuve de l’usage: la chambre de recours a conclu que l’usage de la marque n’avait été prouvé que pour les réfrigérateurs, les congélateurs et les modules de conditionnement d’air pour les yachts et les bateaux (paragraphe 26). Ces produits faisaient partie des sous-catégories «appareils de chauffage» (dans la mesure où un appareil de conditionnement d’air peut également servir de chauffage), «appareils de réfrigération» (dans la mesure où un appareil de conditionnement d’air, un réfrigérateur et un congélateur peuvent également conserver l’air/des produits frais) et «appareils de ventilation (dans la mesure où un appareil de conditionnement d’air, un réfrigérateur et un congélateur comportent tous des circuits de ventilation) pour lesquelles la marque a été enregistrée. En conséquence, la chambre de
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recours a considéré que la marque devait rester enregistrée pour ces sous-catégories (paragraphe 27). Cependant, elle n’a pas jugé opportun de limiter l’étendue de la protection conférée par la marque aux «yachts et bateaux». Cela aurait entraîné une nouvelle subdivision des «sous-catégories» et aurait constitué une limitation injustifiée (paragraphe 28). Conclusion: l’usage a été jugé établi pour les «appareils de chauffage, de réfrigération et de ventilation».
Signe contesté Affaire n°
LOTUS R 1295/2007-4Déchéance
P&S: Vêtements et sous-vêtements, bonneterie, corsets, cravates, bretelles, gants de la classe 25.
Appréciation de la preuve de l’usage: aucune preuve de l’usage n’a été présentée pour les produits «corsets, cravates, bretelles». Aucun des éléments de preuve produits ne mentionne ces produits ou n’y fait référence. L’usage doit être démontré pour tous les produits ou services pour lesquels la marque est enregistrée. La marque est enregistrée pour des «vêtements et sous-vêtements», mais aussi pour des produits spécifiques de cette catégorie, notamment des «corsets, cravates, bretelles». L’usage pour d’autres produits ne suffit pas à maintenir la protection conférée par la législation sur les marques pour ces produits, même si les autres produits relèvent également de la catégorie «vêtements et sous- vêtements». La division d’annulation a toutefois considéré que l’usage était suffisant, parce que, selon les principes de la jurisprudence Aladin (voir l’arrêt du 14 juillet 2005, T-126/03), les «corsets, cravates, bretelles» relèvent tous de l’expression générique «vêtements et sous-vêtements». Si cela est effectivement vrai, cet aspect est subordonné à l’examen de la question de savoir si les produits utilisés peuvent être inclus dans l’expression revendiquée. Tel n’est pas le cas des «corsets, cravates, bretelles». Si, parallèlement à l’expression générique large, la marque revendique aussi expressément des produits spécifiques couverts par l’expression générique, elle doit également avoir été utilisée pour ces produits spécifiques pour rester enregistrée pour ces derniers (paragraphe 25).
Signe antérieur Affaire n°
GRAF-SYTECO R 1113/2009-4
P&S: Instruments électriques (compris dans la classe 9) ; instruments d’optique, de pesage, de mesure, de signalement et de contrôle (surveillance) ; matériel de traitement de données et ordinateurs, notamment pour l’exploitation, la surveillance et le contrôle de machines, d’installations, de véhicules et de bâtiments ; programmes informatiques enregistrés ; compteurs électroniques de la classe 9 ; services de réparation de la classe 37 et programmation informatique de la classe 42.
Appréciation de la preuve de l’usage: les appareils dont l’opposante a prouvé qu’elle les avait mis sur le marché relèvent du terme hardware (matériel) tel qu’il est mentionné dans la classe 9. Or, il s’agit d’une vaste catégorie, en particulier si l’on considère le développement massif et la forte spécialisation qui ont lieu dans ce domaine, qui peut être divisé en sous-catégories selon les produits effectivement fabriqués. En l’espèce, les produits doivent être limités à l’industrie automobile. L’opposante étant dans l’obligation de fournir une garantie légale à ses clients, on peut considérer qu’elle a également démontré l’usage du service relatif à la réparation du matériel en cause (classe 37). La chambre de recours a également conclu que les programmes informatiques enregistrés de la classe 9 constituaient une très large catégorie et devaient être limités au domaine d’activité réelle de l’opposante (paragraphes 30 et 31). Aucune preuve n’a été produite pour la classe 42.
Signe antérieur Affaire n°
HEMICELL R 0155/2010-2
P&S: Aliments pour animaux de la classe 31, et aliments pour animaux, alimentation animale et additifs non médicamenteux, tous compris dans la classe 31.
Appréciation de la preuve de l’usage: la décision attaquée a commis une erreur en considérant que la marque antérieure avait fait l’objet d’un usage sérieux pour les «aliments pour animaux» de la classe 31 et les «aliments pour animaux, alimentation animale et additifs non médicamenteux, tous compris dans la classe 31», étant donné que cette conclusion est contraire aux conclusions du Tribunal dans l’affaire ALADIN. La raison avancée dans la décision attaquée n’est pas acceptable, étant donné qu’elle aurait dû déterminer si la catégorie de produits couverts par la marque antérieure était susceptible d’être divisée en sous-catégories autonomes et si les produits pour lesquels un usage de la marque antérieure avait été prouvé pouvaient être classés dans l’une de ces sous-catégories. En conséquence, la chambre de
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recours considère que la marque communautaire antérieure est, aux fins de l’examen de l’opposition, réputée uniquement enregistrée pour les «additifs pour alimentation animale» de la classe 31.
Produits pharmaceutiques.
Dans plusieurs affaires, la Cour a dû définir des sous-catégories adéquates pour les produits pharmaceutiques de la classe 5. Elle a jugé que la finalité et la destination d’une préparation thérapeutique sont énoncées dans ses indications thérapeutiques. L’indication thérapeutique est donc essentielle pour définir la sous-catégorie pertinente de produits pharmaceutiques. D’autres critères (tels que le dosage, les principes actifs, la vente libre ou sur ordonnance) ne sont pas pertinents à cet effet.
Les sous-catégories suivantes de produits pharmaceutiques ont été jugées adéquates par la Cour:
Affaire n° Adéquat Inadéquat
T-256/04 «RESPICUR»
Produits pharmaceutiques pour les voies respiratoires.
Aérosols doseurs contenant des corticoïdes, délivrés uniquement sur ordonnance.
T-493/07 «FAMOXIN»
Produits pharmaceutiques pour les maladies cardiovasculaires.
Produits pharmaceutiques à base de digoxine à usage humain pour les maladies cardiovasculaires.
T-487/08 «KREMIZIN»
Produits pharmaceutiques destinés au traitement d’un problème cardiaque.
Solution stérile d’adénosine destinée au traitement d’un problème cardiaque particulier et administrée par intraveineuse dans les hôpitaux.
T-483/04 «GALZIN» Préparations à base de calcium. Produits pharmaceutiques.
2.8.5 L’usage de la marque concernant les pièces détachées et les services après-vente des produits enregistrés
Dans l’arrêt «Minimax», la Cour a estimé que l’usage de la marque peut, dans certaines conditions, revêtir un caractère sérieux pour des produits «enregistrés» déjà commercialisés et qui ne font plus l’objet de nouvelles offres de vente (arrêt du 11 mars 2003, «Minimax», C-40/01, points 40 et suivants).
Ce peut être le cas lorsque le titulaire de la marque sous laquelle ces produits ont été mis sur le marché vend des pièces détachées qui entrent dans la composition ou la structure de ces produits déjà commercialisés.
Il peut en aller de même lorsque le titulaire de la marque utilise effectivement celle-ci pour des services d’après-vente, tels que la vente de produits accessoires ou connexes, ou la prestation de services d’entretien et de réparation.
Signe Affaire n°
Minimax C-40/01
P&S: Extincteurs et produits apparentés contre pièces détachées et services après-vente.
Appréciation de la preuve de l’usage: l’autorisation pour les extincteurs vendus par Ansul sous la marque Minimax a expiré dans les années 1980. Depuis, Ansul n’a pas vendu d’extincteurs sous cette marque.
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Cependant, Ansul a vendu des pièces détachées et des substances extinctrices pour des extincteurs revêtus de la marque à des entreprises chargées de leur entretien. Au cours de la même période, elle a également entretenu, contrôlé et réparé du matériel de la marque Minimax, a utilisé la marque sur des factures relatives à ces services et a apposé sur ces appareils des étiquettes autocollantes et des bandelettes portant la mention «Gebruiksklaar Minimax» (prêt à l’emploi Minimax). Ansul a également vendu des étiquettes autocollantes et des bandelettes aux entreprises d’entretien d’extincteurs.
Cependant, cette conclusion de la Cour doit être interprétée stricto sensu et n’être appliquée que dans des cas très exceptionnels. Dans l’arrêt «Minimax», la Cour a accepté l’usage pour d’autres produits que ceux pour lesquels la marque a été enregistrée, ce qui va à l’encontre de la règle générale définie à l’article 42, paragraphe 2, du RMC.
2.9 L’usage par le titulaire ou pour son compte
2.9.1 L’usage par le titulaire
Conformément à l’article 42, paragraphe 2, et à l’article 15, paragraphe 1, du RMC, c’est généralement le titulaire qui doit faire de la marque enregistrée antérieure un usage sérieux. Ces dispositions visent aussi l’usage de la marque par le titulaire précédent alors qu’il possédait la marque (décision du 10 décembre 1999, B 74 494).
2.9.2 L’usage par des tiers autorisés
Aux termes de l’article 15, paragraphe 2, du RMC, l’usage de la marque avec le consentement du titulaire est jugé constituer un usage par le titulaire. Il s’ensuit que le titulaire doit avoir donné son consentement avant l’usage de la marque par le tiers. Son consentement ultérieur est insuffisant.
L’usage fait par les détenteurs d’une licence constitue un cas typique d’utilisation par des tiers. De même, l’utilisation par des entreprises économiquement liées au titulaire de la marque, comme les membres du même groupe de sociétés (sociétés apparentées, filiales, etc.), doit être considérée comme un usage autorisé. Lorsque les produits sont fabriqués par le titulaire de la marque (ou avec son consentement), mais qu’ils sont ensuite mis sur le marché par des distributeurs de gros ou de détail, il convient de considérer qu’il y a usage de la marque (arrêt du 17 février 2011, «Friboi», T-324/09, point 32 ; arrêt du 16 novembre 2011, «BUFFALO MILKE», T-308/06, point 73).
Pour ce qui est des preuves, il suffit de prime abord que l’opposant apporte la preuve de l’usage fait de la marque par un tiers. L’Office déduit de cet usage et de la capacité de l’opposant à le démontrer qu’il a été fait avec le consentement préalable de l’opposant.
Cette position de l’Office a été confirmée par le Tribunal dans son arrêt du 8 juillet 2004, «VITAFRUIT», T-203/02, point 25 (et confirmé par la Cour dans l’affaire C-416/04 P). La Cour a observé qu’il est peu probable que le titulaire d’une marque puisse soumettre la preuve d’un usage de celle-ci fait contre son gré. On pouvait d’autant plus se fonder sur cette présomption que la requérante n'avait pas contesté le consentement de l’opposant.
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Toutefois, en cas de doutes dans l’esprit des membres de l’Office ou, en règle générale, lorsque le demandeur conteste expressément le consentement de l’opposant, il appartient à ce dernier de démontrer, preuves supplémentaires à l’appui, qu’il a donné son consentement avant l’usage de la marque. Dans ce cas, l’Office accorde à l’opposant un délai supplémentaire de deux mois pour produire ces preuves.
2.9.3 L’usage de marques collectives
Les marques collectives sont généralement utilisées non pas par le titulaire, mais par les membres d’une association. Conformément à l’article 70 du RMC, l’usage fait par (au moins) une personne habilitée satisfait à l’obligation d’usage, pour autant que celui-ci soit sérieux.
Les marques collectives présentent une caractéristique spécifique liée au fait qu’elles ont pour principal objectif non pas d’indiquer que les produits ou les services proviennent d’une source spécifique, mais qu’ils proviennent d’une région donnée et/ou revêtent certaines caractéristiques ou qualités («indications géographiques et complémentaires d’origine ou de qualité»). Il importe de tenir compte de cette différence de fonction pour évaluer la preuve de l’usage requise conformément à l’article 68, paragraphe 3, du RMC.
Une simple liste des personnes habilitées à utiliser la marque collective et une liste des produits certifiés sous la marque collective ne sont généralement pas suffisantes en soi pour prouver un usage sérieux (décision du 25 mai 2009, B 1 155 904 ; voir également la décision du 24 février 2009 dans l’affaire R 0970/2008-2, «NFB»).
2.10 L’usage légal
Pour que l’usage d’une marque réponde aux conditions d’usage prévues aux articles 15 et 42 du RMC, il faut que l’usage sérieux soit constaté dans les faits. À cet égard, l’usage est «sérieux» quand bien même l’utilisateur aurait enfreint les dispositions légales.
Le fait que l’usage soit trompeur au sens de l’article 7, paragraphe 1, point g), ou de l’article 51, paragraphe 1, point c), du RMC, ou en vertu des dispositions du droit national, est sans incidence sur la constatation de l’usage «sérieux» aux fins de l’évaluation des marques antérieures dans une procédure d’opposition. Les sanctions prévues en cas d’usage trompeur sont l’annulation ou la déchéance, selon le cas, ou l’interdiction de l’usage (prévue par l’article 110, paragraphe 2, du RMC).
Le même principe s’applique en cas d’usage dans le cadre d’un accord de licence illégal (qui serait contraire, par exemple, aux règles de la concurrence fixées par le traité ou les règles nationales). De même, le fait que l’usage puisse porter atteinte aux droits de tiers est sans importance.
2.11 La justification du non-usage
Conformément à l’article 42, paragraphe 2, du RMC, l’opposant a la faculté de démontrer qu’il existe de justes motifs pour le non-usage de sa marque enregistrée antérieure. Ces motifs incluent, comme indiqué à l’article 19, paragraphe 1, deuxième
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phrase, de l’accord sur les aspects des droits de propriété intellectuelle qui touchent au commerce («accord sur les ADPIC»), les circonstances indépendantes de la volonté du titulaire de la marque qui constituent un obstacle à l’usage de la marque.
En tant qu’exception à l’obligation d’usage, la notion de justes motifs pour le non-usage doit être interprétée de façon relativement étroite.
Il ne suffit pas que des «obstacles bureaucratiques» ne relèvent pas du libre arbitre du titulaire de la marque, ces obstacles devant en outre présenter une relation directe avec la marque, au point que l’usage de celle-ci dépende de la bonne fin des démarches administratives concernées. Or, le critère de relation directe n’implique pas nécessairement que l’usage de la marque soit impossible ; il peut suffire qu’il soit déraisonnable. Il convient d’apprécier au cas par cas si un changement de la stratégie d’entreprise pour contourner l’obstacle considéré rendrait déraisonnable l’usage de ladite marque. Ainsi, par exemple, il ne pourrait être raisonnablement demandé au titulaire d’une marque de modifier sa stratégie d’entreprise et de commercialiser ses produits dans les points de vente de ses concurrents (arrêt du 14 juin 2007, «Le Chef DE CUISINE», C-246/05, point 52).
2.11.1 Les risques liés à l’activité
Il y a lieu de considérer que la notion de juste motif se réfère à des circonstances externes au titulaire de la marque qui rendent l’usage de la marque impossible ou déraisonnable, plutôt qu’aux circonstances liées à ses difficultés commerciales (décision du 14 mai 2008 dans l’affaire R 0855/2007-4, «PAN AM», paragraphe 27 ; arrêt du 9 juillet 2003, «GIORGI», T-162/01, point 41).
Par conséquent, les difficultés financières que rencontre une entreprise en raison d’une récession économique ou de problèmes financiers qui lui sont propres ne constituent pas des justes motifs pour le non-usage au sens de l’article 42, paragraphe 2, du RMC, car les difficultés de ce type sont intrinsèquement liées à l’exercice d’une activité.
2.11.2 L’intervention des pouvoirs publics ou de la justice
Les restrictions à l’importation ou autres prescriptions des pouvoirs publics constituent deux exemples de justes motifs du non-usage, qui sont expressément mentionnés à l’article 19, paragraphe 1, deuxième phrase, de l’accord sur les ADPIC.
Les restrictions à l’importation incluent l’embargo commercial qui frappe les produits protégés par la marque.
Les autres prescriptions des pouvoirs publics peuvent consister en un monopole de l’État, qui empêche tout type d’usage, ou en l’interdiction par l’État de la vente des produits pour des raisons liées à la santé ou à la défense nationale. Un exemple typique à cet égard est celui des procédures réglementaires telles que:
les essais cliniques et l’autorisation de mise sur le marché de nouveaux médicaments (décision du 18 avril 2007 dans l’affaire R 0155/2006-1, «LEVENIA») ou
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l’autorisation que le titulaire doit obtenir auprès d’une autorité chargée de la sécurité des aliments avant de mettre les produits et services en cause sur le marché.
Signe antérieur Affaire n°
HEMICELL R 0155/2010-2
Les preuves produites par l’opposante démontrent de façon adéquate que l’usage des marques antérieures pour l’additif alimentaire «améliorateur de la digestibilité zootechnique (enzyme alimentaire)» était subordonné à l’obtention d’une autorisation de l’Agence européenne de sécurité alimentaire après le dépôt d’une demande devant cet organisme. Cette obligation est réputée être une prescription des pouvoirs publics au sens de l’article 19, paragraphe 1, de l’accord sur les ADPIC.
S’agissant des procédures judiciaires ou des injonctions provisoires, il convient d’opérer la distinction suivante.
D’une part, la simple menace d’une action en justice ou un recours en nullité pendant contre la marque antérieure ne devrait, en principe, pas exempter l’opposant de l’obligation de faire usage de sa marque dans la vie des affaires. Il appartient à l’opposant, en tant que partie qui engage la procédure d’opposition, de procéder à une analyse adéquate de ses chances de succès dans la procédure et d’en tirer les conclusions qui s’imposent quant au fait de continuer ou non à faire usage de sa marque (voir la décision du 18 février 2013 dans l’affaire R 1101/2011-2, «SMART WATER», paragraphe 40).
Signe antérieur Affaire n°
HUGO BOSS R 0764/2009-4
La procédure nationale [française d’annulation] engagée contre la marque antérieure ne peut être qualifiée de juste motif pour le non-usage (paragraphe 19).
Il demeure que les justes motifs pour le non-usage sont uniquement ceux qui échappent au contrôle et à l’influence du titulaire de la marque, comme les obligations nationales en matière d’autorisation ou les restrictions à l’importation. Ces éléments sont neutres en ce qui concerne la marque à utiliser ; ils ne concernent pas la marque, mais bien les produits ou services que le titulaire souhaite utiliser. Ces exigences nationales en matière d’autorisation ou les restrictions à l’importation s’appliquent au type ou aux caractéristiques du produit sur lequel la marque est apposée et ne peuvent être contournées en choisissant une autre marque. En l’espèce, à l’inverse, le titulaire de la marque aurait pu aisément fabriquer des cigarettes en France ou les importer en France s’il avait opté pour une marque différente (paragraphe 25).
Signe antérieur Affaire n°
MANPOWER R 0997/2009-4
Conformément à l’article 9 du RMC et à l’article 5 de la directive sur la marque, il ne peut être porté atteinte aux marques de tiers. L’exigence de ne pas porter atteinte aux marques s’applique à toute personne qui utilise un nom dans la vie des affaires, indépendamment du fait qu’elle a elle-même demandé ou reçu la protection de la marque pour ce nom. Une personne qui s’abstient de toute atteinte n’agit pas pour de «justes motifs», mais conformément à la loi. Par conséquent, même le fait de s’abstenir d’un usage qui, sans cela, violerait un droit, ne constitue pas un juste motif (décision des chambres de recours du 9 mars 2010 dans l’affaire R 0764/2009-4, HUGO BOSS/BOSS», paragraphe 22) (paragraphe 27).
Dans de tels cas, l’usage n’est pas non plus «déraisonnable». Des personnes qui, en tant que titulaires d’une marque, sont menacées d’une action en justice ou d’une injonction provisoire si elles en font usage, doivent envisager la possibilité que l’action engagée à leur encontre aboutisse et peuvent soit renoncer (ne pas faire usage de la marque), soit se défendre contre le plaignant. En tout état de cause, elles doivent accepter la décision des juridictions indépendantes, qui peuvent être rendues dans le cadre de procédures accélérées. Dans l’attente d’une décision en dernière instance, elles ne peuvent pas
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davantage objecter qu’elles doivent être protégées par le fait que, tant que la décision n’est pas finale, l’incertitude doit être reconnue comme un juste motif. En fait, la question de ce qui devrait se passer entre l’introduction d’une action ou une demande d’injonction provisoire et la décision finale doit une fois de plus être laissée aux tribunaux, en ce qu’ils prennent des décisions qui ne sont pas encore définitives sur l’exécution provisoire. La défenderesse ne peut ignorer ces décisions et faire comme si les tribunaux n’existaient pas (paragraphe 28).
D’autre part, une injonction provisoire ou une ordonnance restrictive dans une procédure d’insolvabilité, qui impose une interdiction générale de transferts ou de cessions au titulaire de la marque, peut constituer un juste motif pour le non-usage dès lors qu’il oblige l’opposant à s’abstenir d’utiliser sa marque dans la vie des affaires. Un usage de la marque en violation d’une telle ordonnance aurait pour conséquence que le titulaire de la marque serait susceptible de faire l’objet de recours en dommages et intérêts (décision du 11 décembre 2007, R 0077/2006-1, «Miss Intercontinental», paragraphe 51).
2.11.3 Les enregistrements défensifs
Le Tribunal a précisé que l’existence d’une disposition nationale reconnaissant ce que l’on appelle des enregistrements «défensifs» (c’est-à-dire des signes destinés à ne pas être utilisés dans le commerce en raison de leur fonction purement défensive d’un autre signe faisant l’objet d’une exploitation commerciale) ne saurait constituer un juste motif pour le non-usage d’une marque antérieure sur laquelle se fonde une opposition (arrêt du 23 février 2006, «Bainbridge», T-194/03, point 46).
2.11.4 La force majeure
Les justes motifs pour le non-usage incluent, en outre, les cas de force majeure, qui entravent le fonctionnement normal de l’entreprise du titulaire.
2.11.5 Les conséquences de la justification du non-usage
L’existence de justes motifs ne permet pas pour autant de considérer que le non-usage au cours de la période considérée équivaut à un usage effectif. En effet, cette approche aurait pour conséquence d’ouvrir un nouveau délai de grâce dès la cessation des justes motifs.
En réalité, le non-usage au cours de cette période a simplement pour effet de suspendre le délai de cinq ans. Il s’ensuit que la période pendant laquelle le non-usage est justifié n’est pas prise en considération pour calculer le délai de grâce de cinq ans.
En outre, la durée d’existence des justes motifs peut être importante. Lorsque les motifs justifiant le non-usage n’ont existé qu’au cours d’une partie de la période de cinq ans qui précèdent la publication de la demande de marque communautaire, il n’est pas toujours légitime d’écarter l’exigence de la preuve de l’usage. Dans ce cas, la période pendant laquelle ces motifs étaient valables ainsi que le délai écoulé depuis qu’ils ne le sont plus, revêtent une importance particulière (décision du 1er juillet 1999, B 2 250).
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3 La procédure
3.1 La requête du demandeur
Conformément à l’article 42, paragraphe 2, du RMC, l’usage de la marque antérieure doit être démontré – et uniquement démontré – si le demandeur exige la preuve de l’usage. L’exigence de cette preuve est donc conçue, dans une procédure d’opposition, comme un moyen de défense du demandeur.
L’Office ne peut pas informer le demandeur qu’il peut exiger la preuve de l’usage ni l’inviter à le faire. Compte tenu de son impartialité dans la procédure d’opposition, il appartient aux parties d’apporter la base factuelle ainsi que de justifier et de défendre leurs positions respectives (voir l’article 76, paragraphe 1, deuxième phrase, du RMC).
L’article 42, paragraphe 2, du RMC n’est pas applicable lorsque l’opposant présente, de sa propre initiative, des pièces relatives à l’usage de la marque antérieure invoquée (voir paragraphe 3.1.2 ci-dessous pour une exception à cette règle). Si le demandeur de la marque communautaire ne demande pas une preuve de l’usage, la question de l’usage sérieux ne sera pas abordée d’office par l’Office. Dans ce cas, en principe, peu importe même que les preuves produites par l’opposant attestent uniquement un usage d’un type ou d’un mode particulier ou limité à seulement une partie des produits ou des services pour lesquels la marque antérieure est enregistrée.
La demande de production d’une preuve de l’usage n’est valable que si la marque antérieure est soumise à l’obligation d’usage, c’est-à-dire si elle est enregistrée depuis plus de cinq ans (pour plus de détails, voir le paragraphe 2.5.1 ci-dessus).
3.1.1 La date de la requête
Conformément à la règle 22, paragraphe 1, du REMC, la demande de preuve de l’usage selon l’article 42 paragraphe 2, du REMC n’est admissible que si le demandeur présente sa demande dans le délai spécifié par l’Office. La demande de preuve de l’usage doit être introduite au cours du premier délai qui est imparti au demandeur pour présenter ses observations en réponse à l’opposition en vertu de la règle 20, paragraphe 2, du REMC.
Si la demande de preuve de l’usage est présentée durant le délai de réflexion ou le délai de deux mois imparti à l’opposant pour présenter ou modifier des faits, preuves et arguments, elle est communiquée à l’opposant sans délai.
3.1.2 La requête doit être explicite, claire et inconditionnelle
La requête du demandeur est une déclaration à caractère officiel qui entraîne des conséquences importantes en termes de procédure.
Cette demande doit, par conséquent, être explicite et claire. En règle générale, la demande de preuve de l’usage doit être rédigée de façon positive. Étant donné que la question de l’usage ou du non-usage peut intervenir dans de nombreux cas de figure (par exemple, pour invoquer ou contester un caractère distinctif élevé de la marque antérieure), de simples remarques ou observations du demandeur concernant l’usage (ou le non-usage) de la marque de l’opposant ne sont pas suffisamment explicites et
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ne constituent pas une demande valable de preuve de l’usage sérieux (arrêt du 16 mars 2005, «FLEXI AIR», T-112/03).
Exemples:
Demande suffisamment explicite et claire:
«Je demande à l’opposant d’apporter la preuve de l’usage…» ;
«J’invite l’Office à impartir un délai à l’opposant pour apporter la preuve de l’usage…» ;
«Par la présente, l’usage de la marque antérieure est contesté…» ;
«L’usage de la marque antérieure est contesté conformément à l’article 42 du RMC» ;
«Le demandeur soulève l’objection du non-usage» (décision du 5 août 2010 dans l’affaire R 1347/2009-1, «CONT@XT»).
Demande insuffisamment explicite et claire:
«L’opposant n’a fait usage de sa marque que pour…» ;
«L’opposant n’a pas fait usage de sa marque pour…» ;
«Il n’existe pas de preuve de l’usage fait par l’opposant de sa marque…» ;
«les enregistrements antérieurs de l’opposant ne peuvent être «valablement invoqués à l’encontre de la demande de marque communautaire […]», étant donné que «[…] aucune information ou preuve de l’usage […] n’a été fournie» (décision du 22 septembre 2008, B 1 120 973).
Une demande implicite est acceptée à titre d’exception à la règle précitée, lorsque l’opposant envoie spontanément une preuve de l’usage avant la première occasion donnée au demandeur de présenter des arguments et que, dans sa première réponse, le demandeur conteste la preuve de l’usage produite par l’opposant (arrêt du 12 juin 2009, «Pickwick COLOUR GROUP», T-450/07). Dans ce cas, il ne saurait y avoir d’erreur sur la nature de l’échange, et l’Office doit considérer qu’une demande de preuve de l’usage a été faite et impartir à l’opposant un délai pour compléter ses preuves. Dans l’éventualité où la procédure a pris fin et que l’existence d’une demande de preuve de l’usage n’est découverte que lorsqu’une décision a été rendue, l’examinateur doit rouvrir la procédure et impartir à l’opposant un délai pour compléter ses preuves.
Quoi qu’il en soit, la requête doit être inconditionnelle. Des phrases du type «si l’opposant ne limite pas ses produits et/ou services compris dans les classes "X" ou "Y", nous exigeons la preuve de l’usage», «si l’Office ne rejette pas l’opposition en raison de l’absence de risque de confusion, nous demandons la preuve de l’usage» ou «si l’Office veut bien en tenir compte, nous invitons l’opposant à apporter la preuve de l’usage de sa marque», contiennent des demandes conditionnelles ou subsidiaires et ne constituent pas des demandes valables de la preuve de l’usage (décision du 26 mai 2010 dans l’affaire R 1333/2008-4, «RFID SOLUTIONS»).
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3.1.3 L’intérêt du demandeur à traiter la preuve de l’usage en premier lieu
Conformément à la règle 22, paragraphe 5, du REMC, le demandeur peut limiter ses premières observations à la demande de preuve de l’usage. Il doit ensuite présenter sa réponse à l’opposition dans ses deuxièmes observations, à savoir lorsqu’il aura l’occasion de répondre à la preuve de l’usage présentée. Il peut également agir de la sorte si un seul droit antérieur est soumis à l’obligation d’usage, car le demandeur ne doit pas être contraint de diviser ses observations.
Toutefois, si la demande est tout à fait nulle, l’Office clôturera la procédure sans accorder au demandeur une autre occasion de présenter des observations (voir le paragraphe 3.1.5 ci-dessous).
3.1.4 Réaction en cas de nullité de la requête
Même si la requête est nulle pour l’un des motifs susmentionnés ou si les conditions de l’article 42, paragraphes 2 et 3, du RMC ne sont pas remplies, l’Office transmet néanmoins la requête du demandeur à l’opposant et informe les deux parties de la nullité de la requête.
L’Office clôturera immédiatement la procédure si la requête est complètement nulle et n’est pas accompagnée d’observations du demandeur. L’Office peut, néanmoins, proroger le délai visé à la règle 20, paragraphe 2, du REMC, en cas de réception d’une demande nulle avant l’expiration du délai. Étant donné que le refus de la demande de preuve de l’usage après l’expiration du délai lèse de façon disproportionnée les intérêts du demandeur, l’Office proroge ce délai du nombre de jours qui restait lorsque la partie a présenté sa demande. Cette pratique repose sur le principe de bonne administration.
Lorsque la requête est nulle pour une partie des droits antérieurs sur lesquels l’opposition est fondée, l’Office invite expressément l’opposant à n’apporter la preuve de l’usage que pour les droits soumis à l’obligation d’usage.
3.2 L’invitation expresse de l’Office
Lorsque la requête introduite par le demandeur en vue d’obtenir la preuve de l’usage est valable, l’Office accorde à l’opposant un délai de deux mois pour apporter la preuve de l’usage ou de l’existence de justes motifs pour le non-usage. Le fait de statuer sur l’usage malgré l’absence d’invitation explicite de l’Office à apporter une preuve de l’usage constitue une violation des formes substantielles et ce, même si la requête du demandeur est claire et si l’opposant la comprend et présente la preuve de l’usage demandée (décision du 28 février 2011, R 0016/2010-4, «COLORPLUS», paragraphe 20 ; décision du 19 septembre 2000, R 0733/1999-1, «Affinité/Affinage»).
Si la demande de preuve de l’usage est introduite durant le délai de réflexion et est communiquée à l’opposant au cours de cette période, le délai de présentation de la preuve de l’usage doit coïncider avec le délai imparti pour la production des faits, preuves et observations initiaux ou supplémentaires. Le délai est automatiquement prorogé si le délai de réflexion est étendu.
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Si la demande parvient à l’Office avant l’expiration du délai imparti pour prouver ou modifier des faits, preuves et observations et qu’elle est traitée pendant ce délai, la date limite fixée pour la présentation de ces faits, preuves et observations sera reportée pour coïncider avec le délai de deux mois imparti pour apporter la preuve de l’usage.
3.3 La réaction de l’opposant: la preuve de l’usage
3.3.1 Le délai imparti pour apporter la preuve de l’usage
L’Office impartit à l’opposant un délai de deux mois pour apporter la preuve de l’usage. L’opposant peut demander la prorogation de ce délai conformément à la règle 71 du REMC. La pratique courante concernant les prorogations est applicable à ces demandes5.
La règle 22, paragraphe 2, du REMC précise que l’Office rejette l’opposition si l’opposant ne fournit pas la preuve de l’usage dans le délai imparti.
Il convient de distinguer deux cas de figure:
celui dans lequel l’opposant n’a produit aucun élément de preuve pertinent dans les délais impartis: la présentation de preuves pertinentes de l’usage pour la première fois au-delà de l’expiration du délai imparti à cet effet entraîne le rejet de l’opposition, sans que l’Office ait une marge d’appréciation à cet égard. La Cour a jugé à cet égard que la règle 22, paragraphe 2, du REMC constituait une disposition de nature essentiellement procédurale et qu'il ressortait du contenu de cette disposition que lorsqu'aucune preuve de l'usage de la marque concernée n'est produite dans le délai imparti par l'OHMI, le rejet de l’opposition doit être prononcé d’office (voir l’arrêt du 18 juillet 2013, «Fishbone», C-621/11 P, points 28 et 29).
celui dans lequel l’opposant a produit des éléments de preuve pertinents dans le délai imparti et présente des preuves supplémentaires après l’expiration de ce délai: dans ce cas, lorsque les éléments de preuve supplémentaires ne font que renforcer et clarifier les éléments de preuve pertinents précédemment produits dans le délai imparti, et pour autant que l’opposant n’a pas abusé des délais impartis, en recourant sciemment à des tactiques dilatoires ou en faisant manifestement preuve de négligence, l’Office peut tenir compte des éléments de preuve déposés hors du délai imparti en se prévalant de manière objective et raisonnable du pouvoir discrétionnaire qui lui est conféré par l’article 76, paragraphe 2, du RMC (voir l’arrêt du 29 novembre 2011, «Fishbone», T-415/09, point 31, confirmé par l'arrêt du 18 juillet 2013, «Fishbone», C-621/11 P, points 28 et 30). La Cour a clairement déclaré que les mêmes considérations s’appliquaient mutatis mutandis aux procédures de déchéance (voir l’arrêt du 26 septembre 2013, «Centrotherm», C-610/11 P, point 87, appliquant la règle 40, paragraphe 5, du REMC).
5 Voir les Directives, partie C, Opposition, section 1, Questions procédurales, paragraphe 6.2.1, Prorogation des délais dans les procédures d’opposition.
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L’Office motive dûment ses décisions de rejeter ou de prendre en considération des «éléments de preuve supplémentaires» dans sa décision. Les déclarations d’ordre général telles que «les éléments de preuve ne sont pas pertinents» ou «l’opposant n’a pas expliqué pourquoi il avait présenté les éléments de preuve supplémentaires après l’expiration du délai» ne sont pas suffisantes (voir l’arrêt du 26 septembre 2013, «Centrotherm», C-610/11 P, point 111).
En ce qui concerne l’exercice de ce pouvoir discrétionnaire en tenant compte de ces faits et preuves, celui-ci est, en particulier, susceptible de se justifier lorsque l’Office considère que, d’une part, les éléments tardivement produits sont de prime abord susceptibles de revêtir une réelle pertinence en ce qui concerne le sort de l’opposition formée devant lui et, d’autre part, le stade de la procédure auquel intervient cette production tardive et les circonstances qui l’entourent ne s’opposent pas à cette prise en compte (voir l'arrêt du 13 mars 2007, «ARCOL/CAPOL», C-29/05 P, point 44).
3.3.2 Les moyens de preuve
3.3.2.1 Les principes
La preuve de l’usage doit être structurée.
L’article 76, paragraphe 1, du RMC, dispose que «dans une procédure concernant des motifs relatifs de refus d’enregistrement, l’examen est limité aux moyens invoqués et aux demandes présentées par les parties». La présentation des preuves doit être suffisamment claire et précise pour permettre à l’autre partie d’exercer ses droits de défense et à l’Office de procéder à son examen, sans faire référence à des informations extérieures ou complémentaires.
En fait, il est interdit à l’Office d’avancer des arguments en faveur de l’une ou l’autre partie et de prendre la place de l’opposant, ou de son conseil, en essayant de trouver et d’identifier lui-même dans les pièces du dossier les informations susceptibles d’être considérées comme corroborant la preuve de l’usage. En d’autres termes, l’Office ne doit pas tenter d’améliorer la présentation des preuves d’une partie. La responsabilité de l’ordonnancement des preuves incombe à la partie concernée. À défaut, certains éléments de preuve pourraient ne pas être pris en compte.
En ce qui concerne le format et le contenu des preuves produites, l’Office recommande la prise en compte des éléments suivants, qui constituent les aspects essentiels d’une présentation structurée:
1. Le numéro de dossier correspondant (marque communautaire, opposition, annulation et recours) doit être mentionné dans la partie supérieure de chaque courrier ;
2. La communication des documents destinés à la preuve de l’usage doit être séparée. Néanmoins, si le courrier concerne des questions urgentes, telles qu’une demande de limitation, de suspension, de prorogation de délai, de retrait, etc., elles doivent être également mentionnées sur la page de garde ;
3. Le nombre total de pages que contient le courrier doit être mentionné. Il est également important que les pages soient numérotées ;
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4. L’Office recommande fortement à l’opposant de ne pas dépasser un maximum de 110 pages dans son courrier ;
5. Si les documents sont envoyés dans des colis différents, il est recommandé de mentionner le nombre de colis ;
6. Si un grand nombre de documents est envoyé par télécopieur en différents lots, il est recommandé d’indiquer le nombre total de pages, le nombre de lots et l’identification des pages de chaque lot ;
7. Il est recommandé d’utiliser des feuillets au format DIN-A4 de préférence à d’autres formats ou dispositifs pour tous les documents présentés, avec des intercalaires séparant les annexes ou les pièces jointes, étant donné qu’elles peuvent aussi être numérisées ;
8. Il ne faut pas envoyer de spécimens, emballages, conditionnements, etc. En revanche, une photographie de ceux-ci doit être prise, imprimée (le cas échéant, en couleur, sinon en noir et blanc) et envoyée en tant que document ;
9. Les documents ou articles originaux envoyés à l’Office ne doivent pas être agrafés, reliés ou placés dans des chemises ;
10. Le deuxième exemplaire à remettre à l’autre partie doit être clairement identifié ;
11. Si l’original n’est transmis à l’Office que par télécopieur, il n’y a pas lieu d’envoyer un deuxième exemplaire par télécopieur ;
12. La page de garde doit clairement mentionner si le courrier contient des éléments en couleur importants pour le dossier ;
13. Un deuxième jeu d’éléments en couleur doit être inclus afin de le communiquer à l’autre partie.
Ces recommandations sont adressées à l’opposant en même temps que la communication par l’Office de la demande de preuve de l’usage formulée par le demandeur.
Conformément à la règle 22, paragraphe 4, du REMC, les preuves sont produites conformément aux règles 79 et 79 bis et se limitent, en principe à la production de pièces justificatives comme, par exemple, des emballages, des étiquettes, des barèmes de prix, des catalogues, des factures, des photographies, des annonces dans les journaux, ainsi qu’aux déclarations écrites visées à l’article 78, paragraphe 1, point f), du RMC. La règle 22, paragraphe 4, du REMC admet aussi les études de marchés et les mentions de la marque dans des listes et des publications d’associations de la profession concernée en tant que moyens de preuve adéquats (décisions du 14 mars 2011, B 1 582 579, et du 18 juin 2010, B 1 316 134).
Les barèmes de prix et les catalogues sont des exemples de «matériel provenant directement de la partie elle-même». Le «rapport annuel et les comptes» d’une entreprise entrent également dans cette catégorie.
La règle 22, paragraphe 4, du REMC, doit être lue à la lumière de la règle 79 bis du REMC. En effet, les pièces qui ne peuvent pas être numérisées ou photocopiées
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(telles que des CD, des éléments physiques) ne peuvent être prises en compte que si elles sont produites en deux exemplaires, de sorte que l’un d’eux puisse être transmis à l’autre partie.
L’exigence de preuve de l’usage soulève toujours la question de la valeur probante des pièces produites. Les preuves doivent au minimum présenter un certain degré de fiabilité. En règle générale, l’Office considère que les pièces produites par les tiers ont une valeur probante supérieure à celle des pièces produites par le titulaire ou son représentant. Les références faites par l’opposant à des documents internes ou à des études ou commandes hypothétiques sont particulièrement problématiques. Cela dit, lorsque les pièces doivent être produites régulièrement pour être utilisées par le public et/ou les autorités en vertu de dispositions légales, par exemple le droit des entreprises et/ou les réglementations boursières, et lorsque l’on peut supposer que ces pièces font l’objet d’un certain contrôle officiel, leur valeur probante est certainement supérieure à celle des pièces «personnelles» ordinaires produites par l’opposant (voir aussi le paragraphe 3.3.2.3 «Les déclarations»).
3.3.2.2 Les références
L’opposant peut invoquer les conclusions formulées par les offices et tribunaux nationaux dans des procédures parallèles. Bien que l’Office ne soit pas lié par les conclusions de ces juridictions, il doit les prendre en considération et elles peuvent influencer sa décision. Il est important pour l’Office de pouvoir examiner le type de preuve qui a abouti à la décision prise au plan national. Il tient compte, le cas échéant, des différences liées aux conditions de fond ou de forme applicables devant l’organisme national concerné (décisions du 25 août 2003 dans l’affaire R 1132/2000-4, «VANETTA», paragraphe 16, et du 18 octobre 2000 dans l’affaire R 0550/1999-3, «DUKE», paragraphe 23).
L’opposant peut, à sa convenance, faire référence aux pièces produites à titre de preuve de l’usage dans le cadre d’une précédente procédure devant l’Office (ce principe a été confirmé par le Tribunal dans l’arrêt «ELS» précité). L’Office accepte ces références à condition que l’opposant identifie clairement les pièces auxquelles il fait référence ainsi que la procédure dans laquelle elles ont été produites. Si la référence aux pièces invoquées n’est pas suffisamment précise, l’Office demande à l’opposant de préciser clairement à quelles pièces il fait référence ou de les présenter à nouveau (décision du 30 novembre 2010, B 1 080 300). Pour plus de détails sur les conditions relatives à l’identification des pièces pertinentes, voir les Directives, partie C, Opposition, partie 1, Questions de procédure.
La charge de la preuve incombe à l’opposant, et non à l’Office ou au demandeur. La simple mention du site internet sur lequel l’Office peut trouver des informations complémentaires est donc insuffisante, puisque cette mention ne fournit pas à l’Office des indications suffisantes sur le lieu, la nature, la durée et l’importance de l’usage (décision du 31 octobre 2001, B 260 192).
3.3.2.3 Les déclarations
Si les moyens de preuve énumérés, comme les emballages, les étiquettes, les barèmes de prix, les catalogues, les factures, les photographies et les annonces dans les journaux, ne soulèvent aucun problème particulier, les déclarations visées à
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l’article 78, paragraphe 1, point f), du RMC nécessitent en revanche, un examen plus détaillé.
Il n’est pas exigé que l’opposant soumette une déclaration écrite portant sur le chiffre d’affaires réalisé par l’exploitation de la marque antérieure. L’opposant peut choisir les moyens de preuve qu’il considère comme appropriés afin de démontrer que la marque antérieure a fait l’objet d’un usage sérieux pendant la période pertinente (arrêt du 8 juillet 2004, «VITAFRUIT», T-203/02, point 37).
Distinction entre la recevabilité et la pertinence (valeur probante)
L’importance des déclarations a fait l’objet de nombreux débats. À cet égard, il faut différencier clairement la recevabilité et la valeur probante de ce type de preuve.
En ce qui concerne la recevabilité, la règle 22, paragraphe 4, du REMC mentionne expressément les déclarations écrites visées à l’article 78, paragraphe 1, point f), du RMC en tant que moyen de preuve recevable de l’usage. L’article 78, paragraphe 1, point f), du RMC énumère des moyens de preuve, parmi lesquels figurent les déclarations écrites faites sous serment ou solennellement ou les autres déclarations ayant un effet équivalent d’après la législation de l’État dans lequel elles ont été faites. Il faut donc évaluer si la pièce produite constitue une déclaration au sens de l’article 78, paragraphe 1, point f), du RMC. Il convient de rechercher dans la législation de l’État membre concerné les effets d’une déclaration écrite seulement dans les cas où une telle déclaration n’a pas été faite sous serment ou solennellement (arrêt du 7 juin 2005, «Salvita», T-303/03, point 40). En cas de doute, il appartient à l’opposant de produire des preuves à cet égard.
Étant donné que l’article 78, paragraphe 1, point f), du RMC ne précise pas par qui ces déclarations doivent être signées, il n’y a aucune raison de considérer que les déclarations signées par les parties à la procédure ne sont pas visées par cette disposition (arrêt du 16 décembre 2008, «DEITECH/DEI-tex», T-86/07, point 46).
S’agissant de la valeur probante, rien dans le RMC ni dans le REMC ne permet de conclure que la force probante des éléments de preuve de l’usage de la marque, y compris les déclarations solennelles, devrait être analysée à la lumière de la législation nationale d’un État membre. Indépendamment de la situation au regard du droit national, la force probante d’une déclaration écrite sous serment est relative, c’est-à- dire que son contenu doit être apprécié librement (arrêt du 28 mars 2012, «OUTBURST», T-214/08, point 33). Pour apprécier la valeur probante d’une déclaration, il faut en premier lieu vérifier la vraisemblance de l’information qui y est contenue. Il faut alors tenir compte, notamment, de l’origine du document, des circonstances de son élaboration, de son destinataire, et se demander si, d’après son contenu, il semble sensé et fiable (arrêt du 7 juin 2005, «Salvita», T-303/03, point 42).
Pour ce qui est de la valeur probante de ce type de preuve, l’Office établit une distinction entre les déclarations faites par les parties elles-mêmes ou par leurs salariés et celles provenant d’une source indépendante.
Les déclarations faites par le titulaire ou par ses salariés
Les déclarations faites par les parties elles-mêmes ou par leurs salariés ont généralement moins de poids que les preuves émanant d’une source indépendante.
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En effet, la perception de la partie concernée par le litige risque d’être plus ou moins altérée par ses intérêts personnels dans l’affaire (décision du 11 janvier 2011, R 0490/2010-4, «BOTODERM», paragraphe 34 ; décisions du 27 octobre 2009, B 1 086 240, et du 31 août 2010, B 1 568 610).
Cela ne signifie pas pour autant que ces déclarations soient dépourvues de toute valeur probante (arrêt du 28 mars 2012, «OUTBURST», T-214/08, point 30). Il faut se garder de toute généralisation, car la valeur exacte de ces déclarations dépend toujours de leur forme et de leur contenu. Les déclarations qui contiennent des informations détaillées et concrètes ont une valeur probante plus forte que celles rédigées de façon très générale et abstraite.
La conclusion finale dépend de l’appréciation globale des preuves dans chaque cas d’espèce. En règle générale, d’autres pièces sont nécessaires pour apporter la preuve de l’usage, car il faut tenir compte du fait que ces déclarations ont une force probante inférieure à celle de preuves concrètes (étiquettes, emballages, etc.) ou provenant de sources indépendantes. La force probante des autres pièces produites est donc très importante. Il convient de déterminer si le contenu des déclarations sous serment est suffisamment étayé par les autres pièces (ou inversement). S’agissant de l’appréciation de ce type de preuve, l’office national concerné peut posséder une certaine pratique, mais celle-ci n’est pas nécessairement transposable dans les procédures relatives aux marques communautaires (arrêt du 7 juin 2005, «Salvita», T-303/03, points 41 et suivants).
Un changement de titulaire intervenu après la date de publication de la demande de marque communautaire peut entraîner l’annulation des déclarations formulées par les nouveaux titulaires, étant donné que ceux-ci ne disposent en général d’aucune connaissance directe pour faire des déclarations relatives à l’usage de la marque fait par le titulaire précédent (décision du 17 juin 2004, R 0016/2004-1, «Reporter»).
Néanmoins, dans le cas d’un transfert ou d’une autre cession de titre, tout nouveau titulaire peut se baser sur l’usage fait pendant le délai de grâce correspondant par son ou ses prédécesseur(s). L’usage par le prédécesseur peut être prouvé par le prédécesseur lui-même et par tout autre moyen fiable, comme des informations issues de documents commerciaux si le prédécesseur en personne n’est pas disponible.
Les déclarations faites par des tiers
Les déclarations (telles que des études) émanant d’une source indépendante, par exemple d’experts, d’organisations professionnelles, de chambres de commerce, ou des fournisseurs, clients ou partenaires commerciaux de l’opposant, ont davantage de force probante (décision du 19 janvier 2011, R 1595/2008-2, «FINCONSUMO», paragraphe 9, ii) ; décision du 30 mars 2010, R 0665/2009-1, «EUROCERT», paragraphe 11, et décision du 12 août 2010, B 1 575 615).
Cette pratique est conforme à la jurisprudence de la Cour de justice dans l’arrêt «Chiemsee» (arrêt du 4 mai 1999, affaires jointes C-108/97 et C-109/97), dans lequel la Cour a fourni quelques indications concernant les preuves qui permettent d’établir le caractère distinctif acquis par une marque sur le marché. Si l’acquisition d’un caractère distinctif n’est pas en soi la même chose que l’usage sérieux, il est, par contre, vrai que l’acquisition d’un caractère distinctif inclut des éléments relatifs à l’usage d’un signe sur le marché. Par conséquent, la jurisprudence relative à ces derniers peut être utilisée par analogie.
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Les déclarations faites par les parties elles-mêmes sont des «preuves de tiers», tandis que tous les autres moyens de preuve, comme les sondages d’opinion, les déclarations émanant de chambres de commerce, d’organisations professionnelles ou d’experts, proviennent de tiers.
3.4 La réaction du demandeur
3.4.1 La transmission des pièces
Après réception des preuves de l’usage produites par l’opposant, l’Office les transmet en totalité au demandeur.
En règle générale, l’Office accorde au demandeur un délai de deux mois pour présenter ses observations en réponse à la preuve de l’usage (et à l’opposition).
3.4.2 Le caractère insuffisant de la preuve de l’usage
L’Office peut cependant clore la procédure immédiatement si les preuves de l’usage produites dans le délai imparti sont insuffisantes et si cette insuffisance affecte tous les droits antérieurs de l’opposition. Cette pratique vise à éviter la poursuite de la procédure alors que l’issue en est déjà connue: en l’occurrence, l’opposition sera rejetée pour insuffisance de preuves de l’usage (principes de l’économie de la procédure et de la bonne administration). L’Office ne procède ainsi que si les pièces produites sont manifestement insuffisantes pour établir l’usage sérieux.
Lorsque les pièces peuvent suffire, l’Office les transmet au demandeur et lui impartit un délai de deux mois pour présenter ses observations. Il ne doit pas indiquer à l’opposant que le caractère suffisant des preuves est contestable ni l’inviter à présenter d’autres pièces dans ce cas. De tels actes seraient contraires à la règle de l’impartialité de l’Office dans les procédures contradictoires (décision du 1er août 2007, R 201/2006-4, «OBC/O.C.B.», paragraphe 19).
3.4.3 L’absence de réaction du demandeur
À défaut de réaction du demandeur dans le délai imparti, l’Office statue sur la base des preuves dont il dispose. L’absence de réponse du demandeur ne vaut pas acceptation des pièces produites en tant que preuve suffisante de l’usage (arrêt du 7 juin 2005, «Salvita», T-303/03, point 79).
3.4.4 Le retrait officiel de la requête
Lorsque le demandeur réagit à la preuve de l’usage en retirant officiellement la demande relative à cette preuve, la question ne se pose plus. Le demandeur, à qui il appartient d’entamer la procédure, peut en toute logique mettre un terme à cette partie de la procédure en retirant officiellement sa demande (décision du 21 avril 2004, R 0174/2003-2, «Sonnengarten», paragraphe 23).
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3.5 Nouvelle réaction de l’opposant
L’opposant peut présenter des observations en réponse à celles du demandeur. Ce droit revêt une importance particulière lorsque la décision à venir pourrait reposer en partie sur les arguments avancés par le demandeur pour démontrer que les pièces produites ne prouvent pas l’usage de la marque.
La chambre de recours a estimé que le fait de ne pas permettre à l’opposante de prendre position constitue une violation des formes substantielles (décision du 28 février 2011, R 16/2010-4, «COLORPLUS», paragraphe 20).
Pour plus d’informations sur la présentation de preuves supplémentaires, voir le paragraphe 3.3.1 ci-dessus.
3.6 Les langues utilisées dans les procédures relatives à la preuve de l’usage
Aux termes de la règle 22, paragraphe 6, du REMC, si les preuves produites conformément aux paragraphes 1, 2 et 3 ne sont pas rédigées dans la langue de la procédure d’opposition, l’Office peut inviter l’opposant à fournir, dans le délai qu’il lui impartit, une traduction dans cette langue.
L’Office a toute latitude pour décider si l’opposant doit fournir une traduction des preuves de l’usage dans la langue de la procédure. Dans l’exercice de son pouvoir discrétionnaire, il évalue les intérêts des deux parties.
Il convient de garder à l’esprit qu’il pourrait être extrêmement coûteux et laborieux pour l’opposant de traduire les preuves de l’usage dans la langue de la procédure.
D’un autre côté, le demandeur a le droit d’être informé du contenu des preuves produites pour pouvoir défendre ses intérêts. Il est impératif qu’il puisse apprécier le contenu des preuves de l’usage présentées par l’opposant. À cet égard, la nature des documents présentés doit être prise en considération. Par exemple, on peut estimer que des factures et des échantillons d’emballage «standard» n’ont pas besoin d’être traduits pour être compris du demandeur (arrêt du 15 décembre 2010, «EPCOS», T-132/09, points 51 et suivants ; décisions du 30 avril 2008, R 1630/2006-2, «DIACOR», paragraphes 46 et suivants (recours T-258/08), et du 15 septembre 2008, R 1404/2007-2, «FAY», paragraphes 26 et suivants).
Si le demandeur demande expressément une traduction des preuves dans la langue de la procédure, l’Office exige en principe que l’opposant fournisse une traduction. Toutefois, les demandes de ce type peuvent être rejetées lorsque, compte tenu du caractère très parlant des preuves produites, la requête du demandeur paraît excessive, voire abusive.
Si l’Office exige la traduction des pièces, il accorde à l’opposant un délai de deux mois pour présenter cette traduction. Lorsque les preuves de l’usage produites par l’opposant sont très volumineuses, l’Office peut inviter expressément l’opposant à ne traduire que les parties des preuves qu’il juge suffisantes pour établir l’usage sérieux de la marque au cours de la période pertinente. Il appartient en général à l’opposant d’apprécier s’il est nécessaire de procéder à une traduction exhaustive de l’ensemble des pièces. Les moyens de preuve ne seront pris en considération que dans la mesure
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où une traduction aura été fournie ou s’ils sont parlants, indépendamment de leur contenu textuel.
3.7 La décision
3.7.1 La compétence de l’Office
L’Office procède à sa propre appréciation des preuves de l’usage produites. En d’autres termes, la valeur probante des preuves produites est appréciée indépendamment des observations présentées par leur demandeur à cet égard. L’appréciation de la pertinence, du caractère probant et de la validité des preuves est laissée à la discrétion et au pouvoir d’appréciation de l’Office, et non à celle des parties, et n’est pas soumise au principe du contradictoire qui régit les procédures inter partes (décisions du 1er août 2007, R 0201/2006-4, «OCB», paragraphe 19, et du 14 novembre 2000, R 0823/1999-3, «SIDOL»).
Une déclaration du demandeur concluant que la preuve de l’usage a été apportée est donc sans incidence sur la conclusion de l’Office. La requête concernant la preuve de l’usage est un moyen de défense du demandeur. Toutefois, une fois ce moyen de défense invoqué par le demandeur, l’Office est seul compétent pour mettre en œuvre la suite de la procédure et apprécier si les preuves produites par l’opposant ont une valeur probante suffisante. Le demandeur peut toutefois retirer officiellement sa demande de preuve de l’usage (voir le paragraphe 3.4.4 ci-dessus).
Ces règles ne sont pas contraires à l’article 76, paragraphe 1, , du RMC, selon lequel l’examen de l’Office est limité, dans les procédures inter partes, aux moyens invoqués et aux demandes présentées par les parties. Cette disposition ne lie l’Office qu’en ce qui concerne les faits, preuves et arguments présentés par les parties sur lesquels il fonde sa décision et ne s’étend pas à la valeur juridique que les parties peuvent leur accorder. Dès lors, les parties peuvent être d’accord sur les faits qui ont été ou non démontrés, mais elles ne peuvent déterminer si ces faits sont ou non suffisants pour établir l’usage sérieux (décisions du 1er août 2007, R 0201/2006-4, «OCB», paragraphe 19, du 14 novembre 2000, R 0823/1999-3, «SIDOL», paragraphe 20, et du 13 mars 2001, R 0068/2000-2, «NOVEX PHARMA»).
3.7.2 La nécessité de statuer
Il n’est pas toujours nécessaire de statuer sur le respect de l’obligation d’apporter la preuve de l’usage sérieux de la marque enregistrée. La question de la preuve de l’usage ne doit pas être vue comme un aspect préliminaire qui doit toujours être examiné en premier lieu lorsqu’une décision est prise sur le fond. Rien dans l’article 42, paragraphe 2, du RMC ni dans la règle 22, paragraphe 1, du REMC ne l’exige.
Lorsque le demandeur a demandé une preuve de l’usage des droits antérieurs, l’Office examine également la question de savoir si et dans quelle mesure l’usage a été prouvé pour les marques antérieures, pour autant que cela soit pertinent pour l’issue de la décision en cause:
s’il existe des droits antérieurs qui ne sont pas soumis à l’obligation d’usage et qui conduisent à une constatation de risque de confusion, il n’y a pas lieu d’évaluer la preuve de l’usage fournie pour les autres droits antérieurs ;
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en outre, si les signes ou les produits et services pour lesquels la marque antérieure est enregistrée sont différents de ceux de la marque contestée ou s’il n’existe pas de risque de confusion entre les signes, il n’y a pas lieu de soulever la question de la preuve de l’usage.
3.7.3 L’appréciation globale des preuves produites
Comme décrit en détail ci-dessus (au paragraphe 2.2.), l’Office doit évaluer les preuves produites en termes de lieu, de durée, d’importance et de nature de l’usage dans le cadre d’une appréciation globale. Une appréciation séparée des divers facteurs pertinents, chacun considéré isolément, ne convient pas (arrêt du 17 février 2011, «Friboi», T-324/09, point 31).
Le principe de l’interdépendance s’applique, ce qui signifie que des preuves faibles concernant un facteur pertinent (par exemple, un faible volume de ventes) peuvent être compensées par des preuves solides pour un autre facteur (par exemple, un usage ininterrompu pendant une longue période).
Toutes les circonstances du cas d’espèce doivent être prises en considération les unes par rapport aux autres afin de déterminer si la marque en cause a fait l’objet d’un usage sérieux. Les circonstances particulières de l’espèce peuvent inclure les caractéristiques spécifiques des produits et/ou services concernés (par exemple, des prix bas/élevés, des produits de masse ou spécifiques) ou le marché ou secteur d’activité particuliers.
Dans certaines conditions, des preuves indirectes ou circonstancielles, même isolées, peuvent également convenir pour établir un usage sérieux.
Étant donné que l’Office n’évalue pas la réussite commerciale, un usage même minime (mais pas purement symbolique ou interne) peut suffire pour être considéré comme «sérieux», dès lors qu’il est considéré comme garanti dans le secteur économique concerné pour maintenir ou conquérir une part de marché.
La décision précise quelles preuves ont été produites. Cependant, en règle générale, seules les preuves pertinentes pour la conclusion de l’affaire sont mentionnées. Si les preuves sont jugées convaincantes, il suffit à l’Office d’indiquer quelles pièces ont été utilisées pour parvenir à cette conclusion et pourquoi. En cas de rejet d’une opposition pour insuffisance de la preuve de l’usage, le risque de confusion ne doit pas être examiné.
3.7.4 Exemples
Les exemples suivants illustrent quelques décisions de l’Office ou arrêts de la Cour (avec des conclusions différentes) dans lesquels l’appréciation globale des preuves produites était importante.
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3.7.4.1 L’usage sérieux a été accepté
Affaire n° Commentaire
Arrêt du 17 février 2011, «Friboi», T-324/09
L’opposante (Fribo Foods Ltd.) a produit plusieurs factures relatives à de grands volumes de produits et adressées à sa société de distribution (Plusfood Ltd.), qui fait partie du même groupe (Plusfood Group). Il n’est pas contesté que la société de distribution a mis les produits sur le marché ultérieurement. En outre, l’opposante a présenté des brochures non datées, une coupure de presse et trois barèmes de prix. S’agissant des factures «internes», le Tribunal a estimé que la chaîne producteur-distributeur-marché était un mode d’organisation commerciale courant, qui ne pouvait pas être considéré comme étant un usage purement interne. Les brochures non datées devaient être examinées à la lumière d’autres éléments de preuve datés, tels que des factures et des barèmes de prix et, partant, pouvaient être prises en considération. Le Tribunal a admis l’usage sérieux et a souligné qu’une appréciation globale impliquait que tous les facteurs pertinents soient considérés comme un tout et non isolément.
Décision du 2 mai 2011 dans l’affaire R 0872/2010-4, «CERASIL»
L’opposante a notamment présenté une cinquantaine de factures, qui ne sont pas toutes rédigées dans la langue de la procédure. Les noms des destinataires et les quantités vendues ont été masqués. La chambre de recours a jugé que des factures standard contenant les informations habituelles (date, mention du nom et de l’adresse du vendeur et de l’acheteur, produit concerné, prix payé) n’exigeaient pas une traduction. Même si les noms des destinataires et les quantités vendues ont été masqués, les factures ont néanmoins confirmé la vente de produits «CERATOSIL», mesurée en kilogrammes, à des entreprises établies dans tout le territoire pertinent au cours de la période concernée. Considérés conjointement avec les autres preuves (brochures, déclarations sous serment, articles, photographies), ces éléments ont été jugés suffisants pour établir la preuve d’un usage sérieux.
Décision du 29 novembre 2010, B 1 477 670
L’opposante, qui exerçait ses activités dans le domaine de l’entretien des véhicules et de la gestion d’entreprises liées à l’achat et à la vente de véhicules, a fourni plusieurs rapports annuels donnant un aperçu général de l’ensemble de ses activités commerciales et financières. La division d’opposition a estimé que ces rapports ne fournissaient pas, en soi, des informations suffisantes sur un usage effectif de la marque pour la plupart des services revendiqués. Cependant, dans le cadre d’un examen conjoint avec des annonces et de la publicité montrant la marque en cause pour des services particuliers, la division d’opposition a conclu que les preuves dans leur ensemble fournissaient suffisamment d’indications quant à l’importance, la nature, la durée et le lieu de l’usage de ces services.
Décision du 29 novembre 2010 dans l’affaire R 0919/2009-4, «GELITE»
Les documents produits par la requérante prouvent l’usage de la marque pour des «matériaux de revêtement à base de résine artificielle (revêtements de fond, intermédiaires et de finition) et des laques industrielles». Les étiquettes jointes prouvent l’usage de la marque pour différents revêtements de fond, primaires et de finition. Ces informations coïncident avec les barèmes de prix joints. Les fiches techniques d’information fournies décrivent ces produits comme des revêtements anticorrosion à base de résine artificielle, existant en différentes couleurs. Les factures jointes montrent que ces produits ont été fournis à différents clients en Allemagne. bien que les chiffres d’affaires mentionnés dans la déclaration écrite pour la période comprise entre 2002 et 2007 ne fassent pas expressément référence à l’Allemagne, il y a lieu de conclure qu’ils ont été au moins en partie réalisés en Allemagne également. Par conséquent, la marque antérieure est réputée avoir fait l’objet d’un usage pour les produits «laques, peintures laquées, vernis, peintures ; dispersions et émulsions pour recouvrir et réparer des surfaces», parce qu'il n’est pas possible de subdiviser davantage ces produits.
Décision du 20 avril 2010 dans l’affaire R 0878/2009-2, «SOLEA»
La déclaration solennelle fait référence à des chiffres de vente élevés (plus de 100 millions d’EUR) pour des produits revêtus de la marque entre 2004 et 2006 et s’accompagne d’extraits d’internet représentant des photographies des produits vendus au cours de la période concernée (savon, shampooing, déodorant [pour les pieds et le corps], lotions et articles de toilette). Bien que les extraits d’internet mentionnent des droits d’auteur de 2008, la
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vraisemblance du contenu de la déclaration est corroborée par l’arrêt de la Cour fédérale de Mannheim, dont une copie avait été présentée précédemment par l’opposante afin de prouver le caractère distinctif accru de la marque antérieure qui faisait référence à la part de marché des produits revêtus de la marque de l’opposante pour des soins de visage pour femmes (6,2 %), des lotions de soin (6,3 %), des produits pour la douche et des shampooings (6,1 %) et des produits de soin du visage et de rasage pour hommes (7,9 %). De plus, selon une étude de GfK, un cinquième des citoyens allemands achètent au moins un produit BALEA par an. Il est également fait référence à deux autres études attestant que la marque est renommée en Allemagne. Par conséquent, l’usage de la marque a été suffisamment établi pour les produits sur lesquels l’opposition est fondée.
Décision du 25 mars 2010 dans l’affaire R 1752/2008-1, «ULUDAG»
Les preuves produites pour établir l’usage de la marque antérieure danoise ont été jugées suffisantes. La chambre de recours était satisfaite du fait que la facture fournie mentionnait le lieu et la durée de l’usage, car elle prouve la vente de 2 200 caisses de produits à une société danoise au cours de la période concernée. Les étiquettes présentées prouvent l’usage pour des boissons rafraîchissantes revêtues de la marque telle qu’elle apparaît sur le certificat d’enregistrement. Quant à la question de savoir si une preuve consistant en une seule facture est suffisante en termes d’importance de l’usage, de l’avis de la chambre de recours, le contenu de cette facture, compte tenu des autres éléments de preuve, permet de conclure que l’usage fait de la marque au Danemark est suffisant et sérieux pour les «eau gazéifiée, eau gazéifiée au goût de fruit et eau gazeuse».
3.7.4.2 L’usage sérieux n’a pas été accepté
Affaire n° Commentaire
Arrêt du 18 janvier 2011, «VOGUE», T-382/08
L’opposante a présenté une déclaration émanant de son «managing partner» et de 15 fabricants de chaussures («des chaussures ont été produites pour l’opposante sous la marque VOGUE pendant X années»), 35 photographies de modèles de chaussures VOGUE, des photographies de magasins et 670 factures adressées à l’opposante par des fabricants de chaussures. Le Tribunal a estimé que les déclarations ne prouvaient pas suffisamment l’importance, le lieu et la durée de l’usage. Les factures concernaient la vente de chaussures à l’opposante et non la vente de chaussures à des consommateurs finaux et, par conséquent, elles ne prouvaient pas un usage vers l’extérieur. De simples présomptions et suppositions («hautement improbable», «n’est pas raisonnable de penser», «qui explique probablement l’absence de factures», «raisonnable de supposer», etc.) ne sauraient remplacer des preuves concrètes. L’usage sérieux a donc été rejeté.
Décision du 19 septembre 2007, 1359 C (confirmée par la décision R 1764/2007-4)
Le titulaire de la marque possédait une compagnie aérienne établie aux États-Unis et uniquement exploitée dans ce pays. La circonstance que des vols pouvaient être réservés sur internet depuis l’Union européenne ne pouvait affecter le fait que les services effectifs de transport (classe 39) étaient exclusivement fournis en dehors du territoire pertinent. En outre, les listes de passagers avec des adresses dans l’Union européenne n’étaient pas de nature à prouver que les vols avaient effectivement été réservés depuis l’Europe. Enfin, le site internet était exclusivement en anglais, les prix étaient libellés en dollars américains et les numéros de téléphone et de télécopieur étaient des numéros américains. Par conséquent, l’usage sérieux dans le territoire en cause a été rejeté.
Décision du 4 mai 2010 dans l’affaire R 0966/2009-2, «COAST»
Aucune circonstance particulière ne peut justifier la constatation que les catalogues produits par l’opposante, par eux-mêmes ou en combinaison avec des extraits du site internet et de magazines, prouvent l’importance de l’usage de l’un des signes antérieurs pour l’un des produits et services concernés. Si les preuves produites démontrent l’usage du signe antérieur pour des «vêtements pour hommes et femmes», l’opposante n’a pas présenté la moindre preuve concernant le volume commercial de
La preuve de l’usage
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l’exploitation de ce signe pour établir l’usage sérieux.
Décision du 8 juin 2010 dans l’affaire R 1076/2009-2, «EURO CERT»
Il est de jurisprudence constante qu’une déclaration, même faite sous serment ou solennelle conformément à la législation du pays où elle est effectuée, doit être corroborée par des preuves indépendantes. En l’espèce, la déclaration rédigée par un employé de l’entreprise de l’opposante contient une description de la nature des services en cause, mais il s’agit uniquement de déclarations générales concernant les activités commerciales. Elles ne mentionnent pas des chiffres de ventes ou de publicité précis ou d’autres données susceptibles de prouver l’importance et l’usage de la marque. En outre, trois factures dans lesquelles des données financières importantes ont été masquées et une liste de clients peuvent difficilement être considérées, à elles seules, comme des preuves convaincantes. Par conséquent, l’usage sérieux de la marque antérieure n’a pas été démontré.
Décision du 1er septembre 2010 dans l’affaire R 1525/2009-4, «OFFICEMATE»
Les feuilles de calcul contenant les chiffres d’affaires et les rapports d’analyse et de contrôle concernant les chiffres de ventes sont des documents établis par la requérante ou à sa demande et ont, dès lors, une valeur probante moindre. Aucune des preuves produites ne contient une indication claire du lieu de l’usage de la marque antérieure. Les feuilles de calcul et les rapports d’analyse et de contrôle, qui contiennent des données cumulées sur la valeur totale estimée des ventes (en SEK) entre 2003 et 2007, ne fournissent aucune information sur le lieu où les ventes se sont déroulées. Aucune mention n’est faite du territoire de l’Union européenne où la marque antérieure est enregistrée. Les factures ne mentionnent pas la vente des produits par la requérante. Par conséquent, les preuves produites ne suffisent manifestement pas à établir l’usage sérieux de la marque antérieure.
Arrêt du 12 décembre 2002, «HIWATT», T-39/01
Un catalogue montrant la marque sur trois modèles d’amplificateurs différents (mais sans mention du lieu, de la durée ou de l’importance), un catalogue de la foire internationale de Francfort montrant qu’une entreprise baptisée HIWATT Amplification International était présente à cette foire (mais sans mention de l’usage de la marque) et une copie du catalogue HIWATT Amplification de 1997 montrant la marque sur différents modèles d’amplificateurs (mais sans mention du lieu ou de l’importance de l’usage) n’ont pas été jugés suffisants pour établir un usage sérieux, essentiellement en raison de l’absence d’éléments relatifs à l’importance de l’usage.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE D
ANNULATION
SECTION 1
QUESTIONS DE PROCÉDURES
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Table des matières
1 Introduction: présentation générale des procédures de déclaration de déchéance ou de nullité................................................... 4
2 Demande en annulation ............................................................................ 5 2.1 Personnes habilitées à déposer une demande en annulation ................ 5 2.2 Demande écrite........................................................................................... 5
3 Paiement de la taxe ................................................................................... 6
4 Examen de la recevabilité ......................................................................... 6 4.1 Conditions relatives de recevabilité (règle 37 du REMC) ........................ 8
4.1.1 Numéro d’enregistrement de la marque communautaire contestée, nom et adresse de son titulaire (règle 37, point a), sous i) et ii), du REMC) ............................................................................................................ 8
4.1.2 Étendue de la demande en annulation (règle 37, point a), sous iii), du REMC) ............................................................................................................ 8
4.1.3 Causes invoquées dans la demande en annulation et faits, preuves et observations présentés à l’appui de ces causes (règle 37, point b), du REMC) ............................................................................................................ 9
4.1.4 Identification du demandeur (règle 37, point c), du REMC) ......................... 10
4.2 Invitation à remédier aux irrégularités .................................................... 10
5 Notification de la demande au titulaire de la marque communautaire et échanges ultérieurs entre les parties..................... 11
6 Langues utilisées dans les procédures d’annulation .......................... 13 6.1. Traduction de la demande en annulation ............................................... 13 6.2 Traduction de la preuve produite par le demandeur à l’appui de sa
demande ................................................................................................... 14 6.3 Traduction des observations présentées par les parties au cours
de la procédure......................................................................................... 15 6.4 Traduction des éléments de preuve produits par le titulaire de la
marque communautaire au cours de la procédure ................................ 15 6.5 Traduction de la preuve de l’usage......................................................... 16
7 Autres questions ..................................................................................... 16 7.1 Poursuite de la procédure ....................................................................... 16 7.2 Suspensions............................................................................................. 17 7.3 Renonciations et retraits.......................................................................... 17
7.3.1 Renonciations visant tous les produits et/ou services contestés ................. 17 7.3.2 Renonciations visant seulement une partie des produits et/ou services
contestés ...................................................................................................... 19 7.3.3 Retraits ......................................................................................................... 19
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7.4 Demandes en déchéance et en nullité contre la même marque communautaire......................................................................................... 19
7.5 Contestation des enregistrements internationaux désignant l’UE ....... 20
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1 Introduction: présentation générale des procédures de déclaration de déchéance ou de nullité
Les procédures relatives à la déclaration de déchéance ou de nullité d’une marque communautaire (MC) enregistrée devant l’Office sont regroupées sous le titre général de «procédures d’annulation» et sont gérées en première instance par la division d’annulation. Les règles de base applicables à ces procédures sont prévues principalement aux articles 56 et 57 du RMC et aux règles 37 à 41 du REMC.
Les procédures d’annulation sont engagées par le dépôt d’une demande en déchéance ou d’une demande de déclaration de nullité (ci-après la «demande en annulation») contre une marque communautaire enregistrée. Une demande en annulation contre une demande de marque communautaire qui n’a pas encore été enregistrée n’est pas recevable.
À la réception d’une demande en annulation, l’Office vérifie l’acquittement de la taxe d’annulation correspondante. (Si la taxe n’a pas été acquittée, la demande est réputée ne pas avoir été déposée). Ensuite, l’Office procède à une appréciation provisoire des conditions de recevabilité qui incluent notamment celles fixées à la règle 37 du REMC. L’Office notifie également la demande au titulaire de la marque communautaire. En cas d’irrégularités liées aux conditions relatives de recevabilité, l’Office invite le demandeur à y remédier dans un délai imparti.
Une fois l’examen de la recevabilité accompli, l’Office inscrit la demande dans le registre des procédures d’annulation des marques communautaires en cours (règle 84, paragraphe 3, point n), du REMC). Cette inscription est destinée à informer les tiers. En parallèle, la phase contradictoire de la procédure est ouverte et les parties sont invitées à présenter leurs observations (et, le cas échéant, la preuve de l’usage).
En général, il y a deux échanges d’observations, à l’issue desquels la phase contradictoire est close et le dossier est en état pour la prise de décision. Lorsque la décision devient définitive (c’est-à-dire si aucun recours n’est formé dans le délai prescrit ou si la procédure de recours est clôturée), l’Office procède à l’inscription correspondante dans le registre, conformément à l’article 57, paragraphe 6, du RMC.
Les procédures d'annulation sont, à maints égards, soumises aux règles de procédures identiques ou similaires à celles qui sont fixées pour les procédures d’opposition (telles que la conciliation, la limitation de la marque communautaire contestée et les retraits des demandes en annulation, la rectification des erreurs et la révocation, les délais, les annulations multiples, le changement des parties, la restitutio, etc.). Pour toutes ces questions, voir les sections pertinentes des Directives, et notamment partie C, Opposition, section 1, Questions de procédure. Par conséquent, la présente partie des Directives n’aborde que les aspects de la procédure d’annulation qui sont différents de la procédure d’opposition.
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2 Demande en annulation
2.1 Personnes habilitées à déposer une demande en annulation
Article 41, paragraphe 1, et article 56, paragraphe 1, du RMC
Les procédures d’annulation ne sont jamais engagées à l’initiative de l’Office, mais uniquement à la réception d’une demande d’un tiers.
Les demandes en déchéance ou les demandes en nullité fondées sur des causes de nullité absolue (articles 51 et 52 du RMC) peuvent être déposées par:
1. toute personne physique ou morale;
2. tout groupement ou organisme constitué pour la représentation des intérêts de fabricants, de producteurs, de prestataires de services, de commerçants ou de consommateurs qui, aux termes de la législation qui leur est applicable, ont la capacité, en leur propre nom, d’ester en justice.
En ce qui concerne les demandes en déchéance ou les demandes en nullité fondées sur des causes de nullité absolue, le demandeur n’a pas l'obligation de démontrer son intérêt direct et individuel à agir (voir l’arrêt du 8 juillet 2008, «COLOR EDITION», T-160/07, points 22 à 26, confirmé par l'arrêt du 25 février 2010, «COLOR EDITION», C-408/08 P, points 37 à 40). La raison en est la suivante: alors que les motifs relatifs de nullité protègent les intérêts des titulaires de certains droits antérieurs, les motifs absolus de nullité et de déchéance ont pour objet la protection de l’intérêt général (y compris, en cas de déchéance pour défaut d’usage, l’intérêt général de la déchéance des droits des marques communautaires qui ne satisfont pas à l’obligation d’usage).
En revanche, les demandes en nullité fondées sur des causes de nullité relative (article 53 du RMC) ne peuvent être déposées que par les personnes énoncées à l’article 41, paragraphe 1, du RMC (en cas de demandes fondées sur l’article 53, paragraphe 1, du RMC) ou par les personnes habilitées à exercer les droits en question en vertu de la législation de l’État membre concerné (en cas de demandes fondées sur l’article 53, paragraphe 2, du RMC).
Les demandes en déchéance ou en nullité fondées sur les articles 73 ou 74 du RMC (en particulier causes spécifiques de déchéance et de nullité absolue pour les marques collectives) sont soumises aux mêmes règles, en ce qui concerne l’ouverture du droit, que les demandes en déchéance ou les demandes en nullité fondées sur des causes de nullité absolue (article 66, paragraphe 3, du RMC).
2.2 Demande écrite
Article 56, paragraphe 2, du RMC
La demande en annulation doit être déposée par écrit. Il n’est pas obligatoire d’utiliser les formulaires proposés par l’Office, tant que les conditions de recevabilité sont remplies. Cependant, l’utilisation des formulaires officiels est fortement recommandée.
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3 Paiement de la taxe
Article 8, paragraphe 3, et article 56, paragraphe 2, du RTMC Règle 39, paragraphe 1, du REMC
Pour les règles générales relatives aux paiements, veuillez consulter les Directives, partie A, Dispositions générales, section 3, Paiement des taxes, frais et tarifs.
Une demande en annulation n’est réputée déposée qu’après paiement de la taxe. Par conséquent, avant d’examiner la recevabilité de la demande, l’Office contrôle avant tout le paiement de la taxe.
Lorsque l’Office constate que la taxe n’a pas été payée, il invite le demandeur à le faire dans le délai imparti (en pratique généralement un mois). Si la taxe requise n’est pas acquittée dans le délai imparti, l’Office informe le demandeur que la demande en annulation est réputée ne pas avoir été déposée et, si la taxe a été payée, mais hors délai, elle est remboursée au demandeur. Dans les cas où la taxe est reçue après l’expiration du délai fixé par l’Office, mais le demandeur apporte la preuve que, dans un État membre et dans le délai imparti, il a donné un ordre de virement à un établissement bancaire aux fins de transférer le montant de la taxe, l’article 8, paragraphe 3, du RTMC, est appliqué, y compris, le cas échéant, le paiement d’une surtaxe, (voir les Directives, partie A, Dispositions générales, section 3, Paiement des taxes, frais et tarifs).
La date de paiement de la taxe est sans effet sur la date de dépôt d’une demande en annulation, car l’article 56, paragraphe 2, du RMC, établissant la règle de l’ordre dans le cadre d’une procédure d’annulation ne prévoit aucune répercussion sur la date de dépôt de la demande. Par conséquent, lorsque la taxe est acquittée avant l’expiration du délai fixé par la règle 39, paragraphe 1, du REMC, la demande est réputée déposée et la date de dépôt est celle à laquelle l’exposé écrit a été reçu par l’Office.
En règle générale, la taxe d’annulation est un montant dû au titre du dépôt de la demande, indépendamment de l’issue de la procédure. Elle n’est donc pas remboursée en cas d’irrecevabilité de la demande.
De même, la taxe d’annulation n’est pas remboursée en cas de retrait de la demande d’annulation à tout stade de la procédure.
Dans ce contexte, la seule disposition qui prévoit le remboursement de ladite taxe est la règle 39, paragraphe 1, du REMC, applicable uniquement dans les cas où la demande est réputée ne pas avoir été déposée à la suite d’un retard de paiement.
4 Examen de la recevabilité
Article 51, article 53, paragraphe 4, et article 56, paragraphe 3, du RMC Règle 37 et Règle 38, paragraphe 1, du REMC
Lorsque l’Office a établi que la taxe correspondante a été dûment acquittée, il procède à un examen de la recevabilité de la demande.
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Contrairement à la procédure d’opposition, la procédure d'annulation ne prévoit aucun délai de réflexion (cooling-off), ni aucun délai ultérieur pour la preuve. Cela signifie, notamment, que dans le cas d’une demande en nullité fondée sur les causes de nullité relative, la preuve de l’existence, la validité et la portée de la protection de tous les droits antérieurs et les preuves attestant l’ouverture de ces droits pour le demandeur doivent, en principe, être déposées avec la demande.
L’examen de la recevabilité peut aboutir à l’identification des irrégularités absolues et/ou relatives affectant la recevabilité de la demande.
Les irrégularités absolues de recevabilité sont celles auxquelles le demandeur ne peut pas remédier et qui conduisent d’office à l’irrecevabilité de la demande, telles que:
une demande en annulation contre une marque communautaire qui n’est pas encore enregistrée. Une demande en annulation peut être formée uniquement contre une marque communautaire enregistrée. Une requête dirigée contre une demande qui n’a pas encore été enregistrée est prématurée et doit être rejetée comme irrecevable (voir la décision du 22 octobre 2007, R 0284/2007-4, «VISION»);
il y a autorité de la chose jugée (article 56, paragraphe3, du RMC). Par exemple, lorsqu’une décision a été prononcée par la division d’opposition ou par une juridiction d’un État membre dans le contexte d’une demande reconventionnelle, relativement à la même marque, aux mêmes produits et/ou services et aux mêmes parties, et que cette décision a acquis l’autorité de la force jugée;;
en cas de nullité fondée sur les causes de nullité relative, lorsque le demandeur est titulaire de plusieurs droits antérieurs et qu’il a déjà formé une demande en nullité (ou introduit une demande reconventionnelle) de la même marque communautaire sur la base d’un autre de ces droits antérieurs (article 53, paragraphe 4, du RMC);
une demande en déchéance fondée sur le non-usage est déposée contre une marque communautaire qui n’a pas été enregistrée depuis cinq ans à la date de dépôt (article 51 du RMC);
une demande en annulation est présentée, mais elle n’est pas présentée sur le formulaire officiel, ni dans la langue appropriée, en application de l’article 119, du RMC, ni traduite dans cette langue dans un délai d’un mois suivant le dépôt de ladite demande (règle 38, paragraphe 1, du REMC).
Lorsqu’une irrégularité absolue de recevabilité est constatée, l’Office invite le demandeur à présenter ses observations sur l’irrecevabilité dans un délai de deux mois. Si, après avoir entendu le demandeur, l’Office soutient qu’une irrégularité absolue de recevabilité persiste, la demande en annulation est rejetée comme irrecevable par décision de l’Office.
Les irrégularités relatives de recevabilité sont en principe celles auxquelles le demandeur peut remédier. Elles incluent la non-conformité à une ou plusieurs conditions relatives de recevabilité prévues à la règle 37 du REMC (qui sont décrites en détail au paragraphe 4.1 ci-dessous). Dans ce cas, conformément à la règle 39,
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paragraphe 3, du REMC, l’Office invite le demandeur à remédier à l’irrégularité dans un délai de deux mois (voir le paragraphe 4.2 ci-dessous).
Lorsqu’une ou plusieurs irrégularités relatives de recevabilité ont été constatées auxquelles il n’est pas remédié dans le délai imparti, la demande en annulation est rejetée comme irrecevable.
Toute décision de rejeter une demande en annulation dans sa totalité comme irrecevable est communiquée au demandeur et au titulaire de la marque communautaire (règle 39, paragraphe 4, du REMC) et est susceptible de recours par le demandeur.
Cependant, si le résultat de l’examen de la recevabilité conclut que la demande est partiellement recevable (c’est-à-dire recevable au moins pour certaines causes sur lesquelles elle est fondée et/ou pour certains droits antérieurs sur lesquels elle est fondée), la procédure se poursuit. Si une des parties conteste le résultat de l’examen de la recevabilité, elle peut introduire un recours à son encontre avec la décision définitive mettant fin à la procédure (article 58, paragraphe 2, du RMC).
4.1 Conditions relatives de recevabilité (règle 37 du REMC)
Les conditions relatives de recevabilité prévues à la règle 37 du REMC sont énoncées ci-dessous.
4.1.1 Numéro d’enregistrement de la marque communautaire contestée, nom et adresse de son titulaire (règle 37, point a), sous i) et ii), du REMC)
Une demande en annulation doit contenir le numéro d’enregistrement de la marque communautaire, ainsi que le nom et l’adresse de son titulaire (veuillez noter la différence avec la procédure d'opposition, où la règle 15, paragraphe 2, ne requiert de l’opposant que d’identifier la demande de marque communautaire contestée et le nom du demandeur, mais pas son adresse).
L’Office vérifie que le nom et l’adresse du titulaire correspondent à la marque communautaire identifiée par son numéro d’enregistrement. En cas de divergences (ou d’omission d’un de ces détails), une notification d’irrégularité est adressée au demandeur l’invitant à remédier à ladite irrégularité (voir les paragraphes sur les irrégularités ci-dessous).
4.1.2 Étendue de la demande en annulation (règle 37, point a), sous iii), du REMC)
Le demandeur est tenu de préciser si la demande est dirigée contre tous les produits et services ou contre une partie des produits et services de l’enregistrement contesté. Dans ce dernier cas, le demandeur doit identifier clairement lesdits produits et services dans une liste.
Veuillez noter la différence avec la procédure d'opposition où, aux fins de la recevabilité, l'étendue de l’opposition n’est qu’une indication facultative (règle 15, paragraphe 3, du REMC).
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4.1.3 Causes invoquées dans la demande en annulation et faits, preuves et observations présentés à l’appui de ces causes (règle 37, point b), du REMC)
Le RMC et le REMC établissent une distinction claire entre une demande en déchéance et une demande de déclaration de nullité. Par conséquent, les causes de déchéance et de nullité ne peuvent pas être combinées dans une seule demande, mais doivent faire l’objet de demandes distinctes et entraînent des acquittements séparés de la taxe. Cependant, une demande en déchéance peut être fondée sur plusieurs causes de déchéance et une demande en nullité peut être fondée sur une combinaison de causes de nullité absolue et relative. Si le demandeur présente une seule demande fondée sur les causes de déchéance et de nullité, l’Office lui adresse une notification d’irrégularité l’invitant à choisir l’un ou l’autre type de causes et l’informe qu’une autre demande peut être formée sous réserve de l’acquittement d’une taxe de procédure supplémentaire. Si le demandeur ne précise pas, dans le délai imparti, le type de cause qu’il souhaite choisir, la demande est rejetée pour irrecevabilité (règle 39, paragraphe 3, du REMC).
Une demande en annulation doit indiquer les causes sur lesquelles elle est fondée, c’est-à-dire les dispositions spécifiques du RMC qui justifient ladite demande. Le demandeur peut limiter les causes sur lesquelles la demande est initialement fondée, mais ne peut pas élargir la portée de la demande en invoquant des causes supplémentaires au cours de la procédure.
En outre, en cas de demande en nullité fondée sur les causes de nullité relative (article 53 du RMC), la demande doit contenir des précisions sur le ou les droits sur lesquels elle est fondée, ainsi que, le cas échéant, des éléments démontrant que le demandeur est habilité à invoquer le droit antérieur comme cause de nullité (au sens de toutes les indications figurant à la règle 15, paragraphes b), d), e), f), g) et h), du REMC, applicables par analogie).
Conformément à la règle 37, point b), sous iv), du REMC, une demande en annulation doit également indiquer les faits, preuves et observations présentés à l’appui de la demande. Cela signifie qu’une simple présentation d’un formulaire de demande sur lequel toutes les cases pertinentes sont cochées, mais qui ne comprend pas, ou au moins n’indique pas les faits, preuves et observations à l’appui de la demande, conduit normalement à l’irrecevabilité pour cause d’irrégularité. La seule exception est prévue pour les demandes en déchéance fondées sur le non-usage (article 51, paragraphe 1, point a), du RMC), où la charge de la preuve repose sur le titulaire de la marque communautaire.
Enfin, une distinction importante doit être établie entre les conditions de recevabilité et d’admissibilité des preuves. Comme mentionné dans l’introduction au paragraphe 4, bien qu’une procédure de nullité fondée sur les causes de nullité relative ne prévoie aucune limite de délai pour la justification des droits antérieurs, et que la preuve de l’existence, la validité et la portée de la protection de tous les droits antérieurs et les preuves attestant le droit du demandeur de faire valoir lesdits droits doivent être déposées avec la demande, cela ne signifie pas que les conditions de recevabilité et d’admissibilité des preuves ne soient pas distinctes. Si, par exemple, le demandeur identifie clairement la marque antérieure sur laquelle la demande est fondée (règle 37, point b), sous ii), du REMC), et indique la preuve à l’appui des causes invoquées (règle 37, point b, sous iv), du REMC), la demande est recevable. Si la preuve fournie est ensuite jugée insuffisante pour justifier le droit antérieur (par exemple, un certificat
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émanant d’une source non officielle ou non traduit dans la langue de procédure), la demande est rejetée comme non fondée (voir, par analogie, la règle 20, paragraphe 1, du REMC), et non comme irrecevable (voir, par analogie, la décision du 12 juillet 2013, R 1306/2012-4, «URB EUROPE», point 21; la décision du 12 juillet 2013, R 1310/2014-4, «URB Bearings», point 21; et la décision du 12 juillet 2013, R 1309/2012- 4, «URB», point 20).
Cependant, l’absence d’une limite de délai pour la preuve des droits antérieurs signifie que, à tout stade ultérieur de la procédure (avant la clôture de la phase contradictoire), le demandeur peut remédier, de sa propre initiative, à toute irrégularité en ce qui concerne la preuve.
En ce qui concerne les conditions de l’admissibilité des preuves des droits antérieurs, voir la section sur la preuve de l’existence des droits antérieurs dans les Directives, partie C, Opposition, section 1, Questions de procédure et la section sur les procédures de nullité fondées sur des causes de nullité relative dans les Directives, partie D, Annulation, section 2, Dispositions matérielles.
4.1.4 Identification du demandeur (règle 37, point c), du REMC)
Une demande en annulation doit contenir le nom et l’adresse du demandeur, et si le demandeur a désigné un représentant, le nom et l’adresse de ce dernier. Les demandeurs qui n’ont ni domicile, ni siège, ni établissement industriel ou commercial effectif et sérieux dans l’Union européenne doivent être représentés par un représentant professionnel (article 92, paragraphe 2, du RMC). Pour plus d’information, voir les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
Concernant la pluralité des demandeurs, les demandes en nullité fondées sur des causes de nullité relative suivent les mêmes règles que les oppositions (voir les Directives, partie C, Opposition, section 1, Questions de procédure). Ces règles sont directement liées aux exigences relatives à l’ouverture du droit visées à l’article 56, paragraphe 1, et à l’article 41, paragraphe 1, du RMC (voir ci-dessus).
En revanche, dans le cas des demandes en nullité fondées sur des causes de nullité absolue et des demandes en déchéance, il n’existe pas de prescriptions particulières concernant la pluralité des demandeurs, sauf qu’ils doivent être clairement indiqués dans la demande.
Veuillez noter que dans tous les cas concernant la pluralité des demandeurs, la règle 75 et la règle 94, paragraphe 7, point e), du REMC sont applicables (désignation d’un représentant commun et détermination des frais).
4.2 Invitation à remédier aux irrégularités
Règle 39, paragraphes 3 et 4, du REMC
En vertu de la règle 39, paragraphe 3, du REMC, si l’Office constate qu’une demande en annulation n’est pas conforme à la règle 37 du REMC, il invite le demandeur à remédier aux irrégularités dans un délai imparti (dans la pratique de l’Office, deux
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mois). Cela est fait dès qu’une irrégularité est constatée, que ce soit ou non dans le cadre de l’examen de la recevabilité. Veuillez noter que cela ne s’applique qu’aux irrégularités concernant les conditions de recevabilité, et non aux irrégularités concernant les conditions d’admissibilité des preuves auxquelles le demandeur doit remédier de sa propre initiative (voir le paragraphe 4.1.3 ci-dessus).
S’il n'est pas remédié aux irrégularités avant l’expiration du délai imparti, l’Office, par décision, rejette la demande comme irrecevable. Dans les cas où la demande en annulation est fondée sur plusieurs causes et/ou sur les droits antérieurs, et les irrégularités ne concernent que certains éléments, la procédure peut être poursuivie par rapport aux autres causes ou droits antérieurs qui ne présentent pas d’irrégularités de recevabilité (recevabilité partielle).
Comme mentionné ci-dessus en relation avec les causes invoquées de la demande, dans le cadre de la règle 39, paragraphe 3, du REMC, le fait que le demandeur soit invité à remédier aux irrégularités ne peut pas entraîner un élargissement de la portée de la procédure (droits antérieurs, produits et services, etc.) définie dans la demande initiale. Par exemple, si une demande en annulation indique qu’elle est dirigée contre une partie des produits et services de l’enregistrement contesté et que l’Office invite le demandeur, conformément à la règle 39, paragraphe 3, du REMC, à préciser les produits et services de la marque communautaire contre lesquels sa demande est dirigée, une réponse doit être fournie énumérant sans ambiguïté la partie des produits et services contre lesquels la demande en annulation est dirigée. Si le demandeur ne remédie pas aux irrégularités de manière adéquate, l’Office, par sa décision, rejette la demande comme irrecevable.
Enfin, la règle 39, paragraphe 3, du REMC, n’est applicable qu’à la liste des conditions relatives de recevabilité figurant à la règle 37 du REMC. Les irrégularités concernant les conditions absolues de recevabilité (par exemple, l’absence de traduction de la demande conformément à la règle 38, paragraphe 1, du REMC, l’existence de l’autorité de la chose jugée ou l’existence d’une demande en nullité antérieure fondée sur un autre droit antérieur du même titulaire, ou la non-conformité à la période de cinq ans entre la demande en déchéance et l’enregistrement de la marque communautaire contestée) ne relèvent pas de la règle 39, paragraphe 3, du REMC, et ne peuvent pas faire l’objet d’une rectification (c’est-à-dire qu’elles entraînent le rejet de la demande en question comme irrecevable).
5 Notification de la demande au titulaire de la marque communautaire et échanges ultérieurs entre les parties
Article 57 du RMC Règle 40 du REMC
La règle 40, paragraphe 1, du REMC dispose que toute demande en annulation réputée avoir été déposée doit être notifiée au titulaire de la marque communautaire contestée et que lorsque la demande est jugée recevable par l’Office, ce dernier invite le titulaire à présenter ses observations dans le délai qu’il lui impartit.
En conséquence, une fois que l’Office a vérifié la réception du paiement de la taxe (et donc la demande est réputée avoir été déposée) et a accompli l'examen de la
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recevabilité, il notifie la demande en annulation au titulaire de la marque communautaire.
Si aucune irrégularité n’est détectée lors de l’examen de la recevabilité, la notification de la demande au titulaire de la marque communautaire comprend également une invitation à présenter des observations (et en cas d’une demande en déchéance fondée sur l’article 51, paragraphe 1, point a), du RMC, une invitation à fournir la preuve de l’usage sérieux – voir la règle 40, paragraphe 5, du REMC). Dans la pratique, l’Office accorde au titulaire de la marque communautaire un délai de trois mois pour sa première réponse à la demande.
Si l’examen de la recevabilité révèle des irrégularités auxquelles il doit être remédié, le titulaire de la marque communautaire reçoit tout de même la notification de la demande, et est informé des irrégularités auxquelles le demandeur doit remédier. Cependant, dans ce cas, l’Office n'adresse que la notification de la demande et n’invite pas le titulaire de la marque communautaire à présenter ses observations (ou, le cas échéant, la preuve de l’usage) tant que le demandeur n’a pas remédié aux irrégularités.
En vertu de l’arrêt de la Cour du 18 octobre 2012 dans l’affaire C-402/11 P, «REDTUBE» (applicable par analogie aux procédures d’annulation), la notification faite aux parties à l’issue de l’examen de la recevabilité les informant que la demande en annulation est recevable, conformément à la règle 37 du REMC, constitue une décision susceptible de recours conjointement avec la décision définitive sur l’affaire comme le prévoit l’article 58, paragraphe 2, du RMC. En conséquence, l’Office est lié par cette décision et ne peut la révoquer qu’à un stade ultérieur de la procédure à condition qu’il soit satisfait aux exigences énoncées à l’article 80, du RMC applicables à la révocation des décisions.
Conformément à l’article 57, paragraphe 1, du RMC, l’Office peut inviter les parties à présenter leurs observations aussi souvent qu’il le juge nécessaire. Dans la pratique, et dans l’intérêt d’éviter une prolongation inutile de la procédure, l’Office accorde généralement deux échanges d’observations, se terminant habituellement par celles du titulaire de la marque communautaire (par exemple, demande en annulation – observations du titulaire de la marque communautaire – observations du demandeur – observations du titulaire de la marque communautaire). Néanmoins, dans le cas où l’une des parties, dans le délai imparti pour déposer les observations, ne présenterait pas d’éléments de preuve ou d’observations et/ou indiquerait n’avoir rien de plus à exposer, l’Office peut procéder directement à la clôture de la phase contradictoire de la procédure, notifiant aux parties que la décision sera prise.
Cependant, des échanges complémentaires d’observations peuvent être octroyés dans des cas exceptionnels, notamment lorsque les preuves pertinentes supplémentaires n’ayant pu être déposées au préalable, sont déposées au cours du dernier échange. Dans sa pratique, l’Office accorde aux parties un délai de deux mois pour présenter leurs observations (sauf pour la première réponse du titulaire de la marque communautaire, voir ci-dessus).
En ce qui concerne les demandes en nullité fondées sur des causes de nullité relative, le titulaire de la marque communautaire peut également déposer une demande de preuve de l’usage des marques antérieures sur lesquelles la demande en nullité est fondée. Si ladite demande est recevable (concernant les règles de recevabilité d’une demande de preuve de l’usage, voir les Directives, partie C, Opposition, section 6,
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Preuve de l'usage), l’Office invite le demandeur à fournir la preuve (article 57, paragraphes 2 et 3, du RMC, et règle 40, paragraphe 6, du REMC). Contrairement à la procédure d’opposition (règle 22, paragraphe 1, du REMC), dans la procédure d’annulation la demande de preuve de l'usage peut être déposée par le titulaire de la marque communautaire avec sa première réponse à la demande en annulation ou lors des échanges d’observations ultérieurs.
Lorsque les parties ont présenté leurs observations et/ou la preuve de l’usage (le cas échéant), la phase contradictoire est close, et le dossier est prêt pour la décision.
Si, à tout stade de la procédure, l’une des parties ne présente pas d’observations dans le délai imparti, l’Office met fin à la phase contradictoire et prend sa décision en fonction des preuves dont il dispose (règle 40, paragraphe 2, du REMC, applicable par analogie aux deux parties).
Concernant les règles relatives aux délais impartis, aux prorogations, aux notifications ou au changement des parties au cours de la procédure, etc., voir la section des questions de procédure des Directives, partie C, Opposition, section 1, Questions de procédure, étant donné que les règles s’appliquent mutatis mutandis.
6 Langues utilisées dans les procédures d’annulation
Article 119, paragraphes 5, 6 et 7, du RMC Règle 38, paragraphes 1 et 3, Règle 39, paragraphes 2 et 3, et Règle 96, paragraphes 1 et 2, du REMC
Pour le détail des règles relatives aux langues de procédure, voir les Directives, partie C, Opposition, section 1, Questions de procédure. La présente section aborde uniquement les règles spécifiques applicables aux procédures d’annulation.
Les parties aux procédures en annulation peuvent convenir qu’une autre langue officielle de l’Union européenne soit la langue de procédure (article 119, paragraphe 7, du RMC). Cet accord doit être communiqué à l’Office dans un délai de deux mois suivant la notification de la demande en annulation au titulaire de la marque communautaire. Dans ce cas, le demandeur doit produire une traduction de la demande dans la langue choisie par les deux parties (si elle n’a pas déjà été déposée dans ladite langue) dans un mois à compter de la date à laquelle l’accord a été communiqué à l’Office. Si la traduction n’est pas produite ou si elle est produite en retard, la langue de procédure reste inchangée (règle 38, paragraphe 3, du REMC).
6.1. Traduction de la demande en annulation
Article 119, paragraphe 6, du RMC Règle 38, paragraphes 1 et 3, et règle 39, paragraphe 2, du REMC
Si la demande est déposée dans une langue de l’Office qui est l’une des deux langues de la marque communautaire contestée, ladite langue devient automatiquement la langue de la procédure.
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Si la demande est déposée dans une langue de l’Office qui n’est pas l’une des deux langues de la marque communautaire contestée, et si le formulaire officiel n’est pas utilisé, le demandeur doit, de sa propre initiative, produire une traduction dans la langue appropriée (soit une des deux langues de la marque communautaire contestée, si les deux langues sont les langues de l’Office, soit dans la seconde langue de la marque communautaire contestée, si la première n’est pas la langue de l’Office), et ce dans un délai d’un mois suivant la date de dépôt de la demande en annulation. La langue dans laquelle la demande a été traduite devient alors la langue de la procédure.
Si le demandeur ne produit pas la traduction dans la langue appropriée et dans le délai imparti, la demande en annulation est rejetée comme irrecevable (article 119, paragraphe 6, du RMC, règle 38, paragraphe 1, et règle 39, paragraphe 2, du REMC).
La règle 39, paragraphe 3, du REMC ne se réfère pas à la règle 38, paragraphe 1, du REMC, et, dès lors, dans ces cas l’Office n’adresse pas de notification d’irrégularité et attend un mois après la date de dépôt que la traduction de la demande en annulation lui soit fournie.
Lorsque le demandeur utilise le formulaire officiel pour la demande en déchéance ou en nullité, et si ledit formulaire est rédigé dans une langue non appropriée, il peut y avoir des exceptions relatives à la traduction et à l’indication de la langue de la procédure. Veuillez consulter les différents scénarios aux pages 11 à 12 des Directives partie C, Opposition, section 1, Questions de procédure.
6.2 Traduction de la preuve produite par le demandeur à l’appui de sa demande
Règle 38, paragraphe 2, et règle 39, paragraphe 3, du REMC
En vertu de la règle 38, paragraphe 2, du REMC, lorsque les preuves fournies à l’appui de la demande ne sont pas rédigées dans la langue de la procédure de déchéance ou de nullité, le demandeur, de sa propre initiative, doit en produire la traduction dans ladite langue dans un délai de deux mois à compter de la date de dépôt des preuves à l’appui de sa demande. Ceci s’applique à tous les éléments de preuve présentés par le demandeur au cours de la procédure, qu’ils soient déposés avec la demande ou à un stade ultérieur.
L’Office n’adresse pas de notification d'irrégularité et il appartient au demandeur de présenter, de sa propre initiative, la traduction des éléments de preuve à l’appui de la demande.
Si le demandeur ne produit pas la traduction des preuves à l’appui de la demande, requise en vue d’évaluer la recevabilité de l’affaire (par exemple, les précisions sur le droit antérieur sur lequel la demande est fondée, ou l’indication des faits, preuves et observations à l’appui des causes invoquées ne sont pas traduites), l’Office invite le demandeur à remédier à cette irrégularité en vertu de la règle 39, paragraphe 3, du REMC (décision du 2 mars 2007, R 0300/2006-4 «ACTILON/AC TELION»). S’il n'est pas remédié à l’irrégularité, la demande en annulation est rejetée comme irrecevable totalement ou partiellement (article 119, paragraphe 6, du RMC, règle 38, paragraphe 2, et règle 39, paragraphe 3, du REMC).
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Si le demandeur ne fournit pas de traduction pour les autres éléments de preuve, ce qui serait sans effet sur la recevabilité de l’affaire, tout document à l’appui de la demande qui n’est pas traduit par le demandeur dans la langue de procédure dans le délai imparti prévu à la règle 38, paragraphe 2, du REMC, est réputé ne pas avoir été reçu par l’Office et, en conséquence, n’est pas pris en considération (règle 98, paragraphe 2, du REMC) [voir la décision du 5 mars 2012, R 0826/2010-4, «MANUFACTURE PRIM 1949 (MARQUE FIG.)», point 25].
6.3 Traduction des observations présentées par les parties au cours de la procédure
Règle 96, paragraphe 1, et règle 98, paragraphe 2, du REMC
La partie qui présente ses observations dans une langue de l’Office autre que la langue de la procédure a l’obligation de produire une traduction desdites observations dans la langue de la procédure dans un délai d’un mois à compter de la date de dépôt (règle 96, paragraphe 1, du REMC).
L’Office ne réclame pas les traductions et poursuit l’affaire. Il appartient à la partie de produire la traduction requise.
Si les traductions ne sont pas produites dans le délai imparti d’un mois, les observations seront réputées ne pas avoir été reçues par l’Office et, par conséquent, ne seront pas prises en compte (règle 98, paragraphe 2, du REMC).
6.4 Traduction des éléments de preuve produits par le titulaire de la marque communautaire au cours de la procédure
Règle 96, paragraphe 2, et règle 98, paragraphe 2, du REMC
Les documents présentés par le titulaire de la marque communautaire au cours de la procédure (sauf la preuve de l’usage, voir ci-dessous) sont soumis à la règle 96, paragraphe 2, du REMC et, par conséquent, peuvent être produits dans une des langues officielles de l’Union européenne.
En vertu de cette disposition, le titulaire de la marque communautaire n’a pas l’obligation de produire automatiquement la traduction, mais l’Office peut l’exiger dans un délai imparti.
Dans l’exercice de son pouvoir discrétionnaire en la matière, l’Office prend en considération la nature de la preuve et les intérêts des parties.
Dans les cas où l’Office inviterait effectivement le titulaire de la marque communautaire à produire les traductions des éléments de preuve, le non-respect de ladite exigence dans le délai imparti signifie que les documents non traduits ne sont pas pris en compte (règle 98, paragraphe 2, du REMC).
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6.5 Traduction de la preuve de l’usage
Règle 22, paragraphe 6, du REMC
Bien que la règle 40, paragraphes 5 et 6, du REMC ne se réfère expressément qu’à la règle 22, paragraphes 2, 3 et 4, du REMC, il convient de considérer que la règle 22, paragraphe 6, du REMC, doit s’appliquer par analogie également aux procédures d’annulation, puisque la logique sous-jacente est la même, à savoir, réclamer la traduction des éléments de preuve, ce qui, pour la preuve de l’usage, peut s’avérer assez long, uniquement dans la mesure où cela est jugé nécessaire [voir la décision du 11 mars 2010, «INA/INA (marque figurative)», R 0167/2009-1, points 24 et 25]. En conséquence, en ce qui concerne la preuve de l'usage présentée par l’une ou l’autre des parties, la règle 22, paragraphe 6, du REMC s’applique en tant que lex specialis, par rapport à la lex generalis établie par la règle 38, paragraphe 2, du REMC (preuve présentée par le demandeur), et la règle 96, paragraphe 2, du REMC (preuve présentée par le titulaire de la marque communautaire).
En vertu de la règle 22, paragraphe 6, du REMC, si la preuve de l’usage produite par l’une des parties n’est pas rédigée dans la langue de la procédure, l’Office peut exiger de la partie qui l’a déposée d’en produire une traduction dans ladite langue dans un délai de deux mois. Dans l’exercice de son pouvoir discrétionnaire en la matière, l’Office prend en considération la nature de la preuve et les intérêts des parties. Dans les cas où l’Office invite effectivement le titulaire de la marque communautaire à produire les traductions des éléments de preuve, le non-respect de ladite exigence dans le délai imparti signifie que les documents non traduits ne sont pas pris en considération (sauf ceux considérés comme évidents). Pour de plus amples indications sur l’application de la règle 22, paragraphe 6, du REMC, voir les Directives, partie C, Opposition, section 1, Questions de procédure et partie C, Opposition, section 6, Preuve de l’usage.
7 Autres questions
7.1 Poursuite de la procédure
Article 82 du RMC
En vertu de l’article 82, paragraphe 1, du RMC, toute autre partie à une procédure devant l’Office qui a omis d'observer un délai à l’égard de l’Office peut obtenir, sur requête, la poursuite de la procédure, à condition que, au moment où la requête est introduite, l’acte omis ait été accompli. La requête en poursuite de procédure est uniquement recevable lorsqu’elle est présentée dans un délai de deux mois à compter de la date d’expiration du délai non observé et n’est réputée présentée qu’après paiement d’une taxe de poursuite de la procédure.
Cette disposition est applicable à toutes les procédures devant l’Office. Pour plus d'information, voir les Directives, partie A, Dispositions générales, section 1, Moyens de communication, Délais.
Cependant, la raison de cette mention spécifique dans le cadre de procédures d’annulation est de souligner la différence avec les procédures d’opposition. En ce qui
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concerne l’opposition, l’article 82, paragraphe 2, du RMC, établit que la poursuite de la procédure n’est pas applicable, entre autres, aux délais impartis prévus aux articles 41 et 42, du RMC (délai pour déposer l’acte opposition, délais impartis par l’Office pour déposer les faits, preuves et observations). Dans les procédures d’annulation, en revanche, la poursuite de la procédure peut être demandée par rapport à tous les différents délais impartis dans la procédure d’annulation (sauf pour le délai fixé à l’article 60 du RMC, pour introduire un recours).
7.2 Suspensions
Article 104 du RMC
En matière de suspensions, voir les Directives, partie C, Opposition, section 1, Questions de procédure (en tenant compte, cependant, du fait que le délai de réflexion n’existe pas dans la procédure d’annulation). La règle 20, paragraphe 7, du REMC, s’applique par analogie.
À ce sujet, la principale particularité des procédures d’annulation concerne les règles spécifiques en matière de connexité devant les tribunaux des marques communautaires. En vertu de l’article 104, paragraphe 2, du RMC, sauf s’il existe des raisons particulières de poursuivre la procédure, l’Office saisi d’une demande en annulation suspend la procédure, de sa propre initiative, après audition des parties ou à la demande de l’une des parties et après audition des autres parties, lorsque la validité de la marque communautaire est déjà contestée devant un tribunal des marques communautaires par une demande reconventionnelle.
L’article 104, paragraphe 2, du RMC, dispose également que si l’une des parties à la procédure devant le tribunal des marques communautaires le demande, le tribunal peut, après audition des autres parties à cette procédure, suspendre la procédure. Dans ce cas, l’Office poursuit la procédure en cours devant lui.
La demande de suspension en vertu de l’article 104, paragraphe 2, du RMC doit être étayée par des éléments de preuve pertinents. Les demandes de suspension ne sont jugées pertinentes que pour les procédures et pourraient être accordées en vertu de l’article 104, paragraphe 2, du RMC, dans les cas où elles se réfèrent à la marque communautaire contestée et non lorsqu’elles se réfèrent à d’autres marques communautaires contestées dans les procédures d’annulation simultanées.
7.3 Renonciations et retraits
Les pratiques de l’Office concernant les marques communautaires faisant l’objet d'une renonciation sont décrites dans les Directives, partie E, Inscriptions au Registre, section 1, Modifications dans un enregistrement.
7.3.1 Renonciations visant tous les produits et/ou services contestés
En principe, dans les procédures d’annulation, les conséquences d’une renonciation totale à une marque communautaire contestée (ou d’une renonciation partielle visant tous les produits et/ou services contre lesquels la demande en annulation est dirigée)
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sont similaires à celles du retrait d’une demande de marque communautaire dans les procédures d’opposition.
Cependant, contrairement à ce qu’il arrive lors du retrait d’une demande de marque communautaire, les effets de la renonciation à une marque communautaire enregistrée ne sont pas les mêmes que ceux de la décision au fond mettant fin à la procédure en question. Tandis que la renonciation à une marque communautaire n’est effective qu’à la date à laquelle elle est enregistrée, la décision d’annulation d’une marque communautaire produit ses effets à partir d’une date antérieure, soit la date d’enregistrement de la marque communautaire (en cas de nullité) soit à la date de dépôt de la demande d’annulation (en cas de déchéance). En conséquence, en règle générale et en dépit de la renonciation à la marque communautaire contestée, le demandeur est réputé avoir toujours un intérêt légitime à poursuivre la procédure d’annulation afin d’obtenir une décision au fond (voir l’arrêt du 24 mars 2011, «TiMi KiNDERJOGHURT», C-552/09 P, point 39 et la décision du 22 octobre 2010, «MAGENTA», R 0463/2009-4, points 25 à 27).
Dans la pratique, en cas de renonciation à une marque communautaire faisant l’objet d'une procédure d’annulation, l’Office suspend l’enregistrement de la renonciation et, en parallèle, la division d’annulation notifie la renonciation au demandeur en annulation, et l’invite à présenter ses observations dans un délai de deux mois et à indiquer s’il souhaite poursuivre la procédure ou s’il consent à la clôture de la procédure sans décision au fond. Ladite notification informe également le demandeur qu’en l’absence de réponse de sa part, la procédure d’annulation est close sans décision au fond.
Si le demandeur répond et consent expressément à la clôture de la procédure, la renonciation est enregistrée, la demande en annulation est réputée avoir été retirée et la procédure est close sans décision au fond. Les frais sont supportés par le titulaire de la marque communautaire (article 85, paragraphe 3, du RMC).
Si le demandeur ne présente pas d’observations relatives à la clôture de la procédure d’annulation, la division d’annulation notifie par courrier aux deux parties la clôture de la procédure et informe le demandeur de la perte éventuelle de ses droits au sens de la règle 54, paragraphe 2, du REMC. Si le demandeur ne sollicite pas explicitement une décision sur la question dans le délai prévu par ladite règle, la renonciation est consignée dans le registre.
Si le demandeur exige effectivement la poursuite de la procédure d’annulation (soit en réponse à l’invitation de l’Office à présenter ses observations, soit en sollicitant une décision en vertu de la règle 54, paragraphe 2, du REMC), la procédure d’annulation se poursuit jusqu’à une décision définitive au fond. Dans ces cas, les frais sont supportés par la partie perdante et pas nécessairement par la partie qui met fin à la procédure, en application de l’article 85, paragraphe 3, du RMC. Lorsque la décision de l’annulation est devenue définitive, la renonciation est enregistrée uniquement pour les produits et/ou services qui ne sont pas concernés par la déclaration de déchéance ou de nullité de la marque communautaire contestée, le cas échéant.
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7.3.2 Renonciations visant seulement une partie des produits et/ou services contestés
Le titulaire de la marque communautaire peut renoncer partiellement à sa marque pour une partie des produits et/ou services contestés. Dans ce cas, l’Office le notifie au demandeur en annulation et l’invite à indiquer s’il souhaite maintenir sa demande en annulation. Si le demandeur en annulation sollicite effectivement la poursuite de la procédure et maintient sa demande en annulation, la procédure se poursuit en dépit de la renonciation partielle de la marque communautaire dans le registre. Si le demandeur en annulation ne souhaite pas maintenir sa demande en annulation, l’Office met fin à la procédure et rend une décision concernant les frais en indiquant que chaque partie supporte ses propres frais (article 85, paragraphe 2, du RMC).
7.3.3 Retraits
Le demandeur en annulation peut retirer sa demande en annulation à tout moment de la procédure. L’Office informe le titulaire de la marque communautaire du retrait, met fin à la procédure et rend une décision concernant les frais qui sont supportés par le demandeur (article 85, paragraphe 3, du RMC), sauf au cas où le retrait suivrait immédiatement la renonciation (voir ci-dessus).
Les parties peuvent indiquer que la renonciation ou le retrait est une conséquence d’un accord qu’ils ont conclu et qu’une décision sur les frais n’est pas nécessaire. L’Office ne rend pas de décision concernant les frais s’il reçoit une telle demande conjointement avec la demande de retrait ou de renonciation, signée par les deux parties. Une telle demande peut également être adressée à l’Office dans deux courriers séparés. Au cas où aucune indication d’un accord entre les parties sur les frais ne serait donnée, l’Office rend sa décision concernant les frais immédiatement. La décision sur les frais déjà rendue n’est pas revue par l’Office au cas où les parties fournissent cette information après la date de la décision. Il incombe aux parties de respecter l’accord et non pas «d’exécuter» la décision de l’Office concernant les frais.
7.4 Demandes en déchéance et en nullité contre la même marque communautaire
Si la même marque communautaire fait à la fois l’objet d’une procédure de déchéance et d’une procédure de nullité, l’Office a le pouvoir discrétionnaire de décider dans chaque cas, en prenant en considération les principes de l’économie de la procédure et de l’efficacité administrative, si l’une des procédures doit être suspendue jusqu’à ce que l’autre soit close ou dans quel ordre les procédures doivent être réglées.
Si en premier lieu, la décision déclare la nullité totale de la marque communautaire (ou partielle, mais pour tous les produits et services contre lesquels la demande en déchéance est dirigée), et qu’ensuite ladite décision devient définitive, il est mis fin d’office à la procédure de déchéance parallèle, car elle est devenue sans objet. Les frais sont à la discrétion de l’Office (article 85, paragraphe 4, du RMC), qui conclut en général que chaque partie doit supporter ses propres frais.
Cependant, en tenant compte des différents effets d’une déchéance (ex nunc) et pour une déclaration de nullité (ex tunc), lors de la première décision de déchéance totale
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d’une marque communautaire (ou partielle, mais pour tous les produits/services contre lesquels la nullité est dirigée), l’Office informe le demandeur lorsque ladite décision est devenue définitive et l’invite à présenter ses observations concernant la clôture de la procédure de nullité. Si le demandeur démontre un intérêt légal suffisant pour obtenir une décision déclaratoire de nullité, la procédure se poursuit.
7.5 Contestation des enregistrements internationaux désignant l’UE
Article 152, paragraphe 2, et article 158, du RMC
Les procédures d’annulation peuvent être également dirigées contre les enregistrements internationaux (ci-après les «EI») désignant l’Union européenne. Les règles spécifiques applicables dans ces cas (relatives notamment à la date de dépôt et au délai pertinent pour la preuve de l’usage) figurent dans les Directives, partie M, Marques internationales.
Une demande en annulation contre un EI peut être présentée après la date de la publication de l’EI désignant l’Union européenne dans le bulletin officiel de l’Office (M.3.1. – Enregistrements internationaux avec ou sans modifications depuis leur publication au sens de l’article 152, paragraphe 1, du RMC).
En ce qui concerne les représentants de l’OMPI des détenteurs des EI contestés, en règle générale, l’Office communique avec eux, quelle que soit leur localisation, s’ils remplissent les critères prévus à l’article 93 du RMC.
Lorsque le représentant de l’OMPI du détenteur de l’EI ne remplit pas les critères prévus à l’article 93 du RMC, la notification de la demande en annulation est adressée directement audit détenteur, et une copie est envoyée à son représentant de l’OMPI pour information.
La notification de la demande en annulation invite également le détenteur de l’EI à désigner un représentant professionnel, en vertu de l’article 93 du RMC, dans un délai de trois mois suivant sa réception. En cas de représentation obligatoire (article 92, paragraphe 2, du RMC), la notification indique les conséquences du non-respect de cette obligation (notamment qu’aucune communication adressée par le détenteur de l’EI au cours de la procédure n’est prise en considération).
Transformation
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 2
TRANSFORMATION
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Table des matières
1 Introduction................................................................................................ 3
2 Transformation de marques communautaires et d’enregistrements internationaux désignant l’UE .................................................................. 4 2.1 Transformation de marques communautaires .........................................4 2.2 Transformation d’enregistrements internationaux désignant l’UE.........5
3 Demande valable de marque communautaire comme condition de la transformation ........................................................................................... 6
4 Motifs d’exclusion de la transformation .................................................. 6 4.1 Déchéance pour défaut d’usage................................................................ 6 4.2 Motif de refus limité à un État membre ou étendu à l’ensemble de
l’UE .............................................................................................................. 7 4.3 Retrait/renonciation après qu’une décision a été rendue........................ 8 4.4 Instances compétentes pour statuer sur les motifs excluant la
transformation ............................................................................................ 8
5 Conditions de forme auxquelles doit satisfaire la requête en transformation ........................................................................................... 9 5.1 Délai ............................................................................................................9
5.1.1 Début du délai lorsque l’Office envoie une notification .................................. 9 5.1.2 Date à laquelle le délai commence à courir dans les autres cas ................... 9
5.2 Requête en transformation ...................................................................... 10 5.3 Langue ...................................................................................................... 13 5.4 Taxe........................................................................................................... 13
6 Examen par l’Office ................................................................................. 14 6.1 Étapes de la procédure, compétence...................................................... 14 6.2 Examen ..................................................................................................... 14
6.2.1 Taxes ............................................................................................................ 14 6.2.2 Délai.............................................................................................................. 14 6.2.3 Langue.......................................................................................................... 15 6.2.4 Conditions de forme ..................................................................................... 15 6.2.5 Motifs ............................................................................................................ 15 6.2.6 Représentation ............................................................................................. 16 6.2.7 Transformation partielle ................................................................................ 16
6.3 Publication de la requête et inscription au registre ............................... 17 6.4 Transmission aux offices désignés ........................................................ 18
7 Effets de la transformation ..................................................................... 19
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1 Introduction
Une transformation consiste à convertir une marque communautaire en une ou plusieurs demandes nationales. Ses principales caractéristiques sont définies par les articles 112 à 114 du RMC et par les règles 44 à 47 du REMC. Si une marque communautaire cesse d’exister, elle peut, en fonction de la raison précise de cette cessation, être transformée en marques valides dans certains États membres. La transformation est particulièrement utile pour surmonter les problèmes éventuels liés au caractère unitaire de la marque communautaire. Par exemple, si la marque communautaire est confrontée à un problème de possibilité d’enregistrement dans un ou plusieurs pays pour des motifs absolus ou en raison d’une opposition fondée sur un droit antérieur valide dans un ou plusieurs pays, le demandeur de la marque communautaire peut demander la transformation de la marque communautaire en demandes individuelles de marque nationale dans les autres pays qui ne sont pas concernés par ces motifs.
Le régime de la marque communautaire repose sur le principe de la complémentarité des systèmes de marque communautaire et nationaux. Ces systèmes sont liés notamment par des procédures relatives à l’ancienneté et à la transformation. Le système est conçu de sorte que la date du dépôt antérieur d’un droit enregistré l’emportera toujours dans le territoire où il est valide, et ce, que la marque enregistrée résulte d’un dépôt national, d’une désignation internationale ou d’une demande de marque communautaire (voir la décision de la grande chambre de recours du 15 juillet 2008 dans l’affaire R 1313/2006-G, et la décision du 22 septembre 2008, «Restoria», R 0207/2007-2, paragraphe 34).
La transformation est un système à deux niveaux impliquant d’abord le paiement d’un droit de 200 EUR et l’examen de la requête en transformation devant l’OHMI, puis la procédure de transformation proprement dite devant les offices nationaux. En fonction de la législation nationale, soit la marque transformée est enregistrée immédiatement, soit elle fait l’objet de procédures d’examen, d’enregistrement et d’opposition comme pour une demande normale de marque nationale.
Lorsque l’UE est désignée dans un enregistrement international et dans la mesure où la désignation a été retirée, refusée ou a cessé de produire ses effets, il est également possible de présenter une requête visant la transformation en demande de marque nationale dans un, plusieurs ou tous les États membres ou par l’intermédiaire d’une désignation postérieure des États membres en vertu du système de Madrid.
La transformation d’enregistrements internationaux désignant l’UE ne doit pas être confondue avec la « transformation » (transformation en anglais), qui est une figure juridique trouvant son origine dans le protocole de Madrid (PM) pour atténuer les conséquences de la période de dépendance de cinq ans instituée au titre de l’arrangement de Madrid (voir article 6, paragraphe 3, du PM). La transformation (transformation en anglais) permet à une marque contestée au niveau central d’être transformée en une demande directe de marque communautaire, mais elle ne permet pas la transformation (conversion en anglais) d’une désignation de l’UE en des demandes nationales. Pour de plus amples informations sur la transformation (transformation en anglais), voir les Directives, partie M, Marques internationales.
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2 Transformation de marques communautaires et d’enregistrements internationaux désignant l’UE
2.1 Transformation de marques communautaires
Article 112, paragraphe 1, article 113, paragraphe 1, et article 159 du RMC Règle 44, paragraphe 1, points e) et f), et règles 122 et 123, du REMC
Le demandeur d’une marque communautaire ou le titulaire d’une marque communautaire enregistrée peut requérir la transformation de sa demande ou de sa marque communautaire enregistrée en demande de marque nationale dans un, plusieurs ou tous les États membres, étant entendu que l’expression « demande nationale » ou « office national » comprend les demandes de marques Benelux ou le Bureau Benelux des marques respectivement, en ce qui concerne la Belgique, le Luxembourg et les Pays-Bas.
Il est possible de procéder à une transformation dans les cas suivants (« motifs de transformation »):
lorsqu’une demande de marque communautaire a été définitivement rejetée par l’Office (article 112, paragraphe 1, point a), du RMC) en vertu d’une décision sur les motifs absolus ou relatifs de refus au cours de la procédure d’examen ou d’opposition;
lorsqu’une demande de marque communautaire a été retirée par le demandeur (article 112, paragraphe 1, point a), article 44 du RMC);
lorsqu’une demande de marque communautaire est réputée retirée, en particulier lorsque les taxes par classe ne sont pas acquittées dans le délai prescrit après le dépôt de la demande (article 112, paragraphe 1, point a), et article 36, paragraphe 5, du RMC);
lorsque l’enregistrement d’une marque communautaire cesse de produire ses effets (article 112, paragraphe 1, point b), du RMC), ce qui s’applique aux cas suivants:
○ lorsque l’enregistrement d’une marque communautaire a fait valablement l’objet d’une renonciation (article 50 du RMC);
○ lorsque l’enregistrement d’une marque communautaire n’a pas été renouvelé (article 47 du RMC);
○ lorsque l’enregistrement d’une marque communautaire a été déclaré nul par l’Office ou par un tribunal des marques communautaires (articles 55 et 100 du RMC);
○ lorsque le titulaire d’un enregistrement de marque communautaire est déclaré déchu de ses droits par l’Office ou par un tribunal des marques communautaires (article 55 du RMC) sauf dans le cas d’une déchéance pour défaut d’usage (article 112, paragraphe 2, du RMC).
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2.2 Transformation d’enregistrements internationaux désignant l’UE
Le titulaire d’un enregistrement international désignant l’UE peut demander la transformation de la désignation de l’UE:
en demandes de marque nationale dans un, plusieurs ou tous les États membres;
en désignations postérieures d’un ou plusieurs États membres en application du protocole ou de l’arrangement de Madrid (« opting-back »), pour autant que l’État membre soit partie à l’un de ces accords non seulement au moment où la requête en transformation est soumise, mais déjà à la date de l’enregistrement international désignant l’UE;
en demandes de marques nationales pour certains États membres et en désignations postérieures pour d’autres États membres, étant entendu qu’un même État membre ne peut être désigné qu’une seule fois.
Il est possible de procéder à une transformation d’enregistrement international dans les cas suivants (« motifs de transformation ») lorsque la désignation de l’UE dans un enregistrement international cesse de produire ses effets, ce qui s’applique dans les circonstances suivantes:
lorsque l’Office ou un tribunal des marques communautaires a prononcé la nullité des effets d’un enregistrement international désignant l’UE (article 158 du RMC, et règle 117 du REMC);
lorsque la renonciation à la désignation de l’UE a été inscrite au registre international (règle 25, paragraphe 1, et règle 27 du règlement d’exécution commun1);
lorsque l’annulation de l’enregistrement international a été inscrite au registre international (règle 25, paragraphe 1, et règle 27 du règlement d’exécution commun); dans de tels cas, la transformation du type « opting-back » n’est pas possible; seule la transformation nationale est possible lorsque l’OMPI communique à l’Office que l’enregistrement international n’a pas été renouvelé, pour autant que le délai de grâce pour le renouvellement ait expiré (règle 31, paragraphe 4, point a) ou b), du règlement d’exécution commun).
lorsqu’un enregistrement international désignant l’UE a été définitivement refusé par l’Office (règle 113, paragraphe 2, points b et c), et règle 115, paragraphe 5, point b) et c), du REMC).
La transformation peut être demandée pour tout ou partie des produits et services auxquels l’acte ou la décision mentionnés ci-dessus s’applique.
Si les décisions ou actes mentionnés ci-dessus n’ont trait qu’à une partie des produits et services pour lesquels la demande a été déposée ou enregistrée, la transformation
1 Règlement d’exécution commun à l’Arrangement de Madrid concernant l’enregistrement international des marques et au Protocole relatif à cet Arrangement.
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peut être requise uniquement pour ces produits ou services spécifiques, ou une partie de ces produits ou services.
3 Demande valable de marque communautaire comme condition de la transformation
Article 112, paragraphe 1, du RMC
Si la transformation est requise sur la base d’une demande de marque communautaire, la transformation n’est possible que si la demande est valable (voir les Directives, partie B, Examen, section 2, Contrôle des formalités).
4 Motifs d’exclusion de la transformation
Article 112, paragraphe 2, et article 159 du RMC Règles 45 et 123 du REMC
La transformation n’a pas lieu dans les deux cas suivants: premièrement, quand une marque communautaire enregistrée ou un enregistrement international désignant l’UE est déchu pour défaut d’usage (voir le paragraphe 4.1. ci-après) et, deuxièmement, quand le motif particulier pour lequel la demande de marque communautaire, la marque communautaire enregistrée ou l’enregistrement international désignant l’UE cesse de produire ses effets, exclurait l’enregistrement de cette marque dans l’État membre concerné (voir le paragraphe 4.2. ci-après). Par conséquent, une requête en transformation d’une demande de marque communautaire refusée ne sera pas recevable eu égard à l’État membre auquel s’appliquent les motifs de refus, de nullité ou de déchéance.
Même si le motif de la transformation est le retrait d’une demande, lorsqu’un tel retrait a lieu après qu’une décision a été rendue refusant la marque sur la base d’un motif qui exclurait l’enregistrement dans l’État membre concerné, cette requête en transformation sera refusée si un recours n’a pas été formé.
Même si le motif de la transformation est la renonciation à un enregistrement, lorsqu’une telle renonciation a lieu après qu’a été rendue une décision de déchéance de la marque communautaire ou de l’enregistrement international pour défaut d’usage, ou de refus de la marque sur la base d’un motif qui exclurait l’enregistrement dans l’État membre concerné, cette requête en transformation sera refusée si un recours n’a pas été formé (voir le paragraphe 4.3 ci-après).
4.1 Déchéance pour défaut d’usage
Article 112, paragraphe 2, point a), du RMC
Le premier motif d’exclusion de la transformation est le cas où le titulaire de la marque communautaire ou de l’enregistrement international a été déchu de ses droits pour défaut d’usage.
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La transformation n’aura pas lieu si le titulaire de la marque communautaire ou de l’enregistrement international a été déchu de ses droits pour défaut d’usage sauf si, dans l’État membre pour lequel la transformation est requise, la marque communautaire a fait l’objet d’un usage qui serait considéré sérieux en application de la législation dudit État membre.
Aucune allégation postérieure du demandeur de transformation concernant le fond de l’affaire ne sera permise. Par exemple, si la marque communautaire a été déchue pour défaut d’usage, le demandeur de la transformation ne peut pas faire valoir devant l’Office qu’il est capable d’en prouver l’usage dans un certain État membre.
4.2 Motif de refus limité à un État membre ou étendu à l’ensemble de l’UE
Article 112, paragraphe 2, point b), du RMC Règle 45, paragraphe 4, du REMC
La deuxième raison d’exclure la transformation est liée à l’existence d’un motif de refus, de révocation (autre que le défaut d’usage) ou à une déclaration de nullité. Cette règle s’applique lorsque la décision de l’Office ou d’un tribunal des marques communautaires indique expressément que le motif de refus, de révocation ou de nullité s’applique à un État membre en particulier, et empêche la transformation à l’égard de celui-ci (décision du 5 mars 2009, «orange colour mark», R 1619/2008-2, paragraphes 23-24).
Exemples
Lorsqu’il n’existe un motif absolu de refus qu’à l’égard d’une langue, la transformation n’a pas lieu à l’égard des États membres dans lesquels cette langue est une langue officielle. Par exemple, si un motif absolu de refus a été invoqué en relation avec le public anglophone, la transformation n’aura pas lieu à l’égard du Royaume-Uni, de l’Irlande et de Malte (voir règle 54, paragraphe 4, du REMC).
Lorsqu’il n’existe un motif absolu de refus qu’à l’égard d’un État membre, ce qui peut être le cas quand la marque est descriptive ou de nature à tromper le public uniquement dans un État membre particulier et pas dans d’autres (voir les Directives, partie B, Examen, section 4, Motifs absolus de refus et marques communautaires collectives), la transformation n’a pas lieu à l’égard de cet État membre, alors qu’elle reste possible pour tous les autres États membres pour lesquels l’existence de ce motif de refus n’a pas été expressément constatée.
Lorsqu’une demande de marque communautaire ou un enregistrement international désignant l’UE a été refusé à la suite d’une opposition fondée sur une marque nationale antérieure enregistrée dans un État membre donné, la transformation n’a pas lieu à l’égard de cet État membre. Lorsque l’opposition est fondée sur plusieurs droits antérieurs dans différents États membres, mais que la décision finale refuse la demande de marque communautaire ou l’enregistrement international désignant l’UE sur la base d’un seul de ces droits antérieurs, la transformation peut être demandée à l’égard des autres États membres. Par exemple, si dans une opposition fondée sur un droit national britannique, italien et français, l’opposition est accueillie dans la mesure où elle se fonde sur le droit national britannique et qu’il n’y a pas d’analyse des autres droits antérieurs, la
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transformation n’aura pas lieu à l’égard du Royaume-Uni, mais pourra avoir lieu à l’égard de l’Italie et de la France (et de tous les autres États membres) (voir l’arrêt du 16 septembre 2004, T-342/02, « MGM » et l’ordonnance du 11 mai 2006, T-194/05 « Teletech »).
Conformément à la règle 45, paragraphe 4, du REMC, applicable par analogie aux enregistrements internationaux désignant l’UE, conformément à la règle 123, paragraphe 2, du REMC, lorsqu’une demande de marque communautaire a été refusée ou qu’un enregistrement de marque communautaire a été déclaré nul pour des motifs relatifs sur le fondement d’une marque communautaire antérieure, ou, dans les cas de nullité, par un autre droit de propriété industrielle communautaire, cela a pour effet d’exclure la transformation pour l’ensemble de l’Union, même si le risque de confusion n’existe que dans une partie de celle-ci. C’est le cas même si la marque communautaire bénéficie d’une revendication d’ancienneté en vertu de l’article 34 ou 35 du RMC.
4.3 Retrait/renonciation après qu’une décision a été rendue
Lorsque, dans l’un des cas susvisés, le demandeur retire la demande de marque communautaire ou que le titulaire renonce à la marque communautaire, ou que le titulaire renonce à la désignation de l’UE avant que la décision devienne définitive (c’est-à-dire pendant le délai pour former un recours) et demande ensuite la transformation de la marque en marques nationales dans certains ou tous les États membres pour lesquels s’applique un motif de refus, de révocation ou de nullité, une telle requête en transformation sera refusée à l’égard de ces États membres.
Si le demandeur/titulaire forme un recours et retire ensuite la demande refusée, renonce à la marque communautaire/désignation annulée/révoquée puis demande une transformation, le retrait/renonciation sera transmis à l’autorité compétente et pourra être mis en attente jusqu’au résultat de la procédure de recours (voir l’arrêt du 24 mars 2011, C-552/09 P, 'TiMi KiNDERJOGHURT', paragraphe 43, la décision du 22 octobre 2010, R 0463/2009-4, "MAGENTA », du paragraphe 25 au 27 et la décision du 07 août 2013, R 2264/2012-2 -" SHAKEY'S). Dès que le retrait/renonciation sera traité, la transformation sera transmise comme recevable à tous les États membres faisant l’objet de la demande ou refusée, selon le résultat du litige (voir aussi les Directives, partie D, Annulation et partie E, section 1, Modification d’un enregistrement).
4.4 Instances compétentes pour statuer sur les motifs excluant la transformation
Article 113, paragraphes 1 et 3, du RMC
L’Office décide si la requête en transformation réunit les conditions prévues par les règlements en conjonction avec toutes les décisions finales (leurs dispositifs et motivations) ayant donné lieu à la transformation.
Si l’un des motifs excluant la transformation existe, l’Office refuse de transmettre la requête en transformation à l’office national correspondant (ou, dans le cas d’une transformation du type « opting-back », il refuse de transmettre la transformation à l’OMPI comme désignation postérieure pour les États membres pour lesquels la transformation est ainsi exclue). Cette décision est susceptible de recours.
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5 Conditions de forme auxquelles doit satisfaire la requête en transformation
5.1 Délai
Le délai habituel pour introduire une requête en transformation est de trois mois. La date à laquelle le délai commence à courir dépend du motif de la transformation.
Ce délai ne peut pas être prorogé.
En outre, la poursuite de la procédure ne peut pas être demandée pendant ce délai, conformément à l’article 82, paragraphe 2, du RMC. Toutefois, la restitutio in integrum est en principe possible.
5.1.1 Début du délai lorsque l’Office envoie une notification
Article 112, paragraphe 4, du RMC Règle 70, paragraphe 4, du REMC
Lorsqu’une demande de marque communautaire est réputée retirée, l’Office signifie au demandeur ou au titulaire qu’une requête en transformation peut être introduite dans les trois mois suivant la date de cette communication.
Cette notification est jointe à la communication relative à la perte de droits.
5.1.2 Date à laquelle le délai commence à courir dans les autres cas
Article 112, paragraphes 5 et 6, du RMC
Dans tous les autres cas, le délai de trois mois pour le dépôt d’une requête en transformation commence à courir automatiquement, à savoir:
lorsque la demande de marque communautaire est retirée, à la date à laquelle le retrait est reçu par l’Office;
lorsque la marque communautaire fait l’objet d’une renonciation, à la date à laquelle la renonciation est inscrite au registre des marques communautaires (à savoir le jour où elle prend effet en application de l’article 50, paragraphe 2, du RMC);
lorsque la protection de l’enregistrement international a été limitée ou a fait l’objet d’une renonciation à l’égard de l’UE, à compter de la date à laquelle l’OMPI a enregistré la limitation ou la renonciation conformément à la règle 27, paragraphe 1, point b), du règlement d’exécution commun;
lorsque l’enregistrement de la marque communautaire n’a pas été renouvelé, le lendemain du dernier jour de la période au cours de laquelle une demande de renouvellement peut être présentée, conformément à l’article 47, paragraphe 3,
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du RMC, c’est-à-dire six mois après le dernier jour du mois au cours duquel la protection prend fin;
lorsque l’enregistrement international n’a pas été renouvelé pour l’UE, le lendemain du dernier jour où le renouvellement peut encore être effectué devant l’OMPI en application de l’article 7, paragraphe 4, du PM;
lorsque la demande de marque communautaire est rejetée ou l’enregistrement international désignant l’UE est refusé, à la date à laquelle la décision est devenue définitive;
lorsque la marque communautaire ou l’enregistrement international désignant l’UE est déclaré nul ou lorsque le titulaire de cette marque ou de cet enregistrement est déchu de ses droits, à la date à laquelle la décision de l’Office est devenue définitive ou à la date à laquelle la décision du tribunal des marques communautaires est passée en force de chose jugée.
Une décision de l’Office devient définitive:
lorsqu’aucun recours n’est formé, à l’expiration du délai de recours de deux mois, conformément à l’article 60 du RMC;
suite à une décision de la chambre de recours, à l’expiration du délai de recours devant le Tribunal ou, le cas échéant, par suite de la décision finale de la Cour de justice.
Une décision d’un tribunal des marques communautaires passe en force de chose jugée:
lorsqu’aucun recours n’est formé, à l’expiration du délai de recours prescrit par le droit national; ou
par la décision finale du tribunal des marques communautaires en dernière (deuxième ou troisième) instance.
Par exemple, si une marque communautaire est refusée par une décision de l’Office pour des motifs absolus de refus qui est notifiée le 11novembre 2011, la décision devient définitive le 11 janvier 2012. Le délai de trois mois pour demander la transformation expire le 11 avril 2012.
5.2 Requête en transformation
Article 113, paragraphe 1, du RMC Règle 83, paragraphe 2, du REMC
La requête en transformation est présentée à l’Office. Le formulaire de « Requête en transformation » est disponible sur le site internet de l’Office. Il est recommandé d’utiliser ce formulaire.
Le formulaire de « Requête en transformation d’un enregistrement international désignant l’UE » est disponible sur le site internet de l’Office. Ce formulaire peut aussi être utilisé dans le cas d’une transformation du type « opting-back ». Le formulaire MM
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16 de l’OMPI peut aussi être utilisé; toutefois, l’Office envoie à l’OMPI les données relatives à la transformation sous format électronique, mais pas le formulaire proprement dit.
L’utilisation des formulaires mis à disposition par l’Office permet à ce dernier d’extraire de sa banque de données les informations pertinentes concernant la marque communautaire transformée et les données concernant le demandeur et son représentant et de les transmettre avec le formulaire de transformation aux offices désignés.
Règle 44, paragraphes 1 et 2, du REMC
Les demandeurs ou leurs représentants peuvent utiliser des formulaires présentant une structure similaire à celle de ceux mis à disposition par l’Office pour autant que les informations de base ci-après soient données:
les nom et adresse du demandeur de la transformation, à savoir le demandeur ou le titulaire de la marque communautaire ou le titulaire de l’enregistrement international;
le nom du représentant, le cas échéant;
le numéro de dossier attribué à la demande de marque communautaire, le numéro d’enregistrement de la marque communautaire ou le numéro de l’enregistrement international;
la date de dépôt de la demande ou de la marque communautaire ou, dans le cas d’un enregistrement international désignant l’UE, la date de l’enregistrement international ou de la désignation postérieure;
les renseignements relatifs à la revendication de priorité et d’ancienneté;
l’indication de l’État membre ou des États membres concernés par la requête en transformation. Dans le cas d’un enregistrement international, il convient d’indiquer également s’il s’agit d’une requête en transformation en demande nationale pour l’État membre concerné ou d’une requête en transformation en désignation dudit État membre en vertu de l’arrangement ou du protocole de Madrid. Quant à la Belgique, aux Pays-Bas et au Luxembourg, la transformation ne peut être demandée que pour l’ensemble de ces trois pays et non pour chacun d’entre eux séparément. Le formulaire de requête en transformation disponible auprès de l’Office permet seulement une désignation globale de la Belgique, des Pays-Bas et du Luxembourg. Si le demandeur n’indique néanmoins qu’un seul de ces pays, l’Office considère qu’il s’agit d’une requête en transformation qui concerne la Belgique, les Pays-Bas et le Luxembourg et la transmet au Bureau Benelux des marques;
la mention du motif pour lequel la requête en transformation est présentée:
○ si la requête en transformation est présentée à la suite du retrait de la demande d’enregistrement, une mention de la date du retrait de la demande;
○ si la requête en transformation est présentée du fait du non-renouvellement de l’enregistrement, une mention de la date à laquelle la période de protection a pris fin;
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○ si la requête en transformation est formée à la suite de la renonciation à la marque communautaire, une mention de la date à laquelle elle a été inscrite au registre;
○ si la requête en transformation est formée à la suite d’une renonciation partielle, les produits et/ou services pour lesquels la marque communautaire ne bénéficie plus de protection et une mention de la date à laquelle la renonciation partielle a été inscrite au registre;
○ si la requête en transformation est formée à la suite d’une limitation, les produits et/ou services pour lesquels la demande de marque communautaire ne bénéficie plus de protection et une mention de la date de la limitation;
○ si la requête en transformation est formée du fait que la marque cesse de produire ses effets à la suite d’une décision d’un tribunal des marques communautaires, une mention de la date à laquelle cette décision est passée en force de chose jugée et une copie de la décision qui peut être produite dans la langue dans laquelle la décision a été rendue;
○ si la requête en transformation est formée du fait qu’un enregistrement international désignant l’UE a été définitivement refusé par l’Office, une mention de la date de la décision;
○ si la requête en transformation est formée du fait que les effets d’un enregistrement international désignant l’UE ont été déclarés nuls par l’Office ou par un tribunal des marques communautaires, une mention de la date de la décision de l’Office ou de la date à laquelle la décision du tribunal des marques communautaires est passée en force de chose jugée, et une copie de la décision;
○ si la requête en transformation est formée du fait que la désignation de l’UE a été abandonnée ou annulée auprès de l’OMPI, une mention de la date de l’enregistrement par l’OMPI;
○ si la requête en transformation est formée du fait que l’enregistrement international désignant l’UE n’a pas été renouvelé, et si le délai de grâce pour le renouvellement est expiré, une mention de la date d’expiration de la protection.
La requête en transformation peut comporter:
une indication qu’elle ne porte que sur une partie des produits et services pour lesquels la demande a été présentée ou pour lesquels la marque a été enregistrée, auquel cas les produits et services visés par la transformation doivent être précisés;
une indication qu’elle porte sur des produits et services différents selon les États membres, auquel cas les produits et services correspondants doivent être précisés pour chaque État membre.
La requête en transformation peut également faire mention d’un représentant auprès d’un office national désigné, en cochant les cases correspondantes dans l’annexe du formulaire de requête en transformation. Cette mention n’est ni obligatoire ni importante dans la procédure de transformation devant l’Office, mais sera utile pour les offices nationaux, dès qu’ils auront reçu la requête en transformation, afin de leur permettre de communiquer immédiatement avec un mandataire agréé par cet office national (voir le paragraphe 6 ci-dessous).
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5.3 Langue
Règle 95, point a), et règle 126 du REMC
Lorsqu’une requête en transformation concerne une demande de marque communautaire, elle doit être déposée dans la langue dans laquelle la demande a été déposée ou dans la deuxième langue qui y est indiquée.
Lorsque la requête en transformation concerne un enregistrement international désignant l’UE avant le moment où une déclaration d’octroi de protection a été envoyée en vertu de la règle 116 du REMC, la requête doit être déposée dans la langue dans laquelle la demande internationale a été déposée auprès de l’OMPI ou dans la deuxième langue qui y est indiquée.
Règle 95, point b), et règle 126 du REMC
Lorsque la requête porte sur un enregistrement de marque communautaire, elle peut être déposée dans l’une des cinq langues de l’Office.
Lorsque la requête en transformation concerne un enregistrement international désignant l’UE après l’émission d’une déclaration d’octroi de protection, la requête peut être déposée dans l’une des cinq langues de l’Office. La seule exception concerne la transformation de type «opting back», pour laquelle la requête doit être déposée en anglais, en espagnol ou en français.
Toutefois, lorsque la requête en transformation est déposée en utilisant le formulaire fourni par l’Office conformément à la règle 83 du REMC, ce formulaire peut être utilisé dans n’importe laquelle des langues officielles de la Communauté, à condition que le formulaire soit rempli dans l’une des langues de l’Office pour ce qui est des éléments textuels. Cela concerne en particulier la liste des produits et services dans le cas d’une requête en transformation partielle.
5.4 Taxe
Article 113, paragraphe 1, du RMC Règle 45, paragraphe 2, du REMC Article 2, paragraphe 20, et article 8, paragraphe 3, du RTMC
La requête en transformation donne lieu au paiement d’une taxe de 200 EUR, y compris dans le cas de la transformation d’un enregistrement international désignant l’UE. La requête n’est réputée avoir été présentée qu’après le paiement de la taxe de transformation. En d’autres termes, la taxe de transformation doit être acquittée dans le délai de trois mois susvisé. Un paiement effectué après l’expiration de ce délai peut toutefois être considéré comme ayant respecté le délai imparti si la personne concernée apporte la preuve que, dans un État membre et dans la période de trois mois, elle a effectué le paiement auprès d’un établissement bancaire ou elle a donné un ordre de virement et si elle a payé, dans le même temps, une surtaxe égale à 10 % de la taxe due (voir les Directives, partie A, Dispositions générales, section 3, Paiement des taxes et des frais).
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6 Examen par l’Office
6.1 Étapes de la procédure, compétence
L’Office traite les requêtes en transformation comme suit:
Article 113, paragraphes 2 et 3, du RMC Règles 45 à 47 du REMC
en les examinant;
en les publiant;
en les transmettant aux offices désignés.
6.2 Examen
L’examen de la requête en transformation par l’Office porte sur les points suivants:
taxes; délai; langue; conditions de forme; motifs; représentation; transformation partielle.
6.2.1 Taxes
Règle 45, paragraphe 2, et règle 122, paragraphe 3, du REMC
L’Office examine si la taxe de transformation a été acquittée dans le délai imparti.
Lorsque la taxe de transformation n’a pas été acquittée dans le délai prévu, l’Office informe le demandeur que la requête en transformation est réputée ne pas avoir été déposée. Toute taxe payée en retard est remboursée.
6.2.2 Délai
Règle 45, paragraphe 1, et règle 122, paragraphe 3, du REMC
L’Office examine si la requête a été déposée dans le délai prévu de trois mois.
L’Office rejette la requête en transformation si elle n’a pas été déposée dans le délai prévu de trois mois. Aucune taxe payée en retard ne sera remboursée.
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6.2.3 Langue
Règle 95, point a), et règle 126 du REMC
L’Office examine si la requête a été déposée dans la langue correcte.
Lorsque la requête est déposée dans une langue qui ne fait pas partie des langues acceptables pour la procédure de transformation (voir le paragraphe 5.3 ci-dessus), l’Office envoie une notification d’irrégularité au demandeur et spécifie le délai dans lequel ce dernier peut modifier sa requête en transformation. Si le demandeur ne répond pas, la requête n’est pas traitée et est réputée ne pas avoir été déposée. Aucune taxe payée ne sera remboursée.
6.2.4 Conditions de forme
Règle 44, paragraphe 1, points b), d) et (e), du REMC
L’Office examine si la requête est conforme aux conditions de forme du règlement d’exécution (voir le paragraphe 5 ci-dessus).
Lorsque le demandeur n’a pas utilisé le formulaire de transformation disponible auprès de l’Office et lorsque l’irrégularité consiste à ne pas avoir mentionné les éléments visés à la règle 44, paragraphe 1, points b), d) ou e), du REMC, le demandeur est invité soit à fournir les renseignements manquants soit, lorsque ces renseignements peuvent être aisément vérifiés dans les données dont dispose l’Office, il est considéré comme ayant autorisé l’Office à présenter aux offices désignés les extraits correspondants de sa banque de données.
6.2.5 Motifs
L’Office examine:
l’existence d’un des motifs de transformation visés au paragraphe 2 ci-dessus;
l’existence d’un des motifs excluant la transformation visés au paragraphe 4 ci- dessus;
Règle 123, paragraphe 2, du REMC
pour une transformation du type « opting-back », s’il avait été possible, à la date de l’enregistrement international, de désigner l’État membre concerné dans une demande internationale;
pour une transformation partielle, si les produits et services visés par la transformation étaient effectivement compris, sans les excéder, dans les produits et services protégés par la marque communautaire ou l’enregistrement international désignant l’UE au moment où cette marque ou cet enregistrement a expiré ou a cessé de produire des effets (voir le paragraphe 6.3 ci-dessous);
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dans le cas d’une transformation partielle au sens où une partie de la marque communautaire ou de l’enregistrement international désignant l’UE demeure, si les produits et services à transformer ne recouvrent pas les produits et services pour lesquels la marque demeure (voir le paragraphe 6.3 ci-après).
Ces deux dernières étapes de l’examen ont pour but d’éviter la transformation de produits et services plus nombreux ou plus étendus que ceux qui ont été refusés ou annulés.
Lorsque la requête en transformation ne satisfait pas à l’une des exigences et indications obligatoires visées aux paragraphes 4 et 5.2 ci-dessus, l’Office envoie une notification d’irrégularité au demandeur en spécifiant le délai dans lequel ce dernier peut modifier sa requête en transformation. En l’absence de réponse du demandeur, la requête n’est pas traitée et est réputée ne pas avoir été déposée. Aucune taxe payée ne sera remboursée.
6.2.6 Représentation
Règle 76, paragraphes 1 à 4, du REMC
Les dispositions générales sur la représentation sont appliquées (voir les Directives, partie A, Dispositions générales, section 5, Représentation professionnelle). La personne qui présente une requête en transformation peut désigner un représentant nouveau ou supplémentaire (avocat ou mandataire agréé auprès de l’OHMI) aux fins de la procédure de transformation.
Tout pouvoir autorisant à agir pour le compte du demandeur ou du titulaire concerne uniquement les actes accomplis devant l’Office. La question de savoir si un représentant désigné pour les procédures devant l’Office peut agir devant un office national pour la demande nationale issue de la transformation et, dans l’affirmative, s’il doit présenter un pouvoir supplémentaire, est déterminée par la législation nationale. Dans le cas d’une transformation du type « opting-back », le nom du représentant désigné devant l’OHMI est communiqué à l’OMPI.
6.2.7 Transformation partielle
Article 112, paragraphe 1, du RMC Règle 44, paragraphe 1, point e), du REMC
Lorsque la transformation n’est demandée que pour certains des produits et services ou pour des produits et services différents selon les États membres (« transformation partielle »), l’Office vérifie si les produits et services pour lesquels la transformation est demandée sont contenus dans les produits et services pour lesquels le motif de transformation s’applique. Aux fins de cette appréciation, les mêmes critères que ceux utilisés dans des procédures similaires s’appliquent, comme la limitation d’une demande ou le refus partiel dans une procédure d’opposition.
Lorsqu’une demande est en partie refusée ou qu’un enregistrement est déclaré nul ou fait l’objet d’une déchéance partielle, la transformation ne peut être demandée que pour les produits et services pour lesquels la demande a été refusée ou
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l’enregistrement déclaré nul ou objet d’une déchéance et non pour les produits ou services pour lesquels la demande ou l’enregistrement reste valable.
Dans le cas de la limitation d’une demande ou d’une renonciation partielle, la transformation ne peut être demandée que pour les produits et services concernés par la limitation ou la renonciation partielle, et non pour les produits ou services pour lesquels la demande ou l’enregistrement reste valable. Il convient toutefois de se référer au paragraphe 4.3 ci-dessus lorsqu’une telle limitation ou renonciation partielle a lieu à la suite d’une décision.
Dans les cas susvisés, le demandeur doit préciser les produits et services pour lesquels la transformation est demandée. La limitation formulée de manière négative, en utilisant des expressions du type « boissons à l’exception de… » est recevable de la même manière que cette expression est recevable dans le cas d’une demande ou d’une limitation de demande de marque communautaire ou d’une renonciation partielle à une marque communautaire enregistrée (voir les Directives, partie B, Examen, section 3, Classification).
6.3 Publication de la requête et inscription au registre
Article 113, paragraphe 2, du RMC Règle 84, paragraphe 3, point p), du REMC
Dès réception d’une requête en transformation réputée déposée parce que la taxe correspondante a été acquittée, l’Office procède à l’inscription dans le registre des marques communautaires de la réception de la requête en transformation, pour autant que la requête concerne la transformation d’une demande de marque communautaire publiée ou d’une marque communautaire enregistrée.
Article 113, paragraphe 2, du RMC Règle 46, paragraphe 1, du REMC
Après avoir examiné la requête en transformation et constaté sa conformité, l’Office enregistre et publie ladite requête au Bulletin des marques communautaires, dans sa partie E.1. pour les marques communautaires et sa partie E.3. pour les enregistrements internationaux désignant la CE. Toutefois, cette publication n’a pas lieu si la requête en transformation est présentée alors que la demande de marque communautaire n’a pas encore été publiée conformément à l’article 39 du RMC.
Règle 46 du REMC
La publication de la requête en transformation a lieu après son examen par l’Office et lorsqu’il en a constaté la conformité. En l’absence de paiement, la requête n’est pas conforme.
Règle 46, paragraphe 2, du REMC
La publication de la requête en transformation doit contenir les indications visées à la règle 46, paragraphe 2, du REMC et, à moins qu’elle ne concerne un enregistrement international désignant la CE, inclure une référence à la publication précédente au Bulletin des marques communautaires et la date de la requête en transformation.
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Règle 46, paragraphe 2, et règles 122 et 123 du REMC
La liste des produits et services pour lesquels la transformation est demandée n’est pas publiée si la transformation concerne un enregistrement international désignant la CE.
6.4 Transmission aux offices désignés
Article 113, paragraphe 3, et article 114, paragraphe 1, du RMC Règle 47 du REMC
Dès que l’Office a terminé l’examen de la requête en transformation et constaté sa conformité, il transmet la requête sans délai aux offices désignés. La transmission est effectuée indépendamment du fait qu’une publication ait déjà eu lieu.
L’Office envoie une copie de la requête en transformation et rend disponible un extrait de sa banque de données contenant les données visées à la Règle 84, paragraphe 2 du REMC de la marque communautaire transformée ou de l’enregistrement international transformé. Chaque office central de propriété industrielle auquel est transmise la requête en transformation peut obtenir de l’Office toute information complémentaire concernant la requête, permettant à cet office de rendre une décision concernant la marque nationale résultant de la transformation.
Règle 47 du REMC
Parallèlement, l’Office informe le demandeur de la date de transmission aux offices nationaux.
Dans le cas d’une transformation du type « opting-back », l’OMPI la traite comme une désignation postérieure en application de la règle 24, paragraphes 6 et 7, du règlement d’exécution commun.
Si un office national est l’office désigné, la transformation donne lieu à une demande ou à un enregistrement national.
Article 114, paragraphe 3, du RMC
La législation nationale en vigueur dans l’État membre concerné peut exiger que la requête en transformation soit soumise à une ou à l’ensemble des conditions suivantes:
le paiement d’une taxe nationale de dépôt;
la production d’une traduction de la requête et de ses annexes dans l’une des langues officielles de l’État membre concerné; notamment pour les demandes de transformation concernant des marques communautaires antérieures à la publication, l’office national va généralement réclamer une traduction de la liste des biens et services;
l’indication d’un domicile dans l’État membre en question;
Transformation
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la fourniture d’une représentation de la marque en un nombre d’exemplaires précisé par l’État membre en question.
Les règles nationales en matière de désignation d’un représentant national demeurent applicables. Lorsqu’il est fait usage de la faculté de mentionner, dans le formulaire de transformation, un représentant aux fins de la procédure devant un office national donné, ledit office sera en mesure de communiquer directement avec ce représentant de sorte qu’aucune communication distincte ne sera nécessaire pour désigner un représentant national.
Article 114, paragraphe 2, du RMC
La législation nationale ne peut soumettre la requête en transformation à des exigences formelles supplémentaires ou autres que celles prévues par le RMC et le REMC.
7 Effets de la transformation
Article 112, paragraphe 3, du RMC
Dans chaque État membre concerné, la demande de marque nationale découlant de la transformation bénéficie de la date de dépôt ou, le cas échéant, de la date de priorité de la demande de marque communautaire ainsi que de l’ancienneté d’une marque antérieure produisant des effets dans cet État, valablement revendiquée pour la demande de marque communautaire ou l’enregistrement au titre de l’article 34 ou 35 du RMC. Pour plus de renseignements sur la transformation d'une marque communautaire en demandes nationales de marques pour les nouveaux États Membres, voir le Manuel Partie A, Section 9, Elargissement.
Dans le cas d’une transformation du type « opting-back », la demande internationale découlant de la désignation postérieure de l’État membre en application de la règle 24, paragraphe 6, point e), et de l’article 24, paragraphe 7, du règlement d’exécution commun bénéficiera de la date initiale de l’enregistrement international désignant la CE, à savoir la date effective de l’enregistrement international (y compris, le cas échéant, sa date de priorité) ou la date de la désignation postérieure de la CE.
Il n’existe toutefois pas de procédure harmonisée concernant la manière dont les offices nationaux procèdent à l’examen de la marque communautaire transformée. Comme indiqué en introduction, la procédure de transformation est un système à deux niveaux, dans lequel le deuxième niveau, la procédure de transformation proprement dite, est traité par les offices nationaux des marques et des brevets. En fonction de la législation nationale, soit la marque transformée sera enregistrée immédiatement, soit elle fera l’objet d’une procédure nationale d’examen, d’enregistrement et d’opposition comme toute autre demande de marque nationale.
Les demandes nationales découlant de la transformation d’une marque communautaire ou d’une demande de marque communautaire antérieure sont censées exister dès qu’une requête en transformation valable est déposée. Par conséquent, dans les procédures d’opposition, ces droits seront réputés correctement identifiés aux fins de recevabilité en vertu de la règle 18, paragraphe 1, du REMC si l’opposant indique le numéro de la (demande de) marque communautaire faisant l’objet de la transformation et les pays pour lesquels il a demandé la transformation.
Transformation
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Si dans une procédure d’opposition ou de nullité pour motifs relatifs, la demande de marque communautaire (ou la marque communautaire) sur laquelle se fonde l’opposition cesse d’exister (ou si la liste des produits et services est limitée), mais qu’en même temps, une requête en transformation est déposée, la procédure d’opposition ou de nullité peut se poursuivre, étant donné que les enregistrements de marque nationale issus de la transformation d’une demande de marque communautaire (ou d’une marque communautaire) peuvent constituer le fondement d’une procédure d’opposition ou de nullité introduite initialement sur la base de cette demande ou de cet enregistrement de marque communautaire (voir la décision de la Grande chambre de recours dans l’affaire R 1313/2006-G) (voir également les Directives, partie C, Opposition, section 1, Questions de procédure).
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 4
RENOUVELLEMENT
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Table des matières
1 Mise en garde contre la fraude................................................................. 4 1.1 Sociétés privées envoyant des factures trompeuses.............................. 4 1.2 Renouvellement par des tiers non autorisés............................................4 1.3 Contact........................................................................................................4
2 Durée de l'enregistrement......................................................................... 4
3 Notification de l’expiration de l’enregistrement...................................... 5
4 Renouvellement d’une demande de marque communautaire ............... 5
5 Taxes et autres conditions de forme pour la demande de renouvellement .......................................................................................... 6 5.1 Personnes autorisées à présenter une demande de renouvellement ....6 5.2 Contenu de la demande de renouvellement .............................................7
5.2.1 Nom, adresse et autres indications relatives au demandeur du renouvellement ............................................................................................... 7 5.2.1.1 Demande déposée par le titulaire de la marque communautaire ................7 5.2.1.2 Demande déposée par une personne autorisée à cette fin par le
titulaire.........................................................................................................7 5.2.2 Numéro d’enregistrement de la marque communautaire ............................... 8 5.2.3 Indication de l’étendue du renouvellement..................................................... 8
5.3 Langues ......................................................................................................8 5.4 Délai ............................................................................................................9
5.4.1 Délai de six mois pour le renouvellement avant expiration (délai de base) ... 9 5.4.2 Délai de grâce de six mois suivant l’expiration (délai de grâce) .................... 9
5.5 Taxes......................................................................................................... 10 5.5.1 Taxes à payer ............................................................................................... 10 5.5.2 Délai de paiement......................................................................................... 10 5.5.3 Paiement par des tiers.................................................................................. 11 5.5.4 Remboursement des taxes........................................................................... 11
6 Procédure devant l’Office ....................................................................... 12 6.1 Examen de la condition de forme............................................................ 12
6.1.1 Respect des délais ....................................................................................... 12 6.1.1.1 Paiement au cours du délai de base ou du délai de grâce........................12 6.1.1.2 Paiement après l’expiration du délai de grâce...........................................13 6.1.1.3 Situation d’un titulaire détenteur d’un compte courant...............................13 6.1.1.4 Poursuite de la procédure .........................................................................14 6.1.1.5 Restitutio in integrum.................................................................................14
6.1.2 Respect des conditions de forme du règlement d’exécution........................ 14 6.1.2.1 Renouvellement demandé par une personne autorisée............................14 6.1.2.2 Autres conditions.......................................................................................15
6.2 Éléments ne faisant pas l'objet d’un examen......................................... 16 6.3 Modification .............................................................................................. 16
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7 Inscriptions au registre ........................................................................... 16
8 Date d’effet du renouvellement ou de l’expiration, transformation .... 17 8.1 Date d’effet du renouvellement ............................................................... 17 8.2 Transformation de marques communautaires caduques...................... 17
9 Renouvellement de marques internationales désignant l’UE.............. 18
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1 Mise en garde contre la fraude
1.1 Sociétés privées envoyant des factures trompeuses
L'Office est conscient que les utilisateurs en Europe reçoivent de plus en plus de courriers non sollicités de sociétés réclamant le paiement de prestations portant sur les marques, dessins et modèles, telles que le renouvellement.
Une liste de lettres émanant de sociétés ou de registres, dont les utilisateurs ont dénoncé le caractère trompeur, est publiée sur le site internet de l'Office. Veuillez noter que ces prestations n’ont aucun rapport avec quelque service officiel d’enregistrement de marque, dessin ou modèle que ce soit, offert par les offices de propriété intellectuelle ou d’autres organes publics au sein de l’Union européenne, tels que l'OHMI.
Si vous recevez une lettre ou une facture, vérifiez soigneusement l’offre qui vous est faite ainsi que son origine. Veuillez noter que l'OHMI n’envoie jamais aux utilisateurs de facture ou de lettre demandant un paiement direct pour des prestations (voir les Directives, partie A, Dispositions générales, section 3, Paiement des taxes, frais et tarifs).
1.2 Renouvellement par des tiers non autorisés
L'Office est également conscient que des escrocs ont ciblé le module de renouvellement en ligne e-Renewal en demandant un renouvellement sans le consentement du titulaire, ce qui bloque le renouvellement par le biais du module pour les personnes dûment autorisées à cette fin. Ce blocage technique est destiné à empêcher le double paiement d’un renouvellement. Si, après avoir rempli une demande de renouvellement en ligne, vous constatez que la marque est « bloquée » car le renouvellement de la marque a déjà été demandé, veuillez prendre contact avec l'Office.
1.3 Contact
Si vous avez le moindre doute ou si vous êtes une nouvelle victime, veuillez consulter votre avocat ou nous contacter au +34 96 513 9100 ou par courrier électronique à l'adresse suivante : information@oami.europa.eu.
2 Durée de l'enregistrement
Article 46 du RMC Articles 26 et 27 du RMC Règle 9 du REMC
La durée de l’enregistrement d'une marque communautaire est de dix années à partir de la date du dépôt de la demande. Par exemple, une marque communautaire déposée le 16 avril 2006 arrivera à expiration le 16 avril 2016.
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La date de dépôt de la demande est fixée en vertu des articles 26 et 27 du RMC et de la règle 9 du REMC.
L’enregistrement peut être renouvelé indéfiniment pour des périodes de dix années.
3 Notification de l’expiration de l’enregistrement
Article 47, paragraphe 2, du RMC Règle 29 du REMC Communication no 5/05 du président de l’Office du 27 juillet 2005
Au moins six mois avant l’expiration de l’enregistrement, l'Office doit informer:
le titulaire enregistré de la marque communautaire et toute personne titulaire d'un droit enregistré sur la marque communautaire
que l'enregistrement arrive à expiration. Les titulaires d’un droit enregistré comprennent les licenciés enregistrés, les titulaires d’un droit réel enregistré, les créanciers d’une exécution forcée enregistrée ou l’autorité compétente habilitée à agir au nom du titulaire lors de procédures d’insolvabilité.
L’absence d’information n’affecte pas l’expiration de l’enregistrement et n’engage pas la responsabilité de l’Office.
4 Renouvellement d’une demande de marque communautaire
Dans la situation exceptionnelle où une demande n’a pas encore fait l'objet d’un enregistrement en raison de procédures en cours, l'Office ne procédera pas à l'envoi de l’information visée à l’article 47, paragraphe 2, du RMC. Le demandeur n’est pas obligé de renouveler sa demande au cours de procédures durant plus de 10 ans et pour lesquelles l’issue de l'enregistrement est incertaine. C’est seulement après l’enregistrement de la marque que l'Office invite le titulaire à renouveler la marque communautaire et à payer la taxe de renouvellement (rétroactivement). Le titulaire disposera alors de deux mois pour acquitter la taxe de renouvellement (y compris toute taxe par classe additionnelle). Si la taxe de renouvellement n’est pas acquittée dans ce premier délai, un second délai de deux mois supplémentaires sera imparti au titulaire (soit un total de quatre mois à compter de la date de la première lettre) pour acquitter la taxe de renouvellement. Durant ce délai supplémentaire de deux mois, la surtaxe de 25 % de la taxe de renouvellement visée à l'article 2, paragraphe 16, du RTMC, n’est pas appliquée. Si la taxe de renouvellement n’est pas acquittée dans ce délai supplémentaire, l’Office procédera à la notification de l’expiration de l’enregistrement.
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5 Taxes et autres conditions de forme pour la demande de renouvellement
Règles 79, 80 et 82 du REMC Communication no 8/05 du président de l'Office du 21 décembre 2005 relative au renouvellement des marques communautaires
Les règles générales relatives aux communications adressées à l’Office sont d’application (voir les Directives, partie 1, Dispositions générales, section 1, Moyens de communication, délais), ce qui signifie que la demande peut être transmise comme suit :
par voie électronique via le site internet de l’OHMI. Le renouvellement en ligne donne lieu à une réduction de 10 % de la taxe de renouvellement de base. La saisie des nom et prénom à l'endroit indiqué du formulaire électronique a valeur de signature. Outre la réduction de la taxe, le renouvellement en ligne offre d’autres avantages, comme la réception immédiate et automatique d’une confirmation électronique de la demande de renouvellement ou l’utilisation du gestionnaire de renouvellement pour remplir le formulaire rapidement pour autant de marques communautaires que nécessaire ;
en transmettant un formulaire original signé par fax, courrier ou tout autre moyen (voir les Directives, partie 1, Dispositions générales, section 1, Moyens de communication, délais). Un formulaire standard est disponible sur le site internet de l'OHMI. Les formulaires doivent être signés, mais pas les annexes.
5.1 Personnes autorisées à présenter une demande de renouvellement
Article 17, paragraphe 7 et article 47, paragraphe 1, du RMC Communication no 8/05 du président de l’Office du 21 décembre 2005 relative au renouvellement des marques communautaires
La demande de renouvellement peut être présentée par :
le titulaire enregistré de la marque communautaire ;
en cas de transfert de la marque communautaire, l’ayant droit à partir du moment où une demande d’enregistrement du transfert a été reçue par l'Office ;
toute personne expressément autorisée à cette fin par le titulaire de la marque communautaire. Il peut s’agir, par exemple, d’un licencié enregistré, d’un licencié non enregistré ou de toute autre personne ayant reçu l’autorisation du titulaire de la marque communautaire pour renouveler la marque.
Une autorisation devra avoir été établie en sa faveur ; toutefois, il n'est pas nécessaire qu’elle ait été déposé auprès de l’Office, à moins que l’Office ne le demande (voir paragraphe 6.1.2.1 ci-après). Si l’Office reçoit des taxes de deux sources différentes qui ne sont, pour aucune d’elles, ni le titulaire ni son représentant figurant au dossier, l’Office prendra contact avec le titulaire pour savoir quelle personne est autorisée à
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déposer la demande de renouvellement. En l’absence de réponse du titulaire, l’Office validera le paiement lui parvenant en premier.
(Voir l’arrêt du 12 mai 2009, « JURADO », T-410/07, points 33 à 35 et décision du 13 janvier 2008, R 0989/2007-4, « ELITE GLASS-SEAL », paragraphes 17 et 18)
La représentation en vertu de l’article 92, paragraphe 2, du RMC n’est pas obligatoire pour le renouvellement.
5.2 Contenu de la demande de renouvellement
Article 47, paragraphe 1, du RMC Règle 30, paragraphes 1 et 3, du REMC
La demande de renouvellement doit comporter les renseignements suivants : nom et adresse du demandeur du renouvellement et numéro d’enregistrement de la marque communautaire renouvelée. Par défaut, l’étendue du renouvellement est réputée totale.
Le paiement à lui seul constitue une demande valable de renouvellement sous réserve que ce paiement parvienne à l’Office et que soient mentionnés le nom du payeur, le numéro d'enregistrement de la marque communautaire et l'indication « renouvellement ». En pareil cas, aucune autre formalité ne sera requise (voir les Directives relatives aux procédures devant l'Office de l'harmonisation dans le marché intérieur (marques, dessins et modèles), partie A, Dispositions générales, section 3, Paiement des taxes, frais et tarifs).
5.2.1 Nom, adresse et autres indications relatives au demandeur du renouvellement
5.2.1.1 Demande déposée par le titulaire de la marque communautaire
Lorsque la demande est déposée par le titulaire de la marque communautaire, son nom doit être indiqué.
Si l’Office a attribué un numéro d’identification au titulaire, ce numéro doit être indiqué avec le nom.
5.2.1.2 Demande déposée par une personne autorisée à cette fin par le titulaire
Règle 1, paragraphe 1, points b) et e), du REMC
Lorsque la demande de renouvellement est déposée par une personne autorisée à cette fin par le titulaire, le nom et l’adresse de la personne autorisée doivent être indiqués.
Le nom et l’adresse ou le numéro d’identification et le nom (voir le paragraphe précédent) de la personne autorisée doivent être communiqués conformément à la règle 1, paragraphe 1, point b), du REMC.
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5.2.2 Numéro d’enregistrement de la marque communautaire
Règle 30, paragraphe 1, point b), du REMC
Le numéro d’enregistrement de la marque communautaire doit être indiqué.
5.2.3 Indication de l’étendue du renouvellement
Règle 30, paragraphe 1, point c), du REMC
Lorsque le renouvellement est total, à savoir lorsque la demande porte sur tous les produits et services pour lesquels la marque est enregistrée, une indication à cet effet est nécessaire ; si rien n'est indiqué, le renouvellement est réputé total par défaut.
Lorsque le renouvellement n’est demandé que pour certains des produits ou services pour lesquels la marque est enregistrée :
une indication claire et sans équivoque des classes ou des produits et services pour lesquels le renouvellement est demandé. Le renouvellement en ligne permet uniquement la suppression de classes entières et non de parties de classes ;
ou
une indication claire et sans équivoque des classes ou des produits et services pour lesquels le renouvellement n’est pas demandé (cela n’est possible que si la demande est déposée au format papier).
5.3 Langues
Règle 95, point b), du REMC
La demande de renouvellement peut être déposée dans l’une des cinq langues de l’Office. Cette langue devient la langue de la procédure de renouvellement. Toutefois, lorsque la demande de renouvellement est déposée au moyen du formulaire fourni par l’Office, conformément à la règle 83, ce formulaire peut être rédigé dans l’une des langues officielles de la Communauté, sous réserve que le formulaire soit rempli dans l’une des langues de l’Office, dans la mesure où il s’agit d'explications écrites. Cela concerne, en particulier, la liste des produits et services en cas de renouvellement partiel.
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5.4 Délai
Articles 46 et 47, paragraphe 3, du RMC Règle 72, paragraphe 1, du REMC
5.4.1 Délai de six mois pour le renouvellement avant expiration (délai de base)
La demande de renouvellement est à présenter et la taxe de renouvellement est à acquitter dans un délai de six mois expirant le dernier jour du mois au cours duquel la période de protection prend fin.
Par exemple, lorsque le dépôt de la marque communautaire est daté du 1er avril 2006, le dernier jour du mois au cours duquel la période de protection prend fin est le 30 avril 2016. Une demande de renouvellement doit donc être présentée et la taxe de renouvellement doit être payée entre le 1er novembre 2015 et le 30 avril 2016 ou, s’il s’agit d’un samedi, d’un dimanche ou d’un autre jour où l’Office est fermé ou ne reçoit pas de courrier ordinaire au sens de la règle 72, paragraphe 1, du REMC, le délai est prorogé jusqu’au premier jour ouvrable où l’Office est ouvert au public et reçoit le courrier ordinaire.
5.4.2 Délai de grâce de six mois suivant l’expiration (délai de grâce)
Lorsque la marque communautaire n’est pas renouvelée au cours du délai de base, la demande peut encore être présentée et la taxe de renouvellement peut encore être acquittée, sous réserve du paiement d’une surtaxe (voir le paragraphe 5.5 ci-dessous), dans un délai supplémentaire de six mois suivant le dernier jour du mois au cours duquel la période de protection prend fin.
Par exemple, lorsque le dépôt de la marque communautaire est daté du 1er avril 2006, le dernier jour du mois au cours duquel la période de protection prend fin est le 30 avril 2016. Ainsi, le délai de grâce au cours duquel une demande de renouvellement peut encore être présentée sous réserve du paiement de la taxe de renouvellement et d’une surtaxe court à compter du jour suivant le 30 avril 2016, soit le 1er mai 2016, et se termine le 31 octobre 2016 ou, si le 31 octobre 2016 est un samedi, un dimanche ou un autre jour où l’Office est fermé ou ne reçoit pas de courrier ordinaire au sens de la règle 72, paragraphe 1, du REMC, le premier jour ouvrable suivant où l’Office est ouvert au public et reçoit le courrier ordinaire. Ces dispositions s'appliquent également si, dans l’exemple précédent, le 30 avril 2016 est un samedi ou un dimanche ; la règle selon laquelle un délai à observer vis-à-vis de l’Office est prorogé jusqu'au prochain jour ouvrable s’applique une fois seulement et à la fin du délai de base, et non pas à la date de début du délai de grâce.
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5.5 Taxes
5.5.1 Taxes à payer
Article 47, paragraphe 3, du RMC Règle 30, paragraphe 2, points a) et b), du REMC Article 2 du RTMC
Les taxes à payer pour le renouvellement de la marque communautaire consistent en une taxe de base et une taxe par classe pour chaque classe de produits et services au-delà de la troisième des classes reprises dans la marque communautaire à l’égard de laquelle le renouvellement est demandé. La taxe de base est de
pour une marque individuelle : 1 500 EUR / 1 350 EUR en cas de renouvellement en ligne et
pour une marque collective : 3 000 EUR.
La taxe par classe pour chaque classe au-delà de la troisième classe est de
pour une marque individuelle : 400 EUR pour une marque collective : 800 EUR.
5.5.2 Délai de paiement
La taxe doit être payée dans un délai de six mois expirant le dernier jour du mois au cours duquel la période de protection prend fin (pour le calcul de la période, voir l’exemple au paragraphe 5.4.1 ci-dessus).
Article 47, paragraphe 3, du RMC Règle 30, paragraphe 2, point c) et paragraphe 4, du REMC Article 2, paragraphe 16, et article 8, paragraphe 3, du RTMC
La taxe peut être acquittée au cours d’un délai supplémentaire de six mois prenant cours le lendemain du dernier jour du mois au cours duquel la période de protection prend fin (voir le paragraphe 5.4.2 ci-dessus), sous réserve du paiement d’une surtaxe s’élevant à 25 % de la taxe totale de renouvellement, y compris toute taxe par classe, mais limitée à un maximum de 1500 euros.
Le renouvellement ne sera effectué que si le paiement de toutes les taxes (taxes de renouvellement et taxes supplémentaires pour paiement tardif, le cas échéant) parvient à l’Office au cours du délai de grâce (voir le paragraphe 5.4.2 ci-dessous).
En principe, les taxes acquittées avant le début de la période de six mois ne sont pas prises en considération et sont remboursées.
Règle 72, paragraphe 1, du REMC
Lorsque le titulaire de la marque communautaire dispose d’un compte courant auprès de l’Office, la taxe de renouvellement ne sera débitée que lorsqu’une demande de
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renouvellement est déposée, et la taxe de renouvellement (y compris toute taxe par classe) sera débitée le dernier jour du délai de six mois visé à l'article 47, paragraphe 3, du RMC, à savoir le dernier jour du mois au cours duquel la protection prend fin, sauf instructions contraires.
Article 7, paragraphe 1, point d), de la décision n° EX-96-1 du président de l’Office du 11 janvier 1996 relative aux modalités d’ouverture de comptes courants auprès de l’Office, modifiée par la décision no EX-03-1 du 20 janvier 2003 et la décision no EX-06- 1 du 12 janvier 2006
En cas de dépôt tardif de la demande de renouvellement (voir le paragraphe 5.4.2 ci- dessus) et lorsque le propriétaire de la marque communautaire dispose d’un compte courant auprès de l’Office, la taxe de renouvellement et la surtaxe seront débitées le dernier jour du délai supplémentaire de six mois visé à l’article 47, paragraphe 3, troisième phrase, du RMC, à savoir le dernier jour du délai supplémentaire de six mois suivant le dernier jour du mois au cours duquel la protection prend fin, sauf instruction contraire.
5.5.3 Paiement par des tiers
Le paiement peut également être effectué par les autres personnes mentionnées au paragraphe 5.1 ci-dessus.
Le paiement par débit d’un compte courant détenu par un tiers ne peut être effectué qu’avec l’autorisation expresse du titulaire du compte courant qui permet de débiter le compte pour le paiement de cette taxe. Dans de tels cas, l’Office vérifie si une autorisation a été délivrée. Dans le cas contraire, une lettre est envoyée au demandeur du renouvellement lui demandant de soumettre une autorisation de débiter le compte appartenant à un tiers. Dans de tels cas, le paiement est considéré comme effectué à la date de réception de l’autorisation par l’Office.
5.5.4 Remboursement des taxes
Règle 30, paragraphes 6 et 7, du REMC
Les taxes de renouvellement et, le cas échéant, la surtaxe pour paiement tardif peuvent être remboursées. Pour toute information complémentaire, veuillez consulter la partie A, section 3, Paiement des taxes, frais et tarifs.
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6 Procédure devant l’Office
6.1 Examen de la condition de forme
L’examen de la demande de renouvellement est limité aux formalités et porte sur les points suivants :
6.1.1 Respect des délais
Article 47, paragraphes 3 et 4, du RMC Règle 30, paragraphes 2 et 3, du REMC
6.1.1.1 Paiement au cours du délai de base ou du délai de grâce
Lorsque la demande de renouvellement est déposée et que la taxe de renouvellement est acquittée au cours du délai de base, l'Office enregistre le renouvellement, sous réserve du respect des autres conditions établies dans le RMC et le REMC (voir le paragraphe 6.1.2 ci-dessous).
Article 47, paragraphe 3, du RMC Communication no 8/05 du président de l'Office du 21 décembre 2005
Lorsqu’aucune demande de renouvellement n’a été déposée alors que l’Office reçoit le paiement de la taxe de renouvellement ainsi que les indications minimales (nom et adresse du demandeur du renouvellement et numéro d’enregistrement de la marque communautaire renouvelée), cela constitue une demande valable, et aucune autre formalité n’est nécessaire.
Toutefois, lorsqu’aucune demande de renouvellement n’a été déposée alors que la taxe de renouvellement a été acquittée sans que soient transmises les indications minimales (nom et adresse du demandeur du renouvellement et numéro d’enregistrement de la marque communautaire renouvelée), l’Office invite le titulaire de la marque communautaire à présenter une demande de renouvellement et à acquitter, le cas échéant, la surtaxe pour présentation tardive de la demande de renouvellement. Une lettre est envoyée dès que raisonnablement possible après réception de la taxe, de façon à permettre le dépôt de la demande avant que la surtaxe ne soit exigible.
Lorsqu’une demande a été présentée au cours du délai de base alors que la taxe de renouvellement n’a pas été acquittée ou ne l’a pas été dans son intégralité, l’Office invite le demandeur du renouvellement à acquitter la taxe de renouvellement ou la partie de cette taxe restant due ainsi que la surtaxe pour paiement tardif. En cas de paiement incomplet de la taxe, le titulaire de la marque communautaire peut, au lieu de d’acquitter la partie de la taxe restant due, restreindre sa demande de renouvellement au nombre de classes correspondant.
Lorsque la demande de renouvellement a été présentée par une personne autorisée à cette fin par le titulaire de la marque communautaire, ce dernier reçoit une copie de la notification.
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6.1.1.2 Paiement après l’expiration du délai de grâce
Article 47, paragraphe 3, du RMC Règle 30, paragraphe 5, et règle 54 du REMC
Si une demande de renouvellement n’a pas été présentée ou ne l’a été qu’après l’expiration du délai de grâce, l’Office constate que l’enregistrement est arrivé à expiration et notifie la perte des droits au titulaire ainsi qu'à tout titulaire de droits sur la marque inscrit au registre.
Si les taxes n’ont pas été payées ou ne l’ont été qu’après l’expiration du délai de grâce, l’Office constate que l’enregistrement est arrivé à expiration et notifie la perte des droits au titulaire ainsi qu'à tout titulaire de droits sur la marque inscrit au registre.
Si la taxe payée est inférieure à la taxe de base et à la taxe pour paiement tardif/présentation tardive de la demande de renouvellement, l’Office constate que l’enregistrement est arrivé à expiration et notifie la perte des droits au titulaire ainsi qu'à tout titulaire de droits sur la marque inscrit au registre.
Si la taxe payée couvre la taxe de base et la taxe pour paiement tardif mais non la totalité des taxes de classes, l’Office ne renouvelle l’enregistrement que pour certaines classes. La détermination des classes de produits et services dont l’enregistrement est renouvelé s’effectue conformément aux critères suivants :
Si la demande de renouvellement est expressément limitée à des classes particulières, le renouvellement n’est effectué que pour ces classes ;
Si, par contre, il apparaît clairement dans la demande quelle est ou quelles sontl les classes couvertes par la demande, l’enregistrement pour cette (ces) classe(s) est renouvelé ;
En cas de paiement partiel, l’Office peut entrer en contact avec le titulaire pour lui demander quelles classes il privilégie ;
À défaut d’autres critères, l’Office prend en considération les classes dans l’ordre numérique croissant de la classification.
Lorsque toutes les taxes par classe n'ont pas été payées et que l’Office constate que l’enregistrement est arrivé à expiration pour certaines classes de produits ou services, il notifie, en même temps que la confirmation du renouvellement, la perte des droits pour ces classes de produits ou services au titulaire ainsi que, le cas échéant, au demandeur du renouvellement et à tout titulaire de droits sur la marque inscrit au registre. Si la personne intéressée estime que les conclusions de l’Office ne sont pas fondées, elle peut, dans un délai de deux mois à compter de la notification de la perte des droits, demander une décision en la matière.
6.1.1.3 Situation d’un titulaire détenteur d’un compte courant
Sauf demande expresse de renouvellement, l’Office ne débite pas un compte courant. Il débite le compte de la personne qui a agi (titulaire de la marque communautaire ou tiers).
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Lorsque la demande est déposée dans le délai de base, l’Office débite les taxes de renouvellement (taxe de renouvellement de base plus taxes par classes applicables) sans appliquer de surtaxe.
Lorsque la demande est déposée dans le délai de grâce, l’Office débite la taxe de renouvellement plus la surtaxe de 25 % (voir le paragraphe 5.5 ci-dessus).
6.1.1.4 Poursuite de la procédure
Article 82, paragraphe 2, du RMC Communication no 6/05 du président de l'Office du 16/09/2005.
Le délai fixé pour la demande de renouvellement est expressément exclu de la poursuite de la procédure.
6.1.1.5 Restitutio in integrum
Article 81 du RMC Article 67 du RDMC
La restitutio in integrum est possible pour le délai fixé pour la demande de renouvellement. Pour plus d’informations, voir les Directives, partie A, Dispositions générales, section 8, Restitutio in Integrum.
Le mauvais fonctionnement du logiciel de renouvellement n'est, en principe, pas un motif justifiant la restitutio in integrum (voir l’arrêt du 13 mai 2009, « AURELIA », T-136/08, l’arrêt du 19 septembre 2012, « Video Research USA », T-267/11, et l’arrêt du 28 juin 2012, « COOK’S », T-314/10).
En cas de défaut de présentation d’une demande de renouvellement ou de paiement de la taxe de renouvellement, le délai d’un an commence à courir le jour où la protection prend fin, et non à la date d’expiration du délai de grâce de six mois.
6.1.2 Respect des conditions de forme du règlement d’exécution
6.1.2.1 Renouvellement demandé par une personne autorisée
Communication no 8/05 du président de l’Office du 21 décembre 2005
Lorsqu’une demande de renouvellement est déposée au nom du titulaire de la marque, il n'est pas nécessaire de déposer une autorisation. Cependant, une telle autorisation doit être établie pour la personne déposant la demande si l’Office l’exige.
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6.1.2.2 Autres conditions
Règle 30, paragraphe 1, point b), et paragraphe 4, du REMC
Lorsque la demande de renouvellement ne respecte pas les autres conditions de forme, à savoir si le nom et l’adresse du demandeur ont été renseignés de manière incomplète, si le numéro d’enregistrement n’a pas été indiqué, si la demande n’a pas été dûment signée ou si un renouvellement partiel a été demandé mais que les produits et services objets du renouvellement n’ont pas été correctement indiqués, l’Office invite le demandeur du renouvellement à remédier aux irrégularités dans un délai de deux mois. Ce délai s’applique même après l’expiration du délai de grâce.
L'Office considère que la demande est faite pour le renouvellement de tous les produits et services, à moins qu’un renouvellement partiel n’ait été expressément demandé. En cas de renouvellement partiel, veuillez vous référer au paragraphe 5.2.3.2 ci-dessus.
Lorsque la demande de renouvellement a été présentée par une personne autorisée à cette fin par le titulaire de la marque communautaire, ce dernier reçoit une copie de cette information.
Lorsqu’une demande de renouvellement a été présentée par deux personnes différentes affirmant être autorisées à cette fin par le titulaire de la marque communautaire (« personne autorisée »), l'Office cherchera à identifier clairement la personne autorisée en entrant directement en contact avec le titulaire.
Règle 30, paragraphe 5, et règle 54 du REMC
Lorsqu’il n’est pas remédié aux irrégularités avant l’expiration du délai correspondant, l’Office suivra la procédure suivante :
Si l’irrégularité consiste en la non-indication des produits et services de la marque communautaire à renouveler, l’Office renouvellera l'enregistrement pour toutes les classes pour lesquelles les taxes ont été acquittées, et si les taxes acquittées ne couvrent pas toutes les classes de l’enregistrement de la marque communautaire, les classes à renouveler seront déterminées en fonction des critères établis au paragraphe 6.1.1.2 ci-dessus. L’office notifie, en même tant que la confirmation du renouvellement, la perte des droits pour les classes de produits ou services réputées avoir expiré par l’Office, au titulaire ainsi qu’à tout titulaire de droits sur la marque inscrit au registre ;
Si l'irrégularité consiste en l’absence de réponse du titulaire à une demande de claire identification de la personne autorisée, l’Office acceptera la demande de renouvellement déposée par le représentant autorisé figurant au dossier. Si ni l’une ni l’autre des demandes de renouvellement n’a été déposée par un représentant autorisé figurant au dossier, l'Office acceptera la demande de renouvellement reçue en premier lieu.
En cas d'autres irrégularités, il constate que l’enregistrement est arrivé à expiration et notifie la perte des droits au titulaire ou, le cas échant, au demandeur du renouvellement et à tout titulaire de droits sur la marque inscrit au registre.
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6.2 Éléments ne faisant pas l'objet d’un examen
Lors d’un renouvellement, il ne sera pas procédé à l’examen du caractère enregistrable de la marque, et il ne sera pas non plus procédé à l’examen de l’usage sérieux de la marque.
Lors d'un renouvellement, l’Office ne procédera pas à l’examen de la bonne classification de la marque, et un enregistrement ne sera pas reclassé en cas d’enregistrement selon une édition de la classification de Nice qui n’est plus en vigueur au moment du renouvellement. Le tout sans préjudice de l’application de l’article 50 du RMC.
6.3 Modification
Article 48 du RMC
La marque communautaire ne sera pas modifiée dans le registre de renouvellement. Le renouvellement étant considéré comme une simple prolongation de la période de protection de la marque communautaire sous réserve du paiement des taxes nécessaires, il ne peut inclure de changement relatif à la représentation de la marque en son dernier état, à savoir à l’expiration de la période de protection en cours.
Tout autre changement ne modifiant pas la marque elle-même (changement de nom, d’adresse, etc.) que le titulaire souhaite inscrire au registre lors du renouvellement de l’enregistrement doit être transmis à l’Office séparément, conformément aux procédures applicables (voir les Directives, partie E, Activités de registre, section 1, Modifications d’enregistrement). Ces changements seront inclus dans les données enregistrées lors du renouvellement uniquement s’ils sont enregistrés dans le Registre des marques communautaires au plus tard à la date d’expiration de l’enregistrement de la marque communautaire.
7 Inscriptions au registre
Article 47, paragraphe 5, du RMC Règle 84, paragraphe 3, point k), et paragraphe 5, du REMC
Lorsque la demande de renouvellement satisfait à toutes les conditions, le renouvellement est enregistré.
L’Office notifie au titulaire de la marque communautaire le renouvellement de l’enregistrement de la marque communautaire et son inscription au registre. Le renouvellement prendra effet le jour suivant la date à laquelle l’enregistrement arrive à expiration (voir le paragraphe 8 ci-dessous).
Lorsque le renouvellement ne porte que sur certains produits et services repris dans l’enregistrement, l’Office notifie au titulaire, et à tout titulaire de droits sur la marque inscrit au registre, les produits et services pour lesquels l’enregistrement a été renouvelé, ainsi que l’inscription au registre et la date à partir de laquelle le renouvellement prend effet (voir paragraphe 8 ci-dessous). L’Office notifie en même
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temps l’expiration de l’enregistrement pour les autres produits et services ainsi que leur radiation du registre.
Règle 30, paragraphes 5 et 6, et règle 54, paragraphe 2, du REMC
Lorsque l’Office constate, conformément à la règle 30, paragraphe 6, du REMC, que l’enregistrement est arrivé à expiration, l’Office radie la marque du registre et le notifie au titulaire. Le titulaire peut demander une décision en la matière en vertu de la règle 54, paragraphe 2, du REMC dans un délai de deux mois.
Règle 84, paragraphe 3, point l), et paragraphe 5, du REMC
L’Office informe le titulaire et tout titulaire de droits sur la marque inscrit au registre de l’expiration de l’enregistrement ainsi que de sa radiation du registre.
8 Date d’effet du renouvellement ou de l’expiration, transformation
8.1 Date d’effet du renouvellement
Article 47, paragraphe 5, du RMC Règle 70, paragraphe 3, et règle 30, paragraphe 6, du REMC
Le renouvellement prend effet le jour qui suit la date d’expiration de l’enregistrement.
Par exemple, lorsque la date de dépôt de l’enregistrement est le 1er avril 2006, l’enregistrement expire le 1er avril 2016. Le renouvellement prend donc effet le jour qui suit le 1er avril 2016, à savoir le 2 avril 2016. Le nouveau délai d’enregistrement est de dix années à partir de cette date et prend fin le 1er avril 2026. Il est indifférent que ces jours soient un samedi, un dimanche ou un jour férié officiel. Même si la taxe de renouvellement est acquittée durant le délai de grâce, le renouvellement prend effet le jour qui suit la date d’expiration de l’enregistrement existant.
Lorsque le délai d’enregistrement de la marque a expiré et lorsque celle-ci est radiée du registre, la radiation prend effet le jour suivant la date d’expiration de l’enregistrement existant.
Par exemple, lorsque la date de dépôt de l’enregistrement est le 1er avril 2006, l’enregistrement expire le 1er avril 2016. La radiation du registre prend donc effet le jour qui suit le 1er avril 2016, à savoir le 2 avril 2016.
8.2 Transformation de marques communautaires caduques
Article 47, paragraphe 3, et article 112, paragraphe 5, du RMC
Lorsque le titulaire souhaite transformer ses marques communautaires caduques en marques nationales, la demande doit être déposée dans les trois mois à partir du jour qui suit le dernier jour de la période au cours de laquelle une demande de renouvellement peut être présentée conformément à l’article 47, paragraphe 3, du
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RMC, à savoir six mois après le dernier jour du mois au cours duquel la protection prend fin. Le délai de trois mois pour demander une conversion commence à courir automatiquement sans notification (voir les Directives, partie E, Activités de registre, section 2, Transformation).
9 Renouvellement de marques internationales désignant l’UE
Article 159, paragraphe 1, du RMC Règle 107 du REMC
Le principe est que tout changement relatif à l’enregistrement international doit être déposé directement auprès de l’OMPI par le titulaire de l’enregistrement international. L'Office ne traitera pas les demandes de renouvellement ou le paiement des taxes de renouvellement.
La totalité de la procédure de renouvellement des marques internationales est gérée par le Bureau international. Le Bureau international enverra la notification de renouvellement, percevra les taxes de renouvellement et enregistrera le renouvellement dans le registre international. La date d’effet du renouvellement est la même pour toutes les désignations contenues dans l’enregistrement international, quelle que soit la date à laquelle ces désignations ont été enregistrées dans le registre international. Lorsque l'enregistrement international désignant l’UE est renouvelé, le Bureau international le notifie à l’Office.
Si l’enregistrement international n’est pas renouvelé, il peut être transformé en marques nationales ou en désignations ultérieures d’États membres parties au protocole de Madrid. Le délai de trois mois pour demander la transformation commence à courir le jour qui suit le dernier jour au cours duquel le renouvellement peut encore être déposé auprès de l’OMPI conformément à l’article 7, paragraphe 4, du protocole de Madrid (voir les Directives, partie E, Activités de registre, section 2, Transformation).
Inspection publique
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 5
INSPECTION PUBLIQUE
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Table des matières
1 Principes généraux ................................................................................... 4
2 Les registres des marques communautaires et des dessins ou modèles communautaires ........................................................................ 5
3 Inspection des registres ........................................................................... 5 3.1 Informations contenues dans les registres .............................................. 5
3.1.1 Le registre des marques communautaires ..................................................... 5 3.1.2 Le registre des dessins ou modèles communautaires ................................... 5
4 Inspection publique................................................................................... 6 4.1 Personnes et entités autorisées à demander l’accès aux dossiers........6 4.2 Pièces constituant les dossiers ................................................................ 6
4.2.1 Dossiers relatifs aux demandes de marque communautaire ......................... 7 4.2.2 Dossiers relatifs aux demandes de dessin ou modèle communautaire ......... 8 4.2.3 Dossiers relatifs aux marques communautaires enregistrées ....................... 8 4.2.4 Dossiers relatifs aux dessins ou modèles communautaires enregistrés........ 8 4.2.5 Dossiers relatifs aux enregistrements internationaux désignant l’Union
européenne..................................................................................................... 9
5 Pièces du dossier exclues de l’inspection publique ............................ 10 5.1 Pièces exclues.......................................................................................... 10
5.1.1 Pièces relatives à l’exclusion ou à la récusation .......................................... 10 5.1.2 Projets de décision et d’avis et documents internes .................................... 10 5.1.3 Pièces dont la partie concernée souhaite préserver la confidentialité et pour
lesquelles elle a manifesté un intérêt particulier........................................... 11
5.2 Accès du demandeur ou du titulaire aux pièces exclues ...................... 12
6 Procédures devant l’Office relatives aux requêtes en inspection publique.................................................................................................... 13 6.1 Extraits certifiés ou non certifiés conformes des registres .................. 13
6.1.1 Extraits du registre des marques communautaires ...................................... 13 6.1.2 Extraits du registre des dessins ou modèles communautaires .................... 13
6.2 Copies certifiées ou non certifiées conformes de pièces du dossier ...................................................................................................... 14
6.3 Accès en ligne aux dossiers.................................................................... 15 6.4 Copies certifiées conformes téléchargeables ........................................ 15 6.5 Requêtes en inspection publique transmises en ligne.......................... 16 6.6 Requêtes en inspection publique transmises par écrit ......................... 16 6.7 Langues .................................................................................................... 16
6.7.1 Pour les demandes de MC ou de DMC........................................................ 17 6.7.2 Pour les MC enregistrées ou les DMC enregistrés ...................................... 17
6.8 Représentation et pouvoirs ..................................................................... 17
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6.9 Contenu de la requête en inspection publique....................................... 18 6.10 Irrégularités............................................................................................... 18 6.11 Taxes pour l’inspection publique et la communication
d’informations contenues dans les dossiers ......................................... 18 6.11.1 Communication d’informations contenues dans un dossier ......................... 19 6.11.2 Inspection publique....................................................................................... 19 6.11.3 Conséquences du non-paiement des taxes ................................................. 20 6.11.4 Remboursement des taxes........................................................................... 20
6.12 Conditions requises pour ouvrir droit à l’inspection publique d’une demande de MC non publiée ou d’un enregistrement de DMC dont la publication est ajournée, lorsque la requête est introduite par un tiers .............................................................................. 21 6.12.1 Accord........................................................................................................... 21 6.12.2 Déclaration selon laquelle le demandeur se prévaudra de la MC ou du DMC
...................................................................................................................... 22
6.13 Ouverture à l’inspection publique et modalités de l’inspection............ 22 6.13.1 Communication d’informations contenues dans un dossier ......................... 22 6.13.2 Copies des pièces du dossier....................................................................... 23
7 Procédures visant à donner accès aux dossiers aux juridictions ou aux autorités des États membres .......................................................... 23 7.1 Absence de taxes ..................................................................................... 24 7.2 Absence de restriction en ce qui concerne les demandes non
publiées..................................................................................................... 24 7.3 Modalités de l’inspection publique ......................................................... 25
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1 Principes généraux
Articles 87, 88 et 90 du RMC Articles 72, 74 et 75 du RDC Règle 84, paragraphe 1, et règles 89, 90, 92 et 93 du REMC Article 69, paragraphe 1, et articles 74, 75, 77 et 78 du REDC Article 2, paragraphe 27, du RTMC
Le principe établi par le système des marques et des dessins et modèles communautaires est que:
le «registre des marques communautaires» et le «registre des dessins ou modèles communautaires» contiennent toutes les indications liées aux demandes de marques et de dessins ou modèles communautaires et aux marques et aux dessins ou modèles communautaires enregistrés;
les «dossiers» contiennent l’ensemble de la correspondance et des décisions relatives à ces marques, dessins ou modèles.
Tant les registres que les dossiers de l’Office sont en principe ouverts à l'inspection publique. Toutefois, avant la publication d’une demande de marque communautaire (ci- après «MC»), d’un enregistrement de dessin ou modèle communautaire (ci-après «DMC») ou lorsqu’un DMC enregistré fait l’objet d’un ajournement de publication, l’inspection publique n’est possible que dans des cas exceptionnels (voir les points 4.2.1 et 4.2.2 ci-dessous).
Toutes les informations contenues dans les registres sont stockées dans les banques de données de l’Office et, le cas échéant, publiées au format électronique dans le Bulletin des marques communautaires ou celui des dessins ou modèles communautaires.
Les présentes directives traitent spécifiquement de l’inspection publique.
L’inspection publique peut se caractériser par:
l’inspection des registres; la délivrance d’extraits certifiés ou non certifiés conformes des registres; l’inspection des pièces versées au dossier; la communication d’informations contenues dans les dossiers, ce qui implique la
communication d’informations spécifiques contenues dans les dossiers sans pour autant fournir les pièces réelles versées au dossier;
la délivrance de copies certifiées conformes ou non certifiées de pièces versées aux dossiers.
Dans les présentes directives, le terme «inspection publique» est utilisé pour désigner toutes les formes d’inspection publique susmentionnées, sauf indication contraire.
Les dispositions du RDC et du REDC relatives à l’inspection publique des dessins ou modèles communautaires sont presque identiques aux dispositions équivalentes du RMC et du REMC, respectivement. En conséquence, ce qui suit s’applique mutatis mutandis aux dessins et modèles communautaires. Lorsque la procédure s’avère différente, ces différences sont mentionnées dans une sous-rubrique distincte.
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2 Les registres des marques communautaires et des dessins ou modèles communautaires
Article 87 du RMC Article 72 du RDC Règle 84 du REMC Article 69 du REDC
Les registres sont tenus sous forme électronique et sont constitués d’entrées des systèmes de banque de données de l’Office. Ils sont ouverts à l’inspection publique sur le site internet de l’Office, sauf, dans le cas des dessins ou modèles communautaires, sous réserve de l’article 50, paragraphe 2, du RDC. Dans la mesure où certaines données des registres ne sont pas encore disponibles en ligne, le seul moyen d’y accéder est d’introduire une demande d’information ou d’obtenir des extraits certifiés conformes ou non certifiés des registres, moyennant le paiement d’une taxe.
3 Inspection des registres
3.1 Informations contenues dans les registres
3.1.1 Le registre des marques communautaires
Règle 84 du REMC Décision n° EX-00-1 du président de l’Office du 27 novembre 2000 concernant les inscriptions au registre des marques communautaires Décision n° EX-07-1 du président de l’Office du 16 mars 2007 concernant les inscriptions au registre des marques communautaires
Le registre des marques communautaires contient les informations visées dans la règle 84 du REMC, ainsi que toute autre mention déterminée par le président de l’Office.
3.1.2 Le registre des dessins ou modèles communautaires
Article 50 du RDC Articles 69 et 73 du REDC Décision n° EX-07-2 du président de l’Office du 16 mars 2007 concernant les inscriptions au registre des dessins ou modèles communautaires
Le registre des dessins ou modèles communautaires contient les informations visées à l’article 69 du REDC, ainsi que toute autre mention déterminée par le président de l’Office.
Conformément à l’article 73, point a), du REDC, lorsqu’un enregistrement de dessin ou modèle communautaire fait l’objet d’un ajournement de la publication en vertu de l’article 50, paragraphe 1, du RDC, l’accès au registre par des personnes autres que le titulaire est limité au nom du titulaire, au nom de tout représentant, à la date de dépôt
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et d’enregistrement, au numéro de dossier de la demande et à la mention de l’ajournement de la publication.
4 Inspection publique
4.1 Personnes et entités autorisées à demander l’accès aux dossiers
Les règles et le degré d’accès aux dossiers varient en fonction de la partie qui requiert l’inspection publique.
Les règlements et les règlements portant modalités d’application distinguent les trois catégories suivantes:
le demandeur ou le titulaire de la marque communautaire ou du dessin ou modèle communautaire;
les tiers; les juridictions ou autorités des États membres.
L’inspection publique par les juridictions ou les autorités des États membres est couverte par le système de coopération administrative avec l’Office (voir le point 7 ci- dessous).
4.2 Pièces constituant les dossiers
Les dossiers relatifs aux MC ou aux DMC se composent de toute la correspondance entre le demandeur ou le titulaire et l’Office et de tous les documents établis au cours de l’examen, ainsi que de toute la correspondance concernant la marque communautaire ou le dessin ou modèle communautaire qui s’ensuit. Le dossier n’inclut pas les rapports de recherche de marques fournis par les offices nationaux.
Les pièces relatives aux procédures d’opposition, d’annulation, de nullité et de recours devant l’Office ou à d’autres procédures, telles que les inscriptions (transfert, licence, etc.), font également partie du dossier.
Lorsque les parties recourent aux services de médiation offerts par l’Office, conformément à la décision n° 2011-1 du présidium des chambres de recours du 14 avril 2011 sur le règlement amiable des litiges, ou aux services de conciliation conformément à la décision n° 2014-2 du présidium des chambres de recours du 31 janvier 2014 sur le règlement à l’amiable des litiges par la chambre compétente, toute correspondance liée à la médiation ou à la conciliation est exclue de l’inspection publique.
Règle 91 du REMC Article 76 du REDC
Même si la demande de MC n’est plus pendante ou si l’enregistrement de la MC ou l’enregistrement du DMC cesse de produire des effets, l’inspection publique des dossiers concernés reste possible comme si la demande était encore pendante ou si l’enregistrement était encore effectif, tant que les dossiers sont conservés. Une
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demande de MC ou une demande de DMC cesse d’être pendante lorsqu’elle est rejetée, retirée ou réputée retirée, et l’enregistrement d’une MC ou l’enregistrement d’un DMC cesse de produire ses effets lorsqu’il vient à expiration, fait l’objet d’une renonciation ou est déclaré nul, ou lorsque son titulaire est déchu de ses droits. L’Office conservera les dossiers complets pendant au moins cinq ans à compter de la fin de l’année au cours de laquelle l’un de ces événements se produira.
4.2.1 Dossiers relatifs aux demandes de marque communautaire
Articles 39 et 88 du RMC Règles 12 85, et règle 89, paragraphe 2, du REMC
Les dossiers relatifs aux demandes de marque communautaire sont ouverts à l’inspection publique une fois que la demande a été publiée par l’Office dans le Bulletin des marques communautaires. La date de publication est la date d’édition figurant dans le Bulletin des marques communautaires et apparaît sous le code INID 442 dans le registre. La diffusion de données relatives à des demandes de MC non publiées via un accès en ligne ou autre ne constitue pas une publication de la demande au sens de l’article 39 du RMC et de la règle 12 du REMC.
Avant la publication de la demande, l’inspection publique est restreinte et n’est possible que si l’une des conditions suivantes est remplie:
la partie qui requiert l’inspection est le demandeur ou le titulaire de la MC; ou, le demandeur de la MC a donné son accord pour l’inspection publique du dossier
relatif à la demande de MC (voir le point 6.12.1 ci-dessous); ou, la partie qui requiert l’inspection peut prouver que le demandeur de la MC a
affirmé qu’après l’enregistrement de la MC il se prévaudrait de celle-ci à son encontre (voir le point 6.12.2 ci-dessous).
Article 36, paragraphe 3, du RMC Règle 91 du REMC
Le demandeur a toujours accès aux dossiers relatifs à sa propre demande de MC, qui se composent:
de la demande de MC, même si l’Office a refusé de lui accorder une date de dépôt, ou si la demande ne satisfait pas aux conditions minimales requises pour qu’il lui soit accordé une date de dépôt, auquel cas la demande ne sera pas traitée comme une demande de MC et, du point de vue juridique, il n’y aura pas de demande de MC;
des dossiers tant qu’ils sont conservés (voir le point 3.2), même après que la demande de MC a été rejetée ou retirée.
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4.2.2 Dossiers relatifs aux demandes de dessin ou modèle communautaire
Articles 50 et 74 du RDC Article 70 et article 74, paragraphe 2, du REDC
Les dossiers relatifs à des demandes de dessin ou modèle communautaire ainsi que les dossiers relatifs à des dessins ou modèles communautaires enregistrés qui font l’objet d’une mesure d’ajournement de publication qui, pendant l’application de cette mesure, ont fait l’objet d’une renonciation avant ou à l’expiration du délai d’ajournement ou qui, en vertu de l’article 50, paragraphe 4, du RDC, sont réputés ne pas avoir eu, dès l’origine, les effets prévus par ledit règlement, ne peuvent être ouverts à l’inspection publique que si l’une des conditions suivantes est remplie:
le demandeur de l’inspection est le demandeur ou le titulaire du DMC; ou, le demandeur du dessin ou modèle communautaire a consenti à l’inspection du
dossier relatif à la demande de dessin ou modèle communautaire; ou le demandeur de l’inspection a établi un intérêt légitime à l’inspection de la
demande de dessin ou modèle communautaire, en particulier lorsque le demandeur de dessin ou modèle communautaire a déclaré que, après l’enregistrement du dessin ou modèle, il se prévaudrait de celui-ci à l’encontre de la partie qui requiert l’inspection.
Dans le cas d’une demande multiple de dessins ou modèles communautaires, cette limitation de l’inspection ne s’appliquera qu’aux informations liées aux dessins ou modèles communautaires soumis à un ajournement de publication ou à ceux qui ne sont finalement pas enregistrés en raison d’un refus de l’Office ou du retrait de la demande par le demandeur.
4.2.3 Dossiers relatifs aux marques communautaires enregistrées
Après enregistrement, les dossiers relatifs aux marques communautaires sont ouverts à l’inspection publique.
4.2.4 Dossiers relatifs aux dessins ou modèles communautaires enregistrés
Les dossiers relatifs aux dessins ou modèles communautaires enregistrés peuvent être ouverts à l’inspection une fois que l’enregistrement a été publié par l’Office dans le Bulletin des dessins ou modèles communautaires. La date de publication est la date figurant sur le Bulletin des dessins ou modèles communautaires et elle est reprise sous le code INID 45 dans le registre.
Lorsque l’inspection publique porte sur un dessin ou modèle communautaire enregistré qui fait l’objet d’un ajournement de publication en vertu de l’article 50 du RDC, ou qui, pendant l’application de cette mesure, a fait l’objet d’une renonciation avant ou à l’expiration du délai d’ajournement ou qui, en vertu de l’article 50, paragraphe 4, du RDC est réputé ne pas avoir eu, dès l’origine, les effets prévus par ledit règlement, l’inspection publique de l’enregistrement est limitée et n’est possible que si l’une des conditions suivantes est remplie:
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le titulaire du dessin ou modèle communautaire a consenti à l’inspection du dossier relatif à l’enregistrement du dessin ou modèle communautaire;
Le demandeur de l’inspection a établi un intérêt légitime à l’inspection publique de l’enregistrement du dessin ou modèle communautaire, en particulier lorsque le titulaire du dessin ou modèle communautaire a entrepris des démarches pour se prévaloir, à son encontre, des droits conférés par le dessin ou modèle communautaire enregistré.
Dans le cas d’une demande multiple de dessins ou modèles communautaires, cette limitation de l’inspection ne s’appliquera qu’aux informations liées aux dessins ou modèles communautaires soumis à un ajournement de publication ou à ceux qui ne sont finalement pas enregistrés en raison d’un refus de l’Office ou du retrait de la demande par le demandeur.
4.2.5 Dossiers relatifs aux enregistrements internationaux désignant l’Union européenne
Articles 151 et 152 du RMC Article 106 quinquies du RDC Règle 89 du REMC Article 71 du REDC
Les enregistrements internationaux sont des droits exclusifs gérés par le Bureau international de l’Organisation mondiale de la propriété intellectuelle (OMPI) à Genève en vertu du protocole de Madrid (dans le cas des marques) et de l’acte de Genève (dans le cas des dessins ou modèles). L’OMPI traite les demandes, puis les envoie à l’OHMI pour examen, conformément aux conditions précisées dans le RMC et dans le RDC. Ces enregistrements produisent les mêmes effets qu’une demande directe de marque ou de dessin ou modèle communautaire.
Les dossiers conservés par l’Office relatifs à des enregistrements internationaux de marques désignant l’Union européenne peuvent faire l’objet d’une requête en inspection publique à compter de la date de publication visée à l’article 152, paragraphe 1, du RMC, et sous réserve de la règle 88 du REMC.
L’Office fournit des informations sur les enregistrements internationaux de dessins ou modèles désignant l’Union européenne sous la forme d’un lien électronique vers la base de données consultable gérée par le Bureau international (https://www.wipo.int/ipdl/fr/hague/search-struct.jsp). Les dossiers conservés par l’Office peuvent porter sur le refus d’un dessin ou modèle international en vertu de l’article 106 quinquies du RDC et sur l’invalidation du dessin ou modèle international en vertu de l’article 106 septies du RDC. Ils peuvent faire l’objet d’une inspection sous réserve des restrictions prévues à l’article 72 du REDC (voir le point 5 ci-dessous, intitulé Pièces du dossier exclues de l’inspection publique).
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5 Pièces du dossier exclues de l’inspection publique
5.1 Pièces exclues
Article 137 du RMC Règle 88 du REMC Article 72 du REDC
Certaines pièces du dossier peuvent être exclues de l’inspection publique, à savoir:
les pièces relatives à l’exclusion ou à la récusation du personnel de l’Office, par exemple, aux motifs de suspicion de partialité;
les projets de décision et d’avis, ainsi que tous les autres documents internes qui servent à la préparation des décisions et des avis;
les pièces du dossier dont la partie concernée souhaite préserver la confidentialité et pour lesquelles elle a manifesté un intérêt particulier;
toutes les pièces liées à l’invitation lancée par l’Office en vue de trouver un règlement à l’amiable, sauf celles qui ont une incidence immédiate sur la marque ou le dessin ou modèle, telles que les limitations, les transferts, etc., et qui ont été déclarées à l’Office. (Pour les procédures de médiation et de conciliation, voir le point 4.2.).
5.1.1 Pièces relatives à l’exclusion ou à la récusation
Règle 88, point a), du REMC Article 72, point a), du REDC
Cette exception concerne les pièces dans lesquelles un examinateur déclare qu’il se considère lui-même comme exclu de la participation à l’affaire, ainsi que les pièces dans lesquelles cette personne formule des observations sur la récusation par une partie à la procédure aux motifs de l’exclusion ou de la suspicion de partialité. Cependant, cette exception ne concerne ni les lettres dans lesquelles une partie à la procédure formule, séparément ou avec d’autres déclarations, une récusation basée sur l’exclusion ou sur la suspicion de partialité, ni l’éventuelle décision quant aux mesures à prendre dans les cas mentionnés ci-dessus. La décision prise par l’instance compétente de l’Office, sans la personne qui s’est retirée ou a été récusée, fera partie du dossier.
5.1.2 Projets de décision et d’avis et documents internes
Règle 88, point b), du REMC Article 72, point b), du REDC
Cette exception concerne les pièces qui servent à la préparation de décisions et d’avis, telles que les rapports et les notes préparés par un examinateur qui contiennent des considérations ou des suggestions de traitement ou de décision relatives à une affaire, ou encore les notes contenant des instructions spécifiques ou générales sur le traitement de certains cas.
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Cette exception ne couvre pas les pièces qui contiennent une communication, une notification ou une décision finale de l’Office concernant un cas particulier. Toute pièce devant être notifiée à une partie à la procédure doit prendre la forme d’un document original ou d’une copie certifiée conforme par l’Office ou portant son sceau, ou d’une impression papier portant ce sceau. L’original, ou une copie, de la communication, de la notification ou de la décision est conservé dans le dossier.
Les notes et les directives de l’Office relatives aux procédures générales et au traitement des affaires, telles que les présentes directives, ne font pas partie des dossiers. Il en va de même pour les mesures et les instructions concernant l’attribution des tâches.
5.1.3 Pièces dont la partie concernée souhaite préserver la confidentialité et pour lesquelles elle a manifesté un intérêt particulier
Règle 88, point c), du REMC Article 72, point c), du REDC
Les pièces dont la partie concernée souhaite préserver la confidentialité et pour lesquelles elle a manifesté un intérêt particulier avant le dépôt de la requête en inspection publique en sont exclues, à moins que l’inspection publique de ces pièces ne soit justifiée par un intérêt légitime prépondérant de la partie qui requiert l’inspection.
La partie concernée doit avoir expressément manifesté, et suffisamment justifié, un intérêt particulier à préserver la confidentialité de ces pièces au moment où elle les a déposées.
Lorsque la partie concernée demande que la confidentialité d’une pièce soit préservée, mais ne démontre pas son intérêt à cet égard, l’Office rejette la demande de confidentialité et invite la partie concernée à présenter ses observations dans un délai de deux mois.
La partie concernée ne pourra pas invoquer la confidentialité d’une pièce à un stade ultérieur.
Si une partie invoque un intérêt particulier à préserver la confidentialité d’une pièce, l’Office doit s’assurer que cet intérêt particulier est clairement démontré. Les pièces relevant de cette catégorie doivent émaner de la partie concernée (demandeur de MC, de DMC, ou opposant, par exemple). L’intérêt particulier doit être imputable à la nature confidentielle de la pièce ou à son statut de secret commercial ou industriel. Cela peut être le cas, par exemple, si le demandeur a soumis des pièces à l’appui d’une demande d’enregistrement d’un transfert ou d’une licence. Si l’Office conclut que les conditions pour préserver la confidentialité des pièces ne sont pas remplies, il en informe la partie qui a déposé les pièces et prend une décision. Le demandeur peut fournir des preuves sous une forme permettant d’éviter que les parties de la pièce ou des informations que le demandeur considère comme confidentielles ne soient révélées, pour autant que les parties de la pièce fournies contiennent les informations requises. Par exemple, si des contrats ou d’autres documents sont fournis comme preuve d’un transfert ou d’une licence, certaines informations pourront être masquées ou certaines pages omises avant leur transmission à l’Office.
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Dans le cas où l’Office invite les parties d’une procédure d’opposition, d’annulation ou de nullité à envisager un règlement à l’amiable, toutes les pièces en rapport avec cette procédure sont considérées comme confidentielles et ne sont, en principe, pas ouvertes à l’inspection publique.
L’accès aux pièces que l’Office a acceptées comme étant confidentielles, et qui par conséquent sont exclues de l’inspection publique, peut néanmoins être concédé à une partie qui démontre un intérêt légitime prépondérant à procéder à l’inspection publique des pièces. L’intérêt légitime prépondérant doit être celui de la partie qui requiert l’inspection.
Si le dossier contient de telles pièces, l’Office informe la partie qui requiert l’inspection publique de l’existence de ces pièces dans le dossier. La partie qui requiert l’inspection publique peut alors décider si elle veut ou non déposer une requête invoquant un intérêt légitime prépondérant. Chaque requête doit être analysée au cas par cas.
Avant de rejeter une requête, l’Office doit offrir à la partie qui requiert l’inspection publique la possibilité de présenter ses observations.
La requête, ainsi que les éventuelles observations, doivent être transmises à la partie concernée, qui a le droit d’être entendue, avant que ne soit autorisé l’accès à des pièces que l’Office avait acceptées comme étant exclues de l’inspection publique.
Article 59 du RMC Article 56 du RDC
L’Office doit prendre une décision quant à l’opportunité de donner accès à ces pièces. La partie lésée pourra former un recours contre cette décision.
5.2 Accès du demandeur ou du titulaire aux pièces exclues
Règle 88 du REMC Article 72 du REDC
Lorsqu’un demandeur ou un titulaire demande l’accès à son propre dossier, il a accès à toutes les pièces du dossier, à l’exclusion uniquement des pièces visées à la règle 88, points a) et b), du REMC et à l’article 72, points a) et b) du REDC.
Si, dans le cas d’une procédure inter partes, l’autre partie concernée (l’opposant ou le demandeur en déchéance ou en nullité) a manifesté un intérêt particulier à préserver la confidentialité de ses documents à l’égard des tiers, il lui sera notifié que les pièces ne peuvent être tenues confidentielles vis-à-vis de l’autre partie à la procédure et sera invitée à les divulguer ou à les retirer de la procédure. Si elle confirme la confidentialité, les pièces ne seront pas transmises à l’autre partie et ne seront pas prises en considération par l’Office dans sa décision.
Si, en revanche, elle souhaite que les pièces soient prises en considération mais ne soient pas consultables par des tiers, celles-ci pourront être transmises par l’Office à l’autre partie à la procédure, mais ne seront pas mises à la disposition de tiers pour faire l’objet d’une inspection publique (pour la procédure d’opposition, voir les Directives, partie C, Opposition, section 1, Questions de procédure).
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6 Procédures devant l’Office relatives aux requêtes en inspection publique
6.1 Extraits certifiés ou non certifiés conformes des registres
6.1.1 Extraits du registre des marques communautaires
Règle 84, paragraphe 6, du REMC
L’Office délivre, sur requête et moyennant paiement d’une taxe, des extraits certifiés ou non certifiés conformes du registre.
Les demandes d’extraits du registre des marques communautaires peuvent être transmises par le biais du formulaire officiel de «Requête en inspection publique» disponible dans toutes les langues de l’Office, ou via toute requête équivalente.
N’importe quelle version linguistique de ce formulaire peut être utilisée, sous réserve que le formulaire soit complété dans l’une des langues mentionnées au point 6.7 ci- dessous.
Règles 80 et 82 du REMC
Les requêtes en inspection publique peuvent être transmises sous la forme d’un original signé par télécopieur, par voie postale ou par des moyens électroniques (voir le point 6.5 ci-dessous).
6.1.2 Extraits du registre des dessins ou modèles communautaires
Article 50 du RDC Articles 69 et 73 du REDC
Sous réserve de l’article 73 du REDC, l’Office délivre, sur requête et moyennant paiement d’une taxe, des extraits certifiés ou non certifiés conformes du registre.
Lorsque la publication d’un dessin ou modèle communautaire enregistré fait l’objet d’un ajournement en vertu de l’article 50, paragraphe 1, du RDC, les extraits certifiés (ou non certifiés) conformes du registre ne comportent que le nom du titulaire, le nom de tout représentant, la date de dépôt et d’enregistrement, le numéro de dossier de la demande et la mention de l’ajournement de la publication, sauf si la requête a été présentée par le titulaire ou son représentant. Les demandes d’extraits du registre des dessins ou modèles communautaires peuvent être transmises par le biais du formulaire officiel de «Requête en inspection publique» disponible dans toutes les langues de l’Office, ou via toute requête équivalente.
N’importe quelle version linguistique de ce formulaire peut être utilisée, sous réserve que le formulaire soit complété dans l’une des langues mentionnées au point 6.7 ci- dessous.
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Articles 65, 66 et 67 du REDC
Les requêtes en inspection publique peuvent être transmises sous la forme d’un original signé par télécopieur, par voie postale ou par des moyens électroniques (voir le point 6.5 ci-dessous).
6.2 Copies certifiées ou non certifiées conformes de pièces du dossier
L’Office délivre, sur requête et moyennant paiement d’une taxe, des copies certifiées ou non certifiées conformes des pièces constituant les dossiers (voir point 4.2 ci- dessus).
Les demandes de copies certifiées ou non certifiées conformes de pièces peuvent être transmises par le biais du formulaire officiel de «Requête en inspection publique» disponible dans toutes les langues de l’Office, ou via toute requête équivalente.
N’importe quelle version linguistique de ce formulaire peut être utilisée, sous réserve que le formulaire soit complété dans l’une des langues mentionnées au point 6.7 ci- dessous.
Outre les copies certifiées conformes téléchargeables gratuitement, des copies certifiées conformes de la demande de MC en elle-même, le certificat d’enregistrement de la MC ou le certificat d’enregistrement du DMC peuvent également être demandés (voir point 6.4 ci-dessous).
Des copies certifiées conformes de la demande de MC ou du certificat d’enregistrement du DMC ne seront disponibles que si une date de dépôt a été accordée (pour les exigences relatives à la date de dépôt des demandes de MC, voir partie B, Examen, Section 2, Examen des formalités; pour les exigences relatives à la date de dépôt des demandes d’enregistrement d’un DMC, voir les Directives relatives à l’examen des demandes de dessin ou modèle communautaire enregistré).
Dans le cas d’une demande multiple de dessins ou modèles, des copies certifiées conformes de la demande ne seront disponibles que pour les dessins ou modèles qui ont obtenu une date de dépôt.
Si la demande de MC ou l’enregistrement du DMC n’a pas encore été publié(e), toute requête de copies certifiées ou non certifiées conformes des pièces du dossier est soumise aux restrictions énumérées aux points 4.2.1 à 4.2.4 ci-dessus.
Il convient de garder à l’esprit que la copie certifiée conforme de la demande ou de l’enregistrement ne reflète que les données disponibles à la date de la demande ou de l’enregistrement. La marque ou le dessin ou modèle peut avoir fait l’objet d’un transfert, d’une renonciation, d’une renonciation partielle ou de toute autre mesure affectant la portée de sa protection, qui ne se reflèteront pas dans la copie certifiée conforme du formulaire de demande de MC ou dans le certificat d’enregistrement de MC ou de DMC. Il est possible d’obtenir des informations à jour en consultant la base de données électronique ou en présentant une requête d’extrait certifié conforme du registre (voir point 6.1 ci-dessus).
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6.3 Accès en ligne aux dossiers
Le contenu des dossiers est accessible dans la section «Correspondance» du dossier via l’outil électronique eSearch plus sur le site internet de l’OHMI.
Ces dossiers sont consultables gratuitement par les utilisateurs enregistrés du site internet, pour autant que la demande de MC ou l’enregistrement du DMC (sans ajournement de publication) aient été publiés.
6.4 Copies certifiées conformes téléchargeables
Décision n° EX-13-02 du président de l’Office du 26 novembre 2013 concernant les communications électroniques de et vers l’Office («Décision de base sur les communications électroniques»), article 6.
Des copies certifiées conformes d’une demande de MC, du certificat d’enregistrement d’une MC ou du certificat d’enregistrement d’un DMC peuvent être générées automatiquement et téléchargées via un lien direct sur le site internet de l’OHMI, via l’application eSearch plus, depuis le formulaire en ligne de requête en inspection publique et depuis les dossiers relatifs à une MC ou à un DMC déterminé.
Dans la liste des documents, une icône apparaît en regard des documents pour lesquels une copie certifiée conforme peut être téléchargée. Il suffit alors de cliquer sur l’icône pour générer une copie certifiée conforme du document au format PDF.
Le document PDF comprend une page de couverture dans les cinq langues de l’OHMI, qui présente le document certifié conforme et possède un code d’identification unique renvoyant au document original, suivie du document certifié conforme (formulaire de demande de MC, certificat d’enregistrement d’une MC ou certificat d’enregistrement d’un DMC). Chacune des pages du document doit comporter un en-tête et un pied de page contenant des éléments importants en vue de garantir l’authenticité de la copie certifiée conforme, à savoir : un code d’identification unique, un cachet « copie », la signature du membre du personnel de l’OHMI chargé de générer les copies certifiées conformes, la date de la copie certifiée, le numéro de la MC ou du DMC et le numéro de la page. La date indiquée est la date de la génération automatique de la copie certifiée conforme.
Les copies certifiées conformes générées automatiquement ont la même valeur que les copies certifiées conformes papier envoyées sur demande et peuvent être utilisées au format électronique ou imprimées.
Lorsqu’une autorité reçoit une copie certifiée conforme, elle peut vérifier le document original en ligne à l’aide du code d’identification unique figurant sur la copie certifiée. Un lien «Vérifier les copies certifiées» est disponible dans la section «Banques de données» du site internet de l’OHMI. Un clic sur le lien permet d’accéder à un écran contenant un champ dans lequel le code d’identification unique peut être saisi en vue de rechercher le document original dans les systèmes en ligne de l’OHMI et de l’afficher.
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Il convient de garder à l’esprit que la copie certifiée conforme contient uniquement les données disponibles à la date de la demande ou de l’enregistrement. La marque ou le dessin ou modèle peut avoir fait l’objet d’un transfert, d’une renonciation, d’une renonciation partielle ou d’une autre action affectant l’étendue de sa protection, qui n’apparaîtra pas dans la copie certifiée conforme du formulaire de demande de marque communautaire ou du certificat d’enregistrement de la MC ou du DMC. Des informations actualisées sont disponibles dans la banque de données électronique ou peuvent être obtenues en demandant un extrait certifié conforme du registre.
6.5 Requêtes en inspection publique transmises en ligne
Il est possible d’introduire une requête en inspection publique en ligne. Pour accéder au formulaire de requête, les utilisateurs doivent cliquer sur l’icône présente sur la page des détails de la MC ou du DMC sélectionné. Ils sont alors redirigés vers leur compte d’utilisateur, où ils sont invités à se connecter et à compléter la requête en inspection publique en demandant des copies certifiées conformes ou non certifiées de pièces spécifiques.
6.6 Requêtes en inspection publique transmises par écrit
Règle 79 du REMC Article 65 du REDC
Les requêtes en inspection publique peuvent être transmises en remplissant le formulaire officiel «Requête en inspection publique» disponible dans toutes les langues de l’Office ou une requête équivalente.
N’importe quelle version linguistique de ce formulaire peut être utilisée, sous réserve que le formulaire soit complété dans l’une des langues mentionnées au point 6.7 ci- dessous.
Règles 80 et 82 du REMC Article 67 du REDC
La requête en inspection publique peut être transmise sous la forme d’un original signé par télécopieur, par voie postale ou par voie électronique (voir le point 6.5 ci-dessus).
6.7 Langues
Les requêtes en inspection publique doivent être déposées dans l’une des langues indiquées ci-dessous.
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6.7.1 Pour les demandes de MC ou de DMC
Règle 95, point a), et règles 96 et 98 du REMC Articles 80, 81, 83 et 84 du REDC
Lorsque la requête en inspection publique porte sur une demande de marque communautaire ou sur une demande de dessin ou modèle communautaire, déjà publiée ou non, cette requête doit être déposée dans la langue utilisée pour le dépôt de la demande de MC ou de la demande de DMC (la «première» langue) ou dans la deuxième langue indiquée par le demandeur de MC ou de DMC dans sa demande (la «deuxième» langue).
Lorsque la requête en inspection publique est déposée dans une langue autre que celles indiquées ci-dessus, la partie qui requiert l’inspection doit d’office fournir une traduction dans l’une des langues stipulées ci-dessus dans un délai d’un mois. Si la traduction n’est pas transmise dans les délais, la requête en inspection publique sera réputée non déposée.
Cette disposition ne s’applique pas si la partie qui requiert l’inspection publique n’était pas en mesure de savoir quelles étaient les langues de la demande de MC ou de la demande de DMC (ce qui peut être le cas uniquement si les informations ne sont pas disponibles dans le registre en ligne et si la demande peut être traitée immédiatement). Dans ce cas, la requête en inspection publique peut être déposée dans n’importe laquelle des cinq langues de l’Office.
6.7.2 Pour les MC enregistrées ou les DMC enregistrés
Règle 95, point b), et règles 96 et 98 du REMC Article 80, point b), et articles 81, 83 et 84 du REDC
Lorsque la requête en inspection publique concerne une MC enregistrée ou un DMC enregistré, elle doit être déposée dans l’une des cinq langues de l’Office.
La langue dans laquelle la requête a été déposée devient la langue de la procédure d’inspection publique.
Lorsque la requête en inspection publique est déposée dans une langue autre que celles indiquées ci-dessus, la partie qui requiert l’inspection doit d’office fournir une traduction dans l’une des langues stipulées ci-dessus dans un délai d’un mois, à défaut de quoi la requête sera réputée non déposée.
6.8 Représentation et pouvoirs
La représentation n’est pas obligatoire pour déposer une requête en inspection publique. Lorsqu’un représentant est désigné, les règles générales en matière de représentation et de pouvoirs s’appliquent. Voir les Directives, partie A, section 5, Représentation professionnelle.
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6.9 Contenu de la requête en inspection publique
La requête en inspection publique dont il est question aux points 6.5 et 6.6 doit contenir les informations suivantes:
une indication du numéro de dossier ou du numéro d’enregistrement pour lequel l’inspection publique est requise;
les nom et adresse de la partie qui requiert l’inspection publique;
le cas échéant, une indication de l’information ou du document pour lequel l’inspection publique est requise (les requêtes en inspection publique peuvent porter sur le dossier complet ou sur des documents spécifiques uniquement). Dans le cas d’une requête en inspection portant sur un document spécifique, il convient de préciser la nature du document («demande» ou «acte d’opposition», par exemple). En cas de demande de communication d’informations contenues dans le dossier, le type d’informations requis doit être spécifié. Si la requête concerne une demande de MC qui n’a pas encore été publiée, une demande de dessin ou modèle communautaire enregistré qui n’a pas encore été publiée ou un dessin ou modèle communautaire enregistré soumis à un ajournement de publication conformément à l’article 50 du RDC ou qui, étant soumis à cet ajournement, a fait l’objet d’une renonciation avant ou à l’expiration de cette période, et si l’inspection publique est requise par un tiers, une indication et une preuve que le tiers en question a le droit d’inspecter le dossier;
lorsque des copies sont demandées, une indication du nombre de copies demandées, en précisant si elles doivent être certifiées conformes ou non, et, si les documents doivent être présentés dans un pays tiers exigeant l’authentification de la signature (légalisation), une indication des pays pour lesquels cette authentification est requise;
la signature de la partie qui requiert l’inspection, conformément à la règle 79 du REMC et à l’article 65 du REDC.
6.10 Irrégularités
Lorsque la requête en inspection publique ne remplit pas les conditions relatives au contenu, la partie qui requiert l’inspection publique est invitée à remédier à ces irrégularités. Si les irrégularités ne sont pas corrigées dans le délai imparti, la requête en inspection publique est refusée.
6.11 Taxes pour l’inspection publique et la communication d’informations contenues dans les dossiers
Toutes les taxes sont dues à la date de réception de la requête en inspection publique (voir les points 6.5 et 6.6 ci-dessus).
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6.11.1 Communication d’informations contenues dans un dossier
Règle 90 du REMC Article 75 du REDC Article 2, paragraphe 29, du RTMC Article 2 (annexe, paragraphe 23) du RTDC
La communication des informations d’un dossier est soumise au paiement d’une taxe de 10 EUR.
6.11.2 Inspection publique
Règle 89, paragraphe 1, du REMC Article 74, paragraphe 1, du REDC Article 2, paragraphe 27, du RTMC Article 2 (annexe, paragraphe 21) du RTDC
La requête en inspection publique dans les locaux de l’Office est soumise au paiement d’une taxe de 30 EUR.
Règle 89, paragraphe 4, du REMC Article 74, paragraphe 4, du REDC Article 2, paragraphe 28, point a), du RTMC Article 2 (annexe, paragraphe 22) du RTDC
Si l’inspection publique est réalisée au moyen de copies non certifiées des pièces du dossier, ces copies sont soumises au paiement d’une taxe de 10 EUR, avec un supplément de 1 EUR par page au-delà de la dixième.
Règle 24, paragraphe 2, règle 84, paragraphe 6, et règle 89, paragraphe 5, du REMC Article 17, paragraphe 2, article 69, paragraphe 6, et article 74, paragraphe 5, du REDC Article 2, paragraphe 26, point a), du RTMC Article 2 (annexe, paragraphe 20) du RTDC
Une copie non certifiée d’une demande de MC ou d’une demande de DMC, une copie non certifiée du certificat d’enregistrement, un extrait non certifié du registre ou un extrait non certifié de la demande de MC ou de la demande de DMC est soumis(e) au paiement d’une taxe de 10 EUR par copie ou extrait.
Règle 89, paragraphe 4, du REMC Article 74, paragraphe 4, du REDC Article 2, paragraphe 28, point b), du RTMC Article 2 (annexe, paragraphe 22) du RTDC
Si l’inspection publique est réalisée au moyen de copies certifiées conformes des pièces du dossier, ces copies sont soumises au paiement d’une taxe de 30 EUR, avec un supplément de 1 EUR par page au-delà de la dixième.
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Règle 24, paragraphe 2, règle 84, paragraphe 6, et règle 89, paragraphe 5, du REMC Article 17, paragraphe 2, article 69, paragraphe 6, et article 74, paragraphe 5, du REDC Article 2, paragraphe 26, point b), du RTMC Article 2 (annexe, paragraphe 20) du RTDC
Une copie certifiée conforme d’une demande de MC ou d’une demande de DMC, une copie certifiée conforme du certificat d’enregistrement, un extrait certifié conforme du registre ou un extrait certifié conforme de la demande de MC ou de la demande de DMC de la banque de données est soumis(e) au paiement d’une taxe de 30 EUR par copie ou extrait.
Cependant, des copies électroniques certifiées conformes des certificats d’enregistrement ou des demandes de MC ou DMC peuvent également être obtenues gratuitement sur le site internet par les utilisateurs enregistrés.
6.11.3 Conséquences du non-paiement des taxes
Règle 89, paragraphe 1, du REMC Article 74, paragraphe 1, du REDC
Une requête en inspection publique n’est réputée déposée qu’après paiement de la taxe. Les taxes s’appliquent non seulement aux requêtes déposées par un tiers, mais également à celles introduites par le demandeur ou le titulaire de la marque communautaire ou du dessin ou modèle communautaire. L’Office ne traitera pas la requête en inspection publique tant que la taxe n’aura pas été payée.
Toutefois, si la taxe n’est pas payée ou n’est pas acquittée intégralement, l’Office en informera la partie qui requiert l’inspection publique:
si l’Office ne reçoit aucun paiement pour une copie certifiée conforme ou non certifiée d’une demande de marque communautaire ou d’une demande de dessin ou modèle communautaire, d’un certificat d’enregistrement ou d’un extrait du registre ou de la banque de données;
si l’Office ne reçoit aucun paiement pour l’inspection publique réalisée au moyen de copies certifiées conformes et non certifiées des pièces du dossier;
si l’Office ne reçoit aucun paiement pour la communication d’informations contenues dans un dossier.
L’Office enverra un courrier précisant le montant des taxes à payer. Si la partie qui requiert l’inspection ignore le montant exact de la taxe parce que celui-ci dépend du nombre de pages, l’Office inclura cette information dans la lettre type ou informera la partie qui requiert l’inspection par d’autres moyens appropriés.
6.11.4 Remboursement des taxes
Lorsque la requête de copies certifiées ou non certifiées conformes ou d’informations contenues dans les dossiers est retirée avant que l’Office n’y fasse droit, la taxe est remboursée ou, dans le cas d’un compte courant ouvert auprès de l’Office, le compte n’est pas débité. Lorsqu’une requête en inspection publique est rejetée, la taxe
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correspondante n’est pas remboursée. Toutefois, lorsqu’à la suite du paiement de la taxe, l’Office constate que toutes les copies certifiées ou non certifiées conformes sollicitées dans la requête n’ont pas pu être délivrées, les taxes payées en surplus du montant dû sont remboursées.
6.12 Conditions requises pour ouvrir droit à l’inspection publique d’une demande de MC non publiée ou d’un enregistrement de DMC dont la publication est ajournée, lorsque la requête est introduite par un tiers
Article 88, paragraphes 1 et 2, du RMC Article 74 du RDC Règle 89, paragraphe 2, du REMC Article 74, paragraphe 2, du REDC
Lorsque la requête en inspection publique d’une demande de MC qui n’a pas encore été publiée ou de dossiers relatifs à un DMC qui fait l’objet d’un ajournement de publication conformément à l’article 50 du RDC ou qui, pendant l’application de cette mesure, a fait l’objet d’une renonciation avant ou à l’expiration du délai d’ajournement (voir les points 4.2.1 et 4.2.2 ci-dessus) est introduite par un tiers (c’est-à-dire par une personne autre que le demandeur de MC ou de DMC ou son représentant), différents cas peuvent se présenter.
Si la requête introduite par un tiers se fonde sur les motifs visés à la règle 89, paragraphe 2, du REMC (voir le point 4.2.1 ci-dessus), ou à l’article 74, paragraphe 2, du REDC, ou à l’article 74, paragraphe 2 du RDC (voir point 4.2.2 ci-dessus) elle doit indiquer, preuves à l’appui, que le demandeur de la MC ou le demandeur ou titulaire du DMC a donné son accord pour l’inspection ou a affirmé que, après l’enregistrement de la MC ou du DMC, il se prévaudrait de celle-ci ou de celui-ci à l’encontre de la partie qui requiert l’inspection.
6.12.1 Accord
L’accord du demandeur de la MC ou du demandeur ou titulaire de DMC doit prendre la forme d’une déclaration écrite dans laquelle il consent à l’inspection publique du ou des dossiers en question. Cet accord peut être limité à l’inspection de certaines parties du dossier, telles que la demande, etc., auquel cas la requête en inspection publique ne peut s’étendre au-delà de la portée de l’accord.
Si la partie qui requiert l’inspection publique ne fournit pas de déclaration écrite dans laquelle le demandeur de MC ou le demandeur ou titulaire de DMC consent à l’inspection, elle recevra une notification et se verra accorder un délai de deux mois à compter de la date de notification pour remédier à cette irrégularité.
Si, au terme de ce délai, l’accord n’a toujours pas été fourni, l’Office refusera la requête en inspection publique. La partie qui requiert l’inspection sera informée de cette décision.
La partie qui requiert l’inspection peut former un recours contre la décision (articles 59 et 60 du RMC, et article 56 du RDC).
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6.12.2 Déclaration selon laquelle le demandeur se prévaudra de la MC ou du DMC
Règle 89, paragraphe 2, du REMC Article 74, paragraphe 2, du RDC Article 74, paragraphe 2, du REDC
Lorsque la requête se fonde sur l’allégation que le titulaire de la MC ou du DMC se prévaudrait de celle-ci ou de celui-ci après son enregistrement, il incombe à la partie qui requiert l’inspection de prouver cette allégation. Les preuves soumises à cette fin doivent prendre la forme de documents (déclaration du demandeur de MC ou du demandeur ou titulaire du DMC concernant la demande de MC, la demande de DMC ou le DMC enregistré et ajourné en question ou correspondance commerciale, par exemple). Le dépôt d’une opposition basée sur une demande de MC contre une marque nationale constitue une déclaration selon laquelle le déposant se prévaudra de la MC. De simples conjectures de la part de la partie qui requiert l’inspection ne constituent pas une preuve suffisante.
L’Office examine tout d’abord si la preuve est suffisante.
Si tel est le cas, l’Office transmet la requête en inspection publique et les pièces justificatives au demandeur de MC ou au demandeur ou titulaire du DMC et l’invite à faire part de ses observations dans un délai de deux mois. Si le demandeur de MC ou le demandeur ou titulaire de DMC marque son accord pour l’inspection publique, celle- ci est accordée. Si le demandeur de MC ou le demandeur ou titulaire du DMC transmet des observations pour contester l’inspection publique, l’Office communique ces observations à la partie qui requiert l’inspection. Toute autre déclaration de la partie qui requiert l’inspection publique est communiquée au demandeur de MC ou au demandeur ou titulaire du DMC et vice versa. L’Office prend en considération toutes les observations transmises dans les délais par les parties et rend sa décision en conséquence. La décision de l’Office est notifiée à la partie qui requiert l’inspection publique et au demandeur de MC ou au demandeur ou titulaire du DMC. La partie lésée peut former un recours contre cette décision (articles 59 et 60 du RMC et article 56 du RDC).
6.13 Ouverture à l’inspection publique et modalités de l’inspection
Lorsque l’inspection publique est accordée, l’Office communique les copies des pièces du dossier demandées, ou les informations demandées, à la partie qui requiert l’inspection, ou l’invite à consulter les dossiers dans ses locaux.
6.13.1 Communication d’informations contenues dans un dossier
Règle 90 du REMC Article 75 du REDC
L’Office peut, sur demande, communiquer des informations contenues dans tous les dossiers relatifs à une demande ou à un enregistrement de MC ou de DMC.
Inspection publique
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Les informations contenues dans les dossiers sont fournies sans requête en inspection, entre autres, dans les situations suivantes: lorsque la partie concernée souhaite savoir si une demande de MC donnée a été déposée par un demandeur donné, ou la date de cette demande, ou si la liste des produits et services a été modifiée au cours de la période entre le dépôt de la demande et la publication.
Après avoir obtenu ces informations, la partie concernée peut alors décider de demander ou non des copies des pièces pertinentes ou d’introduire une requête en inspection publique.
Lorsque la partie concernée souhaite connaître, entre autres, les arguments avancés par un opposant dans une procédure d’opposition, les documents concernant l’ancienneté qui ont été déposés ou le libellé exact de la liste des produits et services déposée, ces informations ne sont pas communiquées. En revanche, l’Office invite la partie concernée à introduire une requête en inspection publique.
Dans de tels cas, la quantité et la complexité des informations à fournir dépasseraient en effet les limites raisonnables et créeraient une charge administrative indue.
6.13.2 Copies des pièces du dossier
Lorsque l’inspection publique est accordée sous la forme de copies certifiées conformes ou non certifiées des pièces du dossier, les documents demandés sont envoyés par voie postale.
Lorsque l’inspection publique est accordée dans les locaux de l’Office, un rendez-vous est fixé à la partie qui la requiert pour l’inspection des dossiers.
7 Procédures visant à donner accès aux dossiers aux juridictions ou aux autorités des États membres
Article 90 du RMC Article 75 du RDC Règles 92 et 93 du REMC Articles 77 et 78 du REDC
Aux fins de la coopération administrative, l’Office prête assistance, sur demande, aux juridictions ou aux autorités des États membres en leur communiquant des informations ou en ouvrant des dossiers à l’inspection publique.
Aux fins de la coopération administrative, l’Office communique également, sur demande, aux services centraux de la propriété intellectuelle des États membres les informations pertinentes sur les demandes de MC ou de DMC, sur les procédures relatives à ces demandes et sur les marques, dessins ou modèles enregistrés à la suite du dépôt de ces demandes.
Inspection publique
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7.1 Absence de taxes
Règle 92, paragraphe 3, et règle 93, paragraphes 1 et 2, du REMC Article 77, paragraphe 3, et article 78, paragraphes 1 et 2, du REDC
L’inspection publique et la communication des informations des dossiers demandées par les juridictions ou les autorités des États membres ne sont pas soumises au paiement d’une taxe.
Règle 93, paragraphe 2, du REMC Article 78, paragraphe 2, du REDC
Les juridictions ou les ministères publics des États membres peuvent soumettre à l’inspection de tiers les dossiers ou les copies de dossiers qui leur ont été transmis par l’Office. L’Office ne perçoit pas de taxes à ce titre.
7.2 Absence de restriction en ce qui concerne les demandes non publiées
Article 90 du RMC Article 75 du RDC Règle 88 et règle 92, paragraphe 1, du REMC Article 72 et article 77, paragraphe 1, du REDC
L’inspection publique et la communication des informations des dossiers demandées par les juridictions ou les autorités des États membres ne sont pas soumises aux restrictions prévues à l’article 88 du RMC et à l’article 74 du RDC. Par conséquent, ces organismes peuvent se voir accorder l’accès aux dossiers relatifs aux demandes de MC non publiées (voir point 4.2.1 ci-dessus) et aux enregistrements de DMC soumis à un ajournement de publication (voir point 4.2.2 ci-dessus), ainsi qu’aux pièces du dossier pour lesquelles la partie concernée a manifesté un intérêt particulier à préserver la confidentialité. Cependant, les pièces relatives à l’exclusion et à la récusation, ainsi que les documents mentionnés à la règle 88, point b), du REMC, et à l’article 72, point b), du REDC, ne sont pas mis à la disposition de ces organismes.
Règle 88 et règle 93, paragraphe 2, du REMC Article 74 du RDC et articles 72 et 78, paragraphe 2, du REDC
Les juridictions ou les ministères publics des États membres peuvent soumettre à l’inspection de tiers les dossiers ou les copies de dossiers qui leur ont été transmis par l’Office. Cette inspection postérieure est soumise aux restrictions prévues à l’article 88 et à la règle 88 du REMC ou à l’article 74 du RDC, comme si elle avait été demandée par un tiers.
Règle 93, paragraphe 3, du REMC Article 78, paragraphe 4, du REDC
L’Office signale aux juridictions ou aux ministères publics des États membres, lorsqu’il leur transmet des dossiers ou copies de dossiers, les restrictions auxquelles est
Inspection publique
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soumise l’inspection publique des dossiers de demandes de MC ou de MC enregistrées en application de l’article 88 du RMC et de la règle 88 du REMC d’une part, et des demandes de DMC ou des enregistrements de DMC conformément à l’article 74 du RDC et à l’article 72 du REDC, d’autre part.
7.3 Modalités de l’inspection publique
Règle 93, paragraphe 1, du REMC Article 78, paragraphe 1, du REDC
L’inspection publique, par des juridictions ou des autorités des États membres, des dossiers de demandes ou d’enregistrements de MC ou de DMC peut être ouverte en fournissant des copies des documents originaux. Comme les dossiers ne contiennent pas d’originaux en tant que tels, l’Office fournira des impressions papier extraites du système électronique.
Demandes reconventionnelles
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 6
AUTRES INSCRIPTIONS AU REGISTRE
CHAPITRE 1
DEMANDES RECONVENTIONNELLES
Demandes reconventionnelles
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Table des matières
1 Introduction................................................................................................ 3
2 Demande d’inscription du dépôt d’une demande reconventionnelle devant un tribunal des marques communautaires ou un tribunal des dessins ou modèles communautaires..................................................... 3
3 Demande d’inscription d’une décision sur une demande reconventionnelle introduite devant un tribunal des marques communautaires ou un tribunal des dessins ou modèles communautaires........................................................................................ 4
Demandes reconventionnelles
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1 Introduction
Les demandes reconventionnelles, comme visées à l’article 100 du RMC ou à l’article 84 du RDMC, sont des actions en défense du défendeur qui est poursuivi pour la violation d’une marque communautaire ou d’un dessin ou modèle communautaire enregistré. En introduisant une telle demande reconventionnelle, le défendeur demande au tribunal des marques communautaires ou au tribunal des dessins ou modèles communautaires de prononcer la déchéance ou la nullité de la marque communautaire ou la nullité du dessin ou modèle communautaire qu’il est supposé avoir violé.
La finalité de l’inscription au registre de l’Office du dépôt d’une demande reconventionnelle et de la décision y afférente passée en force de chose jugée réside dans l’intérêt général de rendre publiques toutes les informations pertinentes relatives aux demandes reconventionnelles concernant des marques communautaires et des dessins ou modèles communautaires, notamment les décisions passées en force de chose jugée. Ainsi, l’Office peut faire appliquer ces décisions passées en force de chose jugée, notamment celles qui déclarent la déchéance ou la nullité totale ou partielle d’une marque communautaire ainsi que celles qui déclarent la nullité totale des dessins ou modèles communautaires.
En inscrivant ces demandes reconventionnelles et leurs décisions passées en force de chose jugée au registre, l’Office s’efforce de respecter les principes de conformité à la vérité, de confiance du public et de sécurité juridique d’un registre public.
2 Demande d’inscription du dépôt d’une demande reconventionnelle devant un tribunal des marques communautaires ou un tribunal des dessins ou modèles communautaires
Article 100, paragraphe 4, du RMC Règle 84, paragraphe 3, point n), du REMC Article 86, paragraphe 2, du RDMC Article 69, paragraphe 3, point p), du REDC Communication n° 9/05 et n° 10/05 du Président
Conformément à l’article 100, paragraphe 4, du RMC et à l’article 86, paragraphe 2, du RDMC, le tribunal des marques communautaires et le tribunal des dessins ou modèles communautaires devant lesquels une demande reconventionnelle en déchéance d’une marque communautaire ou en nullité de la marque communautaire ou du dessin ou modèle communautaire a été introduite communique à l’Office la date à laquelle cette demande reconventionnelle a été introduite.
Les communications n° 9/05 et n° 10/05 du 28 novembre 2005 concernent la désignation des tribunaux des marques communautaires et des tribunaux des dessins ou modèles communautaires des États membres (ci-après les « tribunaux des marques communautaires ou tribunaux des dessins ou modèles communautaires ») conformément à l’article 95, paragraphe 2, du RMC.
Demandes reconventionnelles
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L’Office autorise également toute partie à la procédure de demande reconventionnelle à demander l’inscription d’une demande reconventionnelle au registre, si celle-ci n’a pas encore été communiquée par le tribunal des marques communautaires ou le tribunal des dessins ou modèles communautaires.
Le demandeur de l’inscription (le tribunal des marques communautaires ou le tribunal des dessins ou modèles communautaires ou l’une des parties à la procédure de demande reconventionnelle) doit indiquer et présenter :
la date à laquelle la demande reconventionnelle a été introduite ; le numéro de la marque communautaire ou du dessin ou modèle
communautaire concerné ; s’il s’agit d’une demande en déchéance ou d’une demande en nullité ; si le demandeur de l’inscription est l’une des parties, la confirmation officielle du
tribunal des marques communautaires ou du tribunal des dessins ou modèles communautaires compétent pour rendre la décision sur la demande reconventionnelle, y compris, si possible, le numéro de dossier ou de référence du tribunal.
Si le demandeur de l’inscription ne présente pas de confirmation officielle du tribunal des marques communautaires ou du tribunal des dessins ou modèles communautaires, ou si les informations communiquées par le demandeur nécessitent des clarifications, l’Office demandera une confirmation par écrit.
L’Office informera le titulaire de la marque communautaire ou le titulaire du dessin ou modèle communautaire et le tribunal des marques communautaires ou le tribunal des dessins ou modèles communautaires que la demande reconventionnelle a été inscrite au registre. Si la demande a été introduite par l’une des parties à la procédure de demande reconventionnelle, l’Office informera également cette partie.
L’inscription au registre correspondant sera publiée dans la Partie C.9.3. du Bulletin des marques communautaires ou dans la Partie B.3.1. du Bulletin des dessins ou modèles communautaires.
3 Demande d’inscription d’une décision sur une demande reconventionnelle introduite devant un tribunal des marques communautaires ou un tribunal des dessins ou modèles communautaires
Article 100, paragraphe 6, du RMC Règle 84, paragraphe 3, point o), du REMC Article 86, paragraphe 4, du RDMC Article 69, paragraphe 3, point q), du REDC
Lorsqu’un tribunal des marques communautaires ou un tribunal des dessins ou modèles communautaires a rendu une décision passée en force de chose jugée sur une demande reconventionnelle en déchéance d’une marque communautaire ou en nullité d’une marque communautaire ou d’un dessin ou modèle communautaire, une copie de la décision est transmise à l’Office.
Demandes reconventionnelles
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L’Office autorise également toute partie à la procédure de demande reconventionnelle à demander l’inscription d’une décision sur la demande reconventionnelle au registre, si celle-ci n’a pas encore été communiquée par le tribunal des marques communautaires ou le tribunal des dessins ou modèles communautaires.
Le demandeur de l’inscription (le tribunal des marques communautaires ou le tribunal des dessins ou modèles communautaires ou l’une des parties à la procédure de demande reconventionnelle) doit indiquer et présenter :
une copie de la décision, accompagnée de la confirmation du tribunal des marques communautaires ou du tribunal des dessins ou modèles communautaires que la décision a été passée en force de chose jugée ;
la date à laquelle la décision a été passée en force de chose jugée ; le numéro de la marque communautaire ou du dessin ou modèle
communautaire concerné ; s’il s’agit d’une demande en déchéance ou d’une demande en nullité ; en cas d’annulation ou de nullité partielle, la liste des produits et services
concernés par la décision, le cas échéant.
L’Office doit obtenir la confirmation que la décision a été passée en force de chose jugée. Si l’Office exige des clarifications, il demandera une confirmation par écrit.
Lorsque la décision passée en force de chose jugée annule une marque communautaire, l’Office modifiera la liste des produits et services en fonction de la décision rendue par le tribunal des marques communautaires et, si nécessaire, enverra la liste modifiée des produits et services pour qu’elle soit traduite.
L’Office informera le titulaire de la marque communautaire ou le titulaire du dessin ou modèle communautaire et le tribunal des marques communautaires ou le tribunal des dessins ou modèles communautaires que la décision a été inscrite au registre. Si la demande a été introduite par l’une des parties à la procédure de demande reconventionnelle, l’Office informera également cette partie.
L’inscription au registre correspondant sera publiée dans la Partie C.9.4. du Bulletin des marques communautaires ou la Partie B.3.2. du Bulletin des dessins ou modèles communautaires.
Examen des demandes en nullité des dessins ou modèles
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES DESSINS OU MODÈLES COMMUNAUTAIRES
ENREGISTRÉS
EXAMEN DES DEMANDES EN NULLITÉ DE DESSINS OU MODÈLES
Examen des demandes en nullité des dessins ou modèles
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Table des matières
1 Objet ........................................................................................................... 5
2 Introduction – Principes généraux s’appliquant à la procédure en nullité .......................................................................................................... 5 2.1 Obligation de motivation............................................................................5 2.2 Droit d’être entendu ................................................................................... 6 2.3 Portée de l’examen effectué par la division d’annulation........................ 6 2.4 Respect des délais ..................................................................................... 7
3 Dépôt d’une demande ............................................................................... 8 3.1 Formulaire de la demande .........................................................................8 3.2 Portée de la demande ................................................................................ 8 3.3 Langue de procédure ................................................................................. 9 3.4 Identification de la demande .....................................................................9 3.5 Qualité pour agir du demandeur ............................................................... 9 3.6 Représentation de la demande................................................................ 10
3.6.1 Lorsque la représentation est obligatoire ..................................................... 10 3.6.2 Qui peut représenter..................................................................................... 10
3.7 Identification du dessin ou modèle communautaire contesté .............. 11 3.8 Extinction des enregistrements .............................................................. 11 3.9 Exposé des motifs, faits, preuves et observations ................................ 11
3.9.1 Exposé des motifs ........................................................................................ 11 3.9.2 Faits, preuves et observations...................................................................... 12 3.9.3 Recevabilité à l’égard de l’un des motifs invoqués....................................... 14
3.10 Signature de la demande ......................................................................... 14 3.11 Moyens de dépôt ...................................................................................... 14 3.12 Paiement de la taxe .................................................................................. 15 3.13 Traitement des irrégularités .................................................................... 15 3.14 Notification au titulaire............................................................................. 16 3.15 Participation du contrefacteur présumé ................................................. 16
4 Phase contradictoire de la procédure.................................................... 17 4.1 Échange de communications .................................................................. 17
4.1.1 Observations du titulaire............................................................................... 17 4.1.1.1 Généralités ................................................................................................17 4.1.1.2 Demande de preuve de l’usage d’une marque antérieure.........................17
4.1.2 Traduction des observations du titulaire....................................................... 18 4.1.3 Portée de la défense .................................................................................... 18 4.1.4 Réponse du demandeur ............................................................................... 18
4.1.4.1 Généralités ................................................................................................18 4.1.4.2 Traduction de la réponse du demandeur...................................................19 4.1.4.3 Présentation de la preuve de l’usage d’une marque antérieure ................19
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4.1.5 Fin de l’échange des observations ............................................................... 20 4.1.6 Prorogation des délais et suspension .......................................................... 20
4.1.6.1 Prorogation des délais...............................................................................20 4.1.6.2 Suspension................................................................................................21
4.1.7 Instruction ..................................................................................................... 22 4.1.8 Procédure orale ............................................................................................ 22
4.2 Examen ..................................................................................................... 23 4.2.1 Début de l’examen........................................................................................ 23 4.2.2 Examen des motifs de nullité........................................................................ 23
5 Les différents motifs de nullité............................................................... 25 5.1 Pas un dessin ou modèle......................................................................... 25
5.1.1 Organismes vivants ......................................................................................... 25
5.2 Absence de droit ...................................................................................... 25 5.3 Fonction technique .................................................................................. 26
5.3.1 Justification ................................................................................................... 26 5.3.2 Examen......................................................................................................... 27 5.3.3 Formes alternatives ...................................................................................... 28
5.4 Dessins ou modèles des interconnexions.............................................. 28 5.5 Absence de nouveauté et de caractère individuel ................................. 28
5.5.1 Divulgation d’un dessin ou modèle antérieur ............................................... 28 5.5.1.1 Principes généraux....................................................................................28 5.5.1.2 Publications officielles ...............................................................................29 5.5.1.3 Expositions et utilisation dans le commerce ..............................................30 5.5.1.4 Divulgations provenant de l’internet ..........................................................31 5.5.1.5 Déclarations écrites, sous serment ou faites solennellement (affidavits) ..32 5.5.1.6 Divulgation insuffisante..............................................................................32 5.5.1.7 Divulgation à un tiers sous des conditions explicites ou implicites de
secret.........................................................................................................34 5.5.1.8 Divulgation pendant la période de priorité .................................................34 5.5.1.9 Délai de grâce ...........................................................................................35
5.5.2 Appréciation de la nouveauté et du caractère individuel.............................. 35 5.5.2.1 Principes communs ...................................................................................36
5.6 Conflit avec un droit à un dessin ou modèle antérieur.......................... 44 5.7 Utilisation d’un signe distinctif antérieur................................................ 45
5.7.1 Signe distinctif............................................................................................... 45 5.7.2 Utilisation dans un dessin ou modèle ultérieur............................................. 45 5.7.3 Justification de la demande en vertu de l’article 25, paragraphe 1,
point e), du RDC (signes distinctifs antérieurs) ............................................ 46 5.7.4 Examen par la division d’annulation ............................................................. 46
5.8 Utilisation non autorisée d’une œuvre protégée par la législation sur le droit d’auteur d’un État membre.......................................................... 47 5.8.1 Justification de la demande en vertu de l’article 25, paragraphe 1, point f),
du RDC (droit d’auteur antérieur) ................................................................. 48 5.8.2 Examen par la division d’annulation ............................................................. 48
5.9 Nullité partielle.......................................................................................... 49 5.10 Motifs de nullité qui deviennent applicables du simple fait de
l’adhésion d’un nouvel État membre ...................................................... 49
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6 Fin de la procédure.................................................................................. 50 6.1 Fin de la procédure sans décision au fond ............................................ 50 6.2 Décision sur les frais ............................................................................... 50
6.2.1 Cas où une décision sur les frais doit être prise........................................... 50 6.2.2 Cas où une décision sur les frais n’est pas nécessaire ............................... 50
6.2.2.1 Accord sur les frais....................................................................................50 6.2.2.2 Répartition des frais ..................................................................................51 6.2.2.3 Détermination des frais..............................................................................51
6.3 Rectification d’erreurs et inscription au registre ................................... 52 6.3.1 Rectification d’erreurs................................................................................... 52 6.3.2 Inscription au registre ................................................................................... 52
7 Recours .................................................................................................... 53 7.1 Droit de recours........................................................................................ 53 7.2 Révision .................................................................................................... 53
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1 Objet
Les présentes Directives ont pour objet d’expliquer les modalités de mise en œuvre pratique, par la division d’annulation de l’OHMI, du règlement sur les dessins ou modèles communautaires1 (RDC), du règlement portant modalités d’application du règlement sur les dessins ou modèles communautaires2 (REDC) et du règlement relatif aux taxes3 (RTDMC), de la réception d’une demande en nullité d’un dessin ou modèle communautaire (la «demande») à la clôture de la procédure en nullité. Elles ont également pour objet de garantir la cohérence entre les décisions rendues par la division d’annulation et d’assurer une pratique cohérente dans le traitement des dossiers. Les présentes Directives ne sont pas destinées à, et ne peuvent, élargir ou réduire le contenu juridique des règlements.
2 Introduction – Principes généraux s’appliquant à la procédure en nullité
2.1 Obligation de motivation
Les décisions de la division d’annulation doivent être motivées (article 62 du RDC). La motivation doit être logique et ne présenter aucune contradiction interne.
L’obligation de motivation a un double objectif: permettre aux intéressés de connaître les justifications de la mesure prise afin de défendre leurs droits et à la prochaine instance d’exercer son contrôle sur la légalité de la décision. Par ailleurs, l’obligation de motivation constitue une formalité substantielle qui doit être distinguée de la question du bien-fondé de la motivation, celui-ci relevant de la légalité au fond de l’acte litigieux (arrêt du 27 juin 2013 dans l’affaire T-608/11 «Instrument d’écriture II», points 67 et 68 et jurisprudence citée).
La division d’annulation est tenue de statuer sur chacun des chefs de conclusions formulés par les parties (arrêt du 10 juin 2008, T-85/07, point 20). La division d’annulation ne saurait toutefois être tenue de motiver de manière expresse ses appréciations quant à la valeur de chaque argument invoqué et de chaque élément de preuve qui lui a été soumis, notamment lorsqu’elle considère que ceux-ci sont sans intérêt ou dépourvus de pertinence pour la solution du litige (voir, par analogie, l’arrêt du 15 juin 2000, C-237/98 P, point 51). Il suffit à la division d’annulation d’exposer les
1 Règlement (CE) n° 6/2002 du Conseil du 12 décembre 2001 sur les dessins ou modèles communautaires, modifié par le règlement (CE) n° 1891/2006 du 18 décembre 2006 modifiant les règlements (CE) n° 6/2002 et (CE) n° 40/94 en vue de donner effet à l’adhésion de la Communauté européenne à l’acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels. 2 Règlement (CE) n° 2245/2002 de la Commission du 21 octobre 2002 portant modalités d’application du règlement (CE) n° 6/2002 du Conseil sur les dessins ou modèles communautaires, modifié par le règlement (CE) n° 876/2007 de la Commission du 24 juillet 2007 modifiant le règlement (CE) n° 2245/2002 portant modalités d’application du règlement (CE) n° 6/2002 du Conseil sur les dessins ou modèles communautaires à la suite de l’adhésion de la Communauté européenne à l’acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels. 3 Règlement (CE) n° 2246/2002 de la Commission du 16 décembre 2002 concernant les taxes, modifié par le règlement (CE) n° 877/2007 de la Commission du 24 juillet 2007 modifiant le règlement (CE) n° 2246/2002 concernant les taxes à payer à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) après l’adhésion de la Communauté européenne à l’acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels.
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faits et les considérations juridiques revêtant une importance essentielle dans l’économie de la décision (arrêt du 12 novembre 2008, T-7/04, point 81).
La question de savoir si la motivation d’une décision satisfait à ces exigences doit être appréciée au regard non seulement de son libellé, mais aussi de son contexte, ainsi que des règles juridiques régissant la matière concernée (arrêt du 7 février 2007, T-317/05, point 57).
La division d’annulation appliquera les principes exposés dans les Directives, partie A, Dispositions générales, section 2, Principes généraux à respecter dans les procédures, chapitre 1, Motivation adéquate.
2.2 Droit d’être entendu
Les décisions de la division d’annulation ne peuvent être fondées que sur des motifs ou des preuves au sujet desquels les parties ont pu prendre position (seconde phrase de l’article 62 du RDC).
À cette fin, la division d’annulation invite les parties, aussi souvent qu’il est nécessaire, à présenter leurs observations sur les communications qui émanent des autres parties ou qu’elle leur a adressées (article 53, paragraphe 2, du RDC).
Le droit d’être entendu s’étend à tous les éléments de fait ou de droit ainsi qu’aux éléments de preuve qui constituent le fondement de l’acte décisionnel, il ne s’applique toutefois pas à la position finale que la division d’annulation entend adopter (arrêt du 20 avril 2005, T-273/02, «CALPICO/CALYPSO», points 64 et 65).
La division d’annulation peut fonder son analyse sur des faits résultant de l’expérience pratique généralement acquise de la commercialisation de produits de consommation courante, lesquels faits sont susceptibles d’être connus de toute personne et sont notamment connus des consommateurs de ces produits. Dans un tel cas, la division d’annulation n’est pas tenue de présenter des exemples ou des preuves d’une telle expérience pratique.
La division d’annulation appliquera les principes exposés dans les Directives, partie A, Dispositions générales, section 2, Principes généraux à respecter dans les procédures, chapitre 2, Le droit d’être entendu.
2.3 Portée de l’examen effectué par la division d’annulation
Dans une action en nullité, l’examen auquel procède la division d’annulation est limité aux moyens invoqués par les parties (article 63, paragraphe 1, du RDC). Toutefois, la division d’annulation doit soupeser les moyens, statuer sur leur valeur probante et en tirer ensuite les conséquences juridiques sans être liée par les points d’accord entre les parties. Les faits allégués qui ne sont pas étayés par des éléments de preuve ne sont pas pris en considération [décision de la division d’annulation du 22 avril 2008 (ICD 4448)].
Les faits, preuves et observations sont trois éléments différents qui ne doivent pas être confondus. Par exemple, la date de divulgation d’un dessin antérieur est un fait. La preuve de ce fait pourrait être la date de publication d’un catalogue présentant le dessin ou modèle antérieur accompagné d’éléments prouvant que le catalogue a été mis à la disposition du public avant la date de dépôt ou la date de priorité du dessin ou
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modèle communautaire contesté. L’observation du demandeur pourrait être que le dessin ou modèle antérieur fait obstacle à la nouveauté du dessin ou modèle communautaire contesté étant donné l’impression globale similaire qu’il produit sur l’utilisateur averti. Qu’un dessin ou modèle communautaire soit ou non dépourvu de nouveauté n’est pas un fait mais une question juridique devant être tranchée par la division d’annulation sur la base des faits, preuves et observations produits par les parties.
Les rapports d’experts ou les avis d’experts et autres déclarations écrites relèvent des moyens de preuve visés à l’article 65, paragraphe 1, points c) et f), du RDC. Toutefois, le fait qu’ils soient recevables sur le plan de la procédure ne signifie pas automatiquement que la déclaration est crédible et servira de preuve des faits à démontrer. Au contraire, ces déclarations doivent faire l’objet d’un examen critique quant à l’absence d’erreurs et à l’exactitude des informations, ainsi qu’au fait qu’elles proviennent d’une source indépendante et/ou sont entravées ou soutenues par une déclaration écrite [décision de la division d’annulation du 22 avril 2008 (ICD 4448)].
En outre, les critères juridiques pour l’application d’un motif de nullité font naturellement partie des questions de droit soumises à l’examen de la division d’annulation. Une question de droit peut devoir être tranchée par la division d’annulation alors même qu’elle n’a pas été soulevée par les parties, si la résolution de cette question est nécessaire à l’application correcte du RDC. La division d’annulation examinera dès lors d’office les questions de droit qui peuvent être appréciées indépendamment de tout contexte factuel aux fins d’accueillir ou de rejeter les arguments des parties, même si elles ne se sont pas exprimées sur ces questions (voir, par analogie, l’arrêt du 1er février 2005, T-57/03, point 21). Ces questions de droit incluent notamment la définition de l’utilisateur averti et du degré de liberté du créateur au sens de l’article 6 du RDC.
2.4 Respect des délais
La division d’annulation peut ne pas tenir compte des faits que les parties n’ont pas invoqués ou des preuves qu’elles n’ont pas produites en temps utile (article 63, paragraphe 2, du RDC).
Il est rappelé aux parties qu’elles doivent déposer les faits et preuves sur lesquels elles se fondent en temps utile et dans les délais impartis par la division d’annulation. Les parties qui ne respectent pas les délais courent le risque que les preuves puissent être ignorées. Une invocation ou production tardive de faits et de preuves n’est pas de nature à conférer à la partie qui y procède un droit inconditionnel à ce que de tels faits ou preuves soient pris en considération par la division d’annulation.
Lorsque la division d’annulation exerce son pouvoir discrétionnaire en vertu de l’article 63, paragraphe 2, du RDC, elle doit préciser les motifs pour lesquels les faits et preuves tardivement produits sont recevables ou non, en considérant si, d’une part, les éléments tardivement produits sont de prime abord susceptibles de revêtir une réelle pertinence en ce qui concerne le sort de l’action en nullité formée devant elle et, d’autre part, si le stade de la procédure auquel intervient cette production tardive et les circonstances qui l’entourent ne s’opposent pas à cette prise en considération (arrêt du 13 mars 2007, C-29/05 P, points 42 à 44).
Lorsqu’une partie transmet une demande par télécopieur, elle doit indiquer sur la lettre d’accompagnement si une copie de confirmation (qui, selon le cas, peut contenir des
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documents en couleur) est envoyée. Tant la télécopie que la copie de confirmation doivent parvenir à l’Office dans le délai prévu. Conformément à l’article 63, paragraphe 2, du RDC, l’Office peut tenir compte d’une copie de confirmation qui n’a pas été produite en temps utile par les parties concernées.
Si le délai n’a pas encore expiré, la partie peut présenter une requête en vue de sa prorogation, conformément à l’article 57, paragraphe 1, du REDC.
Pour des informations générales sur les délais et la poursuite de la procédure, voir les Directives, partie A, Dispositions générales, section 1, Moyens de communication, Délais.
En ce qui concerne les télécopies incomplètes ou illisibles, voir la section 3.11 ci- dessous.
Il importe cependant de rappeler aux demandeurs que le délai d’un mois spécifié à la section 3.11 ci-dessous ne s’applique que pour le dépôt d’une demande en nullité (pour laquelle aucun délai n’est fixé par l’Office), et non aux autres actes de procédure pour lesquels un délai est fixé par l’Office.
3 Dépôt d’une demande
3.1 Formulaire de la demande
Pour le dépôt d’une demande (article 52 du RDC), l’Office met à disposition un formulaire [article 68, paragraphe 1, point f), du REDC] qui peut être téléchargé à partir du site internet de l’Office.
Il est fortement recommandé d’utiliser ce formulaire (article 68, paragraphe 6, du REDC) afin de faciliter le traitement de la demande et d’éviter les erreurs.
La demande, y compris les pièces justificatives, doit être soumise en deux exemplaires, afin qu’un exemplaire puisse être conservé dans les archives de l’Office tandis que l’autre est envoyé au titulaire, sans perte de qualité due à la copie. Si une demande est soumise en un seul exemplaire, la division d’annulation peut inviter le demandeur à déposer un second exemplaire dans un délai d’un mois, ou de deux mois dans le cas où le demandeur n’a pas son domicile, son siège ou un établissement dans l’Union européenne (article 57, paragraphe 1, du REDC).
3.2 Portée de la demande
Dans une action en nullité, la demande présentée par le demandeur ne peut être que la déclaration en nullité du dessin ou modèle communautaire contesté, tel qu’il a été enregistré (article 25 du RDC).
Lorsque les dessins ou modèles communautaires contestés sont compris dans un enregistrement multiple, chacun d’eux doit être contesté individuellement et identifié par référence à son numéro d’enregistrement complet (article 37, paragraphe 4, du RDC). Une demande unique (et un exposé des motifs commun) peut concerner plus d’un dessin ou modèle communautaire d’un enregistrement multiple. Le cas échéant, la taxe pour la demande doit être acquittée pour chaque dessin ou modèle communautaire contesté. Toutefois, par souci de clarté, l’Office recommande que des
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demandes distinctes soient déposées pour chaque dessin ou modèle communautaire contesté.
3.3 Langue de procédure
La langue utilisée lors du dépôt de la demande d’enregistrement du dessin ou modèle communautaire contesté (langue de dépôt) est la langue de la procédure en nullité (langue de procédure), pour autant que la langue de dépôt soit l’une des cinq langues de l’Office (article 98 du RDC; article 29 du REDC).
Lorsque la langue de dépôt n’est pas l’une des cinq langues de l’Office, la langue de procédure est la deuxième langue indiquée dans la demande du dessin ou modèle communautaire contesté (article 98, paragraphe 4, du RDC; article 29, paragraphe 1, du REDC).
La demande en nullité doit être déposée dans la langue de procédure. Si la demande n’est pas déposée dans la langue de procédure, la division d’annulation le notifie au demandeur et lui demande de déposer une traduction dans un délai de deux mois à compter de la date de réception de la notification. Si le demandeur ne se conforme pas à cette requête, sa demande en nullité est rejetée pour irrecevabilité (article 30, paragraphe 1, du REDC).
Les parties à la procédure en nullité peuvent convenir qu’une autre langue officielle de l’Union européenne soit la langue de procédure. Les informations concernant cet accord doivent parvenir à l’Office dans un délai de deux mois à compter de la date de notification de la demande au titulaire. Si la demande n’a pas été déposée dans la langue ainsi convenue, le demandeur doit en fournir une traduction dans cette langue dans un délai d’un mois à compter de la date à laquelle l’Office a été informé de cet accord (article 98, paragraphe 5, du RDC; article 29, paragraphe 6, du REDC).
En ce qui concerne le régime linguistique applicable aux pièces justificatives, voir le paragraphe 3.9.2 ci-dessous.
3.4 Identification de la demande
La demande en nullité doit comporter une indication des nom et adresse du demandeur (article 28, paragraphe 1, point c), du REDC).
Lorsque les informations contenues dans la demande ne permettent pas d’identifier clairement le demandeur et s’il n’est pas remédié aux irrégularités dans un délai de deux mois à compter de la demande de la division d’annulation à cet égard, la demande doit être rejetée pour irrecevabilité (article 30, paragraphe 1, du REDC).
3.5 Qualité pour agir du demandeur
Toute personne physique ou morale, ainsi que toute autorité publique habilitée à cet effet, peut présenter à la division d’annulation une demande en nullité d’un dessin ou modèle communautaire, sur la base de l’article 25, paragraphe 1, points a) et b), du RDC (article 52, paragraphe 1, du RDC).
Toutefois, lorsque le motif de nullité est la violation d’un droit antérieur au sens de l’article 25, paragraphe 1, points c) à f), du RDC, ou un usage abusif d’emblèmes
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officiels, au sens de l’article 25, paragraphe 1, point g), du RDC, la recevabilité d’une demande en nullité exige que le demandeur soit titulaire du droit antérieur ou soit concerné par l’usage de l’emblème officiel, le cas échéant (article 52, paragraphe 1, du RDC). La revendication du droit est examinée sur la base du droit international, national ou du droit de l’Union qui régit le droit antérieur ou l’emblème officiel en question.
Pour la justification du droit du demandeur, voir le paragraphe 3.9.2 ci-dessous.
3.6 Représentation de la demande
3.6.1 Lorsque la représentation est obligatoire
En principe, les règles régissant la représentation dans les procédures relatives aux marques communautaires s’appliquent mutatis mutandis aux procédures en nullité pour les dessins ou modèles communautaires (voir les Directives, partie A, Règles générales, section 5, Représentation professionnelle).
Les personnes ayant leur domicile, leur siège ou un établissement industriel ou commercial effectif et sérieux dans l’Union européenne ne sont pas tenues d’être représentées dans toute procédure devant l’Office.
Lorsque le demandeur n’a ni domicile, ni siège, ni établissement industriel ou commercial effectif et sérieux dans l’Union européenne, il doit être représenté, faute de quoi il est tenu de désigner un représentant dans un délai de deux mois. Si le demandeur ne se conforme pas à cette obligation, sa demande est rejetée pour irrecevabilité (article 77, paragraphe 2, du RDC; articles 30, paragraphe 1, et 28, paragraphe 1, point c), du REDC).
Lorsqu’elle examine si un demandeur a un établissement industriel ou commercial effectif et sérieux dans l’Union européenne, la division d’annulation suit les orientations de la Cour de justice du 22 novembre 1978, dans l’affaire C-33/78, «Somafer SA», point 12 («la notion de succursale, d’agence ou de tout autre établissement implique un centre d’opérations qui se manifeste d’une façon durable vers l’extérieur comme le prolongement d’une maison mère, pourvu d’une direction et matériellement équipé de façon à pouvoir négocier des affaires avec des tiers»). La preuve qu’un demandeur a un établissement industriel ou commercial effectif et sérieux dans l’Union européenne peut notamment consister en statuts, rapports annuels, déclarations écrites et autres documents d’entreprise.
3.6.2 Qui peut représenter
Seul un avocat ou un mandataire agréé satisfaisant aux exigences de l’article 78, paragraphe 1, du RDC peut représenter des tiers devant l’Office.
Les personnes physiques ou morales qui ont leur domicile, leur siège ou un établissement industriel ou commercial effectif et sérieux dans l’Union européenne peuvent agir devant l’Office par l’entremise d’un employé. L’employé d’une telle personne morale peut agir également pour d’autres personnes morales qui n’ont ni domicile, ni siège ni établissement industriel ou commercial effectif et sérieux dans l’Union européenne, à condition qu’il existe des liens économiques entre les deux personnes morales (article 77, paragraphe 3, du RDC).
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3.7 Identification du dessin ou modèle communautaire contesté
Une demande en nullité doit contenir le numéro d’enregistrement du dessin ou modèle communautaire contesté ainsi que le nom et l’adresse de son titulaire, conformément au registre (article 28, paragraphe 1, point a), du REDC).
Lorsque les informations données par le demandeur ne permettent pas d’identifier clairement le dessin ou modèle communautaire contesté, le demandeur est tenu de fournir de telles informations dans un délai de deux mois Si le demandeur ne se conforme pas à cette obligation, sa demande est rejetée pour irrecevabilité (article 30, paragraphe 1, du REDC).
3.8 Extinction des enregistrements
La nullité de l’enregistrement d’un dessin ou modèle communautaire peut être prononcée même après extinction du droit ou renonciation à ce droit (article 24, paragraphe 2, du RDC).
En cas d’extinction ou de renonciation au droit au dessin ou modèle communautaire contesté avant ou à la date de dépôt de la demande, le demandeur est tenu de fournir, dans un délai de deux mois, la preuve qu’il a un intérêt juridique à voir prononcer une déclaration de nullité. Si le demandeur ne se conforme pas à cette obligation, sa demande est rejetée pour irrecevabilité (article 30, paragraphe 1, du REDC) [décision de la division d’annulation du 16 juin 2011 (ICD 8231)].
L’intérêt juridique est par exemple établi lorsque le demandeur prouve que le titulaire du dessin ou modèle communautaire contesté a pris des mesures en vue d’invoquer contre lui des droits au titre dudit dessin ou modèle contesté.
En cas d’extinction du droit ou de renonciation au droit au dessin ou modèle communautaire contesté au cours de la procédure en nullité, le demandeur est invité à confirmer qu’il maintient sa demande dans un délai de deux mois et, le cas échéant, à présenter les raisons à l’appui de sa demande d’une décision sur le fond.
3.9 Exposé des motifs, faits, preuves et observations
La demande en nullité doit contenir une indication précisant les motifs invoqués dans la demande (article 52, paragraphe 2, du RDC; article 28, paragraphe 1, points b) et i), du REDC) ainsi qu’un exposé motivé énonçant les faits, preuves et observations à l’appui de ces motifs (article 28, paragraphe 1, point b), sous vi), du REDC).
3.9.1 Exposé des motifs
Si le demandeur utilise le formulaire mis à disposition par l’Office (article 68, paragraphe 1, point f), du REDC), l’indication des motifs invoqués se fait en cochant une ou plusieurs cases dans le champ «Motifs». La division d’annulation examine une demande à la lumière de tous les motifs avancés dans le mémoire dûment motivé, même si les cases correspondantes dans le formulaire utilisé pour introduire l’action n’ont pas été cochées.
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Si le demandeur n’utilise pas le formulaire mis à disposition par l’Office, une indication du sous-paragraphe pertinent de l’article 25, paragraphe 1, du RDC, telle que «motif en vertu de l’article 25, paragraphe 1, point a), du RDC», suffit pour établir la recevabilité de la demande en ce qui concerne l’exposé des motifs.
Lorsque la demande ne permet pas d’identifier clairement le ou les motifs sur lesquels elle se fonde, le demandeur est tenu de fournir des précisions supplémentaires à cet égard dans un délai de deux mois. Si le demandeur ne se conforme pas à cette obligation, sa demande est rejetée pour irrecevabilité (article 30, paragraphe 1, du REDC).
Les motifs de nullité autres que ceux spécifiquement invoqués dans la demande sont rejetés pour irrecevabilité lorsqu’ils sont soumis ultérieurement devant la division d’annulation.
L’Office recommande vivement de présenter tous les motifs de nullité dans une seule et même demande. Lorsque des demandes distinctes sont déposées contre le même dessin ou modèle communautaire contesté et fondées sur différents motifs, la division d’annulation peut joindre les procédures d’examen. Elle peut également décider ultérieurement de disjoindre les procédures (article 32, paragraphe 1, du REDC).
3.9.2 Faits, preuves et observations
Le demandeur doit indiquer les faits, preuves et observations à l’appui du ou des motifs sur lesquels sa demande se fonde [article 28, paragraphe 1, point b), sous vi), du REDC].
Les observations sont, soit exposées dans la case correspondante du formulaire mis à disposition par l’Office [article 68, paragraphe 1, point f), du REDC], soit dans l’exposé des motifs joint à la demande.
Lorsque le demandeur fait valoir que le dessin ou modèle communautaire contesté est dépourvu de nouveauté ou de caractère individuel (article 25, paragraphe 1, point b), du RDC), la demande doit comporter une représentation du ou des dessin(s) ou modèle(s) antérieur(s) susceptible(s) de faire obstacle à la nouveauté ou au caractère individuel du dessin ou modèle communautaire contesté, ainsi que des documents prouvant la divulgation du ou des dessin(s) ou modèle(s) antérieur(s) (article 7 du RDC; article 28, paragraphe 1, point b), sous v), du REDC).
Lorsque le demandeur fait valoir que le titulaire ne possède pas le droit au dessin ou modèle communautaire contesté (article 25, paragraphe 1, point c), du RDC), la demande doit comporter des précisions démontrant que le demandeur possède le droit au dessin ou modèle communautaire contesté en vertu d’une décision de justice (article 28, paragraphe 1, point c), sous iii), du REDC).
Lorsque le demandeur fait valoir que le dessin ou modèle communautaire contesté est en conflit avec un dessin ou modèle antérieur (article 25, paragraphe 1, point d), du RDC), la demande doit comporter une représentation et des précisions identifiant le dessin ou modèle antérieur. En outre, la demande doit comporter des éléments démontrant que le demandeur est le titulaire du dessin ou modèle antérieur invoqué comme motif de nullité (article 28, paragraphe 1, point b), sous ii), du REDC).
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Lorsque le demandeur fait valoir que le dessin ou modèle communautaire contesté viole un droit antérieur, à savoir qu’il constitue un usage non autorisé d’un signe distinctif (article 25, paragraphe 1, point e), du RDC) ou d’une œuvre protégée par le droit d’auteur dans un État membre [article 25, paragraphe 1, point f), du RDC], la demande doit comporter une représentation et des précisions identifiant le signe distinctif ou l’œuvre protégée par le droit d’auteur.
En outre, la demande doit contenir des éléments démontrant que le demandeur est titulaire du droit antérieur en question (article 28, paragraphe 1, point b), sous iii, du REDC]. Lorsque le droit antérieur est enregistré, une distinction est opérée selon que le dessin, le modèle ou la marque antérieurs est un dessin ou modèle communautaire enregistré ou une marque communautaire. Si le droit antérieur est un dessin ou modèle communautaire enregistré ou une marque communautaire, le demandeur ne doit présenter aucun document. L’examen de la justification se fera au regard des informations contenues dans la base de données de l’Office. Dans tous les autres cas, le demandeur doit fournir à l’Office la preuve du dépôt et de l’enregistrement du dessin ou modèle ou du signe distinctif enregistré antérieur. Les documents suivants seront acceptés pour justifier l’existence d’un modèle ou dessin antérieur: 1) certificats délivrés par l’organisme officiel approprié, 2) extraits des bases de données officielles [voir les Directives, partie C, Opposition, section 1, Questions de procédure, chapitre 4.2.3.2, Extraits de banques de données officielles], 3) extraits des bulletins officiels émanant des offices nationaux concernés et de l’OMPI.
Lorsque le droit antérieur n’est pas enregistré, cette condition sera considérée comme remplie, aux fins de l’examen de la recevabilité de la demande, si le demandeur présente des éléments de preuve démontrant que le signe distinctif antérieur ou l’œuvre antérieure protégée par la législation sur le droit d’auteur a été utilisé(e) ou divulgué(e), le cas échéant, sous le nom du demandeur avant la date de dépôt ou la date de priorité du dessin ou modèle communautaire (voir les paragraphes 5.7.3 et 5.8.1 ci-dessous pour la justification du droit de propriété du dessin ou modèle antérieur invoqué en vertu de l’article 25, paragraphe 1, points e) et f), du RDC).
Lorsque le demandeur fait valoir que le dessin ou modèle communautaire contesté constitue un usage abusif de l’un des éléments qui sont énumérés à l’article 6 ter de la convention de Paris, ou un usage abusif de signes, emblèmes et armoiries autres que ceux visés audit article 6 ter, et qui présentent un intérêt particulier pour un État membre (article 25, paragraphe 1, point g), du RDC), la demande doit comporter une représentation et des précisions sur l’élément pertinent, ainsi que des éléments démontrant que la demande est présentée par la personne ou l’organe concerné par l’usage abusif (article 28, paragraphe 1, point b), sous iv), du REDC).
Lorsque les indications requises ci-dessus sont manquantes et que le demandeur ne remédie pas à cette irrégularité dans un délai de deux mois après la demande de la division d’annulation à cet égard, la demande est rejetée pour irrecevabilité (article 30, paragraphe 1, du REDC).
Lorsque les preuves fournies à l’appui de la demande ne sont pas rédigées dans la langue de procédure, le demandeur doit, de sa propre initiative, en produire une traduction dans cette langue dans un délai de deux mois à compter du dépôt des preuves (article 29, paragraphe 5, du REDC). La question de savoir si certaines parties des pièces justificatives peuvent être considérées comme étant sans pertinence pour la demande et, dès lors, ne pas faire l’objet d’une traduction relève de la libre appréciation du demandeur. Lorsqu’aucune traduction n’est produite, la division d’annulation ignore les parties du texte des éléments de preuve qui ne sont pas
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traduites et fonde sa décision sur les seuls éléments de preuve dont elle dispose et qui ont été traduits dans la langue de procédure (article 31, paragraphe 2, du REDC).
Les documents à l’appui d’une demande doivent être énumérés dans un bordereau des annexes joint à la demande elle-même. À titre de meilleure pratique, le bordereau des annexes doit, pour chaque document annexé, indiquer le numéro de l’annexe (annexe A.1, A.2, etc.), comporter une brève description du document (par exemple «lettre») suivie de sa date, mentionner le ou les auteurs, le nombre de pages ainsi que la référence des pages et le numéro du paragraphe du mémoire citant le document et expliquant sa pertinence.
Les documents joints en annexe à un mémoire doivent être paginés, et ce afin de garantir que toutes les pages des annexes ont été dûment numérisées et communiquées aux autres parties.
3.9.3 Recevabilité à l’égard de l’un des motifs invoqués
Une demande fondée sur plusieurs motifs de nullité est recevable si les conditions concernant la recevabilité sont satisfaites pour au moins un de ces motifs.
3.10 Signature de la demande
La demande en nullité doit être signée par le demandeur ou par son représentant s’il en a un (article 65, paragraphe 1, du REDC).
Lorsque la signature est manquante, la division d’annulation invite le demandeur à remédier à cette irrégularité dans un délai de deux mois. Si le demandeur ne se conforme pas à cette invitation, sa demande est rejetée pour irrecevabilité (article 30, paragraphe 1, du REDC).
3.11 Moyens de dépôt
Une demande en nullité peut être déposée auprès de l’Office par voie postale, par voie de signification ou par télécopieur (article 65 du REDC). Le dépôt électronique des demandes sera autorisé par une décision ultérieure du président, une fois que les moyens techniques seront disponibles.
Lorsqu’une communication reçue par télécopieur est incomplète ou illisible, ou que la division d’annulation a des doutes sérieux quant à l’intégrité des données transmises, elle en informe l’expéditeur et l’invite, dans le délai qu’elle lui impartit, à transmettre à nouveau l’original par télécopie ou à lui fournir l’original. S’il est déféré à cette invitation en temps voulu, la date de réception de la nouvelle transmission ou de l’original est réputée être la date de réception de la communication originale. S’il n’est pas déféré à cette invitation en temps voulu, la communication est réputée n’être jamais parvenue (article 66, paragraphe 2, du REDC).
Il n’est pas recommandé de transmettre des demandes en nullité par télécopieur, en particulier si une absence de nouveauté et/ou de caractère individuel est revendiquée, car la transmission par télécopieur risque de détériorer la qualité de la représentation du ou des dessin(s) ou modèle(s) antérieur(s) et d’entraîner la perte d’informations relatives aux couleurs.
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Si une demande est transmise par télécopieur, l’Office recommande au demandeur de soumettre deux exemplaires de l’original dans un délai d’un mois à compter de la date de transmission par télécopieur. La division d’annulation en transmet alors un exemplaire au titulaire. Si, ultérieurement, le demandeur ne transmet pas de documents originaux après une transmission par télécopieur, la division d’annulation procède à l’examen avec les documents dont elle dispose.
Il incombe au demandeur de s’assurer que les caractéristiques des dessins ou modèles antérieurs ou des autres droits, telles qu’elles apparaissent dans la télécopie reçue par la division d’annulation, sont suffisamment visibles et identifiables pour permettre à la division d’annulation de rendre sa décision. Une demande est rejetée comme dénuée de fondement si les éléments de preuve de l’œuvre antérieure ou des droits antérieurs transmis par télécopie, sans être totalement illisibles, ne sont pas d’une qualité suffisante pour permettre de discerner tous les détails en vue d’une comparaison avec le dessin ou modèle communautaire contesté (décision du 10 mars 2008, R 586/2007-3 – «Barbecues», points 23 à 26).
3.12 Paiement de la taxe
La demande en nullité n’est réputée présentée qu’après paiement intégral de la taxe (article 52, paragraphe 2, du RDC; article 28, paragraphe 2, et article 30, paragraphe 2, du REDC).
Les modes de paiement sont le virement sur un compte bancaire de l’Office (article 5, paragraphe 1, du RTDMC) ou, pour les titulaires d’un compte courant, via ce dernier. En cas de paiement via un compte courant, la taxe est automatiquement débitée du compte courant du demandeur à la réception de la demande. La date à laquelle le montant du versement ou du virement est effectivement porté au crédit du compte bancaire de l’Office est considérée comme la date à laquelle le paiement est effectué (article 7, paragraphe 1, du RTDMC).
Voir, pour plus d’informations, les Directives, partie A, Règles générales, section 3, Paiement des taxes, coûts et charges.
Le paiement ne peut être effectué par chèque.
Lorsque la division d’annulation constate que la taxe n’a pas été acquittée, elle le notifie au demandeur et lui demande de s’acquitter de la taxe dans un délai de deux mois à compter de la réception de la notification. Si le demandeur ne se conforme pas à cette demande, la demande en nullité est réputée ne pas avoir été présentée, et le demandeur en est informé. Si la taxe prescrite est acquittée après l’expiration du délai fixé, elle est remboursée au demandeur (article 30, paragraphe 2, du REDC).
La date à laquelle le paiement de la taxe est effectué détermine la date de dépôt de la demande en nullité (article 52, paragraphe 2, du RDC; article 30, paragraphe 2, du REDC).
3.13 Traitement des irrégularités
Lorsque la division d’annulation constate que la demande est irrecevable et qu’il n’a pas été remédié à l’irrégularité dans le délai prescrit, elle prend une décision rejetant la
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demande pour irrecevabilité (article 30, paragraphe 1, du REDC). La taxe n’est pas remboursée.
3.14 Notification au titulaire
La notification d’une demande en nullité au titulaire du dessin ou modèle enregistré n’a lieu qu’après que cette demande a été jugée recevable (article 31, paragraphe 1, du REDC). Cette notification constitue en elle-même une décision sur la recevabilité, plutôt qu’une simple mesure d’organisation de procédure. Cette décision peut faire l’objet d’un de recours avec la décision finale (article 55, paragraphe 2, du RDC).
La décision sur la recevabilité peut toutefois être retirée, conformément aux principes généraux du droit administratif et procédural, si des irrégularités sont constatées d’office par l’Office, dans un délai raisonnable, ou par le titulaire du dessin ou modèle enregistré dans ses premières observations (article 31, paragraphe 1, du REDC), et si le demandeur en nullité ne remédie pas à ces irrégularités dans le délai imparti par l’Office (article 30 du REDC) (voir l’article 68 du RDC et, par analogie, l’arrêt du 18 octobre 2012, C-402/11 P, «REDTUBE/REDTUBE», point 59).
Lorsque la division d’annulation ne rejette pas la demande pour irrecevabilité, la demande est notifiée au titulaire et un délai de deux mois pour soumettre des observations en réponse à la demande est communiqué (voir ci-dessous, paragraphe 4.1.1 Observations du titulaire).
3.15 Participation du contrefacteur présumé
Aussi longtemps que la division d’annulation n’a pas pris de décision définitive, tout tiers qui apporte la preuve qu’une procédure en contrefaçon fondée sur le dessin ou modèle communautaire contesté a été engagée à son encontre peut participer à la procédure en nullité (article 54 du RDC; article 33 du REDC).
Le contrefacteur présumé doit présenter une demande de participation à l’instance dans un délai de trois mois à compter de la date à laquelle l’action en contrefaçon a été engagée. À moins que le titulaire ne produise une preuve établissant qu’une autre date doit être retenue conformément à la législation nationale en question, la division d’annulation présume que la procédure est engagée à la date de signification de l’action à l’encontre du contrefacteur présumé. Le contrefacteur présumé doit soumettre des éléments de preuve en ce qui concerne la date de signification de l’action.
Tout tiers qui apporte la preuve i) que le titulaire du dessin ou modèle communautaire lui a demandé de cesser la contrefaçon présumée dudit dessin ou modèle et ii) qu’il a introduit à l’encontre dudit titulaire une action tendant à faire constater judiciairement qu’il n’est pas contrefacteur dudit dessin ou modèle enregistré (si la législation nationale admet les actions en constatation de non-contrefaçon) peut également être partie à la procédure en nullité (article 54 et article 81, point b), du RDC).
La demande de participation à l’instance doit être présentée par écrit et motivée, et elle ne prend effet qu’après paiement de la taxe d’annulation. Les règles exposées ci- dessus, aux paragraphes 3.1 à 3.13, s’appliquent au contrefacteur présumé (article 54, paragraphe 2, du RDC; article 33 du REDC).
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4 Phase contradictoire de la procédure
4.1 Échange de communications
4.1.1 Observations du titulaire
4.1.1.1 Généralités
Les observations du titulaire sont communiquées sans délai au demandeur (article 31, paragraphe 3, du REDC).
Les documents à l’appui des observations doivent être énumérés dans un bordereau des annexes (voir le paragraphe 3.1.9.2 ci-dessus).
Le titulaire doit soumettre ses observations (y compris les pièces justificatives) en deux exemplaires, afin qu’un exemplaire puisse être conservé dans les archives de l’Office et que l’autre puisse être envoyé au demandeur, sans perte de qualité due à la copie. Si les observations sont soumises en un seul exemplaire, la division d’annulation peut inviter le titulaire à déposer un second exemplaire dans un délai d’un mois, ou de deux mois dans le cas où le demandeur n’aurait pas son domicile, son siège ou un établissement dans l’Union européenne (article 57, paragraphe 1, du REDC).
Si le titulaire ne présente aucune observation dans le délai de deux mois prescrit, la division d’annulation informe les parties que la phase écrite de la procédure est clôturée et qu’elle rendra une décision sur le fond en fonction des preuves dont elle dispose (article 31, paragraphe 2, du REDC).
4.1.1.2 Demande de preuve de l’usage d’une marque antérieure
Le titulaire peut soumettre une demande de preuve de l’usage d’une marque antérieure pendant la période de cinq ans précédant la date de la demande en nullité si les conditions cumulatives suivantes sont remplies:
la demande est fondée sur l’article 25, paragraphe 1, point e), du RDC;
le signe distinctif antérieur est une marque (communautaire, internationale ou nationale) qui produit ses effets dans l’Union européenne et qui, à la date de la demande en nullité, est enregistrée depuis cinq ans au moins;
la demande de preuve de l’usage est présentée conjointement avec les premières observations du titulaire en réponse à la demande (arrêt du 12 mai 2010, T-148/08, «Instrument d’écriture», points 66 à 72, arrêt du 27 juin 2013, T-608/11, «Instrument d’écriture II», point 87. Voir également la décision du 15 novembre 2013, R 1386/2012-3, «Cinturones», point 21).
«La date à laquelle la procédure d’enregistrement est terminée» (article 10, paragraphe 1, de la directive 2008/95/CE) qui sert à calculer le point de départ pour l’obligation d’usage des enregistrements nationaux et internationaux est déterminée par chaque État membre selon ses propres règles procédurales (arrêt du 14 juin 2007, C-246/05, «Le Chef DE CUISINE», points 26 à 28). En ce qui concerne les marques communautaires, cette date est la date d’enregistrement (article 15, paragraphe 1, du règlement (CE) n° 207/2009 du Conseil du 26 février 2009 sur la marque
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communautaire, ci-après dénommé le «RMC») telle que publiée au Bulletin des marques communautaires (règle 23, paragraphe 5, du règlement (CE) n° 2868/95 de la Commission portant modalités d’application du RMC, ci-après dénommé le «REMC»). En ce qui concerne les enregistrements internationaux désignant l’Union européenne, la date pertinente est celle de la seconde publication, conformément à l’article 152, paragraphe 2, et à l’article 160 du RMC.
4.1.2 Traduction des observations du titulaire
Lorsque la langue de procédure n’est pas la langue de dépôt du dessin ou modèle communautaire contesté, le titulaire peut produire ses observations dans la langue de dépôt (article 98, paragraphe 4, du RDC; article 29, paragraphe 2, du REDC). La division d’annulation veille à assurer la traduction de ces observations dans la langue de procédure, gratuitement, et en communique sans délai la traduction au demandeur.
4.1.3 Portée de la défense
Dans ses observations, le titulaire doit indiquer dans quelle mesure il défend le dessin ou modèle communautaire contesté. Si le titulaire ne donne pas cette indication, il est présumé qu’il entend maintenir le dessin ou modèle communautaire dans sa forme enregistrée à l’origine, à savoir dans son intégralité.
Lorsque le titulaire requiert le maintien du dessin ou modèle communautaire sous une forme modifiée, sa requête doit comporter une représentation de la forme telle qu’elle a été modifiée. La forme modifiée doit répondre aux exigences de protection, et l’identité du dessin ou modèle communautaire doit être conservée. Le «maintien» sous une forme modifiée peut inclure l’enregistrement assorti d’une renonciation partielle de la part du titulaire ou l’inscription au registre d’une décision judiciaire ou d’une décision de la division d’annulation prononçant la nullité partielle du dessin ou modèle communautaire (article 25, paragraphe 6, du RDC) (voir le paragraphe 4.9).
La requête aux fins de maintien du dessin ou modèle communautaire contesté sous une forme modifiée doit être soumise au cours de la procédure en nullité et avant la fin de la procédure écrite. La possibilité est donnée au demandeur de formuler des observations et de faire savoir si le dessin ou modèle communautaire répond, sous sa forme modifiée, aux critères d’octroi de la protection et s’il conserve son identité. La décision de maintenir le dessin ou modèle communautaire sous une forme modifiée est incluse dans la décision sur le fond qui met fin à la procédure en nullité.
4.1.4 Réponse du demandeur
4.1.4.1 Généralités
Lorsque les observations des parties permettent à la division d’annulation de fonder sa décision sur les éléments de preuve dont elle dispose, la division d’annulation informe les parties que la phase écrite de la procédure est clôturée.
Toutefois, le demandeur est autorisé à répondre aux observations du titulaire dans un délai de deux mois (article 53, paragraphe 2, du RDC; article 31, paragraphe 3, du REDC) dans les circonstances suivantes:
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lorsque les observations du titulaire contiennent de nouveaux faits, preuves et observations qui sont de prime abord pertinents pour une décision sur le fond; ou
lorsque le titulaire demande le maintien du dessin ou modèle communautaire sous une forme modifiée; ou
lorsque le titulaire a demandé la preuve de l’usage de la marque antérieure invoquée en vertu de l’article 25, paragraphe 1, point e), du RDC.
Toute réponse du demandeur est communiquée au titulaire (article 31, paragraphe 4, du REDC). Lorsque la réponse du demandeur est jugée recevable, le titulaire est invité à présenter une duplique (article 53, paragraphe 2, du RDC).
Si le titulaire ne répond pas dans le délai imparti, la division d’annulation informe les parties que la phase écrite de la procédure est clôturée et qu’elle rendra une décision sur le fond en fonction des preuves dont elle dispose (article 31, paragraphe 2, du REDC).
L’objet de la procédure doit être défini dans la demande (voir les paragraphes 2.1.9.1 et 2.1.9.2 ci-dessus). L’invocation de dessins ou modèles et/ou de droits antérieurs supplémentaires est irrecevable lorsqu’elle est soumise au stade procédural tardif de la réponse, si elle a pour effet de modifier l’objet de la procédure (décision du 22 octobre 2009, R 690/2007-3, «Chaff cutters», points 44 et suivants). La recevabilité de faits, preuves et observations supplémentaires concernant des dessins ou modèles et/ou des droits antérieurs déjà visés dans la demande est soumise au pouvoir discrétionnaire conféré à la division d’annulation conformément à l’article 63, paragraphe 2, du RDC (voir le paragraphe 2.4 ci-dessus).
Le demandeur doit soumettre sa réponse en deux exemplaires, afin qu’un exemplaire puisse être conservé dans les archives de l’Office et que l’autre puisse être envoyé au titulaire, sans perte de qualité due à la copie. Si une réponse est soumise en un seul exemplaire, la division d’annulation peut inviter le demandeur à déposer un second exemplaire dans un délai d’un mois, ou de deux mois dans le cas où le demandeur n’aurait pas son domicile, son siège ou un établissement dans l’Union européenne (article 57, paragraphe 1, du REDC).
4.1.4.2 Traduction de la réponse du demandeur
Toute réponse du demandeur doit être rédigée dans la langue de procédure. Lorsque le demandeur a été invité à répondre et que sa réponse n’est pas formulée dans la langue de procédure, il doit produire, de sa propre initiative, une traduction de sa réponse dans un délai d’un mois à compter de la date de soumission de sa réponse initiale (article 81, paragraphe 1, du REDC). La division d’annulation ne rappellera pas au demandeur ses obligations à cet égard. Si le demandeur produit la traduction dans les délais, elle est communiquée au titulaire. Si le demandeur ne produit pas la traduction dans les délais, sa réponse est réputée ne pas avoir été présentée.
4.1.4.3 Présentation de la preuve de l’usage d’une marque antérieure
Lorsque le titulaire est invité à soumettre une preuve de l’usage de sa marque antérieure, il soumet cette preuve i) en relation avec les produits ou services à l’égard desquels cette marque est enregistrée et que le demandeur cite en tant que justification de sa demande et ii) en ce qui concerne la période de cinq ans précédant
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la date de la demande en nullité, sauf justes motifs pour le non-usage. Ces motifs pour le non-usage doivent être étayés.
La preuve de l’usage d’une marque antérieure doit satisfaire à toutes les conditions cumulatives imposées par la règle 22, paragraphe 3, du REMC, à savoir les indications sur le lieu, la durée, l’importance et la nature de l’usage qui a été fait de la marque antérieure pour les produits et services pour lesquels elle est enregistrée et sur lesquels la demande est fondée.
L’usage de la marque sous une forme qui diffère par des éléments n’altérant pas son caractère distinctif dans la forme sous laquelle celle-ci a été enregistrée est recevable (article 5, paragraphe C, point 2, de la convention de Paris).
Lorsque la langue des documents produits par le demandeur n’est pas la langue de procédure, la division d’annulation peut exiger qu’une traduction soit fournie dans cette langue, dans un délai d’un mois, ou de deux mois dans le cas où le titulaire n’aurait pas son domicile, son siège ou un établissement dans l’Union européenne (article 81, paragraphe 2, et article 57, paragraphe 1, du REDC).
En l’absence de preuve de l’usage sérieux de la marque antérieure (sauf justes motifs pour le non-usage) ou en l’absence d’une traduction si elle est requise par la division d’annulation, la demande en nullité est rejetée dans la mesure où elle est fondée sur l’article 25, paragraphe 1, point e), du RDC. Si la marque antérieure n’a été utilisée que pour une partie des produits ou des services pour lesquels elle est enregistrée, elle n’est réputée enregistrée que pour cette partie des produits et services, aux fins de l’examen de la demande en nullité (voir, par analogie, l’article 57, paragraphes 2 et 3, du RMC).
Lorsqu’elle examine la preuve de l’usage, la division d’annulation applique les principes exposés dans les Directives, partie C, Opposition, section 6, Preuve de l’usage.
4.1.5 Fin de l’échange des observations
Lorsque les observations des parties ne font état d’aucun nouveau fait, élément ou observation étant de prime abord en rapport avec la décision sur le fond, la division d’annulation informe les deux parties que la procédure écrite est clôturée et qu’une décision sera prise en fonction des preuves dont elle dispose (article 53, paragraphe 2, du RDC).
Les faits, preuves ou observations soumis après notification aux parties de la clôture de la phase écrite de la procédure sont considérés comme irrecevables, sauf circonstances exceptionnelles, par exemple si les éléments de preuve n’étaient pas disponibles à un stade antérieur ou en cas d’élément nouveau au cours de la procédure (article 63, paragraphe 2, du RDC, voir le paragraphe 2.4 ci-dessus).
4.1.6 Prorogation des délais et suspension
4.1.6.1 Prorogation des délais
Les demandes de prorogation de délai par l’une des parties doivent être introduites avant l’expiration du délai (article 57, paragraphe 1, du REDC).
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En règle générale, une première demande de prorogation est accordée. De nouvelles prorogations ne sont pas automatiquement accordées. Plus particulièrement, la division d’annulation peut subordonner la prorogation du délai à l’accord de l’autre ou des autres partie(s) à la procédure (article 57, paragraphe 2, du REDC).
Les motifs à l’appui de toute nouvelle demande de prorogation doivent être soumis à la division d’annulation. La demande de prorogation du délai doit indiquer les raisons pour lesquelles les parties ne peuvent respecter le délai. Les obstacles rencontrés par les représentants des parties ne justifient pas une prorogation (voir, par analogie, ordonnance du 5 mars 2009, C-90/08 P, «CORPO LIVRE/LIVRE», points 20 à 23).
La prorogation ne peut donner lieu à un délai supérieur à six mois (article 57, paragraphe 1, du REDC). Les deux parties sont informées de toute prorogation.
4.1.6.2 Suspension
La division d’annulation suspend de sa propre initiative la procédure après audition des parties, sauf s’il existe des raisons particulières de poursuivre la procédure, dès lors qu’il a été porté à son attention que la validité du dessin ou modèle communautaire contesté est déjà contestée par une demande reconventionnelle devant un tribunal national compétent et que celui-ci ne sursoit pas à statuer (article 91, paragraphe 2, du RDC).
La division d’annulation peut suspendre la procédure lorsque les circonstances le justifient, notamment:
lorsque la demande en nullité est fondée sur un dessin ou modèle antérieur ou sur une marque antérieure pour lesquels la procédure d’enregistrement est pendante jusqu’à ce qu’une décision finale soit prise dans cette procédure (article 25, paragraphe 1, points d) et e), du RDC);
lorsque la demande en nullité est fondée sur un dessin ou modèle antérieur ou sur une marque antérieure dont la validité est contestée dans une procédure administrative ou judiciaire, jusqu’à ce qu’une décision finale soit rendue dans cette procédure;
lorsque la division d’annulation reçoit une demande de suspension conjointe signée par les deux parties en vue d’aboutir à un règlement à l’amiable (article 31, paragraphe 5, du REDC);
lorsque plusieurs demandes en nullité ont été déposées pour un même dessin ou modèle communautaire et qu’il résulte d’un examen préliminaire qu’il est possible que ledit dessin ou modèle communautaire soit nul en vertu de l’une de ces demandes. La division d’annulation traite d’abord cette demande et peut suspendre les autres procédures en nullité (article 32, paragraphe 2, du REDC).
La division d’annulation dispose d’un large pouvoir d’appréciation pour décider s’il est approprié de suspendre la procédure. La décision relative à la suspension doit être le résultat d’une mise en balance des intérêts respectifs des parties, y compris l’intérêt du demandeur à obtenir une décision dans un délai raisonnable (voir, par analogie, arrêt du 16 mai 2011, T-145/08, «ATLAS», points 68 à 77).
La division d’annulation informe les parties de sa décision d’accorder ou de refuser une suspension. Lorsqu’une suspension est accordée pour une durée déterminée, la
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division d’annulation indique dans sa communication la date de reprise de la procédure. La procédure reprend le lendemain de l’expiration de la suspension. Lorsque la division d’annulation décide de ne pas accorder la suspension, elle motive sa décision soit au moment du refus de la suspension ou dans la décision qui met fin à la procédure.
Lorsqu’une suspension est accordée pour une durée indéterminée, la procédure en nullité reprend lorsque les parties informent la division d’annulation que l’événement qui justifiait la suspension a eu lieu ou a cessé d’exister, le cas échéant. La date de reprise est indiquée dans la communication de la division d’annulation. À défaut d’une telle indication, cette date est le lendemain de la date de cette communication.
Lorsqu’un délai courait au moment de la suspension, un délai de deux mois à compter de la date de la reprise de la procédure est accordé à la partie concernée pour soumettre ses observations.
Lorsque la suspension a été demandée conjointement par les parties, le délai est toujours d’un an, indépendamment du délai demandé par les parties. Toute partie peut mettre un terme à la suspension («retrait»). Il est indifférent que l’autre partie y ait donné ou non son accord.
Si l’une des parties se retire, la suspension prend fin deux semaines après que les parties en ont été informées. La procédure reprend le lendemain. Lorsqu’un délai courait au moment de la suspension, un délai de deux mois à compter de la date de la reprise de la procédure est accordé à la partie concernée pour soumettre ses observations.
4.1.7 Instruction
Les parties peuvent soumettre des preuves sous la forme de documents et de moyens de preuve, d’expertises et d’auditions de témoins, et/ou de déclarations écrites faites sous serment ou solennellement ou qui ont un effet équivalent d’après la législation de l’État dans lequel elles sont faites (article 65, paragraphe 1, du RDC).
Lorsqu’une partie propose de faire entendre un témoin ou un expert, la division d’annulation invite cette partie à présenter la déclaration de ce témoin ou l’expertise par écrit, sauf lorsqu’il est jugé opportun de recourir à une audition (article 65 du RDC; articles 43 et 46 du REDC).
4.1.8 Procédure orale
Une procédure orale a lieu à la demande de la division d’annulation ou de l’une des parties (article 64 du RDC; article 38, paragraphe 1, et article 42 du REDC).
Lorsqu’une partie demande qu’une procédure orale ait lieu, la division d’annulation jouit d’un large pouvoir d’appréciation quant à la réelle nécessité d’une telle procédure. Aucune audition n’aura lieu lorsque la division d’annulation dispose de toutes les informations nécessaires sur lesquelles fonder le dispositif de la décision de nullité (décision du 13 mai 2008, R 135/2007-3, «Machines de jeux automatiques», point 14).
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Lorsque la division d’annulation décide de recourir à une procédure orale et de convoquer les parties, le délai de comparution ne peut être inférieur à un mois, à moins que les parties ne conviennent d’un délai plus court.
Le but de toute procédure orale étant d’élucider toutes les questions restant à trancher avant qu’une décision sur le fond ne soit prise, il convient pour la division d’annulation, dans sa convocation, d’attirer l’attention des parties sur les points qui doivent, à son avis, être discutés. Dans la mesure où la division d’annulation estime que certaines questions l’exigent et pour faciliter le débat, elle peut inviter les parties à présenter des observations écrites ou à produire des preuves préalablement au débat oral. Le délai fixé par la division d’annulation pour la réception de ces observations tient compte du fait que celles-ci doivent parvenir à la division d’annulation dans un délai raisonnable pour qu’elles puissent être transmises aux autres parties.
Les parties peuvent également produire, de leur propre initiative, des preuves à l’appui de leur argumentation. Toutefois, si ces preuves devaient être produites à un stade antérieur de la procédure, la division d’annulation est seule juge de la recevabilité de ces moyens de preuve, dans le respect du principe du contradictoire, le cas échéant.
La procédure orale, y compris le prononcé de la décision, est publique, pour autant que le dessin ou modèle communautaire contesté ait été publié, sauf si la publicité de l’audition devait présenter, notamment pour une partie à la procédure, des inconvénients graves et injustifiés. Les parties sont informées en conséquence dans la convocation.
Une copie du procès-verbal est remise aux parties, qui contient l’essentiel de la procédure orale et les déclarations significatives des parties (article 46 du REDC).
La division d’annulation applique les principes exposés dans les Directives, partie A, Dispositions générales, section 2, Principes généraux à respecter dans les procédures, chapitre 5, Procédure orale.
4.2 Examen
4.2.1 Début de l’examen
La division d’annulation débute l’examen de la demande aussitôt que les parties sont informées de la clôture de la phase écrite de la procédure et de la fin du délai de soumission des observations (article 53 du RDC).
4.2.2 Examen des motifs de nullité
Les motifs pour déclarer nul un dessin ou modèle communautaire sont repris de manière exhaustive à l’article 25 du RDC. Une demande en nullité fondée sur un autre motif que ceux énumérés dans le RDC (par exemple, un argument selon lequel le titulaire agissait de mauvaise foi lors de la demande du dessin ou modèle communautaire enregistré) est rejetée pour irrecevabilité en ce qui concerne le motif en question (arrêt du 18 mars 2010, T-9/07, «Représentation d’un support promotionnel circulaire», points 30 et 31).
Plus d’un motif peut être invoqué dans la demande sans entraîner de taxes supplémentaires. Lorsqu’il utilise le formulaire mis à disposition par l’Office, le
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demandeur doit cocher la case correspondant aux motifs sur lesquels la demande est fondée.
Chaque motif doit être étayé par son propre ensemble de faits, preuves et arguments.
L’article 25, paragraphe 1, point b), du RDC inclut plusieurs motifs, à savoir le motif du non-respect des conditions fixées à l’article 4 du RDC (nouveauté, caractère individuel et visibilité des pièces de produits complexes), les motifs visés à l’article 8, paragraphes 1 et 2, du RDC (fonctionnalité et dessins ou modèles d’interconnexions) et le motif visé à l’article 9 du RDC (caractère contraire à l’ordre public ou aux bonnes mœurs).
Lorsque la case de la section «Motifs» du formulaire de demande correspondant à l’article 25, paragraphe 1, point b), du RDC est cochée, la division d’annulation détermine quel est ou quels sont les motifs spécifiques invoqués par le demandeur à partir des faits, preuves et observations mentionnés dans l’exposé des motifs et limite en conséquence la portée de son examen de la demande (décision du 17 avril 2008, R 976/2007-3, «Radiators for heating», point 26).
Il en va de même pour la case de la section «Motifs» du formulaire de demande correspondant à l’article 25, paragraphe 1, points c), d), e), f) ou g), du RDC.
La division d’annulation doit examiner une demande à la lumière de tous les motifs avancés dans l’exposé des motifs original, même si les cases correspondantes du formulaire de demande n’ont pas été cochées. Dès lors, lorsque le demandeur a indiqué dans le mémoire exposant les motifs que le dessin ou modèle communautaire contesté n’était «pas nouveau», cette indication constitue un exposé des motifs valable même si la case de la section «Motifs» concernant les exigences des articles 4 à 9 du RDC n’a pas été cochée (décision du 2 août 2007, R 1456/2006-3 – «Saucepan handle», point 10).
Lorsqu’un demandeur conteste expressément la nouveauté d’un dessin ou modèle communautaire et fournit des preuves d’une divulgation antérieure, il est présumé qu’il demande la nullité au motif de l’article 25, paragraphe 1, point b), du RDC, lu conjointement avec l’article 4 du RDC. Dès lors, la division d’annulation examine également le caractère individuel du dessin ou modèle communautaire contesté (décision du 22 novembre 2006, R 196/2006-3 – «Underwater motive device»).
Le demandeur ne peut soulever de nouveaux motifs de nullité après la date de dépôt de la demande. Il peut toutefois déposer une autre demande en nullité fondée sur des motifs différents.
Lorsque la demande peut être accueillie sur la base de l’un des multiples motifs avancés par le demandeur, la division d’annulation ne statue pas sur les autres motifs (décision du 15 décembre 2004 – ICD 321). Lorsqu’une demande peut être accueillie au motif de l’existence de l’un des dessins ou modèles ou droits antérieurs invoqués par le demandeur, les autres dessins ou modèles ou droits antérieurs ne sont pas examinés (voir, par analogie, arrêt du 16 septembre 2004, T-342/02, «MGM/MGM.», et ordonnance du 11 mai 2006, T-194/05, «TELETECH INTERNATIONAL/TELETECH et. al.»).
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5 Les différents motifs de nullité
5.1 Pas un dessin ou modèle
Conformément à l’article 25, paragraphe 1, point a), du RDC, un dessin ou modèle communautaire peut être déclaré nul si le dessin ou modèle ne répond pas à la définition visée à l’article 3, point a), du RDC. Tel est le cas si les vues du dessin ou modèle communautaire sont incohérentes et représentent différents produits (autres que des produits formant un «ensemble de produits», voir article 3 du RDC et Directives, partie A, Dispositions générales, section 5, Exigences supplémentaires concernant la reproduction du dessin ou modèle, chapitre 5.2.3, Ensemble d’articles), ou lorsque la représentation graphique consiste en de simples représentations de la nature (paysages, fruits, animaux, etc.) qui ne sont pas des produits au sens de l’article 3, paragraphe 1, point b), du RDC.
5.1.1 Organismes vivants
Un dessin ou modèle qui affiche l’apparence d’un organisme vivant à l’état naturel doit en principe être refusé. Même si la forme en question s’écarte de celle de l’organisme vivant commun correspondant, le dessin ou le modèle doit être refusé si rien ne suggère, à première vue, que cette forme est le résultat d’un procédé manuel ou industriel (voir, par analogie, la décision du 18 février 2013, R 595/2012-3, «Groente en fruit», point 11).
Dessin ou modèle communautaire n° 1943283-0001 pour «Groente en fruit» (troisième chambre de recours, décision du 18 février 2013, R 595/2012-3)
5.1.2 Idées et modalités d’utilisation
Le droit des dessins ou modèles protège l’apparence d’un produit ou d’une partie d’un produit, mais ne protège pas l’idée sous-jacente à un dessin ou modèle (arrêt du 6 juin 2013, T-68/11, «Watch Dials», point 72). De même, les modalités d’utilisation ou de fonctionnement ne sont pas protégées par un dessin ou modèle (arrêt du 21 novembre 2013, T-337/12, «Tire-bouchon», point 52).
5.2 Absence de droit
Conformément à l’article 25, paragraphe 1, point c), du RDC, un dessin ou modèle communautaire peut être déclaré nul si, en vertu d’une décision de justice, le titulaire ne possède pas le droit au dessin ou modèle communautaire au sens de l’article 14 du RDC.
Il ressort clairement des termes «en vertu d’une décision de justice», à l’article 25, paragraphe 1, point c), du RDC, que la division d’annulation n’est pas compétente pour déterminer qui possède un droit à un dessin ou modèle communautaire en vertu de
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l’article 14 du RDC. Ce pouvoir appartient à toute juridiction nationale compétente en vertu de l’article 27 et de l’article 79, paragraphes 1 et 4, du RDC, lus conjointement avec l’article 93 du RDC. En l’absence d’une décision de justice, la division d’annulation ne peut déclarer nul le dessin ou modèle communautaire contesté en vertu de l’article 25, paragraphe 1, point c), du RDC (décision du 11 février 2008, R 64/2007-3 – «Loudspeaker», point 15).
L’article 15, paragraphe 1, du RDC, qui traite de la revendication d’être reconnu en tant que titulaire légitime du dessin ou modèle communautaire, est également dénué de pertinence en ce qui concerne le motif visé à l’article 25, paragraphe 1, point c), du RDC.
Une telle revendication entre dans la catégorie des «actions en matière de dessins ou modèles communautaires autres que celles visées à l’article 81 du RDC» et relève dès lors de la compétence d’une juridiction nationale en vertu de l’article 93, paragraphe 1, du RDC, plutôt que de celle de la division d’annulation. Cela est confirmé par le libellé de l’article 27, paragraphe 3, du REDC, qui fait référence à une telle revendication «devant un tribunal».
5.3 Fonction technique
L’article 8, paragraphe 1, du RDC dispose qu’«un dessin ou modèle communautaire ne confère pas de droits sur les caractéristiques de l’apparence d’un produit qui sont exclusivement imposées par sa fonction technique».
5.3.1 Justification
«L’article 8, paragraphe 1, du RDC refuse une protection aux caractéristiques de l’apparence d’un produit qui ont été exclusivement choisies dans le but de permettre à un produit de remplir sa fonction, par opposition aux caractéristiques qui ont été choisies, du moins à un certain degré, dans le but d’améliorer l’aspect visuel du produit», comme l’a affirmé la troisième chambre de recours (décision du 22 octobre 2009, R 690/2007-3, «Chaff cutters», points 35 et suivants).
Le fait qu’une caractéristique particulière de l’apparence d’un produit se voit refuser une protection au titre de l’article 8, paragraphe 1, du RDC ne signifie pas que l’ensemble du dessin ou modèle doit être déclaré nul, conformément à l’article 25, paragraphe 1, point b), du RDC. L’ensemble du dessin ou modèle n’est déclaré nul que si toutes les caractéristiques essentielles de l’apparence du produit en question étaient uniquement dictées par sa fonction technique (décision du 29 avril 2010, R 211/2008-3 – «Fluid distribution equipment», point 36).
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Dessin ou modèle communautaire n° 232996-0008 pour «Fluid distribution equipment» (troisième chambre de recours, décision du 29 avril 2010, R 0211/2008-3).
Dessin tiré de la demande de brevet européen antérieure (EP 1 568 418 A2) concernant un «procédé et système pour supporter et/ou aligner les composants d’un système de distribution de liquide».
5.3.2 Examen
Afin de déterminer si les caractéristiques essentielles de l’apparence du produit dans lequel sera incorporé le dessin ou modèle communautaire contesté sont uniquement dictées par la fonction technique du produit, il est d’abord nécessaire de déterminer quelle est la fonction technique de ce produit. Il convient de tenir compte de l’indication qui y est relative dans la demande d’enregistrement dudit dessin ou modèle (article 36, paragraphe 2, du RDC), mais également, le cas échéant, du dessin ou modèle lui- même, dans la mesure où il précise la nature du produit, sa destination ou sa fonction (voir, par analogie, l’arrêt du 18 mars 2010, T-9/07, «Représentation d’un support promotionnel circulaire», point 56).
Le fait que l’article 8, paragraphe 1, du RDC s’applique doit être apprécié objectivement, et non selon la perception de l’utilisateur averti qui peut avoir une connaissance limitée des questions techniques.
La fonctionnalité technique des caractéristiques d’un dessin ou modèle peut être appréciée, entre autres, en tenant compte des documents relatifs aux brevets qui décrivent les éléments fonctionnels de la forme concernée.
En fonction du cas, et compte tenu notamment de son degré de difficulté, la division d’annulation peut désigner un expert (article 65, paragraphe 3, du RDC, et article 44 du REDC).
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La division d’annulation applique les principes exposés dans les Directives, partie A, Dispositions générales, section 2, Principes généraux à respecter dans les procédures, chapitre 4.3, Expertise
5.3.3 Formes alternatives
L’article 8, paragraphe 1, du RDC n’exige pas qu’une caractéristique spécifique soit le seul moyen par lequel la fonction technique du produit peut être obtenue. L’article 8, paragraphe 1, du RDC s’applique dans les cas où la nécessité d’obtenir la fonction technique du produit était le seul facteur pertinent lorsque la caractéristique en question a été sélectionnée (décision du 22 octobre 2009, R 690/2007-3 – «Chaff cutters», points 31 et 32; décision du 10 juin 2013, R 2466/2011-3 - «Blades», points 15 et 16).
L’examen de l’article 8, paragraphe 1, du RDC doit être effectué en analysant le dessin ou modèle communautaire et non les dessins ou modèles composés d’autres formes.
5.4 Dessins ou modèles des interconnexions
Les caractéristiques d’un dessin ou modèle communautaire sont exclues de la protection si elles doivent nécessairement être reproduites sous leur forme et leurs dimensions exactes pour que le produit dans lequel est incorporé ou auquel est appliqué le dessin ou modèle puisse mécaniquement être raccordé à un autre produit, être placé à l’intérieur ou autour d’un autre produit, ou être mis en contact avec un autre produit, de manière à ce que chaque produit puisse remplir sa fonction. Si l’article 8, paragraphe 2, du RDC s’applique à toutes les caractéristiques essentielles du dessin ou modèle communautaire, ce dernier doit être déclaré nul (décision du 20 novembre 2007, ICD 2970).
La preuve qu’un dessin ou modèle communautaire peut être contesté sur la base de l’article 8, paragraphe 2, du RDC incombe au demandeur. Le demandeur doit justifier l’existence du produit dont la forme et les dimensions dictent celles du dessin ou modèle communautaire et soumettre des faits, preuves et observations démontrant les fonctions exercées par ce produit et par ce dessin ou modèle communautaire, individuellement et/ou conjointement.
À titre d’exception, l’article 8, paragraphe 2, du RDC ne s’applique pas à un dessin ou modèle communautaire qui a pour objet de permettre l’assemblage ou la connexion multiples de produits interchangeables à l’intérieur d’un système modulaire (article 8, paragraphe 3, du RDC). La preuve que le dessin ou modèle communautaire remplit un tel objectif incombe au titulaire.
5.5 Absence de nouveauté et de caractère individuel
5.5.1 Divulgation d’un dessin ou modèle antérieur
5.5.1.1 Principes généraux
Pour contester la validité d’un dessin ou modèle communautaire au motif de son absence de nouveauté ou de caractère individuel, il est nécessaire de prouver qu’un
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dessin ou modèle antérieur, qui est identique ou qui produit une impression globale similaire, a été divulgué au public avant la date de dépôt de la demande d’enregistrement ou, si une priorité est revendiquée, la date de priorité (articles 5 et 6 du RDC).
Le public en question est composé de membres des milieux spécialisés du secteur concerné opérant dans l’Union européenne (article 7, paragraphe 1, du RDC).
Le terme milieux spécialisés du secteur concerné au sens de l’article 7, paragraphe 1, du RDC ne se limite pas aux personnes impliquées dans la création de dessins ou modèles ou la conception ou la fabrication de produits sur la base de ces dessins ou modèles au sein du secteur concerné. L’article 7, paragraphe 1, du RDC n’établit aucune restriction quant à la nature de l’activité des personnes physiques ou morales qui peuvent être considérées comme faisant partie des milieux spécialisés du secteur concerné. Par conséquent, les commerçants peuvent également faire partie des «milieux spécialisés» au sens de l’article 7, paragraphe 1, du RDC (voir, par analogie, l’arrêt du 13 février 2014, C-479-12, «Gazebo», point 27).
Aux fins de l’article 7 du RDC, on entend par «dessin ou modèle» l’apparence d’un produit ou d’une partie de produit que lui confèrent, en particulier, les caractéristiques des lignes, des contours, des couleurs, de la forme, de la texture et/ou des matériaux du produit lui-même et/ou de son ornementation (article 3, point a), du RDC). Il importe peu que ce «dessin ou modèle» antérieur au sens de l’article 3, point a), du RDC bénéficie d’une protection juridique (en tant que dessin ou modèle, marque, ouvrage protégé par un droit d’auteur, modèle d’utilité ou autre).
Le demandeur doit justifier la divulgation d’un dessin ou modèle antérieur.
Un dessin ou modèle qui a été divulgué au public en tout endroit du monde et à tout moment après avoir été publié à la suite d’un enregistrement ou autrement, d’une exposition, d’une utilisation dans le commerce ou autrement, est réputé avoir été divulgué aux fins de l’application des articles 5 et 6 du RDC (article 7, paragraphe 1, du RDC).
Toutefois, il n’est pas tenu compte des actes de divulgation d’un dessin ou modèle antérieur si le titulaire soumet des faits, preuves et observations convaincants à l’appui de la thèse selon laquelle ces faits, dans la pratique normale des affaires, ne pouvaient raisonnablement être connus des milieux spécialisés du secteur concerné, opérant dans l’Union européenne (article 7, paragraphe 1, du RDC; article 63, paragraphe 1, du RDC) (décision du 22 mars 2012, R 1482/2009-3 – «Insulation blocks», point 38).
D’autres exceptions seront traitées aux paragraphes 5.5.1.7 à 5.5.1.8 ci-dessous.
5.5.1.2 Publications officielles
La publication d’un dessin ou modèle antérieur au bulletin de tout office de la propriété industrielle dans le monde entier constitue une divulgation et c’est seulement («sauf») si cette publication ne peut raisonnablement pas être connue des professionnels du secteur concerné dans l’Union européenne que ladite règle souffre une exception. En conséquence, une fois que la preuve de la publication a été fournie par le demandeur, la divulgation est présumée et, compte tenu de la mondialisation des marchés, c’est au titulaire qu’il incombe de présenter des faits, arguments ou preuves du contraire, à savoir que la publication du dessin ou modèle antérieur ne pouvait pas être
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raisonnablement connue des milieux spécialisés du secteur concerné opérant dans l’Union européenne (décision du 27 novembre 2009, R 1267/2008-3, «Montres», points 35 et suivants; décision du 7 juillet 2008, R 1516/2007-3, «Bidons», point 9).
Les publications aux bulletins des marques et brevets pouvaient également être connues, dans la pratique normale des affaires, des milieux spécialisés du secteur concerné opérant dans l’Union européenne. Par conséquent, lorsque l’apparence d’un produit a fait l’objet d’une demande et d’une publication en tant que marque, il convient de considérer cela comme une divulgation d’un «dessin ou modèle» aux fins de l’article 7 du RDC (arrêt du 16 décembre 2010, T-513/09, «Personnage assis», point 20). Il en va de même lorsque les représentations contenues dans une demande de brevet présentent l’apparence d’un article industriel ou artisanal (décision du 22 mars 2010, R 417/2009-3, «Drinking straws», point 21). Toutefois, la présence d’un document conservé par un office des brevets et des marques qui n’est rendu public qu’au moyen d’une requête en inspection publique ne saurait être considérée comme étant connue, dans la pratique normale des affaires, des milieux spécialisés du secteur concerné et, partant, ne prouve pas la divulgation d’un dessin ou modèle antérieur au sens de l’article 7 du RDC (décision du 22 mars 2012, R 1482/2009-3, «Insulation blocks», points 39 et 43; décision du 15 avril 2013, R 442/2011-3 - «Skirting Boards», point 26).
Afin de justifier la divulgation, un certificat d’enregistrement doit spécifier la date de publication indépendamment de la date de dépôt ou de la date d’enregistrement. La publication dans le bulletin officiel d’un office national des brevets doit être considérée comme une divulgation et une mise à disposition du public conformément à l’article 7, paragraphe 1, du RDC (arrêt du 7 novembre 2013, T-666/11, «Puma», point 25). Que la publication intervienne avant ou après l’enregistrement est sans importance (décision du 15 avril 2013, R 442/2011-3 - «Skirting Boards», point 24)
Il suffit par ailleurs que la date de publication puisse être identifiée par la mention d’un code INID [«Internationally agreed Numbers for the Identification of (bibliographic) Data» (identification numérique internationalement agréée en matière de données bibliographiques, telle que normalisée par la norme ST.9 de l’OMPI. Voir décision de la division d’annulation du 14 novembre 2006 (ICD 2061)].
5.5.1.3 Expositions et utilisation dans le commerce
La divulgation d’un dessin ou modèle lors d’une exposition internationale en tout endroit du monde est un événement qui, dans la pratique normale des affaires, peut être connu des milieux spécialisés du secteur concerné opérant dans l’Union européenne, sauf lorsque la preuve du contraire est fournie (décision du 26 mars 2010, R 9/2008-3, «Footwear», points 73 à 82; décision du 1er juin 2012, R 1622/2010-3, «Lamps», point 24). La question de savoir si les personnes faisant partie de ces milieux pouvaient raisonnablement avoir connaissance d’événements s’étant produits en dehors du territoire de l’Union est une question de fait dont la réponse dépend de l’appréciation par l’OHMI sur la base des circonstances propres à chaque affaire (arrêt du 13 février 2014, C-479/12, «Gazebo», point 34).
L’utilisation dans le commerce est un autre exemple mentionné à l’article 7, paragraphe 1, du RDC de divulgation d’un dessin ou modèle, indépendamment du fait que cette utilisation ait lieu au sein ou en dehors de l’UE (décision du 26 mars 2010, R 9/2008-3, «Footwear», points 63 à 71).
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La divulgation d’un dessin ou modèle peut être le résultat d’une utilisation dans le commerce, même s’il n’existe pas de preuve au dossier que les produits dans lesquels le dessin ou modèle antérieur est incorporé ont été réellement commercialisés en Europe. Il suffit que les produits aient été proposés à la vente dans des catalogues distribués (décision du 22 octobre 2007, R 1401/2006-3, «Ornamentation», point 25) ou importés d’un pays tiers vers l’Union européenne (arrêt du 14 juin 2011, T-68/10, «Montre attachée à une lanière», points 31 et 32) ou qu’ils aient fait l’objet d’un acte d’achat entre deux opérateurs européens (arrêt du 9 mars 2012, T-450/08, «Flacons», points 30 à 45).
En ce qui concerne la soumission de catalogues, leur valeur de preuve ne dépend pas du fait qu’ils aient été ou non diffusés dans le grand public. Des catalogues uniquement mis à la disposition de professionnels peuvent également constituer des moyens de preuve valides, compte tenu du fait que le public à prendre en considération pour évaluer la divulgation est constitué par «les milieux spécialisés du secteur concerné» (article 7, paragraphe 1, du RDC).
La mesure ou les circonstances de la diffusion des catalogues peuvent constituer des facteurs pertinents (arrêt du 13 février 2014, C-479/12, «Gazebo», points 35 et 36). Toutefois, ce qui importe, dans le cadre de l’article 7 du RDC, c’est de savoir si les professionnels européens du secteur concerné, dans leur ensemble, ont eu la possibilité raisonnable d’avoir accès au dessin ou modèle, quel que soit le nombre réel de ces professionnels qui ont saisi cette opportunité et ont en fin de compte été confrontés avec le dessin ou modèle divulgué.
; L’OHMI réalise une évaluation globale de tous les documents soumis par le demandeur de l’annulation aux fins de déterminer si la divulgation a eu lieu, y compris si un catalogue est authentique et a été diffusé dans les milieux intéressés.
Il suffit que la divulgation ait eu lieu à un moment pouvant être identifié avec une certitude raisonnable avant la date de dépôt ou la date de priorité du dessin ou modèle communautaire contesté, même si la date exacte de la divulgation n’est pas connue (arrêt du 14 juin 2011, T-68/10, «Montre attachée à une lanière», points 31 et 32).
5.5.1.4 Divulgations provenant de l’internet
En principe, les divulgations provenant d’internet font partie de l’état de la technique. Les informations divulguées sur internet ou dans des bases de données en ligne sont considérées comme publiquement disponibles à la date où l’information a été affichée. Les sites internet contiennent souvent des informations hautement pertinentes. Certaines informations peuvent même n’être disponibles que sur internet à partir de ces sites. Cela inclut, par exemple, des publications en ligne d’enregistrements de dessins ou modèles par des offices de la propriété industrielle.
La nature d’internet peut rendre difficile l’établissement de la date réelle à laquelle les informations ont réellement été mises à la disposition du public. Par exemple, toutes les pages internet ne mentionnent pas le moment où elles ont été publiées. En outre, les sites internet sont aisément mis à jour, bien que la plupart ne proposent pas d’archives des documents publiés précédemment et ne publient pas d’enregistrements permettant au public d’établir précisément ce qui a été publié et quand.
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Dans ce contexte, la date de divulgation sur internet sera notamment considérée fiable quand:
le site internet propose des informations horodatées sur l’historique des modifications apportées à un fichier ou à une page internet (par exemple, comme disponibles pour Wikipédia ou automatiquement jointes au contenu, par exemple les messages sur les forums et les blogs); ou
des dates d’indexation sont attribuées à la page internet par des moteurs de recherche (par exemple, à partir du cache de Google); ou
une saisie d’écran d’une page internet porte une date spécifique; ou
des informations concernant les mises à jour d’une page internet sont disponibles auprès d’un service d’archivage internet.
Ni la restriction de l’accès à un cercle limité de personnes (par exemple au moyen d’une protection par un mot de passe) ni l’exigence d’un paiement pour l’accès (analogue à l’achat d’un livre ou à l’abonnement à un journal) n’empêchent une page internet de faire partie de l’état de la technique. Il suffit que la page internet soit accessible sans aucune restriction de confidentialité et que les exigences en matière d’accessibilité puissent raisonnablement être remplies par les professionnels européens des milieux concernés.
5.5.1.5 Déclarations écrites, sous serment ou faites solennellement (affidavits)
En principe, les affidavits ne suffisent pas à eux seuls à prouver un fait tel que la divulgation d’un dessin ou modèle antérieur. Ils peuvent cependant corroborer et/ou préciser l’exactitude de documents supplémentaires (décision du 14 octobre 2009, R 316/2008-3, «Fireplaces», point 22. Voir, par analogie, l’arrêt du 13 mai 2009, T-183/08, «SCHUHPARK/Schuhpark», point 43).
Pour apprécier la valeur probante d’un affidavit, il convient avant tout de vérifier la vraisemblance de l’information qui y est contenue, en tenant compte, notamment, de son origine, des circonstances de son élaboration et de son destinataire, et de se demander si, d’après son contenu, il semble sensé et fiable (arrêt du 9 mars 2012, T-450/08, «Flacons», points 39 et 40).
Les affidavits et autres preuves documentaires provenant de parties ayant intérêt à ce que la nullité du dessin ou modèle communautaire soit déclarée présentent une valeur probante moindre par rapport aux documents provenant d’une source neutre (arrêt du 14 juin 2011, T-68/10, «Montre attachée à une lanière», points 33 à 36).
La division d’annulation applique les principes exposés dans les Directives, partie C, Opposition, section 6 Preuve de l’usage, chapitre 3.3.2.3, Déclarations.
5.5.1.6 Divulgation insuffisante
La question de la divulgation du dessin ou modèle antérieur est préliminaire à celle de savoir si deux dessins ou modèles produisent la même impression d’ensemble sur l’utilisateur averti. Si le dessin ou modèle antérieur n’a pas été rendu public ou s’il l’a été, mais d’une manière incompatible avec les exigences de l’article 7, paragraphe 1,
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du RDC, il existe alors un motif suffisant de rejeter la demande dans la mesure où elle est fondée sur les articles 5 et 6 du RDC (décision du 10 mars 2008, R 586/2007-3 – «Barbecues», points 22 et suivants).
Ni le RDC ni le REDC ne spécifient la forme des éléments de preuve qui doivent être apportés pour établir la divulgation; l’article 28, paragraphe 1, point b) v) dispose uniquement que «les documents prouvant l’existence de ces dessins ou modèles antérieurs» doivent être fournis. De même, il n’y a pas de disposition quant à une quelconque forme obligatoire des éléments de preuve qui doivent être apportés. L’article 65 du RDC énumère des moyens possibles d’apporter des preuves devant l’Office, mais il ressort clairement de son libellé que cette liste n’est pas exhaustive («peuvent notamment être prises»). Par conséquent, la question des éléments de preuve attestant la divulgation est laissée à la discrétion du demandeur et, en principe, tout élément susceptible de démontrer la divulgation peut être accepté.
La division d’annulation procède à une appréciation globale de ces preuves en tenant compte de tous les facteurs pertinents du cas d’espèce. La divulgation ne peut pas être démontrée par des probabilités ou des présomptions, mais doit reposer sur des éléments concrets et objectifs qui prouvent une divulgation effective et suffisante du dessin ou modèle antérieur (arrêt du 9 mars 2012, T-450/08, «Flacons», points 21 à 24).
Un examen global des éléments de preuve implique que ces éléments doivent être appréciés les uns par rapport aux autres. Même si certains éléments de preuve ne sont pas suffisants à eux seuls pour démontrer la divulgation, ils peuvent contribuer à former la preuve de la divulgation lorsqu’ils sont examinés conjointement avec d’autres éléments (arrêt du 9 mars 2012, T-450/08, «Flacons», points 25 et 30 à 45).
La division d’annulation n’est pas tenue de déterminer, au moyen d’hypothèses et de déductions, quels sont les dessins ou modèles antérieurs, parmi ceux représentés dans les preuves documentaires du demandeur, qui peuvent être pertinents lorsque le demandeur n’apporte pas d’autres spécifications à cet égard (voir le paragraphe 3.1.9.2 ci-dessus). Les dessins et modèles antérieurs autres que ceux spécifiquement cités comme faisant partie de l’état de la technique pertinent seront dès lors ignorés [décision du 4 octobre 2006 (ICD 2228)].
Lorsque la représentation du dessin ou modèle antérieur ne le représente pas adéquatement, rendant ainsi toute comparaison avec le dessin ou modèle contesté impossible, cela n’équivaut pas à une divulgation au sens de l’article 7, paragraphe 1, du RDC (décision du 10 mars 2008, «Barbecues», R 586/2007-3, points 22 et suivants).
Il ne peut être exclu que, dans certaines circonstances, une divulgation à une seule entreprise soit suffisante pour considérer que, dans la pratique normale des affaires, les milieux spécialisés du secteur concerné opérant au sein de l’Union pouvaient raisonnablement avoir connaissance du modèle ou du dessin (arrêt du 13 février 2014, C-479/12, «Gazebo», points 35-36). La question doit être examinée par l’OHMI au cas par cas.
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5.5.1.7 Divulgation à un tiers sous des conditions explicites ou implicites de secret
Le dessin ou modèle n’est pas réputé avoir été divulgué au public s’il a seulement été divulgué à un tiers sous des conditions explicites ou implicites de secret (article 7, paragraphe 1, du RDC).
Dès lors, la divulgation d’un dessin ou modèle à un tiers dans le contexte de négociations commerciales est sans effet si les parties concernées ont convenu que les informations échangées devaient rester secrètes [décision du 20 juin 2005 (ICD 172) point 22].
La charge de la preuve pour les faits attestant du secret incombe au titulaire du dessin ou du modèle communautaire contesté.
5.5.1.8 Divulgation pendant la période de priorité
Une demande de dessin ou modèle communautaire peut revendiquer la priorité d’une ou plusieurs demandes précédentes pour le même dessin ou modèle ou pour le même modèle d’utilité dans ou pour l’un des États parties à la convention de Paris ou à l’accord instituant l’Organisation mondiale du commerce (article 41 du RDC; article 8 du REDC). Le droit de priorité est de six mois à compter de la date de dépôt de la première demande.
Par l’effet du droit de priorité, la date de priorité est considérée comme date de dépôt de la demande d’enregistrement d’un dessin ou modèle communautaire, aux fins des articles 5, 6, 7 et 22, de l’article 25, paragraphe 1, point d), et de l’article 50, paragraphe 1, du RDC (article 43 du RDC).
Une revendication de priorité concernant le «même dessin ou modèle ou modèle d’utilité» exige une identité avec le dessin ou modèle communautaire correspondant, sans ajout ou suppression de caractéristiques. Une revendication de priorité est toutefois valide si le dessin ou modèle communautaire et la demande antérieure de droit à un dessin ou modèle et de modèle d’utilité ne diffèrent que par des détails insignifiants.
Lorsqu’il examine une demande de dessin ou modèle communautaire, l’Office ne vérifie pas si cette demande concerne le «même dessin ou modèle ou modèle d’utilité» dont la priorité est revendiquée.
L’Office procédera toutefois à l’examen d’une revendication de priorité si le demandeur conteste sa validité ou si le titulaire conteste les effets de la divulgation d’un dessin ou modèle, aux fins des articles 5, 6 et 7 du RDC, lorsque cette divulgation a eu lieu pendant la période de priorité.
Lorsque la validité de la revendication de priorité est déterminante pour l’issue de la demande, l’Office peut, soit statuer sur la validité de cette revendication dans la décision sur le fond, soit suspendre la procédure de sa propre initiative pour permettre au titulaire de remédier à d’éventuelles irrégularités dans un délai donné (article 45, paragraphe 2, point d), du RDC; article 1, paragraphe 1, point f), article 10, paragraphe 3, point c), article 10, paragraphes 7 et 8, du REDC).
La procédure en nullité reprend une fois qu’il a été remédié aux irrégularités ou lorsqu’une décision finale a été rendue sur la perte du droit de priorité (article 46,
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paragraphes 1 et 4, du RDC) (voir le paragraphe 4.1.6.2 ci-dessus pour la reprise de la procédure).
5.5.1.9 Délai de grâce
L’article 7, paragraphe 2, du RDC prévoit un «délai de grâce» de douze mois précédant la date de dépôt ou la date de priorité du dessin ou modèle communautaire contesté. La divulgation du dessin ou modèle communautaire pendant cette période n’est pas prise en considération si elle est le fait du créateur ou de son ayant droit.
En principe, le titulaire doit établir qu’il est soit le créateur du dessin ou modèle invoqué pour fonder la demande, soit l’ayant droit de ce créateur, à défaut de quoi l’article 7, paragraphe 2, du RDC ne peut s’appliquer (arrêt du 14 juin 2011, T-68/10, «Montre attachée à une lanière», points 26 à 29).
Toutefois, les actes de divulgation effectués par un tiers, par suite d’informations fournies ou de mesures prises par le créateur ou son ayant droit, sont également couverts par l’article 7, paragraphe 2, du RDC. Il peut en être ainsi lorsqu’un tiers a rendu public un dessin ou modèle copié à partir d’un dessin ou modèle qui a précédemment été divulgué au cours du délai de grâce par le titulaire lui-même (décision du 2 mai 2011, R 658/2010-3, «Lighting devices», points 37 à 39).
L’exception prévue à l’article 7, paragraphe 2, du RDC peut s’appliquer même lorsque le dessin ou modèle précédemment divulgué n’est pas strictement identique au dessin ou modèle communautaire contesté, au sens de l’article 5 du RDC. En effet, l’article 7, paragraphe 2, du RDC prévoit également une immunité contre la perte de caractère individuel conformément à l’article 6 du RDC (décision du 2 mai 2011, R 658/2010-3 – «Lighting devices», point 40).
Le «délai de grâce» est également applicable lorsque la divulgation d’un dessin ou modèle fait suite à une conduite abusive à l’égard du créateur ou de son ayant droit (article 7, paragraphe 3, du RDC). Le fait que la divulgation soit le résultat d’un comportement frauduleux ou malhonnête est apprécié au cas par cas, sur la base des faits, observations et preuves soumis par les parties (décision du 25 juillet 2009, R 0552/2008-3 – «Lecteur enregistreur MP3», points 24 à 27).
5.5.2 Appréciation de la nouveauté et du caractère individuel
La protection d’un dessin ou modèle par un dessin ou modèle communautaire n’est assurée que dans la mesure où il est nouveau et présente un caractère individuel (article 4, paragraphe 1, articles 5 et 6 du RDC). La nouveauté et le caractère individuel d’un dessin ou modèle communautaire doivent être examinés à sa date de dépôt ou, le cas échéant, à sa date de priorité, à la lumière de l’état de la technique pertinent. L’état de la technique pertinent est composé des dessins ou modèles antérieurs dont la divulgation, conformément à l’article 7 du RDC, a été justifiée par le demandeur (article 63 du RDC).
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5.5.2.1 Principes communs
Comparaison globale
Le dessin ou modèle communautaire doit être comparé avec chaque dessin ou modèle antérieur invoqué par le demandeur, individuellement. La nouveauté et le caractère individuel d’un dessin ou modèle communautaire ne sauraient être mis en échec par la combinaison de dessins ou modèles antérieurs ou d’éléments tirés de dessins ou modèles antérieurs (arrêt du 22 juin 2010, T-153/08, «Équipement de communication», points 23 et 24).
Une combinaison de caractéristiques déjà divulguées est, dès lors, susceptible de bénéficier d’une protection en tant que dessin ou modèle communautaire, à condition que cette combinaison, dans son ensemble, soit nouvelle et présente un caractère individuel.
En principe, toutes les caractéristiques d’un dessin ou modèle communautaire doivent être prises en considération lors de l’examen de sa nouveauté et de son caractère individuel. Il existe toutefois plusieurs exceptions à ce principe général.
Caractéristiques imposées par une fonction et caractéristiques d’interconnexion
Les caractéristiques exclusivement imposées par une fonction technique et les caractéristiques qui doivent nécessairement être reproduites dans leur forme et leurs dimensions exactes afin de permettre une interconnexion avec un autre produit ne sauraient contribuer à la nouveauté et au caractère individuel d’un dessin ou modèle communautaire. Ces caractéristiques doivent dès lors être ignorées lors de la comparaison du dessin ou modèle communautaire avec l’état de la technique pertinent (article 8 du RDC, voir paragraphe 5.3.1 ci-dessus).
L’exigence de visibilité
Les caractéristiques d’un dessin ou modèle communautaire appliqué à un produit ou incorporé dans «une pièce d’un produit complexe» sont ignorées si elles sont invisibles lors de l’utilisation normale du produit complexe en question (article 4, paragraphe 2, du RDC).
Par «produit complexe», on entend un produit se composant de pièces multiples qui peuvent être remplacées de manière à permettre le démontage et le remontage du produit (article 3, point c), du RDC). Par exemple, l’exigence de visibilité ne s’applique pas à un dessin ou modèle communautaire représentant l’apparence d’un conteneur à déchets dans son ensemble car les conteneurs à déchets peuvent être des produits complexes en tant que tels, mais non des pièces de produits complexes [décision du 23 juin 2008 (ICD 4919)].
Par «utilisation normale», on entend l’utilisation par l’utilisateur final, à l’exception de l’entretien, du service ou de la réparation (article 4, paragraphe 3, du RDC). L’«utilisation normale» est l’utilisation faite conformément à la finalité à laquelle le produit complexe est destiné.
Par exemple, pour des raisons de sécurité, un connecteur électrique est une pièce normalement incorporée dans un boîtier afin d’être protégée de tout contact avec des
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utilisateurs potentiels lorsqu’un produit complexe, tel un train ou un véhicule électrique, est en fonctionnement. Le fait qu’une telle pièce d’un produit complexe puisse théoriquement être visible lorsqu’elle est insérée dans un boîtier ou un coffret transparent constitue un critère purement hypothétique et aléatoire qu’il convient d’ignorer (décision du 3 août 2009, R 1052/2008-3 – «Contacteurs électriques», points 42 à 53).
Lorsqu’aucune des caractéristiques d’un dessin ou modèle communautaire appliquées à une pièce (par exemple, une bague d’étanchéité) n’est visible lors de l’utilisation normale du produit complexe (par exemple, un système de pompe à chaleur), ce dessin ou modèle communautaire sera déclaré nul dans son ensemble (décisions du 10 septembre 2013, R 293/2012-3 et R 688/2012-3 - «Heat exchanger inserts»).
Toutefois, l’article 4, paragraphe 2, du RDC n’exige pas qu’une pièce soit clairement visible dans son intégralité à tout moment lors de l’utilisation du produit complexe. Il suffit que l’ensemble de la pièce puisse être vu pendant quelque temps, de manière à ce que toutes ses caractéristiques essentielles puissent être appréhendées (décision du 22 octobre 2009, R 0690/2007-3, «Chaff cutters», point 21).
Lorsque les caractéristiques d’un dessin ou modèle communautaire appliquées à une pièce (par exemple, un moteur à combustion interne) ne sont que partiellement visibles lors de l’utilisation normale du produit complexe (par exemple, une tondeuse à gazon), la comparaison avec l’état de l’art pertinent doit se limiter aux parties visibles. «lors de l’utilisation normale d’une tondeuse à gazon, celle-ci est placée sur le sol et l’utilisateur se place debout derrière la tondeuse à gazon. Ainsi, l’utilisateur, debout derrière la tondeuse à gazon, voit le moteur d’en haut et voit donc principalement la partie supérieure du moteur. Il en résulte que la partie supérieure du moteur est déterminante pour l’impression globale produite par le moteur» (arrêt du 9 septembre 2011, T-10/08, «Moteur», points 20 à 22).
Caractéristiques manifestes
Les caractéristiques du dessin ou modèle communautaire qui ne peuvent être clairement discernées dans sa représentation graphique ne peuvent contribuer à sa nouveauté ou à son caractère individuel (directive 98/71/CE du Parlement européen et du Conseil du 13 octobre 1998 sur la protection juridique des dessins et modèles, considérant 11). De même, les caractéristiques du dessin ou modèle antérieur qui ne sont pas d’une qualité suffisante pour permettre de discerner tous les détails dans la représentation du dessin ou modèle antérieur ne sauraient être prises en considération aux fins des articles 5 et 6 du RDC (décision du 10 mars 2008, R 586/2007-3, «Barbecues», point 23 à 26).
Les caractéristiques d’un dessin ou modèle antérieur peuvent être complétées par des éléments supplémentaires qui ont été divulgués au public de différentes manières, en particulier, d’une part, par la publication d’un enregistrement et, d’autre part, par la présentation au public d’un produit incorporant le dessin ou modèle enregistré dans des catalogues. Ces représentations doivent toutefois se rapporter à un seul et même dessin ou modèle antérieur (arrêt du 22 juin 2010, T-153/08, «Équipement de communication», points 25 à 30).
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Caractéristiques non revendiquées
Les caractéristiques d’un dessin ou modèle communautaire qui ne sont pas revendiquées sont ignorées aux fins de la comparaison des dessins ou modèles. Cela s’applique aux caractéristiques d’un dessin ou modèle communautaire représentées par des pointillés, des lignes ou des couleurs, ou de toute autre manière montrant clairement que la protection n’est pas demandée pour ces caractéristiques (arrêt du 14 juin 2011, T-68/10, «Montre attachée à une lanière», points 59 à 64).
En revanche, les caractéristiques non revendiquées d’un dessin ou modèle antérieur enregistré sont prises en considération lors de l’appréciation de la nouveauté et du caractère individuel d’un dessin ou modèle communautaire contesté. Dans le contexte des articles 5 et 6 du RDC, il importe peu que le titulaire du dessin ou modèle antérieur enregistré puisse revendiquer une protection à l’égard de ces caractéristiques non revendiquées, pour autant qu’elles aient été divulguées conjointement avec le dessin ou modèle antérieur dans son ensemble.
5.5.2.2 Nouveauté
Un dessin ou modèle communautaire sera considéré comme nouveau s’il n’est pas précédé par un dessin ou modèle identique, divulgué conformément à l’article 7 du RDC. Des dessins ou modèles sont considérés comme identiques lorsque leurs caractéristiques ne diffèrent que par des détails insignifiants (article 5, paragraphe 2, du RDC).
Il existe une identité entre le dessin ou modèle communautaire et un dessin ou modèle antérieur lorsque ce dernier divulgue chaque élément composant le premier. Le cadre de la comparaison est limité aux caractéristiques composant le dessin ou modèle communautaire. Par conséquent, il importe peu de savoir si le dessin ou modèle antérieur divulgue des caractéristiques supplémentaires. Un dessin ou modèle communautaire ne peut être nouveau s’il est inclus dans un dessin ou modèle antérieur plus complexe (décision du 25 octobre 2011, R 978/2010-3 – «Part of a sanitary napkin», points 20 à 21).
Toutefois, les caractéristiques supplémentaires ou dissemblables du dessin ou modèle communautaire peuvent être pertinentes pour décider si ce dessin ou modèle communautaire est nouveau, à moins que ces éléments ne soient si insignifiants qu’ils puissent passer inaperçus.
Un exemple de détail insignifiant est une légère variation dans la nuance de l’agencement des couleurs des dessins ou modèles comparés (décision du 28 juillet 2009, R 0921/2008-3 – «Nail files», point 25). Une autre illustration est la représentation, dans un des deux dessins ou modèles, d’un signe distinctif si petit par la taille qu’il ne sera pas perçu comme une caractéristique pertinente (décision du 8 novembre 2006, R 0216/2005-3 – «Cafetera», points 23 à 26), comme dans l’exemple ci-dessous:
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Dessin ou modèle communautaire contesté No 5269-0001 (vue No 2),
ISOGONA, S.L.
Dessin ou modèle antérieur
5.5.2.3 Caractère individuel
Un dessin ou modèle est considéré comme présentant un caractère individuel si l’impression globale qu’il produit sur l’utilisateur averti diffère de celle que produit sur un tel utilisateur tout dessin ou modèle qui a été divulgué au public avant la date de dépôt de la demande d’enregistrement ou, si une priorité est revendiquée, avant la date de priorité (article 6, paragraphe 1, du RDC).
L’impression de similitude ou de différence produite sur l’utilisateur averti peut se définir comme l’absence ou la présence de «déjà vu» (voir, par analogie, l’arrêt du 7 novembre 2013, T-666/11, «Chat domestique»,, point 29).
Pour apprécier le caractère individuel, il est tenu compte du degré de liberté du créateur dans l’élaboration du dessin ou modèle (article 6, paragraphe 2, du RDC).
L’utilisateur averti
La qualité d’«utilisateur» implique que la personne concernée utilise le produit dans lequel est incorporé le dessin ou modèle en conformité avec la finalité à laquelle ce même produit est destiné (arrêt du 22 juin 2010, T-153/08, «Équipement de communication», point 46; arrêt du 9 septembre 2011, T-10/08, «Moteur à combustion interne», point 24; arrêt du 6 juin 2013, T-68/11, «Cadrans de montres», point 58).
La notion d’«utilisateur averti» doit être comprise comme une notion intermédiaire entre celle de consommateur moyen, applicable en matière de marques, auquel il n’est demandé aucune connaissance spécifique, et celle d’homme de l’art, expert doté de compétences techniques approfondies. Sans être un concepteur ou un expert technique (et donc sans savoir nécessairement quels sont les aspects du produit qui sont dictés par la fonction technique, comme indiqué dans l’arrêt du 22 juin 2013, T-153/08, «Équipement de communication», point 48), l’utilisateur averti connaît différents dessins ou modèles existant dans le secteur concerné, dispose d’un certain degré de connaissance quant aux éléments que ces dessins ou modèles comportent normalement et, du fait de son intérêt pour les produits concernés, fait preuve d’un degré d’attention relativement élevé lorsqu’il les utilise (arrêt du 20 octobre 2011, C-281/10 P, «Représentation d’un support promotionnel circulaire», points 53 et 59; arrêt du 22 juin 2010, T-153/08, «Équipement de communication», point 47; arrêt
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du 20 octobre 2011, C-281/10 P, «Feuilles métalliques», point 59; arrêt du 6 juin 2013, T-68/11, «Cadrans de montres», point 59).
En d’autres termes, l’utilisateur averti n’est ni un concepteur ni un expert technique. Dès lors, un utilisateur averti est une personne qui a une certaine connaissance des dessins ou modèles existant dans le secteur concerné, sans pour autant savoir quels sont les aspects de l’apparence du produit qui sont dictés par une fonction technique.
L’utilisateur averti n’est ni un fabricant ni un vendeur des produits dans lesquels les dessins ou modèles en cause sont destinés à être incorporés (arrêt du 9 septembre 2011, T-10/08, «Moteur», points 25 à 27).
Toutefois, en fonction de la nature du produit dans lequel le dessin ou modèle communautaire est incorporé (par exemple, des articles promotionnels), la notion d’utilisateur averti peut inclure, premièrement, un professionnel qui acquiert ces produits afin de les distribuer aux utilisateurs finaux et, deuxièmement, ces utilisateurs finaux eux-mêmes (arrêt du 20 octobre 2011, C-281/10 P, «Représentation d’un support promotionnel circulaire», point 54). Le fait que l’un des deux groupes d’utilisateurs avertis perçoive les dessins ou modèles concernés comme produisant la même impression globale est suffisant pour constater que le dessin ou modèle contesté est dépourvu de caractère individuel (arrêt du 14 juin 2011, T-68/10, «Montre attachée à une lanière», point 56).
Lorsque la nature du produit le permet, l’impression globale produite par les dessins ou modèles comparés est appréciée à partir de la prémisse selon laquelle l’utilisateur averti peut procéder à une comparaison directe de ceux-ci (arrêt du 18 octobre 2012, affaires jointes C-101/11P et C-102/11P, «Personnage assis», points 54 et 55).
L’impression globale
À moins que les dessins ou modèles comparés n’incluent des caractéristiques fonctionnelles, invisibles ou non revendiquées (voir le paragraphe 5.5.2.1 ci-dessus), les deux dessins ou modèles doivent être comparés globalement. Cela ne signifie pas, cependant, que le même poids doit être accordé à toutes les caractéristiques des dessins ou modèles comparés.
Premièrement, l’utilisateur averti utilise le produit dans lequel le dessin ou modèle est incorporé conformément à la finalité à laquelle ce produit est destiné. Le poids relatif à accorder aux caractéristiques des marques et dessins comparés pourrait dès lors dépendre de la façon dont ce produit est utilisé. Plus particulièrement, l’importance du rôle joué par certaines caractéristiques peut être moindre en fonction de leur visibilité réduite lorsque le produit est utilisé (arrêt du 22/06/2010, T-153/08, «Équipement de communication», points 64 à 66 et 72; arrêt du 21 novembre 2013, T-337/12, «Tire- bouchon», points 45 et 46; arrêt du 4 février 2014, T-339/12, «Fauteuils, canapés», point 30, arrêt du 4 février 2014, T-357/12, «Fauteuils, canapés», point 57).
Deuxièmement, lors de l’appréciation de l’impression globale produite par deux dessins ou modèles, l’utilisateur averti n’accordera qu’une importance mineure aux caractéristiques qui sont totalement banales et communes au type de produit en cause et se concentrera sur des caractéristiques qui sont arbitraires ou différentes de la norme (arrêt du 18 mars 2010, T-9/07, «Représentation d’un support promotionnel circulaire», point 77; décision du 28 novembre 2006, R 1310/2005-3, «Galletas», point 13; décision du 30 juillet 2009, R 1734/2008-3, «Forks», points 26 et suivants).
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Troisièmement, les similitudes concernant les caractéristiques à l’égard desquelles le créateur bénéficiait d’un degré de liberté limité n’auront que peu d’importance dans l’impression globale produite par lesdits dessins ou modèles sur l’utilisateur averti (arrêt du 18 mars 2010, T-9/07, «Représentation d’un support promotionnel circulaire», point 72).
À titre d’illustration, il a été retenu que le dessin ou modèle enregistré No 1512633- 0001 produisait une impression visuelle d’ensemble différente de celle produite par le dessin ou modèle enregistré antérieur No 52113-0001. Dans un domaine pour lequel le degré de liberté du créateur n’était restreint par aucune contrainte technique ou légale, le Tribunal a confirmé la décision de la chambre de recours, qui estimait que les différences affectant les caractéristiques des deux dessins ou modèles ci-dessous l’emportaient sur leurs similitudes. En particulier, le fait que le fauteuil du dessin ou modèle antérieur a une forme rectangulaire plutôt que carrée, que l’assise est plus basse et que les bras sont plus larges, a été jugé décisif à l’appui de la conclusion que le dessin ou modèle contesté possède un caractère individuel (arrêt du 4 février 2014, T-339/12, «Fauteuils, canapés», points 23 à 37).
De l’avis du Tribunal, compte tenu du fait que l’impression globale produite sur l’utilisateur averti doit nécessairement être déterminée au regard de la manière dont le produit en cause est utilisé, il y a lieu de tenir compte de la différence entre les dessins ou modèles en conflit liée à l’inclinaison du dossier et de l’assise du fauteuil représenté par le dessin ou modèle contesté. Un dossier et une assise inclinés conférant un confort différent de celui d’un dossier et d’une assise droits, l’usage qui sera fait de ce fauteuil par l’utilisateur avisé est susceptible d’en être influencé (arrêt du 4 février 2014, T-339/12, «Fauteuils, canapés», point 30).
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Dessin ou modèle contesté No 1512633- 0001, Sachi Premium – Outdoor Furniture, Lda.
Dessin ou modèle antérieur No 52113- 0001, M. Esteve Cambra (créateur: M. Jose Ramón Esteve Cambra)
En sens contraire, le Tribunal a retenu que le dessin ou modèle n° 1512633-0003 était dépourvu de caractère individuel au vu du même dessin ou modèle antérieur. Il a été jugé que les différences entre ces dessins ou modèles, y compris la présence dans le dessin ou modèle contesté de trois coussins, étaient surpassées par leurs caractéristiques communes (la forme rectangulaire, le dos et l’assise sont plats, le positionnement de l’assise dans la partie inférieure de la structure etc.) (arrêt du 4 février 2014, T-357/12, «Fauteuils, Canapés», points 44 à 60).
Le Tribunal a confirmé la position adoptée par la chambre de recours (décision du 27 avril 2012, R 969/2011-3 - «Armchairs»), selon laquelle les coussins sont moins importants que la structure du fauteuil pour l’évaluation de l’impression globale produite par les dessins ou modèles, étant donné que les coussins ne sont pas un élément fixe, mais des éléments qui sont facilement séparés du produit principal et qu’ils sont souvent vendus et achetés séparément, pour un coût relativement faible en comparaison de celui de la structure du fauteuil. L’utilisateur averti perçoit les coussins comme un simple accessoire facultatif et ceux-ci peuvent difficilement être qualifiés de «partie importante du dessin ou modèle». Par conséquent, l’impression globale produite par les dessins ou modèles en conflit est dominée par la structure même des fauteuils et non par les coussins, qui peuvent être considérés comme des éléments secondaires (arrêt du 4 février 2014, T-357/12, «Fauteuils, canapés», points 37 et 38).
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Dessin ou modèle contesté n° 1512633-0003, Sachi Premium – Outdoor Furniture, Lda.
Dessin ou modèle antérieur n° 52113-0001, M. Esteve Cambra (créateur: M. Jose Ramón Esteve Cambra)
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Le degré de liberté du créateur
Le degré de liberté du créateur dépend de la nature et de la destination du produit dans lequel le dessin ou modèle sera incorporé, ainsi que du secteur industriel auquel ce produit appartient. La division d’annulation prend en considération l’indication des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué (article 36, paragraphe 2, du RDC), mais également, le cas échéant, le dessin ou modèle lui-même, dans la mesure où il précise la nature du produit, sa destination ou sa fonction (arrêt du 18 mars 2010, T-9/07, «Représentation d’un support promotionnel circulaire», point 56).
Le degré de liberté du créateur dans l’élaboration du dessin ou modèle est défini à partir, notamment, des contraintes liées aux caractéristiques imposées par la fonction technique du produit ou d’un élément du produit, ou encore des prescriptions légales applicables au produit. Ces contraintes conduisent à une normalisation de certaines caractéristiques, devenant alors communes aux dessins ou modèles appliqués au produit concerné.
Plus la liberté du créateur dans l’élaboration du dessin ou modèle contesté est grande, moins des différences mineures entre les dessins ou modèles en cause pourront suffire à produire une impression globale différente sur l’utilisateur averti. À l’inverse, plus la liberté du créateur dans l’élaboration d’un dessin ou modèle est restreinte, plus des différences mineures entre les dessins ou modèles en cause pourront suffire à produire une impression globale différente sur l’utilisateur averti (arrêt du 18 mars 2010, T-9/07, «Représentation d’un support promotionnel circulaire», points 67 et 72). Dès lors, un degré élevé de liberté du créateur dans l’élaboration d’un dessin ou modèle renforce la conclusion selon laquelle les dessins ou modèles ne présentant pas de différences significatives produisent une même impression globale sur l’utilisateur averti (arrêt du 9 septembre 2011, T-10/08, «Moteur», point 33).
Le fait que la destination d’un produit spécifique exige la présence de certaines caractéristiques ne peut impliquer un degré restreint de liberté du créateur lorsque les parties soumettent des éléments de preuves établissant qu’il existe des possibilités de variations dans le positionnement de ces caractéristiques et dans l’apparence générale du produit lui-même (arrêt du 14 juin 2011, T-68/10, «Montre attachée à une lanière», point 69; arrêt du 6 octobre 2011, T-246/10, «Réducteur mécanique de vitesse», points 21 et 22; arrêt du 9 septembre 2011, T-10/08, «Moteur», point 37).
Le degré de liberté du dessin ou modèle n’est pas affecté par le fait que des dessins ou modèles similaires coexistent sur le marché et forment une «tendance générale» ou coexistent dans les registres des offices de la propriété industrielle (arrêt du 22 juin 2010, T-153/08, «Équipement de communication», point 58; décision du 1er juin 2012, R 0089/2011-3, «Corkscrews», point 27).
5.6 Conflit avec un droit à un dessin ou modèle antérieur
Conformément à l’article 25, paragraphe 1, point d), du RDC, un dessin ou modèle communautaire est déclaré nul s’il est en conflit avec un dessin ou modèle antérieur qui a fait l’objet d’une divulgation au public après la date de dépôt de la demande d’enregistrement ou après la date de priorité du dessin ou modèle communautaire, si une priorité est revendiquée, et qui est protégé depuis une date antérieure:
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1. par l’enregistrement d’un dessin ou modèle communautaire ou par une demande d’enregistrement d’un tel dessin ou modèle; ou
2. par l’enregistrement d’un dessin ou modèle dans un État membre ou par une demande d’obtention du droit afférent; ou
3. par un dessin ou modèle enregistré au titre de l’acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels, adopté à Genève le 2 juillet 1999, ci-après dénommé «l’acte de Genève», qui a été approuvé par la décision n° 954/2006 du Conseil et qui produit ses effets dans la Communauté, ou par une demande d’obtention du droit afférent.
Il convient d’interpréter l’article 25, paragraphe 1, point d), du RDC en ce sens qu’un dessin ou modèle communautaire est en conflit avec un dessin ou modèle antérieur lorsque, compte tenu de la liberté du créateur dans l’élaboration dudit dessin ou modèle communautaire, ce dessin ou modèle ne produit pas sur l’utilisateur averti une impression globale différente de celle produite par le dessin ou modèle antérieur invoqué (arrêt du 18 mars 2010, T-9/07, «Représentation d’un support promotionnel circulaire», point 52).
Lors du traitement d’une demande fondée sur l’article 25, paragraphe 1, point d), du RDC, la division d’annulation procède dès lors au même examen que pour l’appréciation du caractère individuel, en vertu de l’article 25, paragraphe 1, point b), lu conjointement avec l’article 6 du RDC.
La division d’annulation présume que le dessin ou modèle antérieur est valide à moins que le titulaire ne soumette une preuve démontrant qu’une décision devenue définitive a déclaré le dessin ou modèle antérieur nul avant l’adoption de la décision (voir, par analogie, l’arrêt du 29 mars 2011, C-96/09P, «BUD/bud», points 94 et 95) (voir ci- dessus, au paragraphe 4.1.6.2 Suspension).
5.7 Utilisation d’un signe distinctif antérieur
Un dessin ou modèle communautaire est déclaré nul s’il est fait usage d’un signe distinctif dans un dessin ou modèle ultérieur et que le droit de l’Union ou la législation de l’État membre concerné régissant ce signe confère au titulaire du signe le droit d’interdire cette utilisation (article 25, paragraphe 1, point e), du RDC).
5.7.1 Signe distinctif
La notion de «signe distinctif» englobe les marques enregistrées ainsi que les signes susceptibles d’être invoqués dans le contexte de l’article 8, paragraphe 4, du RMC (voir le Manuel, partie C, Opposition, section 4, «Article 8, paragraphe 4, du RMC», paragraphe 3.1, Types de droits relevant de l’article 8, paragraphe 4, du RMC).
5.7.2 Utilisation dans un dessin ou modèle ultérieur
La notion d’«utilisation dans un dessin ou modèle ultérieur» n’implique pas nécessairement la reproduction intégrale et détaillée d’un signe distinctif antérieur dans un dessin ou modèle communautaire ultérieur. En effet, quand bien même certains
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éléments du signe en question seraient absents dans le dessin ou modèle communautaire contesté ou d’autres éléments y seraient ajoutés, il pourrait s’agir d’un «usage» dudit signe, notamment lorsque les éléments omis ou ajoutés sont d’une importance secondaire et ne sont pas susceptibles d’être perçus par le public pertinent. Il suffit que le dessin ou modèle communautaire et le signe distinctif antérieur soient similaires (arrêt du 12 mai 2010, T-148/08, «Instrument d’écriture», points 50 à 52; arrêt du 25 avril 2013, T-55/12, «Dispositif de nettoyage», point 23; décision du 9 août 2011, R 1838/2010-3, «Instruments for writing», point 43).
Lorsqu’un dessin ou modèle communautaire inclut un signe distinctif sans aucune déclaration de renonciation précisant que la protection n’est pas demandée en ce qui concerne cette caractéristique, il est considéré que le dessin ou modèle communautaire utilise le signe distinctif antérieur, même si ce dernier n’est représenté que dans une seule des vues (décision du 18 septembre 2007, R 137/2007-3, «Containers», point 20).
5.7.3 Justification de la demande en vertu de l’article 25, paragraphe 1, point e), du RDC (signes distinctifs antérieurs)
Hormis les éléments requis en vertu de l’article 28 du REDC aux fins de la recevabilité (voir le paragraphe 3.9.2 ci-dessus), une demande doit contenir:
les éléments établissant le contenu de la législation nationale dont le demandeur sollicite l’application, y compris, le cas échéant, les décisions de justice et/ou la doctrine (les principes établis dans les Directives, partie C, Opposition, section 4, «Article 8, paragraphe 4, du RMC», paragraphe 4, Preuves et norme de preuve, s’appliquent). Lorsqu’une demande en nullité est fondée sur les droits détenus sur une marque communautaire antérieure, la soumission de la législation et de la jurisprudence relative aux marques communautaires n’est pas requise pour la justification de ce droit antérieur;
lorsque le signe distinctif antérieur n’est pas enregistré, les détails démontrant que des droits ont été acquis sur ce signe distinctif non enregistré conformément à la législation invoquée, par suite de l’usage ou autrement, avant la date de dépôt ou la date de priorité du dessin ou modèle communautaire (voir, par analogie, l’arrêt du 18 janvier 2012, T-304/09, «BASmALI», point 22);
les éléments démontrant que le demandeur remplit les conditions requises, conformément à cette législation, afin de pouvoir faire interdire l’usage d’un dessin ou modèle communautaire en vertu de son droit antérieur (voir, par analogie, l’arrêt du 5 juillet 2011, C-263/09 P, «ELIO FIORUCCI», point 50).
Le demandeur doit uniquement établir qu’il dispose d’un droit d’interdire l’usage du dessin ou modèle communautaire ultérieur et qu’il ne saurait être tenu d’établir que ce droit a été utilisé, en d’autres termes, que le demandeur a réellement été en mesure d’interdire cette utilisation (voir, par analogie, l’arrêt du 5 juillet 2011, C-263/09 P, «ELIO FIORUCCI»).
5.7.4 Examen par la division d’annulation
Lorsque la disposition nationale invoquée par le demandeur constitue la transposition d’une disposition correspondante de la directive 2008/95/CE du 22 octobre 2008
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rapprochant les législations des États membres sur les marques (version codifiée), la disposition nationale sera interprétée à la lumière de la jurisprudence relative à l’interprétation de la dernière disposition (arrêt du 12 mai 2010, T-148/08, «Instrument d’écriture», point 96).
En outre, lorsque la disposition nationale invoquée par le demandeur constitue la transposition de l’article 5, paragraphes 1 et 2, de la directive 2008/95/CE, la division d’annulation applique les principes établis dans les Directives, partie C, Opposition, section 2, Identité et risque de confusion, et section 5, Marques jouissant d’une renommée, étant donné que l’article 5, paragraphes 1 et 2, de la directive 2008/95/CE est identique en substance à l’article 8, paragraphes 1 et 5, du RMC.
Aux fins de l’application de ces dispositions, la division d’annulation considère que le dessin ou modèle communautaire contesté est perçu par le public pertinent comme un signe pouvant être utilisé «pour» ou «en relation avec» les produits ou services (arrêt du 12 mai 2010, T-148/08, «Instrument d’écriture», point 107; arrêt du 25 avril 2013, T-55/12, «Dispositif de nettoyage», points 39 et 42).
La division d’annulation considère également que le dessin ou modèle distinctif antérieur est valide à moins que le titulaire ne soumette une preuve démontrant qu’une décision devenue définitive a déclaré le dessin ou modèle antérieur nul avant l’adoption de la décision (arrêt du 25 avril 2013, T-55/12, «Dispositif de nettoyage», point 34) (voir ci-dessus, au paragraphe 4.1.6.2, Suspension).
Étant donné que les signes distinctifs sont protégés en ce qui concerne certains produits et services, la division d’annulation examine à l’égard de quels produits le dessin ou modèle communautaire contesté est destiné à être utilisé (arrêt du 12 mai 2010, T-148/08, «Instrument d’écriture», point 108). Afin de déterminer si ces produits et services sont identiques ou similaires, la division d’annulation prend en considération l’indication des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué (article 36, paragraphe 2, du RDC) mais également, le cas échéant, le dessin ou modèle lui-même, dans la mesure où il précise la nature du produit, sa destination ou sa fonction (arrêt du 18 mars 2010, T-9/07, «Représentation d’un support promotionnel circulaire», point 56; décision du 7 novembre 2011, R 1148/2010-3, «Packaging», points 34 à 37). L’appréciation de la similitude des produits s’effectue sur la base des principes définis dans les Directives relatives aux procédures devant l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles), partie C, Opposition, section 2, Identité et risque de confusion, chapitre 2, Comparaison des produits et services.
Lorsque le dessin ou modèle communautaire est destiné à être incorporé dans des «logos» bidimensionnels, la division d’annulation considère que ces logos peuvent être appliqués à un éventail infini de produits et services, y compris les produits et services à l’égard desquels le signe distinctif antérieur est protégé (décision du 3 mai 2007, R 609/2006-3, «logo MIDAS», point 27).
5.8 Utilisation non autorisée d’une œuvre protégée par la législation sur le droit d’auteur d’un État membre
Un dessin ou modèle communautaire est déclaré nul s’il constitue une utilisation non autorisée d’une œuvre protégée par la législation sur le droit d’auteur d’un État membre.
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5.8.1 Justification de la demande en vertu de l’article 25, paragraphe 1, point f), du RDC (droit d’auteur antérieur)
Hormis les éléments requis en vertu de l’article 28 du REDC à des fins de recevabilité (voir le paragraphe 3.9.2 ci-dessus), une demande doit contenir:
les éléments établissant le contenu de la législation nationale dont le demandeur sollicite l’application, y compris, le cas échéant, les décisions de justice et/ou la doctrine (voir, par analogie, l’arrêt du 5 juillet 2011, C-263/09 P, «ELIO FIORUCCI», point 50; décision du 11 février 2008, R 64/2007-3, «Loudspeakers», point 20);
les éléments établissant que des droits ont été acquis sur l’œuvre conformément à la législation sur le droit d’auteur invoquée, au profit du créateur ou de ses ayants droit, avant la date de dépôt ou la date de priorité du dessin ou modèle communautaire (voir, par analogie, l’arrêt du 18 janvier 2012, T-304/09, «BASmALI», point 22);
les éléments établissant que le demandeur remplit les conditions requises, conformément à cette législation, afin de pouvoir faire déclarer nul le dessin ou modèle communautaire ou interdire son usage en vertu de son droit antérieur.
Le demandeur d’une annulation qui se fonde sur une violation d’un droit d’auteur doit prouver qu’il est en droit d’invoquer un droit d’auteur à l’encontre du dessin ou du modèle communautaire, ainsi que l’existence et l’étendue du droit d’auteur au titre de la législation nationale (décision du 17 octobre 2013, R 951/2012-3 - «Children’s chairs»).
5.8.2 Examen par la division d’annulation
Étant donné que la protection du droit d’auteur ne peut, conformément à la législation nationale invoquée, dépendre de la publication ou de la divulgation de l’œuvre, la division d’annulation ne déclare un dessin ou modèle communautaire nul en vertu de l’article 25, paragraphe 1, point f), du RDC que dans les cas les plus clairs.
Plus particulièrement, il ne serait pas approprié d’utiliser l’article 25, paragraphe 1, point f), du RDC lorsque l’argument essentiel du demandeur est que le dessin ou modèle communautaire a été créé, non par le titulaire enregistré, mais par le demandeur ou un employé du demandeur (décision du 11 février 2008, R 64/2007-3, «Loudspeakers», point 20). L’article 25, paragraphe 1, point f), du RDC ne peut être utilisé comme un moyen de contourner la compétence exclusive des juridictions nationales concernant le droit au dessin ou modèle communautaire (article 15 et article 25, paragraphe 1, point c), du RDC).
L’examen a pour objet de déterminer si une utilisation non autorisée d’une œuvre protégée par la législation sur le droit d’auteur d’un État membre a eu lieu, et non d’établir la nouveauté ou le caractère individuel du dessin ou modèle au sens des articles 5 et 6 du RDC (voir, par analogie, l’arrêt du 23 octobre 2013, T-566/11 et T-567/11, «Vajilla», point 73).
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5.9 Nullité partielle
Conformément à l’article 25, paragraphe 6, du RDC, un dessin ou modèle communautaire enregistré qui a été annulé en vertu de l’article 25, paragraphe 1, point b), e), f) ou g), du RDC peut être maintenu sous une forme modifiée si, sous ladite forme, il répond aux critères d’octroi de la protection et que l’identité du dessin ou modèle est conservée.
La demande de maintien d’un dessin ou modèle communautaire enregistré sous une forme modifiée doit être effectuée par le titulaire avant la fin de la procédure écrite. La demande doit inclure la forme modifiée. La forme modifiée proposée peut consister en une représentation modifiée du dessin ou modèle communautaire duquel certaines caractéristiques sont retirées ou précisant, au moyen notamment de pointillés ou de couleurs, que la protection n’est pas sollicitée pour ces caractéristiques. La représentation modifiée peut inclure une renonciation partielle, de 100 mots au maximum (article 25, paragraphe 6, du RDC; article 18, paragraphe 2, du REDC).
La possibilité est donnée au demandeur de formuler des observations et de faire savoir si le dessin ou modèle communautaire répond, sous sa forme modifiée, aux critères d’octroi de la protection et s’il conserve son identité (voir le paragraphe 4.1.4.1 ci- dessus).
L’identité du dessin ou modèle communautaire doit être conservée. Le maintien sous une forme modifiée est dès lors limité aux cas où des caractéristiques retirées ou non revendiquées ne contribuent pas à la nouveauté ou au caractère individuel d’un dessin ou modèle communautaire, notamment:
lorsque le dessin ou modèle communautaire est incorporé dans un produit qui constitue une pièce d’un produit complexe et lorsque les caractéristiques retirées ou non revendiquées sont invisibles lors de l’utilisation normale de ce produit complexe (article 4, paragraphe 2, du RDC); ou
lorsque les caractéristiques retirées ou non revendiquées sont imposées par une fonction ou à des fins d’interconnexion (article 8, paragraphes 1 et 2, du RDC); ou
lorsque les caractéristiques retirées ou non revendiquées sont si insignifiantes, eu égard à leur taille ou importance, qu’elles sont susceptibles de passer inaperçues aux yeux de l’utilisateur averti.
La décision de maintenir le dessin ou modèle communautaire sous une forme modifiée est incluse dans la décision sur le fond qui met fin à la procédure en nullité.
5.10 Motifs de nullité qui deviennent applicables du simple fait de l’adhésion d’un nouvel État membre
Voir les Directives relatives à l’examen pratiqué à l’office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) sur les dessins ou modèles communautaires enregistrés, section 13, L’élargissement et le dessin ou modèle communautaire enregistré.
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6 Fin de la procédure
6.1 Fin de la procédure sans décision au fond
Il est mis fin à la procédure en nullité sans décision sur le fond lorsque:
1. le demandeur retire sa demande à la suite d’un règlement à l’amiable ou autre; ou
2. le titulaire renonce au dessin ou modèle communautaire dans son intégralité et le demandeur ne demande pas à l’Office de rendre une décision sur le fond (article 24, paragraphe 2, du RDC; voir le paragraphe 3.8); ou
3. le dessin ou modèle communautaire contesté est frappé d’extinction et le demandeur ne demande pas à l’Office de rendre une décision sur le fond (article 24, paragraphe 2, du RDC; voir le paragraphe 3.8); ou
4. la division d’annulation a suspendu plusieurs demandes en nullité concernant le même dessin ou modèle communautaire enregistré. Ces demandes sont réputées éteintes lorsqu’une décision déclarative de la nullité d’un dessin ou modèle communautaire est définitive (article 32, paragraphe 3, du REDC).
La division d’annulation informe les parties qu’il est mis fin à la procédure sans décision sur le fond.
6.2 Décision sur les frais
6.2.1 Cas où une décision sur les frais doit être prise
Si une décision sur le fond est rendue, la décision sur la répartition des frais est arrêtée à la fin de la décision (article 79, paragraphe 1, du REDC).
Dans tous les autres cas, lorsque la division d’annulation clôture l’affaire sans décision sur le fond, une décision distincte sur les frais est arrêtée à la demande de l’une des parties. Dans ce cas, la division d’annulation informe les deux parties de la date à laquelle elle rendra une décision sur les frais. Les parties peuvent soumettre des observations sur la répartition des frais.
6.2.2 Cas où une décision sur les frais n’est pas nécessaire
6.2.2.1 Accord sur les frais
Lorsque les parties informent la division d’annulation qu’elles ont réglé la procédure en nullité par un accord qui inclut les frais, la division d’annulation ne rend pas de décision sur les frais (article 70, paragraphe 5, du RDC).
Si aucune indication n’est donnée quant au fait que les parties se sont entendues sur les frais, la division d’annulation rend une décision sur les frais, conjointement avec la confirmation du retrait de la demande. Si les parties informent la division d’annulation qu’elles sont parvenues à un accord sur les frais après le retrait de la demande, la décision sur les frais déjà rendue n’est pas révisée par la division d’annulation. Il
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appartient toutefois aux parties de respecter l’accord et de ne pas appliquer la décision de la division d’annulation concernant les frais.
6.2.2.2 Répartition des frais
La règle générale veut que la partie qui succombe, ou la partie qui met fin à une procédure en renonçant au dessin ou modèle communautaire, en le maintenant sous une forme modifiée ou en retirant la demande, supporte les taxes exposées par l’autre partie, ainsi que tous les frais encourus par celle-ci, indispensables aux fins des procédures (article 70, paragraphes 1 et 3, du RDC).
Si les deux parties succombent partiellement, une «répartition différente» des frais doit être décidée (article 70, paragraphe 2, du RDC). En règle générale, l’équité exige que chaque partie supporte ses propres frais.
Lorsque plusieurs demandes en nullité concernant le même dessin ou modèle communautaire ont été suspendues, elles sont réputées éteintes lorsqu’une décision déclarative de la nullité d’un dessin ou modèle communautaire est définitive. Chaque demandeur dont la demande est réputée éteinte supporte ses propres frais (article 70, paragraphe 4, du RDC). En outre, l’Office rembourse 50 % de la taxe d’annulation (article 32, paragraphe 4, du REDC).
6.2.2.3 Détermination des frais
Frais récupérables concernant la représentation et les taxes
Lorsque les frais se limitent aux frais de représentation et à la taxe de demande en nullité, la décision qui fixe le montant des frais est incluse dans la décision sur la répartition des frais.
Le montant que la partie ayant obtenu gain de cause est habilitée à réclamer est mentionné à l’article 70, paragraphe 1, du RDC, et à l’article 79, paragraphes 6 et 7, du REDC.
En ce qui concerne les taxes, le montant récupérable est limité à la taxe d’annulation de 350 EUR si le demandeur a gain de cause.
En ce qui concerne les frais de représentation, le montant récupérable se limite à 400 EUR. Ce montant s’applique tant au demandeur qu’au titulaire, à la condition d’avoir été représenté dans la procédure en nullité par un mandataire agréé au sens de l’article 77 du RDC. La partie ayant obtenu gain de cause qui n’est plus représentée par un mandataire agréé lorsque la décision est prise a également droit à une répartition des frais, indépendamment du stade de la procédure à laquelle la représentation professionnelle a cessé, et ce sans préjudice de la nécessité de désigner un mandataire agréé lorsque cette désignation est obligatoire. Le montant à supporter par la partie qui succombe est toujours fixé en euros, indépendamment de la monnaie dans laquelle la partie ayant obtenu gain de cause a dû payer son mandataire.
Les frais de représentation pour les employés, même d’une autre entreprise ayant des liens économiques, ne sont pas récupérables.
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Autres frais récupérables
Lorsque les frais incluent des dépenses en relation avec une audience ou avec l’instruction, sur requête, le greffe de la division d’annulation fixe le montant des frais à rembourser (article 70, paragraphe 6, du RDC). Un état des frais accompagné de pièces justificatives doit être joint à la requête présentée aux fins de la détermination des frais (article 79, paragraphe 3, du REDC).
Le montant des frais récupérables peut être révisé par décision de la division d’annulation sur requête motivée, présentée dans un délai d’un mois après la notification de la décision de répartition des frais (article 70, paragraphe 6, du RDC; article 79, paragraphe 4, du REDC).
Détermination des frais après renvoi de l’affaire à la division d’annulation pour suite à donner
Lorsque la décision en nullité a été annulée, en tout ou en partie, et que l’affaire est déférée aux chambres de recours, la situation se présente comme suit:
la première décision (qui a fait l’objet d’un recours) n’est pas devenue définitive, même en ce qui concerne la répartition ou la détermination des frais;
en ce qui concerne les frais de la procédure en nullité, une décision unique sur la répartition et la détermination des frais doit être rendue pour l’ensemble de la procédure en nullité;
en ce qui concerne les frais de la procédure de recours, il convient de vérifier si les chambres ont statué sur ces frais. La notion de «partie gagnante» doit s’appliquer à l’issue de la procédure de recours, avec pour conséquence que la décision peut être différente pour les deux instances. Le montant des frais de représentation remboursables pour la procédure de recours est de 500 EUR, qui s’applique en outre aux frais de représentation pour la procédure en nullité.
6.3 Rectification d’erreurs et inscription au registre
Dans les décisions de la division d’annulation, seules les fautes linguistiques, les fautes de transcription et les erreurs manifestes peuvent être rectifiées. Elles sont rectifiées, d’office ou sur demande de l’une des parties intéressées, par la division d’annulation (article 39 du REDC).
6.3.1 Rectification d’erreurs
Dans les décisions de la division d’annulation, seules les fautes linguistiques, les fautes de transcription et les erreurs manifestes peuvent être rectifiées. Elles sont rectifiées, d’office ou sur demande de l’une des parties intéressées, par la division d’annulation (article 39 du REDC).
6.3.2 Inscription au registre
La date et le contenu de la décision sur la demande en nullité ou sur toute autre mesure mettant fin à la procédure sont inscrits au registre lorsque la décision est
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définitive (article 53, paragraphe 3, du RDC; article 69, paragraphe 3, point q), du REDC).
7 Recours
7.1 Droit de recours
Toute partie à la procédure en nullité ayant conduit à une décision peut recourir contre cette décision pour autant que cette dernière n’ait pas fait droit à ses prétentions. Une décision qui ne met pas fin à une procédure à l’égard de l’une des parties ne peut faire l’objet d’un recours qu’avec la décision finale, à moins que ladite décision ne prévoie un recours indépendant. Toute communication écrite d’une telle décision inclut un avis indiquant que la décision peut faire l’objet d’un recours dans un délai de deux mois à compter de la date de réception de la notification de la décision. Le recours a un effet suspensif (article 55 du RDC).
7.2 Révision
Une révision peut être accordée lorsqu’un recours a été formé contre une décision pour laquelle les chambres de recours sont compétentes en vertu de l’article 55 du RDC.
Si la division ou l’instance de l’Office dont la décision est attaquée considère le recours comme recevable et fondé, elle doit y faire droit. Cette disposition ne s’applique pas lorsque la procédure oppose celui qui a introduit le recours à d’autres parties (article 58, paragraphe 1, du RDC).
S’il n’est pas fait droit au recours dans le délai d’un mois à compter de la réception du mémoire exposant les motifs du recours, le recours doit être immédiatement déféré à la chambre de recours, sans avis sur le fond (article 58, paragraphe 2, du RDC).
La révision a pour objectif d’éviter que les chambres de recours ne soient saisies de recours contre des décisions à l’égard desquelles la nécessité d’une rectification a été reconnue par la division d’annulation. Toutefois, la révision n’a pas pour objectif de supprimer des erreurs dans les décisions de la division d’annulation sans modifier l’issue d’une affaire, mais d’accorder au requérant la réparation réclamée.
Les principes s’appliquant à la révision en ce qui concerne les décisions adoptées par la division d’opposition s’appliquent mutatis mutandis aux décisions adoptées par la division d’annulation (voir les Directives, partie A, Règles générales, section 7, Révision).